10842636 (B.P.A.I. Jan. 31, 2012)

Ex Parte Box

Board of Patent Appeals and InterferencesJan 31, 2012

10842636 (B.P.A.I. Jan. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte WILHELMUS JOSEPHUS BOX ________________ Appeal 2010-001179 Application 10/842,636 Technology Center 2800 ________________ Before JEAN R. HOMERE, ST. JOHN COURTENAY, III, and ANDREW J. DILLON, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-001179 Application 10/842,636 2 Appellant appeals under 35 U.S.C. § 134(a) (2002) from the Examiner’s rejection of claims 1, 2, 4-10, 12, 14, and 17-36. Claims 3, 11, 13, 15, and 16 were cancelled during prosecution. We have jurisdiction under 35 U.S.C. § 6(b). We pro forma reverse the Examiner’s rejections under § 102 and § 103 and enter a new ground of rejection under 37 C.F.R. § 41.50(b). STATEMENT OF THE CASE According to Appellant, the invention on appeal relates to “a lithographic apparatus and a device manufacturing method.” (Spec. 1, para. [0001]). Exemplary Claim 1. A lithographic apparatus, comprising: a substrate table configured to hold a substrate during projection of a patterned beam onto a target portion of the substrate; and a conditioning system constructed to directly condition a non-target portion of the substrate with a conditioning fluid coming into contact with the substrate being held by the substrate table, wherein the conditioning fluid will have a flow rate between approximately 3 to 150 m3 per hour if gas or a flow rate between approximately 0.003 to 6 liters per minute if liquid without causing substantial dynamic disturbances within the substrate, or the substrate table, or both the substrate and the substrate table. (App. Br. 39, claim 1) (emphasis added). Appeal 2010-001179 Application 10/842,636 3 Examiner's Rejections 1. Claims 33 and 36 stand rejected under 35 U.S.C. § 102(b) as being anticipated by over Fujiwara (U.S. Patent No. 6,496,350 B2 (filed June 18, 2001)). 2. Claims 1, 4-9, 18-28, 30-32, 34, and 35 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Fujiwara. 3. Claim 14 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Fujiwara and Amemiya (U.S. Patent No. 5,231,291 (filed Jan. 17,1992)). 4. Claims 1, 2, 4, 5, 8-10, 12, 17-25, and 27-36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Emoto (U.S. Patent No. 6, 226,073 B1(filed Apr. 20, 1999)) and Segers (U.S. Patent No. 6,721,035 B1 (filed Apr. 19, 2000)). NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b) ISSUE We do not reach the merits of the Examiner’s anticipation and obviousness rejections because we hold that it is necessary to first address the threshold issue of whether independent claims 1, 23, 24, and 33 (and associated dependent claims) are indefinite under 35 U.S.C. §112, second paragraph. Appeal 2010-001179 Application 10/842,636 4 PRINCIPLES OF LAW Claim Construction During prosecution, “the United States Patent and Trademark Office (USPTO)] gives claims their ‘broadest reasonable interpretation.’” In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The USPTO is not required in the course of prosecution to interpret claims in the same manner as courts are required to during infringement proceedings. “It would be inconsistent with the role assigned to the PTO in issuing a patent to require it to interpret claims in the same manner as judges who, post-issuance, operate under the assumption the patent is valid.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 35 U.S.C. § 112, Second Paragraph The Federal Circuit Court has held in post-issuance patent infringement cases that the definiteness requirement “does not compel absolute clarity” and “only claims ‘not amenable to construction’ or ‘insolubly ambiguous’ are indefinite.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (citations omitted). The claim as a whole must be considered to determine whether it apprises one of ordinary skill in the art of its scope, and therefore serves the notice function required by 35 U.S.C. § 112, second paragraph by providing clear warning to others as to what constitutes the infringement of the patent. Solomon v. Kimberly- Clark Corp., 216 F.3d 1372, 1379 (Fed. Cir. 2000). However, when a patent application is pending before the USPTO “if a claim is amenable to two or more plausible claim constructions, the Appeal 2010-001179 Application 10/842,636 5 USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential), available at http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd073300.pdf. Thus, a claim that is not indefinite under the Federal Circuit Court’s “insolubly ambiguous” standard (as applied to issued patent claims), may be found indefinite under the USPTO Miyazaki standard of review that employs a lower threshold of ambiguity for pending patent application claims. A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of the claim language. See In re Steele, 305 F.2d 859, 862-863 (CCPA 1962). ANALYSIS Claim 1 Based upon our review of Appellant’s claims viewed in light of the Specification, we are unable to ascertain the scope of the recited negative limitation of “without causing substantial dynamic disturbances” regarding claims 1, 23, 24, and 33. As discussed above, “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as Appeal 2010-001179 Application 10/842,636 6 indefinite.” Miyazaki, 89 USPQ2d at 1211. See also Steele, 305 F.2d at 862. According to Appellant, the disclosed invention is directed to preventing “substantial dynamic disturbances” that are vibrations. (See Spec. 3, paras. [0011] and [0013]). However, Appellant’s Specification does not specifically define the claimed “dynamic disturbances” as vibrations. (See Spec. 11-12, para. [0052]). The Examiner has more broadly read the term “substantial dynamic disturbances” on examples of thermal expansion, deformation, expansion, vibration, bending etc. in the references. (See Ans. 16-17). Appellant’s Specification fails to set forth a definition of the disputed negative limitation “without causing substantial dynamic disturbances” with “reasonable clarity, deliberateness, and precision” that would render the incorporation of such definition into the claims appropriate (In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)). On this record, we find both Appellant’s interpretation and the Examiner’s interpretation are plausible under a broad but reasonable interpretation. However, the Examiner did not reject the claims under § 112, second paragraph, consistent with the holding of BPAI precedential opinion Miyazaki. Since the prior art rejections cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of the claim language, a material issue of claim interpretation is present which must be resolved before the merits of the Examiner’s and Appellant’s positions can be properly considered. See In re Steele, 305 F.2d at 862-863. Appeal 2010-001179 Application 10/842,636 7 Therefore, we pro forma reverse the Examiner’s rejection of independent claims 1, 21, and 41, and all claims which depend therefrom that stand rejected under 35 U.S.C. §§ 102(b) and 103(a). We emphasize that our reversal is based on procedure rather than on the merits of the obviousness rejection. The reversal does not mean that we consider the claims to be patentable as presently drawn. CONCLUSION OF LAW We conclude that claims 1, 2, 4-10, 12, 14, and 17-36 are indefinite under 35 U.S.C. § 112, second paragraph. Appeal 2010-001179 Application 10/842,636 8 DECISION We pro forma reverse the Examiner’s rejections of claims 1, 2, 4-10, 12, 14, and 17-36 under 35 U.S.C.§ § 102(b) and 103(a) and enter a new ground of rejection for claims 1, 2, 4-10, 12, 14, and 17-36 under 35 U.S.C. § 112, second paragraph. 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner.… (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record.… REVERSED 37 C.F.R. § 41.50(b) llw