Ex Parte Su et al

Board of Patent Appeals and Interferences

Aug 31, 2012

11236169 (B.P.A.I. Aug. 31, 2012)

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.
11/236,169 09/27/2005 Wei-Yu Su 2005-0180 / 24061.653 6429
42717 7590 08/31/2012
HAYNES AND BOONE, LLP
IP Section
2323 Victory Avenue
Suite 700
Dallas, TX 75219
EXAMINER
ACKUN, JACOB K
ART UNIT PAPER NUMBER
3728
MAIL DATE DELIVERY MODE
08/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WEI-YU SU and CHUAN-CHIEH LIN
____________________

Appeal 2010-005722
Application 11/236,169
Technology Center 3700
____________________

Before GAY ANN SPAHN, EDWARD A. BROWN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-12, 14-17, and 21-23. (App. Br. 5). Claims 13
and 18-20 have been cancelled. (Id.). We have jurisdiction over this appeal
under 35 U.S.C. § 6(b).
We AFFIRM.
THE CLAIMED SUBJECT MATTER
Claims 1, 15, and 21 are independent. Claim 1, reproduced below, is
representative of the appealed subject matter.
1. A container, comprising:
a top wall, side walls, and a bottom
wall, designed to enclose a space for storing
a reticle, the top, side and bottom walls
having internal surfaces facing the enclosed
space and external surface facing away from
the enclosed space; and
a metallic coating layer disposed on
and substantially covering external surfaces
of the top, side and bottom walls.

THE REJECTIONS
The following rejections are before us for review:
1. The rejection of claims 1-12 and 14-17 under 35 U.S.C. § 102(b
or e) as anticipated by Sawaya (US 5,136,827, issued Aug. 11, 1992).
2. The rejection of claims 1-12 and 14-17 under 35 U.S.C.
§ 103(a) as unpatentable over Sawaya.
3. The rejection of claims 1-12, 14-17, and 21-23 under 35 U.S.C.
§ 103(a) as unpatentable over Cheng (US 6,247,599 B1, issued Jun. 19,
2001) and Sawaya.

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ANALYSIS
Claims 1-12 and 14-17 – Anticipation - Sawaya
Appellants argue claims 1-12 and 14 as a group. (App. Br. 10-13).
We select claim 1 as representative of the group, and claims 2-12 and 14
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
We have considered each of Appellants' contentions set forth in the
Appeal Brief (App. Br. 10-13) and Reply Brief (Reply Br. 5-10), but do not
find them persuasive for the reasons discussed infra.
Claim 1 recites a container comprising "a top wall, side walls, and a
bottom wall, designed to enclose a space for storing a reticle." The
Examiner found the claimed container reads on Sawaya's disclosed carrier
tape and cover shown in Figures 1B and 7A. (Ans. 3). Figure 1B of Sawaya
depicts a carrier tape 1 and seal tape 2 defining a space containing an
integrated circuit 5, and an aluminum film provided on the carrier tape 1 and
seal tape 2. (See also Sawaya col. 3, ll. 23-50). Figure 7A of Sawaya
depicts a wrapping member that includes a tubular member 33 having a
metallic film 36 on its surfaces for containing semiconductor devices 5. (See
also Sawaya col. 5, ll. 4-11, Fig. 7C).
Appellants contend that Sawaya "fails to disclose a container
comprising 'a top wall, side walls, and a bottom wall, designed to enclose a
space for storing a reticle.'" (App. Br. 10). Appellants contend that "the
portions of Sawaya cited . . . are wholly silent as to a wrapping member that
is designed to enclose a space for storing a reticle." (App. Br. 11).
Appellants further contend that the Examiner did not provide extrinsic
evidence that makes clear Sawaya's wrapping member is necessarily
designed for storing a reticle to establish inherency. (App. Br. 11-12).
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In response, the Examiner explained that the claim limitation
"designed to enclose a space for storing a reticle," "requires nothing more
than the capability of the claimed container to store a reticle in the aforesaid
space. Thus, the limitation has been found to be met by Sawaya, since the
container therein is at least inherently capable of use to store a reticle in the
relevant space therein." (Ans. 5) (emphasis added). We agree with the
Examiner that the claim limitation "designed to enclose a space for storing a
reticle" recites an intended use or function of the container. While Sawaya
does not explicitly disclose the use of the tape member or wrapping member
for storing a reticle, "the absence of disclosure relating to function does not
defeat the . . . finding of anticipation. It is well settled that the recitation of a
new intended use for an old product does not make a claim to that old
product patentable." See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir.
1997) (internal citation omitted).
Appellants contend that "[o]ne of ordinary skill in the art would
recognize numerous considerations for storing a reticle that are not apparent
in storing an integrated circuit." (App. Br. 12). However, Appellants do not
identify these considerations. In addition, Appellants do not contend that
claim 1 recites any structural limitation of the container that is required for
storing a reticle in the space that is missing in Sawaya. The Examiner also
found that claim 1 does not recite that the reticle has any particular size.
(Ans. 6). We agree with the Examiner that Appellants have not provided
any persuasive argument or evidence as to why Sawaya's container could not
be used for storing a reticle. (Id.).
"[C]hoosing to define an element functionally, i.e., by what it does,
carries with it a risk." Schreiber, 128 F.3d a 1478. That is,
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where the Patent Office has reason to believe that a
functional limitation asserted to be critical for
establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the
prior art, it possesses the authority to require the
applicant to prove that the subject matter shown to
be in the prior art does not possess the
characteristic relied on.
See In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (emphasis added)
(internal citation omitted); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
("when the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not." (citation omitted)). Here, the Examiner
articulated a sound basis for finding that the recited functional limitation for
the container is an inherent characteristic of Sawaya's container. In
response, Appellants have not presented any persuasive argument or
objective evidence to show that Sawaya's container does not possess the
claimed functional characteristic, and thus have not met their burden.
Hence, we sustain the anticipation rejection of claim 1, and claims 2-12 and
14.
Appellants rely on the contentions presented for claims 1-12 and 14
for patentability of claims 15-17. (App. Br. 13). Accordingly, we also
sustain the rejection of claims 15-17 for similar reasons.
Claims 1-12 and 14-17 – Obviousness - Sawaya
Regarding the Examiner's alternative obviousness rejection of claims
1-12 and 14-17 over Sawaya, a disclosure that anticipates a claim under 35
U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103, for
anticipation is the epitome of obviousness. See In re Pearson, 494 F.2d
1399, 1402 (CCPA 1974); and In re Fracalossi, 681 F.2d 792, 794 (CCPA
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1982). Hence, we do not need to reach Appellants' contentions directed to
the obviousness rejection of claims 1-12 and 14-17 over Sawaya in this
appeal, because we have determined supra that Sawaya anticipates these
claims and thus, Sawaya also renders these claims obvious.
Claims 1-12, 14-17, and 21-23 – Obviousness - Cheng and Sawaya
Appellants argue claims 1-12, 14-17, and 21-23 as a group. (App. Br.
17-20). We select claim 1 as representative of the grouping, and claims 2-
12, 14-17, and 21-23 stand or fall with claim 1.
We have considered each of Appellants' contentions set forth in the
Appeal Brief (App. Br. 17-20) and Reply Brief (Reply Br. 14-17), but do not
find them persuasive for the reasons discussed infra.
The Examiner found Cheng discloses coating metallic material on all
inner surfaces of an outer container to protect a contained article, but may
not teach coating on outer surfaces. (Ans. 4). The Examiner found Sawaya
teaches coating metallic material on all outer surfaces of a container "to
provide protection of the same general type taught by Cheng." (Id.). The
Examiner concluded that it would have been obvious to one of ordinary skill
in the art in view of Sawaya to coat the outer surfaces of Cheng's container,
in addition to or instead of the coating on the inner surfaces, "to provide
additional protection to contained articles, or in order to more economically
provide the noted protection." (Id.).
Cheng discloses an electrostatic discharge-free container for holding
articles made of an electrically insulating material to prevent electrostatic
discharge (ESD). (Cheng col. 1, ll. 6-11). As noted by the Examiner (Ans.
8), Cheng discloses that in the semiconductor fabrication process, articles
including wafers, reticles, and other substrates used for building IC devices
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are transported in containers. (Cheng col. 1, ll. 14-18). Cheng discloses the
use of reticles in making electronic circuits, and how static electricity or
ESD develops on surfaces of articles made of insulating materials. (Cheng
col. 1, ll. 18-48). Cheng discloses that ESD damage is frequently
encountered during a reticle handling process. (See Cheng col. 2, ll. 56-58).
Cheng's container is equipped with a metal shield to address this problem.
(Cheng col. 3, ll. 8-13). Sawaya discloses that the tape member does not
permit moisture or radiation to pass through it, and has impact and heat
resistance. (Sawaya col. 2, ll. 35-41).
Appellants contend that the Examiner has not shown that the applied
prior art would have been considered in the "technical grasp" of one of
ordinary skill in the art. (App. Br. 18). Appellants contend that Sawaya is
non-analogous art, because: "it discloses that the wrapping member is used
to shield integrated circuits from the moisture in the atmosphere" (Id.), and
does not pertain to protective packaging of articles sensitive to electrostatic
discharge and electromagnetic fields to protect the articles from the same
(Id. at 19); it teaches the use of a wrapping member to protect finished
integrated circuits, while Cheng teaches an electrostatic discharge free
container for holding and protecting a reticle plate used to make a finished
semiconductor device (Id.); and it does not disclose a wrapping member
structurally designed for holding a reticle plate (Id.). These contentions are
not persuasive.
The analogous-art test requires that a prior art reference be either in
the field of the applicant's endeavor, or reasonably pertinent to the problem
with which the inventors were concerned, in order to rely on that reference
as a basis for rejection. See In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir.
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1992). Appellants do not contend that Cheng is non-analogous prior art. In
response to Appellants' contentions regarding Sawaya, the Examiner stated
that "protection from electromagnetic fields and radiation, impact, heat,
moisture, etc., are all well known to any one of ordinary skill in the art of
packaging sensitive electronic components of the kind taught in each
reference." (Ans. 7-8). The Examiner also found Cheng discloses the use of
containers to transport various substrates including wafers and reticles used
to fabricate integrated circuits, and also providing metal shielding in such
containers to protect against electrostatic discharge. (Id. at 8). Sawaya
discloses the use of metal shielding to protect integrated circuits against
radiation, and other factors. The Examiner found Sawaya's articles are
intended to contain semiconductors, which need to be protected from
electrostatic discharge. (Id.). Appellants have not apprised us of any error
in these findings.
To the extent that Appellants contend that it would not have been
obvious to combine the teachings of Cheng and Sawaya because they
allegedly relate to different technical problems, Appellants have not
persuasively argued that they do. Moreover, the Examiner is not required to
look only to the particular problem Appellants were trying to solve. KSR
Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) ("Under the correct
analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed.").
Appellants also contend one skilled in the art would not be presumed
to be aware of the teachings of both Cheng and Sawaya because of their
differing classifications. (App. Br. 20). In response, the Examiner
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explained that both references are classified in the same general area. (Ans.
8-9). Moreover, evidence of divergent classification "is inherently weak . . .
because considerations in forming a classification system differ from those
relating to a person of ordinary skill seeking solution for a particular
problem." In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982).
Accordingly, this contention is also not persuasive.
Appellants also contend that Cheng teaches away from coating its
outer surface with the wrapping member disclosed by Sawaya, and "one
skilled in the art would view the addition of Sawaya's wrapping member as
adding unnecessary complexity and cost to the design of the reticle pod 50."
(Reply Br. 16-17). To the extent that Appellants contend that the Examiner's
combination of Cheng and Sawaya would result in a container that may be
less-preferred, "[c]ase law does not require that a particular combination
must be the preferred, or the most desirable, combination described in the
prior art in order to provide the motivation for the current invention." See In
re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). "The prior art's mere
disclosure of more than one alternative does not constitute a teaching away
from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed . . . ." Id. at 1201.
Here, Appellants have not shown that Cheng criticizes, discredits, or
otherwise discourages the Examiner's combination. Accordingly, this
contention is also not persuasive.
As discussed supra, the Examiner articulated a rationale why one
skilled in the art would have desired to combine the reference teachings, that
is, "to provide additional protection to contained articles, or in order to more
economically provide the noted protection." Appellants do not persuasively
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explain why the Examiner's reasoning is either unreasonable, or not based on
rational underpinnings. In view of the above, we sustain the obviousness
rejection of claim 1-12, 14-17, and 21-23 based on the combination of
Cheng and Sawaya.
DECISION
The Examiner's decision rejecting claims 1-12, 14-17, and 21-23 is
AFFIRMED.
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

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