09893522 (B.P.A.I. Jul. 11, 2011)

Ex Parte Hoshi et al

Board of Patent Appeals and InterferencesJul 11, 2011

09893522 (B.P.A.I. Jul. 11, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 09/893,522 06/29/2001 George Hoshi 010846 2987 23850 7590 07/12/2011 KRATZ, QUINTOS & HANSON, LLP 1420 K Street, N.W. 4th Floor WASHINGTON, DC 20005 EXAMINER FOX, JOHN C ART UNIT PAPER NUMBER 3753 MAIL DATE DELIVERY MODE 07/12/2011 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte GEORGE HOSHI, TSUNEYUKI OKABE, KENICHI GOSHIMA, HIDEO KOBAYASHI, AKINORI NAGAYA, MICHIO YAMAJI, KAZUHIRO YOSHIKAWA, and YUJI KAWANO ____________ Appeal 2009-012022 Application 09/893,522 Technology Center 3700 ____________ Before JOHN C. KERINS, MICHAEL W. O’NEILL, and FRED A. SILVERBERG, Administrative Patent Judges. O’NEILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE George Hoshi et al. (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1 and 35/1 under 35 U.S.C. § 102(b) as being anticipated by Johnson (US 6,076,543, issued Jun. 20, 2000), claims 1-4, 35/2, 35/3, 35/4, 37-42, and 44-48 under 35 U.S.C. § 103(a) as being unpatentable over Johnson and Itoh (US 6,152,175, issued Appeal 2009-012022 Application 09/893,522 2 Nov. 28, 2000), and claims 36 and 43 as being unpatentable over Johnson, Itoh, and Markulec (US 6,231,260 B1, issued May 15, 2001). Appellant’s counsel presented oral argument on June 14, 2011. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Invention The claims on appeal relate to a fluid control device for use in a semiconductor manufacturing apparatus. Claim 1, reproduced below, is illustrative of the subject matter on appeal. A fluid control device wherein a plurality of lines each comprise a plurality of fluid controllers arranged at an upper level and a plurality of coupling members arranged at a lower level, the plurality of lines being arranged in parallel on a base member and having inlets directed in the same direction, with outlets thereof facing toward the same direction, the fluid control device being characterized in that the base member has at least one orthogonal rail extending in a direction orthogonal to the line and each line is mounted on a respective line supporting rail of a plurality of line supporting rails, each line supporting rail being slidably mounted on the at least one orthogonal rail relative to other of said line supporting rails, each line supporting rail, when slidably mounted, being slidable in a direction orthogonal to the line along the at least one orthogonal rail, the plurality of coupling members being slidably mounted on the line supporting rail in a manner in which each line supporting rail is Appeal 2009-012022 Application 09/893,522 3 slidably mounted on the at least one orthogonal rail. The Rejections The Examiner finds that Johnson, in an unillustrated embodiment, discloses that a set of gas sticks are adjustably mounted on a pair of rails that are coupled between adjacent stanchions. Given this disclosure, the Examiner asserts that the claimed limitations of at least each line supporting rail being slidably mounted on the at least one orthogonal rail relative to the other of said line supporting rails and each line supporting rail, when slidably mounted, being slidable in a direction orthogonal to the line along the at least one orthogonal rail as called for in claims 1-4 and 35 is satisfied by the Johnson disclosure. (Ans. 4-5). Contentions Appellants contend that the aforementioned claim limitations are neither explicitly nor inherently encompassed by Johnson’s unillustrated embodiment. See App. Br. 13-16. OPINION Issue The determinative issue in this appeal is: Whether claimed limitations of at least each line supporting rail being slidably mounted on the at least one orthogonal rail relative to other of said line supporting rails each line supporting rail, when slidably mounted, being slidable in a direction orthogonal to the line along the at least one orthogonal Appeal 2009-012022 Application 09/893,522 4 rail as called for in claims 1-4 and 35 encompass Johnson’s unillustrated embodiment. Pertinent Facts Johnson discloses that if the inventive gas handling devices 40 were to be used with inert or non-hazardous gas, the gas handling devices would not need to be housed in an externally vented enclosure as depicted in figures 10 and 11. Instead, the gas handling devices would be adjustably mounted on a pair of rails or supports that are coupled between adjacent stanchions 116. Each rail or support would extend transversely to the longitudinal axis of each track 42 within each gas handling device 40. Each rail or support includes a mount or bolt which extends from the rail or support for insertion through slots 71 located at the distal end of the each track 42. Col. 12, lines 18-28 and Figure 3. Principles of Law To establish anticipation, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Analysis Anticipation based on Johnson Johnson does disclose, without providing any illustration, at least one rail that is orthogonal to the line supporting rails as set forth in the claims. However, Johnson does not disclose by a preponderance of the evidence that the unillustrated rail permits a line supporting rail to be slidably mounted, relative to other line supporting rails, in a direction orthogonal to the unillustrated rail. The Examiner’s explanation in the Answer fails to address Appeal 2009-012022 Application 09/893,522 5 how a gas handling device disclosed in Johnson would be slidably mounted on the unillustrated rail via a mount or bolt relative to any other gas handling device as required in order to satisfy the claimed limitations of at least each line supporting rail being slidably mounted on the at least one orthogonal rail relative to other of said line supporting rails and each line supporting rail, when slidably mounted, being slidable in a direction orthogonal to the line along the at least one orthogonal rail. While Johnson does disclose that the gas handling device is adjustably mounted, the Examiner does not explain how “adjustably” encompasses “slidably.” As such, every element and limitation, as arranged in the claimed manner, is not found within Johnson. Based on the foregoing, we are constrained not to sustain the Examiner’s anticipation rejection. Obviousness based on Johnson, Itoh, and Markulec Since the Examiner does not use Itoh and Markulec to remedy the deficiency argued by Appellants, we are likewise constrained to reverse the obviousness rejections as articulated by the Examiner within the Answer. CONCLUSION The claimed limitations of at least each line supporting rail being slidably mounted on the at least one orthogonal rail relative to other of said line supporting rails, each line supporting rail, when slidably mounted, being slidable in a direction orthogonal to the line along the at least one orthogonal rail as called for in claims 1-4 and 35 do not encompass Johnson’s unillustrated embodiment. Appeal 2009-012022 Application 09/893,522 6 DECISION The Examiner’s decision to reject claims 1 and 35/1 under 35 U.S.C. § 102(b) as being anticipated by Johnson, claims 1-4, 35/2, 35/3, 35/4, 37- 42, and 44-48 under 35 U.S.C. § 103(a) as being unpatentable over Johnson and Itoh, and claims 36 and 43 as being unpatentable over Johnson, Itoh, and Markulec is reversed. REVERSED Klh