BPAI reverses indefiniteness of dependent claim using "comprising" when independent claim used "is one of"

Takeaway: An Examiner rejected as indefinite a dependent claim that included the limitation "the component comprising," as contradicting the recitation in the independent claim "wherein the component is one of." The Examiner took the position that the term "is" in the independent claim operated as a closed transition, and that the dependent claim was indefinite for adding additional components excluded by the closed transition. The BPAI reversed the indefiniteness rejection. To determine whether "is" was an open or closed transition, the Board reviewed the Applicant's specification. The Board concluded that the Applicant did not intend to limit the component to only those components recited in claim 1, so that claim 1 was open to components in addition to those explicitly recited in the claim 1 "wherein" clause. The Board therefore reversed the indefiniteness rejection of the dependent claim. (Ex parte Faguet, BPAI 2011.)

Details:

Ex parte Faguet
Appeal 20120012312; Appl. No. 11/094,461; Tech. Center 1700
Decided:  November 9, 2011

The technology of the application on appeal involved a system used in manufacturing semiconductors. A representative set of claims on appeal read:

1. A plasma enhanced atomic layer deposition (PEALD) system comprising:
     a process chamber;
     ...
     a chamber component exposed to said plasma and made from a film compatible material having at least one molecular component in common with said predetermined film,
     wherein the chamber component is one of a wafer lift pin, a wafer centering ring, a[n] alignment rail, a paddle, a hanger, a hinge, a holder, a chuck, a screw, a nut, and a bolt.

2. The PEALD system of claim 1, wherein said chamber component comprises a gas injection plate.
3. The PEALD system of claim 1, wherein said chamber component comprises a substrate holder.
4. The PEALD system of claim 1, wherein said chamber component comprises a contaminant shield.
5. The PEALD system of claim 1, wherein said chamber component comprises at least one of an electrode, a shower head, a grid, a focus ring, a dispersion plate, a gas injector, a shield, a clamp ring, a wafer lift pin, a wafer centering ring, a alignment rail, a paddle, a door, a hanger, a hinge, a holder, a gas a diffuser, a chuck, a screw, a nut, or a bolt. 

During prosecution, the Examiner rejected the independent claims as anticipated. Dependent claims 2 and 3 were also rejected as indefinite. The Examiner explained the indefiniteness rejection by stating "it is not possible for the chamber component to be both the component claimed in claim 1 and the different component claimed in claims 2 and 3."

The Applicant appealed, and argued against the indefiniteness rejection by explaining that claim 1 enumerated a list of chamber components, and claims 2 and 3 merely added to this list. The Applicant went further to say that the Examiner had not made a prima facie case of indefiniteness since the Office Action "provided no reasoning as to why a person of ordinary skill in the art would not understand that the list of chamber components can also include the claimed gas injection plate substrate support."

In the Answer, the Examiner added a new indefiniteness rejection of claims 4 and 5 using the same reasoning. The Examiner also elaborated on the indefiniteness rejection:

     [C]laim 1 requires that "the component" be one of a wafer lift pin, a wafer centering ring, a alignment rail, a paddle, a hanger, a hinge, a holder, a chuck, a screw, a nut, and a bolt. Claim 2 and 3 require "the component" to be something else. Applicant has not addressed how "the component" can be a wafer lift pin, a wafer centering ring, a alignment rail, a paddle, a hanger, a hinge, a holder, a chuck, a screw, a nut, and a bolt and at the same time be a gas injection plate or substrate holder. Thus the claims are indefinite.
     The Examiner further notes that if claims 2-5 were to be read as argued by the Applicant, claims 2-5 would be improper dependent claims because they would not further limit claim 1, in that, they would add to the list of possible components not limit the list of components, and a rejection that read on claims 2-5 may not read on claim 1. 

The Board addressed the indefiniteness rejection by first noting that the rejection was premised on treating of the transition word "is" (in the phrase "the component is one of") as a closed transition. "Non-conventional transitional phrases (i.e., other than 'comprising,' 'consisting essentially of,' and 'consisting') are interpreted in light of the Specification to determine whether open or closed claim language is intended." (Internal citations omitted.)

Looking to the Applicant's specification, the Board found that the Applicant intended "is" to be an open-ended transition. The Board found that the Specification described an example embodiment in which the chamber components include those recited in dependent claims 2, 3, and 4 (gas injection plate, contaminant plate, and shield). But the specification also gave a list of other components which may be exposed to the chamber, and this list included the components recited in independent claim 1 (wafer lift pin, a wafer centering ring, etc.).  In view of these statements, the Board found no preferred embodiment that limited the chamber component to either the components in claim 1, or to the components in dependent claims 2-5.  The Board concluded that:

Appellants did not intend to limit the chamber component to only those components recited in claim 1. Rather, we interpret claim 1 as open to including chamber components in addition to those explicitly recited in the claim 1 "wherein" clause.

Under this construction, the Board reversed the indefiniteness rejection of the dependent claims.


My two cents: I agree with the Board that the embodiments in the spec weren't limited to chamber components from set A (claim 1) or from set B (claim 2 or 3 or 4 or 5).  Trouble is, I'm not sure that's what the Applicant claimed.

As a matter of plain English, "component is a nut" doesn't mesh with the further limitation the "component includes a gas injection plate.  I'm interpreting the "component is" as defining the component rather than declaring possible additions to the component. And it simply doesn't make sense to say a nut includes a gas injection plate.

I don't think the spec really helps to decide how the Applicant meant the particular transition word used in the claims – "is" – to be interpreted. The paragraph relied on by the Board says:

• the things in the list of claim 1 are "exposed to plasma in the processing chamber"; and
• the things in the dependent claims "can be made from a film compatible material"

Neither of these statements in the spec uses a transition word at all, and are thus no help at all in determining what the Applicant meant by using the transition word "is" to introduce the list of claim 1.


Also, I don't really see this as an open/closed transition issue. Consider the follow hypothetical

• 1.  A device comprising: a network interface, wherein the network interface is an Ethernet interface.
• 2.  The device of claim 2, wherein the network interface comprises a transceiver.

Same paradigm: "is" followed by "comprises". But in this context, there is no indefiniteness problem. These claims make perfect sense.

I could go either way on the situation presented in Ex parte Faguet. If you import enough from the spec, this leads to the conclusion of no indefiniteness. On the other hand, if you read the claims as is, the dependent claim is indefinite.