Ex Parte MAHADESWARASWAMY et alDownload PDFPatent Trials and Appeals BoardMay 22, 201913756176 - (D) (P.T.A.B. May. 22, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/756,176 01/31/2013 Chetan MAHADESW ARASW AMY 25220 7590 05/24/2019 Roeder & Broder LLP 13400 Sabre Springs Pkwy. Suite 155 San Diego, CA 92128 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 ATTORNEY DOCKET NO. CONFIRMATION NO. PA1327/l 1269.223 7028 EXAMINER MATES, ROBERT E ART UNIT PAPER NUMBER 2834 NOTIFICATION DATE DELIVERY MODE 05/24/2019 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): sroeder@rbiplaw.com assistant@rbiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRAIL AND APPEAL BOARD Ex parte CRETAN MAHADESWARASWAMY, MICHEL PHARAND, and MICHAEL B. BINNARD Appeal2018-005580 Application 13/756,176 1 Technology Center 2800 Before JEFFREY T. SMITH, DONNA M. PRAISS, and JANEE. INGLESE, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL 1 NIKON CORPORATION is the Appellant and the real party in interest. Appeal2018-005580 Application 13/756, 176 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134(a) from a final rejection of claims 22 and 33-38. We have jurisdiction under 35 U.S.C. § 6(b). Appellant's invention is generally directed to a stage assembly that moves a device in a planned movement (Spec. ,r,r 40, 42; Figure 1 ). Representative claim 22 is reproduced from the Claims Appendix to the Appeal Brief, as follows: 22. A stage assembly that moves a device in a planned movement, the stage assembly comprising: a stage that retains the device; a base assembly; a planar mover that moves the stage, the planar mover including a magnet array that is secured to one of the stage and the base assembly, and a conductor array that is secured to the other of the stage and the base assembly, the conductor array including (i) an outer surface that faces the magnet array; (ii) a surface heat exchanger; and (iii) a plurality of conductor units that are arranged in a two dimensional array, the plurality of conductor units including at least a first conductor unit, a second conductor unit and a third conductor unit, wherein current directed to one or more of the conductor units generates a force on the stage; and a temperature controller including (i) a first temperature system that independently directs a first circulation fluid to the first conductor unit through a first fixed orifice at a first flow rate, the first fixed orifice having a first orifice size, to the second conductor unit through a second fixed orifice at a second flow rate, the second fixed orifice having a second orifice size that is different than the first orifice size, and to the third conductor unit through a third fixed orifice at a third flow rate, the third fixed orifice having a third orifice size that is different than the first 2 Appeal2018-005580 Application 13/756, 176 orifice size and the second orifice size, to independently control the flow rate to the first conductor unit, the second conductor unit and the third conductor unit, wherein the first flow rate, the second flow rate and the third flow rate are independently determined based upon heat that is projected to be actively generated by each of the first conductor unit, the second conductor unit and the third conductor unit, respectively, during the planned movement when current is directed to the conductor units; and (ii) a second temperature system that is in fluid communication with the surface heat exchanger, the second temperature system directing a second circulation fluid through the surface heat exchanger to maintain the outer surface of the conductor array at a predetermined temperature. (Italics added to identify disputed claim language). The following rejections are presented for our review. 2 I. Claims 22 and 33-38 are rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. 3 II. Claims 22 and 38 are rejected under 35 U.S.C. § I03(a) as obvious over Cooper et al. (US 2010/0156198 Al; June 24, 2010, hereinafter Cooper) in view ofBinnard et al. (US 6,313,550 Bl; Nov. 6, 2001, hereinafter Binnard) and Malloy (US 5,329,564; July 12, 1994) and Emoto (US 6,226,073 Bl; May 1, 2001). III. Claim 33 is rejected under 35 U.S.C. § I03(a) as obvious over Cooper in view of Binnard, Malloy and Emoto as applied to claim 22 above, and further in view of Shibazaki (US 2010/0157276 Al; June 24, 2010). 2 Appellant has overcome the double patenting rejections by filing a terminal disclaimer. 3 The Specification is also objected to, as introducing new matter into the disclosure. (Final Act. 5). 3 Appeal2018-005580 Application 13/756, 176 IV. Claims 34--37 are rejected under 35 U.S.C. § I03(a) as obvious over Cooper in view of Binnard, Malloy, Emoto and further in view of Figus (US 2009/0288801 Al; Nov. 26, 2009). OPINION Objection and Rejection under 35 U.S. C. § l l 2(a) (written description) The Examiner has both rejected the claims and objected to the Specification for containing new matter. In cases such as this, both the rejection of the claims and the objection to the Specification are appealable issues to be considered by the PTAB. See MPEP 2163.06 II. The test for determining compliance with the written description requirement of 35 U.S.C. § 112(a) is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). The Examiner bears the initial burden of establishing that the original application disclosure as a whole would not have reasonably conveyed to those skilled in the art that the inventors had possession of the claimed subject matter at the time the instant application was filed. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane); In re Alton, 76 F.3d 1168, 1172, 1175-76 (Fed. Cir. 1996) (citing In re Wertheim, 541 F.2d 257, 262---64 (CCPA 1976)); In re Wright, 866 F.2d 422,425 (Fed. Cir. 1989). Objection to the Specification The Examiner determines the original application disclosure as filed does not reasonably convey to those skilled in the art that the inventors had 4 Appeal2018-005580 Application 13/756, 176 possession of the additional description added to paragraph 142 of the Specification (i1142) by the amendment filed January 11, 2017. (Final Act. 5). Specifically, the Examiner objects to the addition of the following language: More particularly, in such embodiments, each of the fixed orifices can be configured to be of a different size to selectively control the flow rate of the first circulation fluid 742B to the body exchangers 754A, 754B, 754C of each conductor unit 7 40A, 7 40B, 7 40Z. Appellant asserts that the added claim language is supported in the original filed disclosure, and that a person having ordinary skill in the art "would have understood that the first temperature system, in the described embodiment, necessarily and inherently requires the features of the fixed orifices being of different sizes." (App. Br. 8). We determine the Examiner's objection to the Specification is not well-founded. The originally filed Specification ,r 142 states: In alternative embodiments, the valve assembly 7 54 F can be one or more fixed orifices that determine flow rates that correspond to the average heat dissipated in each conductor unit 740A, 740B, 740Z. The original Specification ,r 142 describes the valve assembly 754F used to control the flow rate of the circulation fluid 742B to the body exchangers 754A, 7548, 754C of each conductor unit 740A, 740B, 740Z. The original Specification ,r 142 discloses the valve assembly 754F can be either an electronically controlled valve or can have orifices that are fixed/size based on the average heat dissipated by the conductor unit 740A, 740B, 740Z. Consequently, the addition to the original Specification further 5 Appeal2018-005580 Application 13/756, 176 specifies that the fixed orifices are sized to control the flow rate of the circulation fluid, and does not add new matter to the Specification. Claims 22 and 33-38 The Examiner determined the original application disclosure as filed does not reasonably convey to those skilled in the art that the inventors had possession of the following limitations of the amended claim 22: [T]he first fixed orifice having a first orifice size, to the second conductor unit through a second fixed orifice at a second flow rate, the second fixed orifice having a second orifice size that is different than the first orifice size, and to the third conductor unit through a third fixed orifice at a third flow rate, the third fixed orifice having a third orifice size that is different than the first orifice size and the second orifice size, to independently control the flow rate to the first conductor unit, the second conductor unit and the third conductor unit wherein the first flow rate, the second flow rate and the third flow rate are independently determined based upon heat that is projected to be actively generated by each of the first conductor unit, the second conductor unit and the third conductor unit. The Examiner specifically determined The new subject matter is the first fixed orifice having a first orifice size, the second fixed orifice having a second orifice size that is different than the first orifice size, the third fixed orifice having a third orifice size that is different than the first orifice size and the second orifice size to independently control the flow rate recited in amended claim 22. (Final Act. 15). Appellant argues the disputed claim limitations are implicitly or inherently supported in the original filed disclosure, and that a person of ordinary skill in the art (PHOSITA) would have understood that the first temperature system in the described embodiment requires the features of the 6 Appeal2018-005580 Application 13/756, 176 fixed orifices of different sizes as recited in the present claims. (App. Br. 15). Appellant further states: In Figure 7C, the valve assembly 754F includes a separate adjustable electronic valve to individually control the flow rate to each conductor unit 7 40A, 7 40B, 7 40Z. In an alternative embodiment, i.e. with the valve assembly 754F including one or more fixed orifices within the design illustrated in Figure 7C, a PHOSIT A would readily understand that the fixed orifices would have to be different sizes to provide the individual flow rate control for the multiple conductor units 7 40A, 7 40B, 7 40Z. In contrast, as argued above, with such features clearly not shown in the embodiment illustrated in Figure 7C, the Appellant respectfully submits that a PHOSIT A would not conclude that the adjustable valves could be replaced with fixed orifices, while further adding (i) individual pumps for each conductor unit 740A, 740B, 740Z, and/or (ii) individual adjustable valves for each conductor unit 7 40A, 7 40B, 7 40Z. This is simply not what is taught in Figure 7C and paragraph [0142], and this would negate any justification for switching to fixed orifices. (App. Br. 17). Appellant also relies on the declaration of inventor Michael B. Binnard as evidence that the inventors had possession of the amended claimed subject matter at the time the instant application was filed. (App. Br. 11; Declaration ,r 3). Appellant's arguments and evidence lack persuasive merit. We agree with the Examiner that the Specification does not explicitly disclose the first, second, and third fixed orifices, each having an orifice size that is different from each other, as recited in amended claim 22. Appellant's arguments and evidence has not directed us to evidence that each conductor unit 7 40A, 740B, 740Z requires different flow rates. Paragraph 142 of the original Specification recites that "In alternative embodiments, the valve assembly 7 Appeal2018-005580 Application 13/756, 176 7 54 F can be one or more fixed orifices that determine flow rates that correspond to the average heat dissipated in each conductor unit 7 40A, 740B, 740Z." Neither Appellant nor the declaration of inventor Binnard direct us to evidence that describes the average heat dissipated in each conductor unit 740A, 740B, 740Z sufficient to establish that they are distinguished from one another. As such, Appellant has not adequately refuted the Examiner's position that it is not inherent or required that the fixed orifices have different sizes from one another. Appellant's additional reliance on Malloy (US 5,329,564) is insufficient to establish that Appellant's original Specification, as a whole, would have conveyed to those skilled in the art that the inventors had possession of the claimed subject matter at the time the instant application was filed. (App. Br. 13). Appellant has failed to adequately explain how the descriptions in Malloy's disclosure are relevant to determining the fixed orifice sizes that are required by the claimed invention. Above we determine that the original Specification supports the addition of the following language: In alternative embodiments, the valve assembly 754F can be one or more fixed orifices that determine flow rates that correspond to the average heat dissipated in each conductor unit 7 40A, 7 40B, 7 40Z. 8 Appeal2018-005580 Application 13/756, 176 This addition to the Specification does not indicate that the fixed orifices are necessarily distinct from one another. Accordingly, we affirm the rejection of claims 22 and 33-38 under 35 U.S.C. § 112(a) for the reasons presented by Examiner and given above. Prior Art Rejections4 After review of the respective positions of Appellant in the Briefs and the Examiner in the Final Action and the Answer, we affirm the Examiner's prior art rejections under 35 U.S.C. § 103(a) for the reasons provided by the Examiner. We add the following. The Examiner found Cooper teaches the limitations of the claimed invention except the temperature controller including (i) a first temperature system that independently directs a first circulation fluid to the first conductor unit through a first orifice at a first flow rate, to the second conductor unit through a second orifice at a second flow rate, and to the third conductor unit through a third orifice at a third flow rate. (Final Act. 17). The Examiner found Binnard teaches a temperature controller including a temperature system that independently directs circulation fluid to multiple conductor units. (Final Act. 18; Binnard col. 4 11. 61---62). The Examiner found Malloy teaches the utilization of fixed orifices of varying sizes to independently control the flow rate. (Final Act. 19-20; Malloy col. 2 11. 29 - 55). The Examiner found Emoto teaches the first, second, and third flow rates are independently determined based upon heat that is projected to be actively generated by each of the first, second, and third conductor units. (Final Act. 20-21; Emoto col. 7 11. 30-34). The Examiner concluded from 4 Appellant does not provide substantive separate arguments addressing claims 22 and 33-38. Our discussion applies to independent claim 22. 9 Appeal2018-005580 Application 13/756, 176 the cited prior art that it would have been obvious to a person of ordinary skill in the art to form a stage assembly such as described by Cooper wherein the orifices that are utilized to direct the coolant have a fixed size appropriate for cooling the heat generated by the conductor units. (Final act 20-21). Appellant argues it would not have been obvious to combine the active cooling system described by Cooper and Emoto with the passive cooling system of Malloy. (App. Br. 27-33). Appellant specifically argues "aside from the passive system of Malloy that is only used while the reactor 16 is shut-down, the cited references are focused on active and/or dynamic temperature control of an operating system that is based on dynamically changing cooling needs over time." (App. Br. 32). Appellant further argues the rejection proposed by the Examiner is premised on hindsight; would have rendered Cooper unsatisfactory for its intended purpose; and the references teach away from the claimed combination. (App. Br. 31-32). Appellant's arguments are not persuasive of reversible error. Contrary to Appellant's position, it is not necessary to physically incorporate the passive cooling system of Malloy into the active cooling system described by Cooper and Emoto to render obvious the claimed invention. See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983); see also In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane) ("Etter's assertions that Azure cannot be incorporated in Ambrosio are basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole."). "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 10 Appeal2018-005580 Application 13/756, 176 those references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,425 (CCPA 1981). The prior art cited by the Examiner establishes that persons of ordinary skill in the art would have recognized the amount of coolant utilized in cooling systems must be sufficient for the intended purpose. (See generally Malloy, Cooper, Binnard, and Emoto). Persons of ordinary skill in the art would have understood that orifices having a specific size provide a constant supply of coolant (see Malloy) and that active cooling systems are suitable where the cooling needs vary dynamically (Cooper, Binnard, and Emoto). A person of ordinary skill in the art would have recognized that in systems where the cooling needs are constant, orifices having a fixed size sufficient for the intended purpose would have been suitable. Given these teachings, we determine that a preponderance of the evidence supports the Examiner's determination that one of ordinary skill in the art, using no more than ordinary creativity, would have been led to a temperature controller system including a temperature system that independently directs a first circulation fluid to the various conductor unit through fixed orifices at specific flow rates as required. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (In making an obviousness determination one "can take account of the inferences and creative steps that a person of ordinary skill in the art would employ"); In re Venner, 262 F.2d 91, 95 (CCPA 1958) (explaining that the provision of "automat[ ed] means to replace manual activity which has accomplished the same result" is well within the ambit of one of ordinary skill in the art) (citation omitted); see also Soverain Software LLC v. Newegg Inc., 705 F.3d 1333, 1344, amended on reh 'g, 728 F.3d 1332 (Fed. Cir. 2013) (concluding that claims directed to an online shopping system were invalid as obvious given that the patentee "did not invent the Internet, or hypertext, or the 11 Appeal2018-005580 Application 13/756, 176 URL" and using hypertext to communicate transaction information was no more than "a routine incorporation of Internet technology into existing processes") ( citations omitted). For the foregoing reasons and those presented by the Examiner we sustain the rejections of claims 22 and 33-38 under 35 U.S.C. § 103(a). DECISION The rejection of claims 22 and 33-38 rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement is affirmed. The rejections under 35 U.S.C. § 103(a) of claims 22 and 33-38 are affirmed. TIME PERIOD 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). AFFIRMED 12 Copy with citationCopy as parenthetical citation