Ex Parte KimuraDownload PDFPatent Trial and Appeal BoardJan 25, 201812805253 (P.T.A.B. Jan. 25, 2018) Copy Citation 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. 12/805,253 07/21/2010 Toshiyuki Kimura 880503-0009-US00 3637 134795 7590 01/29/2018 MICHAEL BEST & FRIEDRICH LLP (DC) 100 E WISCONSIN AVENUE Suite 3300 MILWAUKEE, WI 53202 EXAMINER OSWALD, KIRSTIN U ART UNIT PAPER NUMBER 3744 NOTIFICATION DATE DELIVERY MODE 01/29/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): DCipdocket @ michaelbest. com sbj ames @michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOSHIYUKI KIMURA Appeal 2017-001293 Application 12/805,2531 Technology Center 3700 Before EDWARD A. BROWN, FREDERICK C. LANEY, and ARTHUR M. PESLAK, Administrative Patent Judges. LANEY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Toshiyuki Kimura (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision (entered Nov. 4, 2015, hereinafter “Final Act.”) rejecting claims 12—17.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellant, Sumitomo Heavy Industries, Ltd. is the real party in interest. Appeal Br. 3 (filed Mar. 21, 2016). 2 Claims 1—11 have been canceled. Appeal Br. 3. Appeal 2017-001293 Application 12/805,253 INVENTION Appellant’s invention “relates to a cryopump and a method of monitoring the cryopump.” Spec. 11. Claim 12, reproduced below, is independent and representative of the claimed invention. 12. A cryopump for pumping gas from a vacuum chamber in a vacuum apparatus performing vacuum processing, the cryopump comprising: a refrigerator comprising a first stage configured to be cooled to a first temperature and a second stage configured to be cooled to a second temperature lower than the first temperature; a first cryopanel cooled by the first stage of the refrigerator; a second cryopanel cooled by the second stage of the refrigerator; and a controller configured to control a heat cycle frequency of the refrigerator to cool the first cryopanel and the second cryopanel to the first temperature and the second temperature, respectively, and, thereafter, maintaining the first temperature substantially at a target temperature during a normal pumping operation mode of the refrigerator, and monitoring the heat cycle frequency of the refrigerator during the normal pumping operation mode, the target temperature being a selected, fixed temperature setting of the first cryopanel of the cryopump at which the first cryopanel is cryogenically cooled by the refrigerator and, in the normal pumping operation mode, the controller controls the refrigerator to cool the first cryopanel such that the temperature of the first cryopanel is maintained at the target temperature; wherein, if the controller determines that the heat cycle frequency of the refrigerator exceeds a first determination heat cycle frequency reference parameter being a preset, threshold heat cycle frequency value of the heat cycle frequency used by the controller to control the refrigerator, then the controller determines a first amount of elapsed time from when the heat cycle frequency of the refrigerator exceeds the first 2 Appeal 2017-001293 Application 12/805,253 determination heat cycle frequency reference parameter and, thereafter, the controller determines whether the first amount of elapsed time exceeds a first determination period of time, the first determination period of time being a preset period of time used by the controller to control the refrigerator, wherein, if the controller determines that the heat cycle frequency of the refrigerator exceeds a second determination heat cycle frequency reference parameter that is greater than the first determination heat cycle frequency reference parameter, then the controller monitors the first temperature of the first cryopanel and determines a second amount of elapsed time from when the heat cycle frequency of the refrigerator exceeds the second determination heat cycle frequency reference parameter and, thereafter, the controller determines whether the second amount of elapsed time exceeds a second determination period of time, which is shorter than the first determination period of time, wherein the first determination heat cycle frequency reference parameter is greater than a maximum heat cycle frequency parameter being a maximum value during the normal pumping operation mode occurring in the vacuum processing. Appeal Br. 17—18 (Claims App. (emphasis added)). REJECTIONS The following rejections are before us for review: I. The Examiner rejected claims 12—17 under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. II. The Examiner rejected claims 12—17 under 35 U.S.C. § 103(a) as being unpatentable over Noji (US 5,582,017, iss. Dec. 10, 1996) and Chiu (US 4,604,871, iss. Aug. 12, 1986). 3 Appeal 2017-001293 Application 12/805,253 ANALYSIS Rejection I The Examiner determines the phrase “a normal pumping operation” is indefinite because, “[t]he claim fails to define what a normal pumping operation is.” Final Act. 2. To establish a prima facie case of indefmiteness, however, the Examiner must first explain adequately why the metes and bounds of a pending claim are not clear, thereby providing an applicant proper notice and the ability to respond. See In re Packard, 751 F.3d 1307, 1312 (Fed. Cir. 2014); see also MPEP § 2173.02(III)(B) (9th ed., Rev. 07.2105, Nov. 2015) (“The Office action must set forth the specific term or phrase that is indefinite and why the metes and bounds are unclear. Since a rejection requires the applicant to respond by explaining why claim language would be recognized by a person of ordinary skill in the art as definite or by amending the claim, the Office action should provide enough information for the applicant to prepare a meaningful response.”). Here however, the Examiner merely notes that an express definition of the disputed phrase is not provided. Final Act. 2; Ans. 13. Nevertheless, an express definition of “a normal pumping operation” is not required when its meaning would be understood by skilled artisans in view of the claims and Specification. We note “[pjrior art references may be ‘indicative of what all those skilled in the art generally believe a certain term means . . . [and] can often help to demonstrate how a disputed term is used by those skilled in the art.’” In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999). Noji and Chiu, in this case, indicate a skilled artisan readily understood and characterized typical operations as “normal.” See e.g., Noji col. 9,11. 31—34; col. 11,11. 17-24; col. 12,11. 4-7; Chiu col. 1,11. 40N8; col. 3,11. 23-29; 4 Appeal 2017-001293 Application 12/805,253 col. 6,11. 12—14; col. 7,11. 43—45; col. 21,11. 49—50. The Examiner has failed to articulate sufficiently why the phrase “a normal pumping operation” in the context of the claims, or the Specification, would be unclear to a skilled artisan, nor are any ambiguities readily apparent (see e.g., Spec, 21, 63, 69, 76, 104). Absent such a showing, the Examiner has not made a prima facie case of indefmiteness. Therefore, we do not sustain the Examiner’s indefmiteness rejection of claims 12—17. Rejection II The Examiner finds Noji discloses each of the limitations of independent claim 12, except Noji fails to teach the first determination period of time being a preset period of time used by the controller to control the refrigerator, then the controller monitors the first temperature of the first cryopanel and determines a second amount of elapsed time, from when the heat cycle frequency of the refrigerator exceeds the second determination heat cycle frequency reference parameter and, thereafter, the controller determines whether the second amount of elapsed time exceeds a second determination period of time, which is shorter than the first determination period of time. Final Act. 3—6 (citing Noji col. 3,11. 40-46, col. 8,11. 36—39, 66—67, col. 9, 11. 1-2, 15-20, col. 10,11. 31-35, col. 11,11. 10-24, col. 14,11. 52-65, col. 15,11. 9-15, col. 17,11. 58-67, col. 18,11. 1-8, col. 19,11. 15-20, Figs. 1, 2, 3A, 3B, 4—6, 9). Turning to Chiu, the Examiner finds it discloses these missing limitations and determines a skilled artisan would have known to combine the teachings of Noji and Chiu in the manner claimed to “provide the benefit of monitoring the cry[o]panels to see if regeneration is necessary or if there is a malfunction.” Id. at 6—7 (citing col. 18,11. 46—63, Fig. 12). 5 Appeal 2017-001293 Application 12/805,253 Appellant challenges this obviousness determination and asserts the Examiner misapprehends the teachings of the Chiu disclosure. Specifically, Appellant argues that the evidence the Examiner cites from Chiu “reveal[s] that no relationship exists . . . between a second amount of elapsed time and a heat cycle frequency of a refrigerator.” Appeal Br. 12. This argument is persuasive. Figure 12 of Chiu, and the associated description at column 18, lines 46—63, fail to disclose any persuasive evidence of a determination of a second amount of elapsed time, from when the heat cycle frequency of the refrigerator exceeds the second determination heat cycle frequency reference parameter. The Examiner identifies element 324 as showing a controller determining a second amount of elapsed time and element 314 as showing this time is from when the heat cycle frequency of the refrigerator exceeds the second determination heat cycle frequency reference parameter. Final Act. 6; Ans. 15. Chiu, however, describes element 314 as an “Inquiry” that “determines whether the 55° flag is set signifying a Frozen Food temperature greater than the 55° F. reference temperature” and element 324 as an “Inquiry” that “determines if the 35° flag has been set for greater than six continuous hours.” Chiu col. 19,11. 2—4, 16—17. While this disclosure describes a controller that makes an association between temperature and time, the Examiner offers no support from Chiu that evidences a skilled artisan knew to configure a controller to determine a second amount of elapsed time associated with the heat cycle frequency. In fact, Chiu does not suggest making any determinations related to the heat cycle frequency. Therefore, a preponderance of the evidence does not support the finding that Chui discloses a controller determining a second 6 Appeal 2017-001293 Application 12/805,253 amount of elapsed time, from when the heat cycle frequency of the refrigerator exceeds the second determination heat cycle frequency reference parameter. In the Answer, the Examiner attacks Appellant’s argument that “the flowchart of Chiu does not reveal a relationship between a second amount of elapsed time and a heat cycle of a refrigerator” as improperly “attempting to bodily incorporate the references.” Ans. 16. We disagree. The Examiner finds specifically that Chiu reveals the limitation found to be missing from Noji. Final Act. 6. In the Examiner own words, “Chiu was relied upon to teach . . . the controller monitors a first temperature (35°F) and determines a second amount of elapsed time (324), from when a heat cycle frequency of the refrigerator exceeds a second determination heat cycle frequency reference parameter (step 314).” Id. (emphasis added); Ans. 15. Rather than making a bodily incorporation argument, Appellant challenges whether Chiu supports what the Examiner relied on it to teach. Although the Examiner alleges that Appellant did not dispute this factual finding (see Ans. 16), the record before us, including the Examiner’s characterization of Appellant’s argument, contradicts this assertion. Further clarifying the rejection, the Examiner states, “Noji does teach the heat cycle frequency of the refrigerator . . . and Chiu teaches a second amount of elapsed time (324), and a heat cycle of a refrigerator.” Ans. 16. The Examiner asserts, Appellants do not dispute these facts taught by Noji or the technical underpinnings of the rejection. Nor do they argue that prior art fails to suggest the combination of Noji in view of Chiu as cited and explained by the Office. Rather, Appellants merely argue that “Chiu and other disclosures throughout the reference 7 Appeal 2017-001293 Application 12/805,253 reveal that no relationship exists between a second amount of time of elapsed time and a heat cycle frequency of a refrigerator.” Id. at 16—17. The argument the Examiner references, however, appears to us as a direct challenge to the underpinning of the rejection because the Examiner only relies on Chui to evidence prior knowledge of configuring a controller to determine a second amount of elapsed time, from when a heat cycle frequency of the refrigerator exceeds a second determination heat cycle frequency reference parameter. The Examiner’s rejection notably does not identify any combination o/Noji and Chui teachings that, when viewed as a whole by a skilled artisan, shows knowledge of the limitation that Noji alone fails to disclose; instead, it cites Chui alone as showing the missing limitation. Final Act. 6; Ans. 15. Still further, to the extent the Examiner’s clarification is intended to represent that the rejection only relies on Noji to disclose the heat cycle frequency of the refrigerator, and not Chui, the Examiner’s rationale for the combination is flawed. As the rationale for combining Noji and Chui, the Examiner finds a skilled artisan knew to modify the Noji controller in the manner claimed to “provide the benefit of monitoring the cry[o]panels to see if regeneration is necessary or if there is a malfunction.” Final Act. 7. The Examiner, however, provides no evidence a skilled artisan knew a cryopump controller that determines a second amount of elapsed time, from when the heat cycle frequency of the refrigerator exceeds the second determination heat cycle frequency reference parameter, would improve the evaluation of whether regeneration is necessary or if there is a malfunction. If, as the Examiner’s clarification suggests, Chui is unrelated to what a skilled artisan knew about the use of heat cycle frequencies in cryopumps, then it cannot provide a foundation for this reasoning. Further, the Examiner does not 8 Appeal 2017-001293 Application 12/805,253 explain how Noji teaches the alleged benefit would have been known, despite the fact it fails to disclose a controller that determines the second elapsed time of the heat cycle frequency as claim 12 recites. As a result, the Examiner has offered a rationale that lacks a rational underpinning in the record before us. Therefore, for the foregoing reasons, we do not sustain the Examiner’s rejection of claim 12, or claims 13—17 depending therefrom. DECISION The Examiner’s rejections of claims 12—17 are reversed. REVERSED 9 Copy with citationCopy as parenthetical citation