Ex parte Nelson

Board of Patent Appeals and Interferences

May 7, 2001

08654708 (B.P.A.I. May. 7, 2001)

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written for publication and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT J. NELSON
____________
Appeal No. 1998-2397
Application No. 08/654,708
____________
ON BRIEF
____________
Before RUGGIERO, GROSS, and BLANKENSHIP, Administrative Patent
Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 8 and 10 through 25. In an
Amendment After Final, filed on May 14, 1997, appellant
cancelled claims 1 through 7 and amended claim 19. In the
Examiner's Answer (page 2), the examiner indicates that claims
20 through 23 are allowable and claim 19 is objected to as
being dependent upon a rejected base claim. Accordingly,
Appeal No. 1998-2397
Application No. 08/654,708
Although the examiner did not rely on this reference in the rejection,1
he did rely on it in the arguments section of the Answer.
2
claims 8, 10 through 18, 24, and 25 remain before us on
appeal.
Appellant's invention relates to a system for testing
semiconductor wafer clamps for wear. Claim 8 is illustrative
of the claimed invention, and it reads as follows:
8. A wear testing system for a wafer clamp, the wafer
clamp designed to hold a wafer of a predetermined size, the
wafer clamp having a ledge portion around an opening, the
ledge portion having an overlap region that overlaps the edge
of the wafer by an initial overlap distance to hold the wafer
in place during processing, the wear testing system
comprising:
a testing object having a shape that prevents the wafer
clamp from slipping past an upper portion of the testing
object when the clamp has not been worn, and a shape that
permits a wafer clamp that is worn to slip past said upper
portion.
The prior art of record relied upon by the examiner in
rejecting the appealed claims is:
Appellant's admitted prior art Figures 1 and 2 (AAPA)
Hrovath 4,744,713 May 17, 19881
Claims 8, 10 through 18, 24, and 25 stand rejected under
35 U.S.C. § 103 as being unpatentable over AAPA.
Appeal No. 1998-2397
Application No. 08/654,708
3
Reference is made to the Examiner's Answer (Paper No. 9,
mailed September 26, 1997) and the Supplemental Examiner's
Answer (Paper No. 11, mailed January 26, 1998) for the
examiner's complete reasoning in support of the rejection, and
to appellant's Brief (Paper No. 8, filed June 23, 1997) and
Reply Brief (Paper No. 10, filed November 24, 1997) for
appellant's arguments thereagainst.
OPINION
We have carefully considered the claims, the applied
prior art, and the respective positions articulated by
appellant and the examiner. As a consequence of our review,
we will reverse the obviousness rejection of claims 8, 10
through 18, 24, and 25.
The examiner (Answer, page 4) explains that in the claims
"no specific 'testing object' has been designated," and that
during "visual inspection, the wafer 14, itself, would be the
'testing object.'" The examiner (Answer, page 4) points to
the wafer in appellant's figure 1, stating that "it appears
that the wafer edges angle downward ... and therefore can be
designated as an 'angled upper portion'" as recited in the
claims. We disagree.
Appeal No. 1998-2397
Application No. 08/654,708
4
Appellant states in the Background of the Invention
section of the specification (page 1, lines 13-15) that the
"diagram [in Figure 1] exaggerates the curvature of the bottom
electrode 16 and is not to scale." Thus, the curvature of the
wafer is exaggerated. Furthermore, as indicated by appellant
(Reply Brief, page 2) although the wafer bends under the gas
pressure used during processing, the wafer itself is flat and,
as such, has no upper portion, contrary to the examiner's
assertions. Accordingly, the wafer fails to meet the
requirement of an upper portion for the claimed testing
object. Since all of the claims include this limitation, we
cannot sustain the rejection of claims 8, 10 through 18, 24,
and 25.
Appeal No. 1998-2397
Application No. 08/654,708
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CONCLUSION
The decision of the examiner rejecting claims 8, 10
through 18, 24, and 25 under 35 U.S.C. § 103 is reversed.
REVERSED
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
apg/vsh
Appeal No. 1998-2397
Application No. 08/654,708
6
GERALD P. PARSONS
MAJESTIC, PARSONS, SIEBERT AND HSUE
FOUR EMBARCADERO CENTER
SUITE 1100
SAN FRANCISCO, CA 94111-4106