Appeal No. 2003-1501
Application 09/756,929
as in Masham, and contrary to the facts before the panel in Muzquiz, here appealed claim 43 does
not require any structural specificity with respect to either “an encapsulated object,” or the
manner in which it is housed in “an enclosure” such that at least one surface of thereof is exposed
to plasma gas. As the examiner argues, “there is no structural difference [between the claim
apparatus and that of Rigali] as a result of the encapsulated object being processed in the
apparatus” (answer, pages 9-10).
Therefore, in the same manner as in the authority on which we rely, the claimed apparatus
of appealed claim 43 is complete without “an encapsulated object,” and accordingly, upon
consideration of the claimed invention as a whole as encompassed by appealed claim 43 and in
light of the written description in the specification, the claimed apparatus does not patentably
distinguish over Rigali by reason of the presence of “an encapsulated object” upon which it
works.
Appellant relies on the same arguments with respect to the same and similar claim
language that appears in appealed claim 47 (brief, page 14; reply brief, page 8) that we
considered above. Of the additional claim language appearing in claim 47, appellant focuses on
“a vacuum pump coupled to said reaction chamber, wherein said vacuum pump maintains
vacuum pressure in said reaction chamber and removes by-products produced from reaction on a
surface of the encapsulated electronic component of gas,” and submits that Rigali only discloses
the use of a vacuum pump to maintain pressure in the reaction chamber, citing col. 10, lines
59-60, and there is “no ‘anticipatory’ disclosure of the claimed ‘removal’ limitations” (brief,
page 15).
The examiner contends that inherently, a vacuum pump removes by-products along with
other gases in maintaining the reaction chamber at a specific pressure, and because the vacuum
pump used by Rigali is capable of performing the uses intended for such pump in appealed claim
47, “there is no structural limitation in the vacuum pump that differentiates the claimed vacuum
pump from the vacuum pump used in the Rigali apparatus” (answer, pages 10-11).
Appellant responds that the examiner has not carried the burden of establishing by fact
and technical reasoning that the inherent removal of by-products naturally reasonably necessarily
flows from the description of the operation of vacuum pump 28 in Rigali, contending that “[i]f
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