Ex Parte Kroeker

Board of Patent Appeals and Interferences

Jul 22, 2003

09161970 (B.P.A.I. Jul. 22, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TONY KROEKER
____________
Appeal No. 2003-0745
Application No. 09/161,970
____________
ON BRIEF
____________
Before COHEN, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 to 4, 6
to 11, 16 to 18, 47, 49 and 51 to 53, which are all of the claims pending in this
application.
We REVERSE.
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Application No. 09/161,970
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BACKGROUND
The appellant's invention relates to a single or multi-wafer load lock attached
directly to a process chamber in a vacuum processing system (specification, p. 1). A
copy of the claims under appeal is set forth in the appendix to the appellant's brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Ohtani et al. (Ohtani) 4,923,054 May 8, 1990
Maydan et al. (Maydan) 5,292,393 Mar. 8, 1994
Brancher 5,330,301 July 19, 1994
Asakawa et al. (Asakawa) 5,934,856 Aug. 10, 1999
Claims 1 to 4, 6 to 11, 16 to 18, 47, 49 and 51 to 53 stand rejected 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 appellant regards as the invention.
Claims 1, 4, 6 to 11, 47, 51 and 53 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Maydan in view of Asakawa and Brancher.
Claims 2, 3, 19 and 52 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Maydan in view of Asakawa, Brancher and Ohtani.
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Application No. 09/161,970
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Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the final
rejection (Paper No. 20, mailed May 17, 2002) and the answer (Paper No. 26, mailed
December 2, 2002) for the examiner's complete reasoning in support of the rejections,
and to the brief (Paper No. 25, filed November 4, 2002) for the appellant's arguments
thereagainst.
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 references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
The indefiniteness rejection
We will not sustain the rejection of claims 1 to 4, 6 to 11, 16 to 18, 47, 49 and 51
to 53 under 35 U.S.C. § 112, second paragraph.
The second paragraph of 35 U.S.C. § 112 requires claims to set out and
circumscribe a particular area with a reasonable degree of precision and particularity.
In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In making this
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Application No. 09/161,970
Page 4
determination, the definiteness of the language employed in the claims must be
analyzed, not in a vacuum, but always in light of the teachings of the prior art and of the
particular application disclosure as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art. Id.
The examiner's focus during examination of claims for compliance with the
requirement for definiteness of 35 U.S.C. § 112, second paragraph, is whether the
claims meet the threshold requirements of clarity and precision, not whether more
suitable language or modes of expression are available. Some latitude in the manner
of expression and the aptness of terms is permitted even though the claim language is
not as precise as the examiner might desire. If the scope of the invention sought to be
patented can be determined from the language of the claims with a reasonable degree
of certainty, a rejection of the claims under 35 U.S.C. § 112, second paragraph, is
inappropriate.
With this as background, we find ourselves in agreement with the appellant
(brief, pp. 4-8) that the claims on appeal comply with 35 U.S.C. § 112, second
paragraph. We have analyzed the specific rationales (answer, pp. 3-4) raised by the
examiner for the rejection under 35 U.S.C. § 112, second paragraph, and fail to see
how the metes and bounds of the claims on appeal would not be understood with a
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Application No. 09/161,970
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reasonable degree of precision and particularity. See In re Venezia, 530 F.2d 956, 958,
189 USPQ 149, 151 (CCPA 1976). In our view, the specific rationales raised by the
examiner go to the breadth of the claims and breadth of a claim is not to be equated
with indefiniteness. See In re Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA
1971).
For the reasons set forth above, the decision of the examiner to reject claims 1
to 4, 6 to 11, 16 to 18, 47, 49 and 51 to 53 under 35 U.S.C. § 112, second paragraph, is
reversed.
The obviousness rejections
We will not sustain the rejection of claims 1 to 4, 6 to 11, 47, 49 and 51 to 53
under 35 U.S.C. § 103.
In the two rejections under 35 U.S.C. § 103 before us in this appeal (answer, pp.
4-5), the examiner (1) ascertained that Maydan does not disclose an atmospheric robot
disposed in his mini-environment (i.e., external cassette elevator 24); and
(2) determined that it would have been obvious to have included an atmospheric robot
disposed in Maydan's mini-environment "to facilitate pod movement" as suggested and
taught by Asakawa.
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1 The use of hindsight knowledge derived from the appellant's own disclosure to support an
obviousness rejection under 35 U.S.C. § 103 is, of course, impermissible. See, for example, W. L. Gore
and Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
The appellant's argue (brief, pp. 8-11) that the applied prior art does not teach or
suggest a semiconductor processing system comprising (1) a mini-environment defined
by a wall and having an atmospheric robot disposed therein; (2) a load lock chamber
connected to the mini-environment having a transfer robot disposed therein; and (3) a
process chamber connected to the load lock chamber as recited in the claims under
appeal. We agree. In our view, absent the use of impermissible hindsight,1 there is no
teaching, suggestion or motivation in the applied prior art for a person of ordinary skill in
the art at the time the invention was made to have modified Maydan's system to arrive
at the claimed invention. Specifically, it is our view that an artisan would not have found
it obvious to have modified Maydan's system to include an atmospheric robot disposed
in Maydan's mini-environment (i.e., external cassette elevator 24) from the teachings of
Asakawa. In that regard, the systems of Maydan and Asakawa are sufficiently
disparate in our opinion that one skilled in the art would not have modified Maydan's
external cassette elevator 24 to have included a robot.
For the reasons set forth above, the decision of the examiner to reject claims 1
to 4, 6 to 11, 47, 49 and 51 to 53 under 35 U.S.C. § 103 is reversed.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 1 to 4, 6 to 11, 16 to
18, 47, 49 and 51 to 53 under 35 U.S.C. § 112, second paragraph, is reversed and the
decision of the examiner to reject claims 1 to 4, 6 to 11, 47, 49 and 51 to 53 under
35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2003-0745
Application No. 09/161,970
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