Ex Parte LACH et al

Patent Trial and Appeal Board

Dec 29, 2017

13150817 (P.T.A.B. Dec. 29, 2017)

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.
13/150,817 06/01/2011 Otto LACH 4303-1051 3719
91286 7590
Harness, Dickey & Pierce, P.L.C. (Lam)
P.O. Box 828
Bloomfield Hills, MI 48303
EXAMINER
OSTERHOUT, BENJAMIN LEE
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
01/03/2018 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):
s stevens @ hdp .com
troymailroom @hdp. com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OTTO LACH, ULRICH TSCHINDERLE, and MARKUS JUNK
Appeal 2016-005842
Application 13/150,817
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS,
Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 request our review under 35 U.S.C. § 134 of the
Examiner’s final decision rejecting claims 1-15 under 35 U.S.C. § 103(a)
over at least the basic combination of Obweger (WO 2010/113089 A2,
published Oct. 7, 2010) in view of Sumnitsch (US 5,845,662, issued Dec. 8,
1998).2
'The Real Party in Interest is identified as LAM Research AG (App. Br. 1).
2 The Examiner applies additional prior art to various dependent claims (see,
Final Action 11-17; Ans. 10-17).
Appeal 2016-005842
Application 13/150,817
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Independent claim 1 is illustrative (emphasis added):
1. Device for liquid treatment of a wafer-shaped articles, comprising
a closed process chamber, a ring chuck located within said closed process
chamber, said ring chuck being adapted to be driven without physical
contact through a magnetic bearing, a magnetic stator surrounding said
closed process chamber, said closed process chamber comprising a
cylindrical wall positioned between the ring chuck and the magnetic stator
during liquid treatment of a wafershaped article, and the ring chuck has a
form for preventing upward ingress of processing liquid into a gap defined
between said ring chuck and said cylindrical wall, said form being
configured to disrupt a flow of processing liquid that is expelled radially
outwardly off of the wafer-shaped article by promoting formation of droplets
and thereby disrupting any laminar flow.
ANALYSIS
We have reviewed each of Appellants’ arguments for patentability.
However, we determine that a preponderance of the evidence supports the
Examiner’s finding that the claimed subject matter is unpatentable within the
meaning of § 103 in view of the applied prior art. Accordingly, we will
sustain the Examiner’s § 103 rejections, for essentially those reasons
expressed in the Answer, including the Examiner’s Response to Argument
section, and we add the following primarily for emphasis.
Appellants’ arguments focus on whether the claim limitation
regarding the ring chuck having a form “configured to disrupt” a flow of
liquid “by promoting formation of droplets and thereby disrupting any
laminar flow” encompasses Sumnitsch structure that has a “complete
physical barrier” to prevent ingress of any unwanted process liquid (App. Br.
3, also Appeal Br. 4, 5; Reply Br. 2). Specifically, Appellants’ de facto
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Application 13/150,817
argue that Sumnitsch’s barrier 20 is not capable of forming droplets (Appeal
Br. 5). Appellants further argue that the Examiner’s position is an improper
shifting of the “respective burdens” of the Office and Appellants during
prosecution {id.).
Notably, Appellants’ admit the toroidal lining 20 of the ring chuck of
Sumnitsch does prevent upward ingress of liquid (e.g, Appeal Br. 3). As
pointed out by the Examiner, the claim language of independent claim 1
encompasses, and does not distinguish over, the ring chuck having a form
that includes a physical barrier as in Sumnitsch {see generally Ans.). The
Examiner’s determination that this barrier appears to be capable of the
disputed function, i.e., to “disrupt a flow” of liquid “by promoting formation
of droplets and thereby disrupting any laminar flow” (e.g., Ans. 19) is
reasonable.
Moreover, it is well established that when there is a reason to find that
the structure of the prior art is capable of performing the claimed function,
the burden shifts to the applicant to show that the claimed function
patentably distinguishes the claimed structure from the prior art structure.
See, e.g.. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Notably, as
pointed out by the Examiner, it is not unreasonable to find that liquid would
form droplets when prevented from entering the gap by the barrier 20 of the
Obweger/Sunitsch combination (Ans. 19). Furthermore, contrary to
Appellants’ arguments, the claims do not require that the device experiences
laminar flow or forms droplets; the language merely requires that the ring
chuck has a form capable of “promoting formation of droplets” and
disrupting “any laminar flow.” The plain meaning of this language is that
formation of droplets is encouraged; actual formation of droplets is not
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Application 13/150,817
required, and laminar flow is not mandated; if there is “any” laminar flow, it
will be disrupted.
Appellants have not provided any persuasive reasoning or credible
evidence to refute the Examiner’s determination that toroidal lining 20 of
Sumnitsch as denominated by the Examiner would have been capable of
“promoting formation” of droplets thus disrupting “any laminar flow”
as recited in claim 1 (see e.g., Ans. 5 (Examiner explains the
Obweger/Sumnitsch combination would have been “capable of performing
the intended use.”). Attorney’s arguments in a brief cannot take the place of
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appellants
have not directed our attention to any special definition of the disputed
phrases/language of claim 1 in the Specification, or to any persuasive
reasoning or credible evidence to establish that the Examiner’s interpretation
of the language in independent claim 1 is unreasonable. In re ICON Health
& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (if the specification
does not provide a definition for claim terms, the broadest reasonable
interpretation consistent with the specification is applied; as claims may be
amended to narrow their scope, “a broad construction during prosecution
creates no unfairness to the applicant or patentee.”).
With respect to dependent claims 7 and 8, Appellants have not
directed our attention to any special definition of the disputed
phrases/language of these claims in the Specification, or to any persuasive
reasoning or credible evidence to establish that the Examiner’s interpretation
of the language is unreasonable (Appeal Br. 4, 5; Reply Br. 2; Ans. 19, 20).
Appellants have shown error in the Examiner’s determination that a radially
outer region as recited in claim 7 may encompass the outer region near either
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Application 13/150,817
radial edge (Ans. 19), and that the annular concave fluid trap of claim 8 may
encompass the unnumbered concave surface of Sumnitsch (Ans. 20).
To the extent the various additional rejections of the dependent claims
2-6 are argued separately, Appellants arguments do not point out reversible
error in the Examiner’s rejections (Appeal Br. 6-8; Reply Br. 3, 4; e.g., Ans.
20-22). A preponderance of the evidence supports the Examiner’s
obviousness determinations.
For emphasis only, with respect to claim 14, Appellants’ conclusory
argument that the Examiner has not explained any apparent reason to use a
magnetic couple as taught in Garret in Obweger’s system is not sufficient to
overcome the Examiner’s reasonable position that one of ordinary skill,
using no more than ordinary creativity, would have used a known alternative
magnetic mechanism as exemplified in Garrett for the movement of the
wafer transport system stator/base plate (e.g., Appeal Br. 9; Reply Br. 4;
Ans. 16, 17, 22). In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of [those] references would have
suggested to those of ordinary skill in the art.”); In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) (“Combining the teachings of references does not involve
an ability to combine their specific structures.”).
Accordingly, the Examiner’s § 103 rejections are affirmed with
respect to all of the claims on appeal.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
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ORDER
AFFIRMED
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