Ex Parte Rebstock

Patent Trial and Appeal Board

Jun 23, 2017

13007580 (P.T.A.B. Jun. 23, 2017)

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.
13/007,580 01/14/2011 Lutz Rebstock 1229P015324-US(C01) 6994
106446 7590
Perman & Green, LLP
99 Hawley Lane
Stratford, CT 06614
06/23/2017 EXAMINER
SNELTING, JONATHAN D
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
06/23/2017 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 LUTZ REBSTOCK1
Appeal 2015-003508
Application 13/007,580
Technology Center 3600
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
AMANDA F. WIEKER, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lutz Rebstock (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Examiner’s final rejection of claims 1—6, 8—13, and 21—28.2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellant, the Real Party in Interest is Dynamic Micro
Systems, Semiconductor Equipment GmbH. Br. 3 (filed May 10, 2014).
2 Claims 7 and 14—20 have been cancelled. Id. at 18—22 (Claims App.).
Appeal 2015-003508
Application 13/007,580
CLAIMED SUBJECT MATTER
The invention concerns “workpiece stocker configurations such as [a]
stocker for semiconductor wafers, reticles or carrier boxes.” Spec. 1.
Claim 1 is illustrative of the subject matter on appeal, and recites:
1. A stocker for storing a plurality of flat substrates,
each flat substrate comprising two opposite flat surfaces and a
peripheral edge, the stocker comprising:
a storage compartment for holding the flat substrates in a
vertical direction,
wherein the storage compartment is configured to
support the substrates at a plurality of holding points in
down and back sides of the substrates,
wherein the storage compartment is movable from
the stocker,
wherein the storage compartment comprises a
recess at a upper front area of the substrate,
wherein the recess is configured to accept a retainer,
wherein the retainer is configured to hold the
substrates in place during movements of the storage
compartment;
an edge grip substrate handler for transferring the
substrates in and out of the storage compartment, the edge grip
substrate handler handling a substrate by the peripheral edge
without extending to the flat surfaces,
a load port for providing substrates to the storage
compartment, the load port holding substrates in a horizontal
direction.
Br. 18 (Claims App.).
REJECTIONS
The claims stand rejected as follows:
I. Claims 5, 6, 8—10, 12, 13, 22, and 27 under 35 U.S.C. § 112,
first paragraph, as lacking adequate written description.
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II. Claims 5, 6, 8—10, 12, 13, 21, 22, 27, and 28 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
III. Claims 1—6, 8—13, and 21—28 under 35 U.S.C. § 103(a) as
unpatentable over Larson (US 2003/0091410 Al, pub. May 15,
2003) and Soucy (US 6,578,893 B2, iss. June 17, 2003).
ANALYSIS
Rejection I— Written Description
Claims 5, 6, 8—10, 12, 13, 22, and 27
Independent claim 5, and its dependent claims 6, 8—10, 12, 13, and 22,
recite that “the load port is configured so that the substrates ... are not
accessible by the edge grip substrate handler.” Br. 19 (Claims App.). Claim
27 depends from independent claim 23 and presents substantially similar
language. Id. at 22 (Claims App.). The Examiner finds that this limitation
“was not sufficiently described in the original disclosure.” Final Act. 3
(mailed Dec. 12, 2013). The Examiner also finds that this limitation is not
supported by U.S. Application No. 11/811,372, to which this application
claims priority as a continuation application. Id.', see also Spec. 1 (making a
priority claim and incorporating by reference the ’372 parent application).
The Examiner finds that although claim 12 of the ’372 parent application
“recited that ‘the substrates in the load port are not accessible to the substrate
handler,’” it “made no mention of the edge grip substrate handler.” Final
Act. 3; Ans. 2.
Appellant disagrees, and contends that the original claims of the ’372
parent application provide adequate written description support for pending
claim 5. Br. 6 (referencing original claims 12 and 17).
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We agree with Appellant. Specifically, originally filed claim 12 of
the ’372 parent application recites “[a] substrate handler handling a substrate
by the peripheral edge without extending to the flat surfaces.” See id.
(reproducing claim 12 as filed on June 9, 2007). In other words, parent
claim 12 recites an edge grip substrate handler, as described in the instant
specification and claims. Cf. Final Act. 3; see also Br. 19 (Claims App.)
(describing the presently claimed “edge grip substrate handler” as
performing the same function). Claim 12 of the ’372 parent application also
recites that “the substrates in the load port are not accessible to the substrate
handler.” Id. (emphasis added). In other words, parent claim 12 recites that
the substrates in the load port are inaccessible to the previously-recited edge
grip substrate handler.
We find that the content of originally filed claim 12 of the ’372 parent
application would have reasonably conveyed possession of the presently
claimed subject matter to those of ordinary skill in the art. The Examiner
has not explained persuasively how the parent application’s disclosure of a
load port in which substrates “are not accessible to the substrate handler,”
where that handler is described as “handling a substrate by the peripheral
edge,” fails to provide adequate support for the presently claimed “load port
. . . configured so that the substrates ... are not accessible by the edge grip
substrate handler.” Although parent claim 12 does not recite the term “edge
grip substrate handler,” cf. Final Act. 3, this is not dispositive because “the
description requirement [of § 112] does not demand any particular form of
disclosure or that the specification recite the claimed invention in haec
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Application 13/007,580
verba.'1'’ AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1352 (Fed.
Cir. 2010) (citation omitted).
Accordingly, we do not sustain the Examiner’s rejection of claims 5,
6, 8—10, 12, 13, 22, and 27 on this basis.
Rejection II—Indefiniteness
Claims 5, 6, 8—10, 12, 13, 21, 22, 27, and 28
Regarding claims 5, 6, 8—10, 12, 13, 22, and 27, each of which recites
a “load port. . . configured so that the substrates ... are not accessible by
the edge grip substrate handler,”3 the Examiner finds it is unclear “whether
structural elements are required to prevent such access, or the edge grip
handler is merely programmed to not access the load port.” Final Act. 4; see
also Ans. 3.
Appellant disagrees, arguing that the pending apparatus claims
specifically recite that the load port “is configured” to perform this function,
such that “structural elements of the load port” preclude such access. Br. 8.
Appellant also argues that it was “well known that FOUP has protected
sidewalls . . . and thus have structures that prevent peripheral edge access.”
Id. at 9. Finally, Appellant contends that the claims do not recite
programming steps, and the Specification does not include any discussion of
programming the edge grip handler. Id.
We agree with Appellant. Claim 5 specifically recites “the load port
is configured” to preclude access and, therefore, the claim itself makes clear
that the structure of the load port, not the substrate handler, is being limited
so as to perform the claimed function. Br. 19 (Claims App.). This plain
3 Claim 27 recites substantially similar language.
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reading of the claim language is consistent with the Specification, which
describes that first gripper arm 24 (e.g., the claimed “edge grip substrate
handler”) retrieves a substrate from a vertical storage position and swivels
about axle 76 to place the substrate in a horizontal position at, for example,
pre-aligner 28. Spec. 8—9. By contrast, the Specification explains that
second gripper arm 26 (e.g., the claimed “end effector substrate handler”)
picks up the horizontal wafer and, due to its “free end,” can enter a FOUP
(e.g., the claimed “load port”) to transfer the substrate into the FOUP. Id. In
this manner, the load port is configured to permit access by the free end of
an end effector substrate handler, but preclude access by an edge grip
substrate handler.
The Examiner is correct that the claims do not identity the specific
structure of the load port that precludes access by the edge grip substrate
handler.4 However, that the claims are broad does not make them indefinite.
See In re Miller, 441 F.2d 689, 693, 169 USPQ 597, 600 (CCPA 1971)
(“[BJreadth is not to be equated with indefiniteness.”). Here, we find that a
person of ordinary skill in the art would understand the bounds of the claim,
even though it is drafted broadly, e.g., the claim requires that some structure
of the load port preclude access by the edge grip substrate handler.
Accordingly, we do not sustain the Examiner’s rejection of claims 5,
6, 8—10, 12, 13, 22, and 27 on this basis.
4 Appellant’s argument that it is well known that FOUPs contain protected
sidewalls is not well taken, because it is merely attorney argument
unaccompanied by competent evidence. See Br. 9.
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The Examiner additionally finds that the term “firm,” appearing in
claims 21, 22, and 28, is “a relative term which renders the claim indefinite”
because the term is not defined by the claim and the Specification does not
provide a standard for ascertaining the requisite degree. Final Act. 4.
Appellant does not address the Examiner’s indefmiteness rejection of
these claims. See generally Br. Accordingly, we summarily sustain the
Examiner’s indefmiteness rejection of claims 21, 22, and 28.
Rejection III— Obviousness
Claims 1—6, 8—13, and 21—28
Claims 1—4, 11, and 21
Appellant argues claims 1—4, 11, and 21 as a group. Br. 9. We select
claim 1 as representative, and claims 2-4, 11, and 21 stand or fall with claim
1. 37C.F.R. §41.37(c)(l)(iv).
Claim 1 recites that a “retainer is configured to hold the substrates in
place during movements of the storage compartment.” Br. 18 (Claims
App.). The Examiner finds, inter alia, that Larson discloses a stocker
substantially as claimed, including storage compartment 72, which
comprises “a recess (hole for upper 124 in fig. 11)... wherein the recess is
configured to accept a retainer (upper 124/122 in fig. 11), wherein the
retainer is configured to hold the substrates in place during movements of
the storage compartment.” Final Act. 5.
Appellant contends Larson’s “substrates are resting on projecting
arms 122,” such that “[tjhere is no substrate restraint, since the substrates
can be picked up from and placed on to the projecting arms.” Br. 10.
Appellant also argues that “bar 122 is designed for supporting the substrates,
for example, during the substrate handler picks up or places a substrate to.
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Thus the substrates are not restraint, e.g., not held in place during
movements of the storage compartment.” Id. at 11.
Larson’s Figure 11 is reproduced below.
Figure 11 depicts carrier 72 supporting a batch of substrates 74. Larson
20-21, 49. Larson explains that “[cjarrier 72 includes side plate 120 and
projecting arms 122 extending from side plate 120.” Id. 149. Arms 122 are
connected rigidly to plate 120 “to help ensure that the substrates 74 are
securely and stably supported.” Id.
Appellant has not explained persuasively why Larson’s bar 122 is not
capable of holding the substrates in place during movements of the storage
compartment. By contrast, Larson explains that arm 122 securely and stably
supports the substrates, consistent with the Examiner’s finding that arm 122
is capable of restraining the substrates during movement of carrier 72.
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Larson 149. Furthermore, it is not dispositive that substrates may be
removed from Larson’s carrier, as Appellant argues, because the claims do
not preclude this function, and allowing substrates to be removed does not
prevent arm 122 from functioning as a restraint during movement. Ans. 4.
Accordingly, Appellant has not apprised us of error in the Examiner’s
rejection of claim 1, or claims 2-4, 11, and 21, grouped therewith, which we
sustain.
Claims 5, 6, 8—10, 12, 13, and 22
Regarding independent claim 5, the Examiner finds that Larson
discloses, inter alia, “an edge grip substrate handler (one of 77, see
paragraph [0045]). . . [and] an end effector substrate handler (other of 77,
see paragraph [0045]). . . wherein the load port is configured so that the
substrates are accessible by the end effector substrate handler.” Final Act. 7.
The Examiner relies on Soucy as teaching “an edge grip substrate handler
which handles a substrate by a peripheral edge without extending to flat
surfaces,” which the Examiner finds to be lacking in Larson. Id. The
Examiner concludes that it would have been obvious “to modify Larson’s
edge grip substrate handler to handle a substrate by the peripheral edge
without extending to the flat surfaces as taught by Soucy in order to avoid
damaging the flat wafer surfaces.” Id. at 7—8 (citing Soucy, 1:43—45). The
Examiner also concludes that “[t]he load port of Larson in view of Soucy is
capable of being operated in the claimed manner: the substrates are not
accessible by the edge grip substrate handler.” Id. at 8 (citing MPEP 2114).
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Appellant contends that the Examiner’s combination of Larson and
Soucy is improper for a variety of reasons that we find unpersuasive. Br.
12—13. Nonetheless, we find the Examiner’s rejection to be in error.
Claim 5 recites that the load port is configured to preclude access by
the edge grip substrate handler. Br. 19 (Claims App.). In considering this
aspect of the claim, the Examiner merely states that Larson’s load port, as
modified in view of Soucy, could be operated as claimed. Final Act. 8.
However, as discussed above regarding Rejection II, this claim language
limits the structure of the load port, i.e., the load port must be structured so
as to preclude access by the edge grip substrate handler. This is not a
functional limitation, as the Examiner treated it, but rather requires a
discussion of the structure of the prior art’s load port that would purportedly
preclude access by the edge grip substrate handler. Because the Examiner’s
rejection of claim 5 does not address the required structural configuration of
the load port, e.g., that it preclude access by the edge grip substrate handler,
we cannot sustain the Examiner’s obviousness rejection of claim 5, or claims
6, 8—10, 12, 13, and 22 which depend therefrom.
Claims 23—28
Appellant argues claims 23—28 as a group. Br. 13. We select claim
23 as representative, and claims 24—28 stand or fall with claim 23.
37 C.F.R. § 41.37(c)(l)(iv).
Independent claim 23 recites that “the space between two adjacent
substrates in the storage compartment is equal to or less [than] 2.5 mm.” Br.
21 (Claims App.). The Examiner finds that although Larson and Soucy do
not disclose this spacing, “[i]t would have been an obvious matter of design
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choice . . . since such a modification would have involved a mere change in
the size of a component.” Final Act. 10—11 (citing In re Rose, 220 F.2d 459
(CCPA 1955)). The Examiner also states that “[o]ne would have been
motivated to minimize a space between adjacent substrates in order to
maximize the number of substrates which can be held.” Id. at 11.
Appellant contends that the claimed spacing would not have been
obvious because “smaller spacing would not allow an end effector ... to
enter the space between adjacent substrates for accessing the substrate” and,
with smaller spacing, “an edge grip handle cannot access substrates in the
FOUP, e.g., containers having protected sidewalls.” Br. 14—15. Thus,
according to Appellant, “substrate spacing of 2.5 [mm] or less is not an
obvious design choice, since it would involve redesign [of] the whole
system, and it would require innovative solution to address the seemingly
contradictory design requirements.” Id. at 15. Appellant also argues that the
proposed modification would render Larson’s system inoperable. Id.
We are unpersuaded by Appellant’s argument regarding the purported
lack of utility of end effector or edge grip substrate handlers with the
claimed spacing, or the suggestion that all FOUPs have protected sidewalls
which would prevent access by an edge grip handler. The Appeal Brief does
not provide any persuasive evidence to support Appellant’s contentions
regarding spacing and the alleged FOUP structure. “Attorney’s argument in
a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974); see also Ans. 6 (“Whether the space between the
substrates could be entered by an end effector is a function not only of the
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size of the space between the substrates, but also of the thickness of the end
effector.”).
Appellant also argues that the proposed modification relies on
hindsight. Br. 15.
We are unpersuaded by this argument. The Examiner provides
articulated reasoning with rational underpinning to support the legal
conclusion of obviousness, which is not derived from Appellant’s
Specification. Final Act. 11; see In re Cree, 818 F.3d 694, 702 n.3 (Fed. Cir.
2016) (noting that Appellant’s hindsight argument is of no moment where
the Examiner provided a sufficient, non-hindsight reason to combine the
references). Specifically, the Examiner’s conclusion that one of ordinary
skill in the art would have been motivated to provide the claimed spacing “to
minimize a space between adjacent substrates in order to maximize the
number of substrates can be held” is supported by independent evidence of
record. See Farson 14. Indeed, Farson explains that “it is often more
desirable to increase production capacity by using existing space more
efficiently.” Id.
Appellant also contends that “Farson effectively teaches away from
substrate handlers that use peripheral edge gripping capability, since Farson
shows that a FOUP has protected sidewalls (Figs. 4 and 6) so that the
substrates do not have the peripheral edge exposed.” Br. 15.
We are unpersuaded by this argument because Farson specifically
suggests using edge gripping capability. For example, Farson explains that
“end effector 77 may handle substrates 74 individually using edge gripping
capabilities.” Farson 144. Further, as noted above, the record lacks
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persuasive evidence regarding whether load ports necessarily include
protected sidewalls.
Accordingly, Appellant has not apprised us of error in the Examiner’s
rejection of claim 23, or claims 24—28, grouped therewith, which we sustain.
DECISION
The Examiner’s decision to reject claims 1—4, 11, and 21—28 is
AFFIRMED; and
the Examiner’s decision to reject claims 5, 6, 8—10, 12, and 13 is
REVERSED.
AFFIRMED-IN-PART
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