Ex Parte Tsai

Board of Patent Appeals and Interferences

Sep 30, 2005

10060494 (B.P.A.I. Sep. 30, 2005)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte YU-HSUAN TSAI
__________
Appeal No. 2005-2618
Application No. 10/060,494
____________
ON BRIEF
____________
Before DIXON, GROSS, and SAADAT, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL AND REMAND TO THE EXAMINER
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-13, which are all of the
claims pending in this application.
We reverse and remand.
BACKGROUND
Appellant’s invention is directed generally to a microchip
manufacturing equipment, and specifically, to an electronic data
card that accompanies a wafer container. The data card includes
at least one light emitter that is operable in response to a
microprocessor to convey information related to the manufacturing
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process and equipment. An understanding of the invention can be
derived from a reading of exemplary independent claim 1, which is
reproduced as follows:
1. Apparatus for visually conveying information to a human
operator in a manufacturing process comprising:
a container for transporting work in progress used in the
manufacturing process;
an electronic data card that follows the container through
at least a portion of the manufacturing process, said electronic
data card including a microcomputer and containing data related
to one or more of the manufacturing process and related
equipment; and
at least one light emitter associated with the electronic
data card and operable in response to a set of instructions
executed by said microcomputer to visually convey predetermined
information directly to a human operator about one or more of the
manufacturing process and related equipment.
The following reference is relied on by the Examiner:
Bonora et al. (Bonora) 5,570,990 Nov. 5, 1996
Claims 1-13 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Bonora.
Rather than reiterate the opposing arguments, reference is
made to the brief and answer for the respective positions of
Appellant and the Examiner. Only those arguments actually made
by Appellant have been considered in this decision. Arguments
which Appellant could have made but chose not to make in the
briefs have not been considered (37 CFR § 41.37(c)(1)(vii)).
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OPINION
A rejection for anticipation requires that the four corners
of a single prior art document describe every element of the
claimed invention, either expressly or inherently, such that a
person of ordinary skill in the art could practice the invention
without undue experimentation. See Atlas Powder Co. v. Ireco
Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999);
In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed.
Cir. 1994).
Appellant acknowledges that the data card 232-1 described in
Bonora has light emitters as it communicates with the
communication means 236 which includes photodetectors and
responds to data transmitted by light emitting diode (brief, page
12). Appellant further argues that both units have LEDs used for
serial communication of data from one piece of equipment to
another instead of the visual direct communication to a human
operator without the use of an intermediary photodetector, as
recited in claim 1 (brief, page 15).
In response, the Examiner relies on the discussion of a
display in Bonora (col. 9, lines 2-11) and the teachings related
to the communications means 236 (col. 8, lines 40-46) and
characterizes the operator’s interaction with the container
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loader as the claimed visually conveying information directly to
a human operator (answer, page 3). The Examiner further takes
the position that since a keyboard, usable by an operator, is
included, the information from the data card is communicated to
the operator (answer, page 4).
After reviewing Bonora, we remain unconvinced by the
Examiner’s position that the disclosed data card actually conveys
information visually and directly to a human operator in response
to instructions executed by a microprocessor. Bonora, in all the
Figures and as described in the relevant portions of the
disclosure, depicts data cards that communicate with
communication means installed on the equipment or the loader.
For example, Figure 10 shows the data card 232-1 in close
proximity of the communication means 236 for exchanging container
and processing information between two equipments (col. 8, lines
37-45). The information that is eventually conveyed to the
operator is through the processor and the keyboard or the display
on the equipment, i.e., the mobile loader stocker 110 (figures 4
& 11; col. 9, lines 1-19). Therefore, as pointed out by
Appellant, the data card of Bonora must send data through the
communication means 236 to a CPU and the display of the equipment
in order to convey any information to a human operator.
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Claim 1 requires at least one light emitter associated with
the data card to visually convey information directly to a human
operator. What a reference teaches is a question of fact. In re
Baird, 16 F.3d 380, 382, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994)
(citing In re Beattie, 974 F.2d 1309, 1311, 24 USPQ2d 1040, 1041
(Fed. Cir. 1992)). Here, the Examiner has not pointed to any
teaching in Bonora that would have conclusively established that
the data card 232-1, other than communicating with the
communication means 236, visually conveys any information
directly to an operator. In fact, the proximity of the data card
to the tracking unit on the equipment, indicates that the
communication was not intended to be with the operator.
In view of the discussion above, we find that Bonora fails
to teach every recited limitation recited and therefore, cannot
anticipate claim 1. Claims 7 and 11 include similar limitations
related to visually conveying information directly to a human
operator which, as discussed above with respect to claim 1, is
absent in Bonora. Accordingly, as the Examiner has failed to set
forth a prima facie case of anticipation, the 35 U.S.C. § 102
rejection of independent claims 1, 7 and 11 as well as claims
2-6, 8-10, 12 and 13, dependent thereon, over Bonora cannot be
sustained.
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REMAND TO THE EXAMINER
Pursuant to our authority under 37 CFR § 41.50(a)(1), we
remand this application to the Examiner to consider rejecting
claims 1-13 over the Appellant’s admitted prior art (AAPA) in The
Background of Invention section (¶ 0004), alone or in combination
with additional prior art.
We observe that AAPA describes a data card including a light
emitter in the form of an alphanumeric liquid crystal display for
displaying the stored information. An operator may request
display of information related to the process and the container.
We also note that although the operator has to request the
information by pressing buttons and/or toggling through lines of
stored data to find the desired information, nonetheless,
predetermined information is visually and directly conveyed to a
human operator by the at least one light emitter or the liquid
crystal display.
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CONCLUSION
In view of the foregoing, the decision of the Examiner to
reject claims 1-13 under 35 U.S.C. § 102 is reversed. The
application is remanded to the Examiner for the reasons discussed
above.
REVERSED and REMANDED
)
JOSEPH L. DIXON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ANITA PELLMAN GROSS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
MDS/ki
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