Appeal No. 2003-1501
Application 09/756,929
in this art armed with the knowledge in the art would have reasonably inferred from the
disclosure of Rigali that typical workpieces that can be processed in plasma treatment apparatus
10 include the typical, most popular encapsulated integrated circuits on a lead frame package
acknowledged by appellant. See In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed.
Cir. 1995), and cases cited therein (“[A] skilled artisan could take [the reference’s] teachings in
combination with his own knowledge and be in possession of the [claimed] device.”); Preda,
supra.
Therefore, on this record, we determine that contrary to appellant’s arguments (brief,
pages 7-14; reply brief, pages 3-8), Rigali in fact anticipates the claimed apparatus of appealed
claim 43 without ignoring or disregarding any claim limitations.
Even so, the knowledge of one skilled in the art of the typical, most popular encapsulated
integrated circuit on a lead frame package notwithstanding, the recitation in appealed claim 43 of
“an encapsulated object” in the preamble and as an element does not serve to patentably
distinguish the claimed plasma treating apparatus from the plasma treating apparatus disclosed by
Rigali because on this record, neither the intended use recited in the preamble, see generally,
Yanish, supra; Casey, supra; Otto, supra, nor the recited element per se in fact structurally limits
the claimed apparatus in this respect. See generally, Otto, supra; In re Young, 75 F.2d 996,
25 USPQ 69 (CCPA 1935); In re Rishoi, 197 F.2d 342, 344-45, 9 USPQ 71, 72-73 (CCPA
1935); cf. Ex parte Masham, 2 USPQ2d 1647, 1648 (Bd. Pat. App. & Int. 1987). Indeed, we
found above that in light of the written description in the specification, claim 43 requires that “an
encapsulated object” is housed in a reaction chamber enclosure in any manner that permits the
exposure of at least one surface thereof to plasma gas.
We are not persuaded otherwise in this case by appellant’s arguments with respect to
Rishoi, on which the examiner relies, Morgan Envelope Co. v. Albany Paper Co., 152 U.S. 425
(1894), and In re Hughes, 49 F.2d 478, 9 USPQ 223 (CCPA 1931), cited in Rishoi, and Ex parte
Muzquiz, Appeal 1998-3425, 1998 WL 1736229 (Bd. Pat. App. & Int. 1998) (brief, pages 11-12;
reply brief, pages 6-7). Appellant submits that neither Roshoi nor Morgan Envelope or Hughes
cited thereon, “ruled on the issue with respect to an invention in which an apparatus was
purposely limited to a combination of elements (i.e., including a work piece as an express
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