10196679 (B.P.A.I. Aug. 18, 2009)

Ex Parte Gilchrist

Board of Patent Appeals and InterferencesAug 18, 2009

10196679 (B.P.A.I. Aug. 18, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ULYSSES GILCHRIST ____________ Appeal 2009-003076 Application 10/196,679 Technology Center 3600 ____________ Decided: August 18, 2009 ____________ Before JAMESON LEE, SALLY C. MEDLEY and MICHAEL P. TIERNEY, Administrative Patent Judges. MEDLEY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-003076 Application 10/196,679 2 A. STATEMENT OF THE CASE Brooks Automation Inc., (“Brooks”) the real party in interest, seeks review under 35 U.S.C. § 134(a) of a Final Rejection of claims 1-14 and 16- 26. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. References Relied on by the Examiner Blattner et al. (“Blattner”) 6,540,468 Apr. 1, 2003 Davis 6,572,320 Jun. 3, 2003 Rejections on Appeal The Examiner rejected claims 1-14 and 16-26 as unpatentable under 35 U.S.C. § 103(a) over Blattner and Davis. Brooks argues separately several different groups of claims, which shall become apparent in the analysis. The Invention Brooks’ invention is directed to an apparatus for transporting semiconductor substrates. Brooks discloses, referring to Brooks’ figure 2 reproduced below [numbers from figure 2 inserted], an end effector [64] including a fixed substrate contact surface [21], [23] and a gripper [16] having at least two contact pads [40], [42]. The at least two contact pads [40], [42] are rectilinearly translated laterally inwardly relative to the fixed substrate contact surface [21], [23] of the end effector [64] to cause alignment of the center of the substrate [S] resting on the fixed substrate contact surface [21], [23] to a predetermined location [O] on the end effector [64]. Spec. 3-14. Appeal 2009-003076 Application 10/196,679 3 Brooks’ figure 2 is below: Figure 2 depicts a semiconductor substrate transport apparatus. Claim 1, reproduced from the Claim Appendix of the Appeal Brief, reads as follows: A semiconductor substrate transport apparatus comprising: a drive section; an articulated arm connected to the drive section, the articulated arm having a semiconductor substrate transport end effector with front and back ends disposed along a longitudinal axis; and a gripper connected to the end effector for holding a semiconductor substrate on the end effector, the gripper having at least two actuated contact pads for gripping the substrate, the at least two actuated contact pads being disposed on the end effector so that when actuated the at least two contact pads are rectilinearly translated laterally inwards, relative to a fixed substrate contact surface of the end effector, to grip the substrate and causing alignment of a center of the substrate resting on the fixed substrate contact surface to a predetermined centered location on the end effector irrespective of a dimensional variance of the substrate. Appeal 2009-003076 Application 10/196,679 4 B. ISSUES 1. Has Brooks shown that the Examiner incorrectly found that the combination of Blattner and Davis describes (1) actuating at least two contact pads causing alignment of a center of the substrate resting on the fixed substrate contact surface to a predetermined centered location on the end effector; (2) at least two contact pads that are rectilinearly translated laterally inwards relative to a fixed substrate contact surface of an end effector; and (3) contact pads which are distinct from the support pads? 2. Has Brooks shown that the Examiner erred in determining that the claimed invention would have been obvious based on the Examiner’s rationale for combining Blattner and Davis? C. FINDINGS OF FACT 1. The term “lateral” is defined as: “[o]f, relating to, or situated at or on the side.” THE AM. HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2004). Blattner 2. Blattner describes, referring to Blattner’s figure 7 reproduced below [numbers from figure 7 inserted], an apparatus [1] for handling a wafer [2] which includes supporting parts [5] with supporting areas [6] comprising supporting points [9] and holding parts [7] with holding areas [8] comprising holding points [10]. Col. 4, ll. 6-19. Appeal 2009-003076 Application 10/196,679 5 Blattner’s figure 7 is below: Figure 7 depicts a wafer handling apparatus. 3. All the supporting parts [5] with supporting areas [6] and supporting points [9] are arranged immovably relative to one another. Col. 4, ll. 19-21. 4. The holding parts [7], holding areas [8] and holding points [10] can be moved away from and towards one another and also relative to the supporting parts [5], supporting areas [6] and supporting points [9]. Col. 4, ll. 22-26. 5. Blattner depicts, in figure 7, that the movements of the holding parts [7], holding areas [8] and holding points [10] can take place in the direction of the double arrows toward the sides or edges [4] of the wafer [2] and toward the sides of the supporting parts [5], supporting areas [6] and supporting points [9]. 6. To pick up a wafer, the apparatus [1] is inserted in a horizontal direction underneath the first wafer [2] to be picked up. Col. 6, l. 58- col. 7, l. 11. 7. Once the apparatus [1] is inserted and the supporting areas [6] are positioned concentrically to the wafer [2] to be picked up, the Appeal 2009-003076 Application 10/196,679 6 supporting parts [5] are raised until the wafer [2] rests on the supporting points [9]. Col. 7, ll. 12-18. 8. Once the wafer [2] is picked up, the holding parts [7] and holding areas [8] are moved relative to the wafer [2] and the supporting points [9] until it is held essentially at its edge [4]. Col. 7, ll. 19-25. Davis 9. Davis describes, referring to Davis’ figures 9 and 10 reproduced below [numbers from figures 9 and 10 inserted], a workpiece [35] and an end effector [55] with arms [62], [64] extending from a housing [60]. Col. 3, ll. 64-66. Davis’ figures 9 and 10 are below: Figures 9 and 10 depict an end effector in open and closed positions. 10. Each of the arms [62], [64] have two inserts or workpiece contacts [66] that are movable between an open position for engaging the workpiece (fig. 9) and a closed position holding the workpiece (fig. 10). Col. 3, ll. 17-20; col. 3, l. 66-col. 4, l. 2. 11. When the arms [62], [64] are in the open position, the workpiece contacts [66] are geometrically located at the corners of a rectangle Appeal 2009-003076 Application 10/196,679 7 [67] having a top [A] and bottom [B] slightly longer than the sides [C]. Col. 4, ll. 4-7. 12. When the arms [62], [64] are in the closed position, the workpiece contacts [66] are positioned at the corners of the square [65]. Col. 4, ll. 2-4. 13. The arms [62], [64] and workpiece contacts [66] are brought towards each other in a straight line and into contact with the edges [37] of the workpiece [35] simultaneously or near simultaneously. Col. 4, ll. 54- 59. D. PRINCIPLES OF LAW The Supreme Court has rejected the rigid application of the “teaching, suggestion, or motivation” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007) (TSM) test, instead favoring an “expansive and flexible approach.” Id. at 415. It is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. Id. at 418. Based on its precedent, the Court reaffirmed the principle that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416. The Court further explained that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” Id. at 417. “Common sense teaches [] that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill Appeal 2009-003076 Application 10/196,679 8 will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. E. ANALYSIS Claims 1-12 Independent claim 1 recites (disputed limitations in italics): “a gripper connected to the end effector . . . having at least two actuated contact pads for gripping the substrate, . . . when actuated the at least two contact pads are rectilinearly translated laterally inwards, relative to a fixed substrate contact surface of the end effector, to grip the substrate and causing alignment of a center of the substrate resting on the fixed substrate contact surface to a predetermined centered location on the end effector irrespective of a dimensional variance of the substrate . . . .” Claim App’x. 20. Brooks argues that the Blattner reference does not describe or suggest alignment of a center of a substrate. App. Br. 6-7. Brooks also argues that the Davis reference does not describe or suggest alignment of a center of a substrate resting on the fixed substrate contact surface to a predetermined centered location on the end effector because Davis’ workpiece is resting on something other than the end effector [55] when it is gripped by the end effector [55]. App. Br. 7-8 (emphasis in Brief). Based on its arguments directed to the Blattner and Davis references individually, Brooks concludes that the combination of Blattner and Davis does not disclose that the at least two contact pads cause alignment of a center of the substrate resting on the fixed substrate contact surface to a predetermined centered location on the end effector irrespective of the substrate dimensional variance. App. Br. 8; Reply Br. 2. Appeal 2009-003076 Application 10/196,679 9 Brooks’ arguments are misplaced. The Examiner does not rely on Blattner for describing alignment of the center of the substrate; Davis is relied upon for this description. Final Rejection 2-3; Ans. 3-4. The Examiner does not rely on Davis for describing a substrate resting on a substrate contact surface of the end effector. Instead, Blattner is relied upon for describing a substrate (i.e., wafer) resting on a substrate contact surface of the end effector. Final Rejection 3, 8; Ans. 4. Brooks’ arguments are simply irrelevant. Next, Brooks argues the references do not provide any suggestion or motivation to be combined or modified. App. Br. 8. Specifically, Brooks argues that Davis would not be a simple substitution of one known element for an element of Blattner nor would one skilled in the art merely apply the technique of Davis to Blattner because (1) Davis’ end effectors and Blattner’s end effectors work in different ways; (2) Blattner’s wafer is centered before the end effector picks up and grips the wafer; and (3) Blattner does not provide a disclosure or suggestion that centering of the wafer can be performed once the wafer is picked up or at the same time the wafer is picked up. App. Br. 8-9; Reply Br. 2-3, citing Blattner col. 7, ll. 12- 18. Brooks’ arguments are unpersuasive. In the determination of obviousness, it is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account. Moreover, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must Appeal 2009-003076 Application 10/196,679 10 be expressly suggested in any one or all of the references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. Id. A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton. KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742 (2007). Blattner describes the supporting areas [6] are positioned concentrically to the wafer [2] to be picked up. Blattner col. 7, ll. 12-18. However, Blattner’s description does not necessarily preclude otherwise centering the wafer on the supporting areas [6]. Blattner also describes that once the wafer [2] is picked up, the holding parts [7] and holding areas [8] are moved relative to the wafer [2] and the supporting points [9]. Blattner col. 7, ll. 19-25. Therefore, contrary to Brooks’s assertions, Blattner describes that the wafer [2] is enabled for centering after it is picked up and gripped by the end effector. At the time the invention was made, one of ordinary skill in the art would have appreciated that Blattner’s contact pads (i.e., holding parts [7], holding areas [8] and holding points [10]) can be utilized to center the wafer resting on the substrate contact surface (i.e., supporting parts [5], supporting areas [6] and supporting points [9]) by moving the holding parts [7] and holding areas [8] relative to the supporting points [9]. While Blattner does not expressly describe causing the alignment of the center of the substrate, e.g., wafer, Davis does teach centering a wafer or workpiece. Specifically, Davis describes an end effector [55] having a housing and two arms [62], [64], each having a contact pad (workpiece contacts [66]), that are movable between open and closed positions. Col. 3, Appeal 2009-003076 Application 10/196,679 11 ll. 17-20; col. 64-col. 4, l. 2. In the open position, the workpiece contacts [66] are geometrically located at the corners of rectangle [67] and in the closed position the contacts [66] are geometrically located at the corners of a square [65]. Col. 4, ll. 2-7, figs. 9-10. Davis’ workpiece contacts [66] are brought towards each other in a straight line and into contact with the edges [37] of the workpiece [35] simultaneously. Col. 4, ll. 54-62. In other words, Davis describes translating the workpiece contacts [66] laterally inwards relative to the end effector housing [60] and aligning the center of the workpiece [35] to a predetermined centered location on the end effector (i.e., the center of the square [65] configuration of the end effector contacts [66]). Although, Davis and Blattner operate differently, based on Davis’ teaching of aligning the center of the workpiece [35] with the center of the square [65], one with ordinary skill in the art at the time the invention would have recognized that it would have been beneficial to center a wafer relative to a location on the end effector in order to more accurately account for the position of the wafer. One with ordinary skill in the art at the time the invention was made would also have recognized that it would have been beneficial to apply Davis’ technique for aligning the center of a wafer relative to a location on an end effector to other wafer transport handling devices such as Blattner’s wafer handling device. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR at 417. Brooks does not direct us to objective evidence to demonstrate that the combination would yield unpredictable results or would be beyond the Appeal 2009-003076 Application 10/196,679 12 skill level of one with ordinary skill in the art. Argument of counsel cannot take the place of evidence lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). For all these reasons, Brooks has not shown that the Examiner erred in determining that claims 1-12 would have been obvious over Blattner and Davis. Claims 13, 14 and 16-20 Independent claim 13 recites (disputed limitations in italics): “contact pads of the gripper are actuated to move rectilinearly laterally inwards relative to the support pads . . . .” Claim App’x. 22. Claim 13 also recites (disputed limitations in italics): a gripper mounted on the end effector . . . having contacts pads, distinct from the support pads . . . .” Claim App’x. 22. Brooks presents identical arguments directed to claims 13, 14 and 16- 20 as those presented for claims 1-12. Compare App. Br. 9-13 with App. Br. 6-9. In addition to the arguments already addressed, Brooks argues that Davis does not describe contact pads that are actuated to move rectilinearly laterally inwards relative to the support pads where the contact pads are distinct from the support pads. App. Br. 10. Brooks’ arguments are again misplaced because the Examiner does not rely on Davis for describing these features. Instead, the Examiner relies on Blattner for describing at least two contact pads that are actuated rectilinearly laterally inwards relative to support pads. Final Rejection 5; Ans. 7. Brooks further argues that neither Blattner nor the combination of Blattner and Davis describe the contact pads as moving rectilinearly laterally inward. App. Br. 10. Brooks argues that Blattner instead describes that the Appeal 2009-003076 Application 10/196,679 13 holding parts [7] and head [13] move in a longitudinal direction only. App. Br. 10, citing Blattner’s figs. 1-7. We understand Brooks to mean that the longitudinal direction corresponds to the longitudinally elongated substrate support section having support pads. We further understand Brooks’ argument that the contact pads are moved laterally inward relative to the support pads to mean that the contact pads are moved inward in a direction perpendicular to the axial length of the longitudinally elongated substrate support. However, the claims are not so limited since the lateral and longitudinal directions are not specified in the claim language. Consistent with the dictionary definition of lateral, one with ordinary skill in the art would understand the ordinary meaning of “lateral” as “[o]f, relating to, or situated at or on the side.” THE AM. HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2004). Blattner describes that the at least two contact pads (i.e., the holding parts [7], holding areas [8] and holding points [10]) move inward towards the sides or edges [4] of the fixed substrate contact surface (i.e., supporting parts [5], supporting areas [6] and supporting points [9]). Col. 4, ll. 19-26; col. 7, ll. 19-25; fig 7. Therefore, Blattner describes two actuating contact pads [7], [8] [10] that are rectilinearly translated laterally inward relative to the fixed substrate contact surface [5], [6], [9]. For all these reasons, in addition to those discussed above regarding claims 1-12, Brooks has not shown that the Examiner erred in determining that claims 13, 14 and 16-20 would have been obvious over Blattner and Davis. Appeal 2009-003076 Application 10/196,679 14 Claims 21-26 Independent claim 21 recites similar limitations to the disputed limitations of claim 1. Compare Claim App’x. 23-24 with Claim App’x. 20. Brooks presents identical arguments directed to claims 21-23 as those presented for claims 1-12. Compare App. Br. 13-15 with App. Br. 6-9. Independent claim 24 recites similar limitations to the disputed limitations of claims 1 and 13. Compare Claim App’x. 24-25 with Claim App’x. 20 and Claim App’x 22-23. Brooks presents identical arguments directed to claims 24-26 as those directed to claims 1-14 and 16-20. Compare App. Br. 15-18 with App. Br. 6-13. For the same reasons as those discussed before regarding claims 1-14 and 16-20, Brooks has not shown that the Examiner erred in determining that claims 21-26 would have been obvious over Blattner and Davis. F. CONCLUSION 1. Brooks has not shown that the Examiner incorrectly found that the combination of Blattner and Davis describes (1) actuating at least two contact pads causing alignment of a center of the substrate resting on the fixed substrate contact surface to a predetermined centered location on the end effector; (2) at least two contact pads that are rectilinearly translated laterally inwards relative to a fixed substrate contact surface of an end effector; and (3) contact pads which are distinct from the support pads. 2. Brooks has not shown that the Examiner erred in determining that the claimed invention would have been obvious based on the Examiner’s rationale for combining Blattner and Davis. Appeal 2009-003076 Application 10/196,679 15 G. ORDER The decision of the Examiner rejecting claims 1-14 and 16-26 as unpatentable under 35 U.S.C. § 103(a) over Blattner and Davis is affirmed. No time period for taking any subsequent action in connection with the appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED MAT Perman & Green 425 Post Road Fairfield, CT 06824 Appeal 2009-003076 Application 10/196,679 16 Attachment 1 Application/Control No. 10/196,679 Applicant(s)/Patent Under Reexamination of a Patent Appeal No. 2009-003076 Notice of References Cited Examiner Scott Lowe Art Unit 3652 Page 1 of 1 U.S. PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Name Classification A US- B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Country Name Classification N O P Q R S T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) U “lateral” THE AM. HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2004). V W X *A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.