Ex parte FISHKIN et al.

Board of Patent Appeals and Interferences

Oct 12, 1999

08312487 (B.P.A.I. Oct. 12, 1999)

Application for patent filed September 26, 1994. 1
According to the appellants, the application is a continuation
of Application No. 07/972,659, filed November 6, 1992, now
abandoned.
Meister, Administrative Patent Judge, retired before2
this case was reached for rehearing. Legal support for
substituting one Board member for another can be found in In
re Bose Corp., 772 F.2d 866, 869, 227 USPQ 1, 4 (Fed. Cir.
1985).
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 54
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BORIS FISHKIN, SEIJI SATO and ROBERT B. LOWRENCE
____________
Appeal No. 1999-0317
Application No. 08/312,4871
____________
ON BRIEF
____________
Before McQUADE , NASE, and BAHR, Administrative Patent Judges.2
NASE, Administrative Patent Judge.
ON REQUEST FOR REHEARING
Appeal No. 1999-0317 Page 2
Application No. 08/312,487
Filed July 12, 1999.3
Effective Dec. 1, 1997, 37 CFR § 1.197(b) was amended to 4
change the term "reconsideration" to "rehearing." See the
final rule notice published at 62 Fed. Reg. 53131, 53197 (Oct.
10, 1997), 1203 Off. Gaz. Pat. Office 63, 122 (Oct. 21,
1997)).
This is in response to the appellants' request for
rehearing of our decision mailed June 9, 1999, wherein we3,4
affirmed the examiner's rejection of claims 1 to 6, 11, 24 to
26, 30-35 and 38-43 under 35 U.S.C. § 102(e) as being
anticipated by Bonora; affirmed the examiner's rejection of
claims 7 to 10 under 35 U.S.C. § 103 as being unpatentable over
Bonora; affirmed the examiner's rejection of claim 37 under 35
U.S.C. § 112, first paragraph; affirmed the examiner's rejection
of claims 30 to 43 under 35 U.S.C. § 112, second paragraph; and
reversed the examiner's rejection of claims 40 to 43 under 35
U.S.C. § 102(b) as being anticipated by Akins.
The appellants' request for rehearing (p. 1) states that
"the Board erred in affirming the rejection of claims 1-11, 24-
Appeal No. 95-3698 Page 3
Application No. 08/006,717
26, 30-35, and 38-43 based on Bonora et al." The argument (pp.
1-2) raised by the appellant is that Bonora fails to
teach, show, or suggest the claimed method and apparatus
for evacuating an interim volume between two chambers when
moveable walls of both chambers are closed.
We have carefully considered the argument raised by the
appellants in their request for rehearing, however, that
argument does not persuade us that our decision was in error in
any respect.
As pointed out on pages 7-9 of our decision, we agree with
the examiner that claim 1 is anticipated by Bonora.
Specifically, we found (decision, pp. 8-9) that method step (b)
of claim 1 (i.e., removing contaminants from the interface
volume through a passage isolated from the first and second
chambers when the chamber walls are closed) was readable on
Bonora since contaminants are removed from Bonora's region 100
(i.e., the interface volume) through a passage (Bonora's port 94
leading to exhausting sink 96) isolated from the container 18
Appeal No. 95-3698 Page 4
Application No. 08/006,717
(i.e., the first chamber) and the processing station 8 (i.e.,
the second chamber) when the box door 32 and the port door 28
and the port door cover 110 (i.e., the chamber walls) are
closed.
The appellants' argument set forth in request for
rehearing, which argument was previously set forth by the
appellants in the brief (pp. 6-8) and the reply brief (pp. 2-3),
remains unpersuasive since the argument is not commensurate in
scope with claim 1. In that regard, claim 1 does not require
the interface volume to be evacuated when the moveable walls of
both chambers are closed as argued by the appellants. Claim 1
only requires that contaminants are removed from the interface
volume through a passage isolated from the first and second
chambers when the chamber walls are closed, which limitation is
met by Bonora.
In light of the foregoing, the appellants' request for
rehearing is granted to the extent of reconsidering our
Appeal No. 95-3698 Page 5
Application No. 08/006,717
decision, but is denied with respect to making any change
thereto.
Appeal No. 95-3698 Page 6
Application No. 08/006,717
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
REQUEST FOR REHEARING - DENIED
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 95-3698 Page 7
Application No. 08/006,717
B. TODD PATTERSON
PATTERSON & STREETS, L.L.P.
3040 POST OAK BLVD.
SUITE 1500
HOUSTON, TX 77056
ON REQUEST FOR REHEARING
APPEAL NO. 1999-0317 - JUDGE NASE
APPLICATION NO. 08/312,487
APJ NASE
APJ BAHR
APJ MCQUADE
DECISION: DENIED
Prepared By: Gloria Henderson
DRAFT TYPED: October 6, 1999
FINAL TYPED: