Ex Parte Scollay

Patent Trial and Appeal Board

Feb 27, 2014

11938728 (P.T.A.B. Feb. 27, 2014)

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.
11/938,728 11/12/2007 Stuart Scollay 048635-021000 4580
22204 7590 02/27/2014
NIXON PEABODY, LLP
401 9TH STREET, NW
SUITE 900
WASHINGTON, DC 20004-2128
EXAMINER
LOWE, MICHAEL S
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
02/27/2014 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 STUART SCOLLAY
____________________

Appeal 2012-001026
Application 11/938,728
Technology Center 3600
____________________

Before JENNIFER D. BAHR, PATRICK R. SCANLON, and
WILLIAM A. CAPP, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-001026
Application 11/938,728

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 1-23, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE INVENTION
Appellant’s claimed invention relates to “a system and method for
handling and processing substrates such as magnetic disks.” Spec., para.
[01]. Claims 1, 10, and 20 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A system for transporting a substrate in a
substrate processing system having at least one
chamber, comprising:
tracks positioned within the chamber;
a substrate carrier mounted onto the tracks
for transporting the substrate;
a plurality of magnetic elements attached to
the carrier;
a linear motor;
a plurality of magnetic conduits positioned
between the linear motor and the carrier, wherein
the magnetic conduit transmits the magnetic force
from the linear motor to the carrier to create
magnetic coupling to transport the carrier.
REFERENCES
The Examiner relies upon the following prior art references:
Cowburn
Fairbairn
Rohrmann
US 2004/0027899 A1
US 6,919,001 B2
WO 2006/026886 A1
Feb. 12, 2004
Jul. 19, 2005
Mar. 16, 2006
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Application 11/938,728

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REJECTIONS
The following rejections are before us on appeal:
I. Claims 1-9 and 20-23 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Rohrmann and Cowburn.
II. Claims 10-19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rohrmann, Cowburn, and Fairbairn.
ANALYSIS
Rejection I
The Examiner finds that Rohrmann discloses a substrate transporting
system having the tracks positioned within a chamber, the substrate carrier
mounted on the tracks, the plurality of magnetic elements attached to the
carrier, and the linear motor as claimed. Ans. 4. The Examiner finds that
Rohrmann discloses magnetic conduits, stating “[i]t is clear that the
magnetic force is conducted from outside the vacuum chamber to inside the
chamber through something(s) as the magnetic force & field is transmitted
as needed.” Ans. 4-5. The Examiner elaborates on this position by stating
“the wall, the air, the casings and any other material or structure between the
linear motor and the carrier [of Rohrmann] is a conduit as claimed so
broadly.” Ans. 8 (emphasis added).
The Examiner then appears to take an alternative position, noting,
“[f]or sake of completeness,” that Cowburn discloses the use of magnetic
conduits. Ans. 5. Thus, although the Examiner does not explicitly state as
much, we believe it is the Examiner’s intention to reject claims 1-9 and 20-
23 as unpatentable over Rohrmann alone or alternatively over the
combination of Rohrmann and Cowburn.
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Application 11/938,728

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Appellant argues that “Rohrmann does not teach or suggests [sic] the
claimed magnetic conduits.”1 Br. 10. Appellant further asserts “the prior art
does not disclose or suggest using magnetic conduits to transmit the
magnetic forces.” Br. 11.
To determine whether Rohrmann discloses magnetic conduits as
claimed, we first must interpret the claim language at issue. We construe
claim terms by applying their ordinary and customary meaning, which is the
meaning the words would have to a person of ordinary skill in the relevant
art at the time of invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13
(Fed. Cir. 2005) (en banc). During examination, patent claims are given
their broadest reasonable construction in light of the specification. Id. at
1316. Claim 1 recites a plurality of magnetic conduits, “wherein the
magnetic conduit transmits the magnetic force from the linear motor to the
carrier.” The ordinary and customary meaning of “conduit” in this context is
“a means of transmitting or distributing.” MERRIAM-WEBSTER ONLINE
DICTIONARY (2014), http://www.merriam-webster.com/dictionary/conduit
(accessed Feb. 25, 2014). This meaning is consistent with Appellant’s
Specification. Accordingly, we determine that the broadest reasonable
interpretation of a “magnetic conduit” as claimed is any item that transmits
magnetic force from the linear motor to the carrier.
Applying this interpretation, we note that Appellant acknowledges
that Rohrmann’s trough 11 functions as a partition wall separating interior
vacuum chamber 7 from the exterior atmosphere and “magnetic forces must

1 Appellant argues claims 1-9 and 20-23 as a group. Br. 10-13. We take
claim 1 as representative pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2011), and
claims 2-9 and 20-23 stand or fall with claim 1.
Appeal 2012-001026
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and do cross this partition wall.” Br. 11. By allowing magnetic forces to
cross or pass through, trough 11 functions to transmit magnetic forces from
the linear motor to carrier 2. As such, and consistent with the Examiner’s
finding noted supra, trough 11 (i.e., the wall) can be broadly construed as a
“magnetic conduit” as claimed. Furthermore, the Examiner points to a
plurality of items in Rohrmann that are broadly construed as “magnetic
conduits” (Ans. 8 (mentioning “the wall, the air, the casings and any other
material or structure between the linear motor and the carrier”)), and
Appellant does not contest these findings.
Appellant’s argument that “[t]here is also nothing in the art to suggest
placing anything between the linear motor and the carrier to control the
magnetic field” (Br. 11) is not persuasive because it is not commensurate in
scope with claim 1, which recites that the magnetic conduit transmits
magnetic force and does not require the magnetic conduit to control
magnetic force.
Because we agree with the Examiner that Rohrmann discloses
magnetic conduits as claimed, we decline to address Appellant’s arguments
directed to the alternative rejection based on Rohrmann and Cowburn.
In view of the above, Appellant’s arguments do not apprise us of
error, and we sustain the rejection of claim 1 and claims 2-9 and 20-23
grouped therewith.
Rejection II
Claims 10-12 and 15-19
Regarding claim 10, the Examiner finds that Rohrmann discloses a
system having an elevator chamber capable of sustaining a vacuum, a linear
motor positioned outside of the elevator chamber, and a movable carrier
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having a plurality of magnetic elements. Ans. 6. The Examiner finds that
Fairbairn discloses a vertically movable base for supporting a carrier and
proposes modifying Rohrmann to include a vertically movable elevator base
for moving the carrier vertically as taught by Fairbairn. Id. Regarding the
claimed pole pieces, the Examiner again determines that pole pieces (i.e.,
magnetic conduits)2 are disclosed by Rohrmann or alternatively by the
combination of Rohrmann and Cowburn. Ans. 7.
Appellant argues that “none of the cited art teaches the claimed
‘plurality of pole pieces’ inside an elevator” and “Rohrmann does not use [a]
linear motor or magnetic pole pieces in the elevator.” Br. 13. These
arguments are not convincing, however, because claim 10 does not require
that the pole pieces are located in the claimed elevator chamber. Rather, the
claim merely recites a vertically movable elevator base and a plurality of
pole pieces attached to the elevator base. There is no recitation that either of
these elements is inside the elevator chamber. Furthermore,Appellant does
not apprise us of error in the Examiner’s finding that Rohrmann discloses
pole pieces/magnetic conduits for the reasons discussed supra.
Appellant also argues that Rohrmann does not teach a vertically
movable base. Br. 14. This argument is not persuasive, however, because it
fails to address the rejection as articulated by the Examiner. Specifically,
the Examiner does not assert that Rohrmann does not teach a vertically
movable base; rather, the Examiner relies on Fairbairn as disclosing the
vertically movable base. Ans. 6. Appellant states Fairbairn discloses a

2 The Examiner equates pole pieces with magnetic conduits (see Ans. 7
(referring to “magnetic conduits/pole pieces”), a position that Appellant does
not contest.
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system similar to the claimed system “except for the claimed improvement
of the magnetic pole pieces,” apparently conceding that Fairbairn discloses a
vertically movable base. Br. 14. Appellant does not contest the Examiner’s
rationale for combining Rohrmann and Fairbairn.
For the above reasons, Appellant’s arguments do not apprise us of
error, and we sustain the rejection of claim 10. Appellant does not
separately argue dependent claims 11, 12, and 15-19, which are subject to
the same ground of rejection. As such, these dependent claims fall with
independent claim 10.
Claims 13 and 14
Claim 13 recites that the plurality of pole pieces is positioned below
the underside of the carrier. Appellant argues that this feature avoids having
the magnetic forces acting on the carrier from its side, as is disclosed by
Rohrmann and Fairbairn. Br. 11. The Examiner does not adequately
explain how one of ordinary skill in the art would modify Rohrmann to
position the pole pieces below the underside of the carrier. Accordingly, we
do not sustain the rejection of claim 13, and claim 14 depending therefrom.
DECISION
We affirm the decision of the Examiner rejecting claims 1-12 and 15-
23.
We reverse the decision of the Examiner rejecting claims 13 and 14.
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).

Appeal 2012-001026
Application 11/938,728

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AFFIRMED-IN-PART

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