Ex Parte Pariza et al

Patent Trial and Appeal Board

Aug 27, 2018

13700369 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/700,369 11/27/2012
26111 7590 08/29/2018
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
Dragos Pariza
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.
2857.1490001 2680
EXAMINER
SHUKLA, KRUPA
ART UNIT PAPER NUMBER
1787
NOTIFICATION DATE DELIVERY MODE
08/29/2018 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):
e-office@stemekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DRAGOS P ARIZA
and SANTIAGO E. DEL PUERTO
Appeal2017-010798
Application 13/700,369
Technology Center 1700
Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL 1
1 In this Decision, we refer to the Specification, filed November 27, 2012
("Spec."); the Final Office Action, mailed July 12, 2016 ("Final Act."); the
Appeal Brief, filed March 29, 2017 ("Appeal Br."); the Examiner's Answer,
mailed June 20, 2017 ("Ans."); and the Reply Brief, filed August 21, 2017
("Reply Br.").
Appeal2017-010798
Application 13/700,369
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's Final
rejections of pending claims l-6. 2,3 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
THE INVENTION
Appellants state that the invention generally relates to lithography and
in particular to a pneumatic bearing. (Spec. ,r 2.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A pneumatic bearing for use in a reticle
handling system of a lithography tool, comprising:
a flat pneumatic bearing substrate configured to
support a payload;
a bonding layer disposed on the pneumatic bearing
substrate; and
a polymer film disposed on the bonding layer,
wherein the pneumatic bearing is further configured
to deliver compressed gas to create a consistent gas film
upon which the payload rests and/or moves.
(Appeal Br. 12, Claims App.)
2 According to the Appellants, the Real Party in Interest is ASML
HOLDING N.V. (Appeal Br. 3.)
3 Claims 22 and 33, rejected in the Final Office Action (pages 8-9), were
canceled in a Supplemental Amendment & Reply filed October 11, 2016,
and entered with the Advisory Action mailed November 16, 2016.
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Application 13/700,369
THE REJECTIONS
The Examiner rejected the claims as follows:
Claims 1-6 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA),
first paragraph, as failing to comply with the written description requirement
(Ans. 2-3);
Claims 1-6 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA),
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor or a joint inventor, or
for pre-AIA the applicant, regards as the invention (Ans. 3--4);
Claims 1 and 2 under pre-AIA 35 U.S.C. § 102(b) as anticipated by
Farbaniec et al. (US 2004/0057780 Al, published March 25, 2004)
(hereinafter "Farbaniec") (Ans. 4--8);
Claim 3 under pre-AIA 35 U.S.C. § I03(a) as obvious over Farbaniec
in view of Deckert et al. (US 2002/0007111 Al, published January 17, 2002)
(hereinafter "Deckert") taken in view of evidence by Epoxy Technology
(EPO-TEK® 301-2, Optically Transparent Epoxy, Technical Data Sheet,
(1978), www.epotek.com, last visited August 6, 2018) (hereinafter "Epoxy
Technology") (Ans. 8-9); and
Claims 4--6 under pre-AIA 35 U.S.C. § I03(a) as obvious over
Farbaniec in view of DuPont (DuPont TM Kapton® VN POL YIMIDE FILM,
Technical Data Sheet, DuPont High Performance Materials (2006)) in view
of evidence by Yu et al. (US 6,632,314 Bl; issued October 14, 2003)
(hereinafter "Yu") (Ans. 9-10).
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Application 13/700,369
Written Description
ISSUE
The Examiner found that claim 1 recites "a reticle handling system,"
which according to the Examiner, appears to be broader than the "reticle
handling "device" disclosed in the Specification. (Ans. 3, 11.)
Appellants contend that by disclosing a "reticle handling system," the
Specification reasonably conveys to one of ordinary skill in the art that the
inventors had possession of "a reticle handling system," because one of
ordinary skill in the art would have understood that a reticle handling device
"is in fact composed of multiple components ( e.g. actuators, supporting
structures, and clamps) and, thus, is a system of components." (Appeal Br.
6.)
Therefore, the dispositive issue on appeal is:
Did the Examiner err in finding that the Specification does not
provide written description support for the term "reticle handling system"
recited in claim 1?
DISCUSSION
In order to satisfy the written description requirement, the
disclosure as originally filed does not have to provide in haec
verba support for the claimed subject matter at issue. See
Fujikawa v. Wattanasin, 93 F.3d 1559, 1570, 39 USPQ2d 1895,
1904 (Fed. Cir. 1996). Nonetheless, the disclosure must ...
convey with reasonable clarity to those skilled in the art that ...
[the inventor] was in possession of the invention. Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111,
1117 (Fed. Cir. 1991). Put another way, one skilled in the art,
reading the original disclosure, must immediately discern the
limitation at issue in the claims. Waldemar Link GmbH & Co.
v. Osteonics Corp., 32 F.3d 556, 558, 31 UPSQ2d 1855, 1857
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Application 13/700,369
(Fed. Cir. 1994). That inquiry is a factual one and must be
assessed on a case-by-case basis. See Vas-Cath, 935 F.2d at
1561, 19 USPQ2d at 1116.
Purdue Pharm. L.P. v. Paulding Inc., 230 F.3d 1320, 1323-24 (Fed. Cir.
2000).
In the instant case, we are persuaded by Appellants' argument that one
of ordinary skill in the art would have understood that Appellants were in
possession of a "reticle handling system." (App. Br. 12, Claims App.) In
particular, the Specification makes clear that lithographic apparatuses with
reticle handling provided with pneumatic bearings were known in the art.
(Spec ,r,r 3, 6, 32, 3 and 4.) Although the Specification refers expressly to
"reticle handling devices" with pneumatic bearings (Spec. ,r 34 ), there is no
particular limitation put on the "reticle handling device" disclosed in the
Specification that would have caused one of ordinary skill in the art to have
viewed Appellants to be in possession of a "device" and not a "system" to
the extent those terms may be deemed to be of a different scope, in view of
the well-known understanding of apparatuses with reticle handling provided
with pneumatic bearings. In our view, the Specification reasonably conveys
to one of ordinary skill in the art that Appellants were in possession of a
reticle handling system.
Accordingly, we reverse the Examiner's rejection of claims 1-6 under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing
to comply with the written description requirement.
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Application 13/700,369
Indefiniteness
ISSUE
The Examiner determined that the recitations in claim 1, "pneumatic
bearing configured to support a payload" and "pneumatic bearing is further
configured to create a consistent gas film upon which the payload rests
and/or moves" are unclear because it is not clear what is meant by
"configured" or how the substrate must be modified to perform the
subsequent functions recited in the claim. (Appeal Br. 12, Claims App.; see
also Ans. 3--4.)
Appellants argue that such phrases are not unclear, and that one of
ordinary skill in the art would have understood that "configured" means
"designed or made to" perform the subsequent functions recited in the claim
in view of the disclosure in the Specification and because creating a gas film
to allow a payload to rest or move on a substrate was well known. (Appeal
Br. 7-8.)
Therefore, the dispositive issue on appeal is:
Did the Examiner err in determining that the limitations "pneumatic
bearing configured to support a payload" and "pneumatic bearing is further
configured to create a consistent gas film upon which the payload rests
and/or moves" recited in claim 1 are unclear and therefore indefinite?
DISCUSSION
During examination, "[a] claim is indefinite when it contains words or
phrases whose meaning is unclear." In re Packard, 751 F.3d 1307,
1310, 1322 (Fed. Cir. 2014) (per curiam) (citing Manual of Patent
Examining Procedure§ 2173.0S(e)).
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"pneumatic bearing configured to support a payload"
We agree with Appellants that one of ordinary skill in the art would
have understood the metes and bounds of this limitation such that the use of
"configured to" does not render the claim indefinite. In particular, as
pointed out by Appellants, the Specification discloses substrates that can
support a patterning device such as a reticle. (Appeal Br. 7-8; see also Spec.
,r,r 5, 28, 34, 65, and Figs. IA-B.) Moreover, the Specification provides
specific detail as to the materials used, such as metal, glass, and ceramics "as
would become apparent to a person having ordinary skill in the art." (Spec.
,I 62, Fig. 3.)
Accordingly, we do not sustain the Examiner's rejection of claim 1 on
this basis.
"pneumatic bearing is further configured to create a consistent gas
film upon which the payload rests and/or moves"
Regarding whether configured "to create a consistent gas film" is
unclear, we again agree with Appellants that in light of the Specification,
one of ordinary skill in the art would have understood that "how to create a
gas film upon which the payload rests and/or moves was well known."
(Appeal Br. 8.) That is, the Specification makes clear that pneumatic
bearings are known to be provided with lubricating gas films and that
pneumatic bearings typically "require at least a steady source of compressed
gas to maintain the lubricating gas film." (Spec. ,r,r 3, 5.)
Accordingly, we are of the view that one of ordinary skill in the art
would have understood the structural components necessary in order to
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design or "configure" the pneumatic bearing to create a gas film upon which
the payload rests and/or moves. (Appeal Br. 8.)
Thus, we do not sustain the Examiner's rejection on this basis.
As a result of the above discussion, we reverse the Examiner's
rejection of claims 1---6 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-
AIA), second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the inventor or a joint
inventor, or for pre-AIA the applicant regards as the invention.
Anticipation
ISSUE
The Examiner found that Farbaniec discloses a load bearing member
that is made of a lubricious polymer or plastic material bonded to a substrate
using an adhesive film. (Ans. 4.) The Examiner found, inter alia, that
Farbaniec does not explicitly disclose that the load bearing member is a
pneumatic bearing, but because the recitation of pneumatic bearing is in the
preamble, and the preamble does not do any more than recite an intended
use, the present claims do not result in a structural difference between the
load bearing member disclosed in Farbaniec and the claims. (Ans. 4--5.) In
this regard, the Examiner further found with respect to the pneumatic
bearing being configured to deliver compressed gas to create a consistent gas
film, that because the bearing structure in Farbaniec is identical to the
claimed pneumatic bearing, "it is obvious or inherent that the pneumatic
bearing is further configured to deliver compressed gas to create a consistent
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Application 13/700,369
gas film upon which the payload rests and/or moves in [Farbaniec ]." (Ans.
5---6.)
Appellants contend, inter alia, that the Office admits that Farbaniec
fails to disclose a pneumatic bearing that delivers compressed gas to create a
consistent gas film, such that Farbaniec fails to anticipate claim 1. (Appeal
Br. 9--10.)
Therefore, the dispositive issue on appeal is:
Did the Examiner err in finding that Farbaniec's disclosure of a load
bearing member that is made of a lubricious polymer or plastic material
bonded to a substrate using an adhesive film meets the recitation in claim 1
that the "pneumatic bearing is further configured to deliver compressed gas
to create a consistent gas film upon which the payload rests and/or moves?"
DISCUSSION
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987).
We are persuaded by Appellants' argument that Farbaniec fails to
disclose a pneumatic bearing "configured to deliver compressed gas." In
this regard, Appellants and the Examiner appear to agree that Farbaniec does
not expressly disclose pneumatic bearings. (Ans. 5---6; see also Appeal Br.
9-10; and Farbaniec ,r,r 6, 15.) As discussed above, the Examiner's rejection
is premised on the position that the claims do not require any particular
structure to satisfy the term "pneumatic bearing" beyond what is recited in
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the body of the claim and disclosed in Farbaniec, and that it "is obvious or
inherent" that the pneumatic bearing is necessarily configured to deliver
compressed gas as recited in claim 1. (Ans. 6, 14.)
However, as with the rejection under 35 U.S.C. § 112(b ), we have
determined that the pneumatic bearing recited in claim 1 requires the
presence of components necessary to allow the pneumatic bearing to deliver
compressed gas to create a consistent gas film upon which the payload rests
and/or moves. For this reason, we cannot sustain the Examiner's position
that the load bearing member structure disclosed in Farbaniec anticipates the
"pneumatic bearing" having all the limitations recited in claim 1 as
Farbaniec does not disclose that the pneumatic bearing is configured to
deliver compressed gas to create a consistent gas film upon which the
payload rests and/or moves.
To the extent the Examiner' rationale is based on obviousness, we
first observe that the rejection applied is an anticipation rejection. In
addition, we observe that the Examiner does not offer sufficient explanation
with rational underpinnings to support the position that it would have been
obvious to apply Farbaniec's structure in the context of a pneumatic bearing.
Accordingly, because it is undisputed that Farbaniec does not disclose
a pneumatic bearing, we are compelled to reverse the Examiner's rejection.
Claim 3-6
The additional references relied upon in the rejections of claim 3, and
claims 4--6, which all depend from claim 1, fail to remedy the deficiencies
discussed above. Accordingly, we reverse the Examiner's rejections of
these claims for the same reasons as expressed for claim 1.
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DECISION
We reverse the Examiner's rejections of claims 1-6.
REVERSED
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