Ex Parte Rebstock

Patent Trial and Appeal Board

Sep 26, 2016

13028180 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/028,180 02/15/2011
106446 7590
Perman & Green, LLP
99 Hawley Lane
Stratford, CT 06614
09/27/2016
FIRST NAMED INVENTOR
Lutz Rebstock
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.
1229P015332-US(PAR) 8226
EXAMINER
VOLZ, ELIZABETH J
ART UNIT PAPER NUMBER
3781
MAILDATE DELIVERY MODE
09/27/2016 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 LUTZ REBSTOCK
Appeal2014-009609
Application 13/028,180
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lutz Rebstock ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 1-5, 7-16, and 21-25, which are
all the pending claims. See Appeal Br. 3. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
According to Appellant, the real party in interest is Dynamic Micro
Systems, Semiconductor Equipment GmbH. Appeal Br. 3.
Appeal2014-009609
Application 13/028,180
CLAIMED SUBJECT MATTER
Appellant's disclosed invention relates to "processing equipment for
processing semiconductor substrates." Spec. 1. Claims 1, 15, and 21 are
independent. Claim 1, reproduced below with emphasis added, is illustrative
of the subject matter on appeal.
1. A side-by-side stackable carrier for a plurality of
substrates, wherein the side-by-side stackable carrier is
configured for used in a semiconductor fabrication facility, the
side-by-side stackable carrier comprising:
two side structures comprising slot marks for holding
substrates;
two end structures securing to the side structures, at least
one of the end structures comprising an attaching mechanism to
mate with an end structure of another side-by-side stackable
carrier, wherein the attaching mechanisms of two mated end
structures are configured to be mated by themselves without an
additional component.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Oakley
Bowden
us 3,338,452
us 3,701,079
2
Aug. 29, 1967
Oct. 24, 1972
Appeal2014-009609
Application 13/028,180
REJECTIONS
The following rejections are before us for review:
I. Claims 1-5, 7-14, and 23-25 stand rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written
description requirement. 2 Final Act. 2-3.
II. Claims 1-3, 5, 8-10, 12, 15, 16, 21, and 22 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Bowden and
Oakley. Id. at 3-7.
ANALYSIS
Rejection I - Claims 1-5, 7-14, and 23-25 as
failing to comply with the written description requirement
The stated basis for the Examiner's rejection under 35 U.S.C. § 112,
first paragraph, is that "[i]t was not previously disclosed in the drawings or
[S]pecification that the attaching mechanisms are mated by themselves
'without an additional component,"' as recited in independent claim 1. Final
Act. 3.
Appellant argues that "the limitation 'without an additional
component' includes configurations in which the attaching mechanisms
require no additional component to complete the mating process." Appeal
Br. 6. In particular, Appellant asserts that "[ e ]xamples of the attaching
mechanisms are disclosed and discussed in Figs. 6A---6B, 6C, 6E---6F, and
2 The Examiner's statement of this rejection, on page 2 of the Final
Action and on page 2 of the Answer, incorrectly includes claim 6, which has
been canceled. See Appeal Br. 11, Claims App.; see also Final Act. 1
(Office Action Summary). We treat this inclusion as an inadvertent and
harmless error, and we omit claim 6 from the rejection.
3
Appeal2014-009609
Application 13/028,180
7 A-7B, together with corresponding paragraphs [0044]-[0045] and
[0047]-[0049]." Id. 3 According to Appellant, "the present [S]pecification
also provides a configuration [wherein] the attaching mechanisms require an
addition[al] component." Id. Namely, "[a]s shown in Fig. 6D and
corresponding paragraph [0046], the attaching mechanism includes
pins 434B and holes 434A, which requires an additional component of a
lock 435." Id.
We agree with Appellant that the Specification provides support for
the limitation in question sufficient to satisfy the written description
requirement of 35 U.S.C. § 112, first paragraph. Namely, the embodiments
depicted in Figures 6A-6B, 6C, 6E---6F, and 7 A-7B and the corresponding
description of these embodiments provided in the Specification would
reasonably convey to one having ordinary skill in the art that Appellant had
possession of a substrate carrier having an attaching mechanism configured
to mate two carrier end structures by themselves without an additional
component. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010). Accordingly, we do not sustain the rejection of claim 1,
and claims 2-5, 7-14, and 23-25 depending therefrom, under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
3 We note that, in referring to the Specification, Appellant cites to
paragraph numbers, which are not included in the Specification of record.
These paragraph numbers appear to correspond to US 2011/0198256 Al, the
August 18, 2011, pre-grant publication of the present application. For
consistency, references to Appellant's Specification herein likewise cite to
this pre-grant publication of the present application.
4
Appeal2014-009609
Application 13/028,180
Rejection II - Claims 1-3, 5, 8-10, 12, 15, 16, 21, and 22 as
unpatentable over Bowden and Oakley
Claims 1-3, 5, 8-10, 12, 21, and 22
Appellant does not contest the rejection of claims 1-3, 5, 8-10, 12,
21, and 22 under 35 U.S.C. § 103(a). Appeal Br. 4. 4 As such, we
summarily sustain the rejection of claims 1-3, 5, 8-10, 12, 21, and 22 as
unpatentable over Bowden and Oakley. See Hyatt v. Dudas, 551F.3d1307,
1314 (Fed. Cir. 2008) (explaining that summary affirmance without
consideration of the substantive merits is appropriate where an appellant
fails to contest a ground of rejection).
Claims 15 and 16
In contesting the rejection of these claims, Appellant states that
"[ c ]laims 15 and 16 stand or fall together," and"[ c ]laim 15 is the
representative claim." Appeal Br. 8.
The Examiner determined that a combination of teachings from
Bowden and Oakley renders obvious the limitations of independent
claim 15. Final Act. 5-6. Appellant argues that "Bowden and Oakley fail to
disclose an element of the present claims, namely two side-by-side stackable
4 In Appellant's Appeal Brief, the stated Grounds of Rejection to be
Reviewed on Appeal includes only claims 15 and 16 as subject to this
rejection. See Appeal Br. 4. However, our review of the record indicates
that claims 1-3, 5, 8-10, 12, 21, and 22 also stand rejected on this ground.
See Final Act. 3-7. "An appeal, when taken, is presumed to be taken from
the rejection of all claims under rejection unless cancelled by an amendment
filed by the applicant and entered by the Office." 3 7 C.F .R. § 41.31 ( c ).
Thus, the rejection of claims 1-3, 5, 8-10, 12, 21, and 22 under 35 U.S.C.
§ 103(a) is before us in this appeal.
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Appeal2014-009609
Application 13/028,180
carriers comprising side structures having different numbers of slot marks
for holding different numbers of substrates." Appeal Br. 8. In particular,
Appellant asserts that "Bowden and Oakley are silent with respect to
connecting carriers having different capacities for holding substrates."
Id. at 9.
We are not persuaded by Appellant's argument because it is not
responsive to the rejection articulated by the Examiner. The Examiner
acknowledged that Bowden fails to disclose two carriers having different
numbers of slots, and the Examiner did not rely on Oakley to remedy this
deficiency. See Final Act. 6. Instead, the Examiner concluded:
It would have been an obvious matter of design choice to modify
[the] at least two side-by-side stackable carriers [to] comprise[]
side structures having different numbers of slot marks for
holding different numbers of substrates since applicant has not
disclosed that having various number of slots [solves] any stated
problem or is for any particular purpose[,] and it appears that the
device would perform equally well with either design[].
Furthermore, absent a teaching as to criticality of the number of
slots[,] this particular arrangement is deemed to have been
known by those skilled in the art since the instant specification
and evidence of record fail to attribute any significance (novel or
unexpected results) to a particular arrangement.
Final Act. 5---6.
Appellant argues that "[t]he present [S]pecification has shown that[,]
in semiconductor processing, carriers capable of holding a flexible number
of substrates [are] desirable, which is a subject of the present invention
(paragraph [0003])." Appeal Br. 10. Appellant asserts that "Bowden shows
and describes different types of carriers, which in a respective set attaches to
only another carrier of its kind in terms of shape, size, and/or number of
slots" (Reply Br. 5) and "[t]here is no suggestion that the carrier[] of
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Appeal2014-009609
Application 13/028,180
Bowden is able to attach to another carrier of different size, shape, and/or
number of slots" (id. at 6). Appellant also argues that "absent an explicit
teaching such as that of Applicant's [S]pecification and claims, one of
ordinary skill in the art would not infer the carriers of Bowden to have
different number of slots as it would be impractical during at least the
production stage of the carriers." Id.
Appellant's arguments are not persuasive of error because they are not
responsive to the Examiner's position of design choice. Here, the Examiner
has provided a sound basis for the conclusion that it would have been
obvious to modify the two stackable carriers to have different numbers of
slot marks for holding different numbers of substrates as a matter of design
choice, and Appellant has not shown error in the Examiner's rationale.
Namely, Appellant does not ascribe any particular importance to the two
stackable carriers having different numbers of slot marks as compared to
prior art carriers having a fixed number of slot marks, or provide any
evidence that carriers having different numbers of slot marks perform
differently or achieve any unexpected results as compared to carriers having
a fixed number of slot marks. See In re Kuhle, 526 F .2d 553, 555 (CCP A
1975) (use of claimed feature solves no stated problem and presents no
unexpected result and "would be an obvious matter of design choice within
the skill of the art" (citations omitted)). See also In re Chu, 66 F.3d 292,
298-99 (Fed. Cir. 1995) ("design choice" is appropriate where an applicant
fails to set forth any reason why the differences between the claimed
invention and the prior art would result in a different function). Moreover,
to the extent that Appellant's Specification describes that a "fixed number of
substrates in a substrate carrier is not desirable in certain cases" (Spec. i-f 3),
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Application 13/028,180
this disclosure does not indicate, much less show, that there is any criticality
to the "different numbers of slot marks" recited in the claim.
Appellant argues that "Bowden and Oakley ... teach away from
connecting different kinds of carriers, for example, by expressly teaching
that the interconnect carriers are identical or similar." Appeal Br. 9. In
particular, Appellant asserts that "Bowden expressly teaches that the
interconnecting carrier bodies are constructed from identical carrier bodies
(Col. 1, lines 5 - 8) and from carrier bodies of similar kind (Col. 2, lines 15 -
16)," and "Oakley expressly teaches that the battery cells are designed to be
interlocked with other similar battery cells (Col. 1, lines 20 - 23)." Id.
We are not persuaded by this argument. The fact that Bowden and
Oakley disclose connecting "similar" carrier bodies and battery cells,
respectively, is not a teaching away. Similar connecting carrier bodies and
battery cells could still have different capacities for holding items therein.
Appellant does not identify, nor do we discern, any passage in either
Bowden or Oakley that criticizes, discredits, or otherwise discourages
stackable carriers having different numbers of slot marks for holding
different numbers of substrates. See In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004) (prior art does not teach away from claimed subject matter merely
by disclosing a different solution unless the prior art also criticizes,
discredits or otherwise discourages the solution claimed).
After careful consideration of all the evidence, Appellant's arguments
do not apprise us of error in the Examiner's findings or reasoning for the
conclusion of obviousness with respect to claim 15. Accordingly, we sustain
the rejection of claim 15, and of claim 16, falling therewith, under 35 U.S.C.
§ 103(a) as being unpatentable over Bowden and Oakley.
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Appeal2014-009609
Application 13/028,180
DECISION
We REVERSE the Examiner's decision rejecting claims 1-5, 7-14,
and 23-25 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
We AFFIRM the Examiner's decision rejecting claims 1-3, 5, 8-10,
12, 15, 16, 21, and 22 under 35 U.S.C. § 103(a) as being unpatentable over
Bowden and Oakley.
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)(l )(iv).
AFFIRMED-IN-PART
9