Tuesday, November 22, 2011

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.

13 comments:

  1. I agree, Karen. The Examiner's logic here makes some sense.

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  2. open/closed issues aside, the dependent claims still seem indefinite in that they're unworkable with with the "is one of" elements (gas injection plate). Did the Board add its own rejection or just let it go?

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  3. I don't see anything indefinite about claim 3. Claim 1 says it can be a holder and claim 3 says that holder can be a substrate holder. That's consistent and further limiting.

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  4. >Claim 1 says it can be a holder and claim 3
    >says that holder can be a substrate holder.
    >That's consistent and further limiting.

    Yeah, except that's not *all* that claim 1 says. Claim 1 also says that the component can be a nut. The nut can't be a substrate holder.

    The interesting question here is how to reconcile the alternatives of claim 1 with the specific instances of the dependent claims.

    Do we ignore the "nut" alternative of claim 1 when looking at the "holder" in claim 3? That is, does the "substrate holder" of claim 3 somehow only have meaning if the "component" of claim 1 is slotted with the "holder" alternative?

    I've never seen a claim pattern like this, so I haven't thought this through. But at first glance, it bothers me.

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  5. >Did the Board add its own rejection or just
    >let it go?

    The Board simply reversed the indefiniteness rejection. It did not affirm on alternative rationale and/or new grounds.

    >they're unworkable with with the "is one
    >of" elements

    Yes, I agree that using alternatives ("is one of") makes the scheme unworkable. See my comment from earlier today.

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  6. If the nut can't be a substrate holder (and I haven't read the spec, so maybe it could be), then that part of the scope of Claim 1 is excluded from the narrower scope of Claim 3. Claims are supposed to be given their broadest reasonable interpretation consistent with the specification. If an interpretation results in an unreasonable interpretation, the interpretation is improper.

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  7. Any confusion expressed in reader comments seems to arise from ignoring the fact that the claimed chamber "component" can also be an aggregate of elements. Therefore, for example, dependent Claim 2 as claimed requires the chamber component to include BOTH one (or even more) of the listed elements in Claim 1 and a distinct gas injection plate (in addition to a nut, for example).

    The Board's decision makes perfect sense. The use of "is" instead of "comprising" in Claim 1 is unfortunate but not indefinite. [Why open/closed transition is an issue? If chamber component cannot be other than those explicitly recited in Claim 1, then Claims 2-5 will be indefinite.] It is further unfortunate that this issue cannot be resolved earlier (prior to appeal) by changing "is" to --comprising--.

    By the way, in Karen's hypothetical, if the transceiver were not a sub-set of the Ethernet interface (i.e., further limiting the Ethernet interface) or a separate element (i.e., further limiting the network interface), then Claim 2 will be indefinite.

    Peter Chang

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  8. Well it surely wasn't indefinite, but the examiner might have simply made an objection to the dep. and said that it needed "additionally" before "comprising" beause that is what they're trying to claim. That is a grammatical issue, not an indefiniteness one. There is only one, totally unambiguous interpretation of the claim, the literal one. And that one is different than the one they wished to claim.

    As is they've simply claimed 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, or a bolt that comprises a gas injection plate which is not technically impossible.

    But it also is not what they wanted to claim.

    "As a matter of plain English, "component is a nut" doesn't mesh with the further limitation the "component includes a gas injection plate."

    Sure it does, it is simply a very large oddly shaped nut that includes a gas injection plate, which, if this isn't an original claim they probably don't have WD for and which isn't what they wanted to claim anyway.


    Also, remember the old mantra: It is best to object rather than reject when possible. Petitions usually aren't filed, but many prosecutors feel like appealing anything. Plus, it seems like most prosecutors don't pay much attention to objections and simply make the change if it isn't something drastic. If you can frame the issue as merely one of grammar I always have sky high rates of compliance.

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  9. "Any confusion expressed in reader comments seems to arise from ignoring the fact that the claimed chamber "component" can also be an aggregate of elements."

    That is correct, it could be, but it isn't in claim 1. Which is why you need "additionally" in the dep to make it clear to the reader that you are now making an aggregate part having multiple parts.

    "Claim 2 as claimed requires the chamber component to include BOTH one (or even more) of the listed elements in Claim 1 and a distinct gas injection plate (in addition to a nut, for example).
    "

    Close but no cigar, that's what they want the claim to say, but as presently worded the claim simply requires a nut etc. which has an integrated gas injection plate. Pretty big ol' nut!

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  10. "The nut can't be a substrate holder."

    Why not ya nut? Tiny substrates or large nuts ftw!

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  11. The thing of it is that I'm still not sure if the Examiner merely applied an (improper) per se rule to make the rejection or actually put as much thought into it as was done the above posts.

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  12. "Do we ignore the "nut" alternative of claim 1 when looking at the "holder" in claim 3? That is, does the "substrate holder" of claim 3 somehow only have meaning if the "component" of claim 1 is slotted with the "holder" alternative?"

    Of course! It's pretty common to permit "A or B" in an independent claim and then narrow it down to just "A" (i.e., "wherein it's A," plus perhaps some additional limitations...) in a dependent claim. Dependents need only be logical subsets of the independent.

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