Ex parte Cheng

Board of Patent Appeals and Interferences

Jun 15, 1999

08721666 (B.P.A.I. Jun. 15, 1999)

Application for patent filed September 27, 1996. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WEI H. CHENG
____________
Appeal No. 1999-0284
Application No. 08/721,6661
____________
ON BRIEF
____________
Before NASE, CRAWFORD, and BAHR, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to
allow claims 1 and 9, as amended subsequent to the final
rejection. These claims constitute all of the claims pending
in this application.
We REVERSE.
Appeal No. 1999-0284 Page 2
Application No. 08/721,666
BACKGROUND
The appellant's invention relates to a semiconductor
wafer carrier fork cover. An understanding of the invention
can be derived from a reading of exemplary claim 1, which
appears in the appendix to the appellant's brief.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Harada et al. (Harada) 5,217,340 June 8, 1993
Claims 1 and 9 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Harada.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the examiner's answer (Paper
No. 10, mailed May 8, 1998) for the examiner's complete
reasoning in support of the rejection, and to the appellant's
brief (Paper No. 9, filed March 16, 1998) for the appellant's
arguments thereagainst.
Appeal No. 1999-0284 Page 3
Application No. 08/721,666
Appeal No. 1999-0284 Page 4
Application No. 08/721,666
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art reference, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
A claim is anticipated only if each and every element as
set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). The inquiry as to whether a reference anticipates a
claim must focus on what subject matter is encompassed by the
claim and what subject matter is described by the reference.
As set forth by the court in Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the
claims to "'read on' something disclosed in the reference,
Appeal No. 1999-0284 Page 5
Application No. 08/721,666
The examiner has not done an element-by-element2
comparison between the claimed subject matter and the
disclosure of Harada.
i.e., all limitations of the claim are found in the reference,
or 'fully met' by it."
The examiner's position (answer, p. 3) is that claims 1
and 9 are clearly anticipated by Figure 3 of Harada. 2
Specifically, the examiner states that
the cover shown in Fig. 3 of Harada et al will shield the
forks of Harada et al as the cover shown in Fig. 3 is
large enough to do so. The cover of Harada et al
includes an extension, an upper covering unit, and a
lower covering unit.
The appellant argues (brief, pp. 6-8) that Harada's cover
(the unnumbered element at the top of Figure 3) lacks the
claimed lower support unit and upper covering unit. We agree.
In that regard, Harada fails to disclose the following two
elements recited in claims 1 and 9: (1) a lower support unit
which is "rectangular in shape and has three sidewalls, two
top flanges, and a first open side;" and (2) an upper covering
unit which is "rectangular in shape and has three sidewalls
Appeal No. 1999-0284 Page 6
Application No. 08/721,666
connected to the two top flanges [of the lower support unit]
to form the integral attachment, a second open side, and a top
covering plate."
Since all the limitations of claims 1 and 9 are not
disclosed in Harada for the reasons stated above, the decision
of the examiner to reject claims 1 and 9 under 35 U.S.C. §
102(b) is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 and 9 under 35 U.S.C. § 102(b) is reversed.
Appeal No. 1999-0284 Page 7
Application No. 08/721,666
REVERSED
JEFFREY V. NASE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-0284 Page 8
Application No. 08/721,666
GEORGE O. SAILE
20 MCINTOSH DRIVE
POUGHKEEPSIE, NY 12603
APPEAL NO. 1999-0284 - JUDGE NASE
APPLICATION NO. 08/721,666
APJ NASE
APJ CRAWFORD
APJ BAHR
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 11 Jun 99
FINAL TYPED: