Ex parte MUKA

Board of Patent Appeals and Interferences

Sep 20, 1999

08662930 (B.P.A.I. Sep. 20, 1999)

Application for patent filed June 13, 1996. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RICHARD S. MUKA
____________
Appeal No. 1999-2220
Application No. 08/662,9301
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge, COHEN,
and ABRAMS, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-7, 29-36, 51-55, 58-66, 69-71 and
79. Claims 8-28, 37-50 and 78 have been canceled, and claims
56, 57, 67, 68 and 72-77 have been withdrawn as being drawn to
a non-elected invention.
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Application No. 08/662,930
The appellant's invention is directed to a substrate
processing apparatus. The claims on appeal have been
reproduced in an appendix to the Brief.
THE REFERENCE
The reference relied upon by the examiner to support the
final rejection is:
Iwai et al. (Iwai) 5,562,383 Oct. 8,
1996
(filed Jan. 5, 1996)
THE REJECTIONS
Claims 1-7, 29-35, 51-55, 58, 60, 63-66, 69, 71 and 79
stand rejected under 35 U.S.C. § 102(e) as being anticipated by
Iwai.
Claims 1-7, 29-36, 51-55, 58-66, 69-71 and 79 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Iwai.
OPINION
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and the
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Application No. 08/662,930
appellant regarding the rejections, we make reference to the
final rejection (Paper No. 10) and the Examiner’s Answer (Paper
No. 17), and to the appellant’s Briefs (Papers Nos. 16 and 18).
The Rejection Under 35 U.S.C. § 102(e)
Anticipation is established only when a single prior art
reference discloses, either expressly or under the principles
of inherency, each and every element of the claimed invention.
See In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671,
1675 (Fed. Cir. 1994) and In re Spada, 911 F.2d 705, 708, 15
USPQ2d 1655, 1657 (Fed. Cir. 1990). We find this not to be the
case here, and therefore we will not sustain this rejection.
Our reasons for arriving at this conclusion follow.
Independent claim 1 requires, inter alia, the presence of
“substrate processing chambers” (emphasis added), a first one
of which is vertically oriented in a plane above a second one,
with each of them being separately and independently connected
to the transport chamber and forming separate and independent
isolated substrate processing areas therein.
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Application No. 08/662,930
Iwai is directed to an apparatus for processing
substrates. The examiner focuses upon the embodiment shown in
Figure 11 as supporting the conclusion that this reference is
anticipatory of claim 1. However, we cannot agree. Our
reasons follow.
Although the term “processing” is not defined in the
appellant’s specification, it is our opinion that one of
ordinary skill in the art would understand this term to mean
subjecting a substrate to treatment or acting upon it so as to
alter it in some manner, such as exposing it to gas or other
materials and/or conditions, a conclusion that is confirmed in
the opening paragraphs of Iwai. Looking to Figure 11 of Iwai,
which the examiner has focused upon in the rejection, only
element 101 is described as a “processing” chamber (column 15,
line 31). Only one such chamber is disclosed and therefore,
insofar as its explicit teachings are concerned, on its face,
Iwai clearly does not anticipate claim 1, which requires that
there be at least two processing chambers. However, the
examiner has taken the position that “vessel storage stage” 116
constitutes a plurality of “chambers” which qualify as
processing chambers on the basis that “processes such as
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Application No. 08/662,930
storing, drying (at least to some degree), and/or cooling (at
least to some degree) would occur in these chambers” (Paper No.
10, page 3). There is no support for this in the reference.
First of all, element 116 is not described as a series of
chambers, but as a “vessel storage stage,” the function of
which is to store vessels (114) that contain substrates before
and after they are conveyed to chamber 119, where the
substrates are removed from the vessels for eventual processing
in chamber 109 (column 15, lines 44 and 45; columns 20 and 21).
Second, not only is there no teaching in Iwai of applying a
treatment anywhere other than in chamber 109, but stage 116 is
not described as even having a front closure that can isolate
the space so that a treatment could be accomplished therein.
Moreover, in view of the fact that the substrates are contained
in closed vessels 114 when they are stored in stage 116, no
treatment could be accomplished to them at that location with
the Iwai apparatus, as disclosed. Finally, we cannot agree
with the examiner that the mere act of “storing” substrates in
stage 116 amounts to “processing” them, and the conclusion that
drying and/or cooling would occur therein is mere speculation,
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even if one were to agree, arguendo, that such constitutes
“processing.”
The Section 102 rejection of independent claim 1 is not
sustained. On the basis of the same reasoning, we also will
not sustain the Section 102 rejection of independent claim 29,
which contains the same limitations. It further follows that
the rejection of the claims that depend from claims 1 and 29
also will not be sustained.
The Rejection Under 35 U.S.C. § 103
The test for obviousness is what the combined teachings of
the prior art would have suggested to one of ordinary skill in
the art. See, for example, In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie
case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would
have been led to modify a prior art reference or to combine
reference teachings to arrive at the claimed invention. See Ex
parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To
this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole
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or from the knowledge generally available to one of ordinary
skill in the art and not from the appellant's disclosure. See,
for example, Uniroyal ,Inc. V. Rudkin-Wiley Corp., 837 F.2d
1044, 1052, 5 USPQ2d 1434, 1052 (Fed. Cir.), cert. denied, 488
U.S. 825 (1988).
Independent claims 1 and 29 also stand rejected as being
unpatentable over Iwai. We have pointed out above the subject
matter recited in claims 1 and 29 which cannot be found in
Iwai. It is our view that these shortcomings are not overcome
by considering the reference in the light of 35 U.S.C. § 103.
We therefore conclude that the teachings of Iwai fail to
establish a prima facie case of obviousness with respect to the
subject matter of claims 1 and 29, and the Section 103
rejection cannot be sustained.
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SUMMARY
Neither rejection is sustained.
The decision of the examiner is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )
NEA/jlb
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Application No. 08/662,930
MARK F. HARRINGTON
PERMAN AND GREEN
425 POST ROAD
FAIRFIELD, CT 06430