Ex Parte Price et al

Patent Trial and Appeal Board

May 16, 2016

12054160 (P.T.A.B. May. 16, 2016)

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.
12/054,160 03/24/2008 J.B. Price C.ASTGP190 5603
114173 7590 05/16/2016
MPG LLP / Brooks
710 Lakeway Drive
Suite 200
Sunnyvale, CA 94085
EXAMINER
BERRY JR, WILLIE WENDELL
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
05/16/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte J.B. PRICE, JED KELLER,
LAURENCE DULMAGE, DAVID ADAMS, ERIC WINGER,
and LAWRENCE WISE
____________________

Appeal 2014-003916
Application 12/054,160
Technology Center 3600
____________________

Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and
GORDON D. KINDER, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
J.B. Price et al. (Appellants) appeal under 35 U.S.C. § 134 from the
rejection of claims 26–43. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2014-003916
Application 12/054,160
2
CLAIMED SUBJECT MATTER
The claims are directed to a linear wafer drive for handling wafers
during semiconductor fabrication. Claim 26, reproduced below, is
illustrative of the claimed subject matter:
26. A linear drive assembly, comprising:
an enclosure having a base plate, the enclosure having:
a first end effector for holding a semiconductor wafer in a
first plane above the base plate;
a second end effector for holding a semiconductor wafer
in a second plane that is above the first plane, the first and second
end effectors configured to move in a common linear direction
independently from each other, each of the first and second end
effectors includes:
(f) an intermediate stage to be driven in the common linear
direction;
(g) an end effector stage supported over a surface of the
intermediate stage;
(h) a first pulley and a second pulley connected to the
intermediate stage, such that the first and second pulleys move
with the intermediate stage when the intermediate stage is driven;
(i) a first belt segment located around the first pulley, a first
connection coupling the first belt segment to the end effector
stage and a second connection coupling the first belt segment to
a mount that is fixed relative to the base plate, the first and second
connections of the first belt segment are made between the first
and second pulleys;
(j) a second belt segment located around the second pulley, a
third connection coupling the second belt segment to the end
effector stage and a fourth connection coupling the second belt
segment to the mount;
wherein the intermediate stage movement in the common linear
direction moves the end effector stage in the common linear
direction, wherein the first and second pulleys and the first and
second belt segments cause the end effector stage to amplify the
movement of the end effector stage in the common linear
direction, relative to the movement of the intermediate stage in
the common linear direction.
Appeal 2014-003916
Application 12/054,160
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Woodruff US 7,334,826 B2 Feb. 26, 2008

REJECTIONS
I. Claims 26–43 stand rejected under 35 U.S.C. 112, first
paragraph, as failing to comply with the written description
requirement.
II. Claims 26–29, 31–36, and 38–43 stand rejected under 35
U.S.C. 102(e) as anticipated by Woodruff.
III. Claims 30 and 37 stand rejected under 35 U.S.C. 103(a) as
unpatentable over Woodruff.

DISCUSSION
Rejection I
Claims 26, 27, 29–34, and 36–43
Appellants argue the rejection of claims 26, 27, 29–34, and 36–43
under 35 U.S.C. § 112, first paragraph, together. See Appeal Br. 6–9. We
select independent claim 26 as the illustrative claim, and claims 27, 29–34,
and 36–43 stand or fall with claim 26.
The Examiner determines, inter alia, that the limitations directed to a
first belt segment, a second belt segment, a first connection, a second
connection, a third connection, and a fourth connection are not described in
the Specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventors had possession of the claimed invention and,
that these limitations are considered to be new matter. See Final Act. 3.
Appeal 2014-003916
Application 12/054,160
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Appellants contend that Figure 4 shows that Appellants had
possession of these limitations. See Appeal Br. 6; see also Reply Br. 3.
The purpose of the written description requirement in 35 U.S.C.
§ 112, first paragraph, is to “‘clearly allow persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed.”’ Ariad Pharm.,
Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)
(citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir.
1991)). “[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id.
Figure 4 illustrates, inter alia, a belt 420, an end effector stage 411,
and pulleys 424 and 425. Figure 4 further shows some unlabeled elements
represented by small circles. These elements appear at the ends of the belt
on opposite sides of the end effector stage and at four locations along the
length of the belt. Figure 4 does not indicate what these small circles
represent, nor is it readily apparent what these small circles represent.
The word “belt” appears once in the original Specification in a
sentence which states, “The amplification is achieved by moving: the
intermediate stage 410 via the belt 420 which is stretched between the two
pulleys 424 and 425.” Spec. 17. Thus, the Specification provides no
explicit support for the claimed first and second belt segments. Further, our
review of the original Specification reveals no instance of the word
“connection” and does not clarify what the small circles in Figure 4
represent. Accordingly, neither the original Specification nor Figure 4
reasonably demonstrate that Appellants had possession of first and second
belt segments, and first, second, third, and fourth connections, as claimed.
Appeal 2014-003916
Application 12/054,160
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Moreover, given the schematic nature of Figure 4, this figure alone would
not convey to one skilled in the art that the inventors had possession of the
claimed invention.
For these reasons, we sustain the Examiner’s decision rejecting claim
26, and claims 27, 29–34, and 36–43, which fall therewith as failing to
comply with the written description requirement.
Claims 28 and 35
Appellants present separate arguments regarding the rejection of
claims 28 and 35 under 35 U.S.C § 112, first paragraph. Appeal Br. 9–10.
However, claims 28 and 35 depend from claims 26 and 33, respectively, and
thus, include the same unsupported limitations as claims 26 and 33.
For this reason, we sustain the Examiner’s decision rejecting claims
28 and 35 as failing to comply with the written description requirement.
Rejections II and III
In rejecting claims 26–29, 31–36, and 38– 43 under 35 U.S.C.
§ 102(b) as anticipated by Woodruff and claims 30 and 37 under 35 U.S.C. §
103(a) as unpatentable over Woodruff, the Examiner makes no findings with
respect to the limitations requiring, inter alia, a first belt segment, a second
belt segment, a third connection, and a fourth connection. Thus, the
Examiner fails to set forth a prima facie case of anticipation or obviousness.
For this reason, we do not sustain the Examiner’s decisions rejecting
claims 26–46 as either anticipated by or unpatentable over Woodruff.

DECISION
The Examiner’s rejection of claims 26–46 under 35 U.S.C. § 112, first
paragraph is AFFIRMED.
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Application 12/054,160
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The Examiner’s rejection of claims 26–29, 31–36, and 38– 43 under
35 U.S.C. § 102(b) is REVERSED.
The Examiner’s rejection of claims 30 and 37 under 35 U.S.C.
§ 103(a) is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED