Ex Parte Turk et al

Patent Trial and Appeal Board

Apr 10, 2014

11462915 (P.T.A.B. Apr. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRANDON A. TURK, BERND BURFEINDT,
and DAVID S. KNOWLES
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Appeal 2012-005500
Application 11/462,915
Technology Center 2800
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Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
CHRISTOPHER M. KAISER, Administrative Patent Judges.

KAISER, Administrative Patent Judge

DECISION ON APPEAL

Appeal 2012-005500
Application 11/462,915

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This is an appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1-10, 18-26, 29, and 30.1 We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

OPINION

A. Introduction
Appellants disclose a “thin beam directional crystallization system
configured to anneal a silicon layer on a glass substrate,” which is useful for
preparing the silicon layer for “fabrication of [thin-film transistors] for
active matrix [liquid crystal displays].” Spec. 2-3 ¶ [0007], 6 ¶ [0019].
Claim 1, quoted below, is representative of the claimed invention:
1. A device for processing substrates comprising:
a laser configured to produce laser light using a laser firing
period;
beam shaping optics coupled to the laser and configured to
convert the laser light emitted from the laser into a long thin
beam with a short axis and a long axis; and
a stage configured to support a substrate; and

1 Claims 1-30 were initially appealed. Br. 1. In the Reply Brief, Appellants
purported to cancel claims 11-17, 27, and 28 and maintain the appeal as to
the other claims. The cancellation of claims cannot be accomplished in an
appeal reply brief. 37 C.F.R. § 1.4(c) (“each distinct subject, inquiry, or
order must be contained in a separate paper”). We treat the purported
cancellation of claims 11-17, 27, and 28 as a withdrawal of those claims
from the pending appeal. Pursuant to § 1215.03 of the Manual of Patent
Examining Procedure (MPEP), 8th ed., 8th rev. (July 2010), the version of
the MPEP in use at the time of the notice of appeal, the “withdrawal of the
appeal as to some of the claims on appeal operates as an authorization to
cancel those claims from the application or reexamination proceeding and
the appeal continues as to the remaining claims.”
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a translator, coupled with the stage,
the translator receiving instructions from a controller, the
controller configured to instruct the translator to advance the
substrate to produce a standard step size in conjunction with the
firing of the laser and produce an overshoot step size at
predetermined intervals, the standard step size being shorter
than the overshoot step size.
Claims App., Br. 16 (some paragraphing added). Independent claim 18
claims a similar device in which the controller is “configured . . . to produce
a non-uniform step size at predetermined intervals,” rather than “to produce
a standard step size . . . and produce an overshoot step size at predetermined
intervals,” as required by claim 1. Claims App., Br. 19.
The Examiner rejected all claims as obvious in light of US Patent
Publication No. 2006/02545002 (“Im”). Final Rejection 2. The Examiner
also rejected all claims as obvious in light of two combinations of prior art:
(1) Im and US Patent Publication No. 2003/01718373 (“Yamazaki A”) and
(2) Im and US Patent No. 6,558,9914 (“Yamazaki B”). We do not address
those rejections, as Appellants argue with respect to all the rejections only
that Im fails to disclose “a ‘translator receiving instructions from a
controller, the controller configured to instruct the translator to advance the
substrate’ to either produce a standard step size in conjunction with the
firing of the laser and an overshoot step size at predetermined intervals, in
the case of claim 1 [or] to produce a non-uniform step size at predetermined
intervals, in the case of claim 18,” Br. 3, and the Examiner does not rely on

2 Im et al., US 2006/0254500 A1, published Nov. 16, 2006.
3 Yamazaki et al., US 2003/0171837 A1, published Sep. 11, 2003.
4 Yamazaki et al., US 6,558,991 B2, issued May 6, 2003.
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Application 11/462,915

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any disclosure in the Yamazaki references to teach this portion of the
claimed subject matter.

B. Discussion
Appellants argue that they and the Examiner “agree that Im fails to
teach a ‘translator receiving instructions from a controller, the controller
configured to instruct the translator to advance the substrate’ to either
produce a standard step size in conjunction with the firing of the laser and an
overshoot step size at predetermined intervals, in the case of claim 1 [or] to
produce a non-uniform step size at predetermined intervals, in the case of
claim 18.” Br. 3 (emphasis in original). Accordingly, Appellants
characterize the sole issue on appeal as “whether these limitations are merely
statements of intended use that . . . do not need to be considered when
determining the patentability of the claims, as consistently argued in
the . . . Office Actions.” Id. We agree with this characterization of the
issue.
Each of Appellants’ claims on appeal recites “[a] device for
processing substrates” or “[a] device for processing silicon films,” so the
claimed subject matter is an apparatus, not a method or process. Claims
App., Br. 16-21. “[A] recitation with respect to the manner in which a
claimed apparatus is intended to be employed does not differentiate the
claimed apparatus from a prior art apparatus satisfying the structural
limitations of that claimed.” Ex parte Masham, 2 USPQ2d 1647, 1648
(BPAI 1987) (emphasis in original). Accordingly, if the claim language “the
translator receiving instructions from a controller, the controller configured
to instruct the translator to advance the substrate to produce a standard step
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size in conjunction with the firing of the laser and produce an overshoot step
size at predetermined intervals, the standard step size being shorter than the
overshoot step size” is a “recitation with respect to the manner in which [the]
claimed apparatus is intended to be employed,” then the recitation of this
language in the claim “does not differentiate the claimed apparatus from”
Im, as long as Im discloses all the structural limitations of the claim. Id.
Appellants argue that the claim language in question requires a
controller as a structural limitation of the claimed apparatus, as opposed to
merely reciting a manner of using a claimed apparatus that includes a laser,
beam-shaping optics, a stage, and a translator. Br. 6. According to
Appellants, this is because they amended the claims to include ‘a
controller . . . configured to instruct the translator . . . ’ such that the claims
are structurally different from Im.” Br. 3. We disagree. Appellants did not
amend the claims to recite the structural limitation “a
controller . . . configured to instruct the translator.” Instead, the claims
recite “the translator receiving instructions from a controller . . . configured
to instruct the translator.” Claims App., Br. 16, 19. Just as in Ex parte
Masham, here the combination of laser, optics, stage, and translator
disclosed in Im “does not undergo a metamorphosis to a new apparatus
merely by affixing instructions thereto indicating that” the translator may
receive instructions from a controller.
2 USPQ2d at 1648.
The only remaining question in the Ex parte Masham inquiry is
whether Im discloses all the structural limitations of Appellants’ claims. It is
undisputed that Im discloses the claimed laser, beam-shaping optics, stage,
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and translator. Final Rejection 2; Br. 3-4. In addition, the Examiner found
as a factual matter that Im discloses a translator that is capable of receiving
instructions from a controller. Final Rejection 4; Ans. 15. Appellants do not
dispute this factual finding. Accordingly, we agree with the Examiner that
Im discloses all the structural limitations of Appellants’ claims.
Thus, Appellants’ only disagreement with the Examiner’s rejections is
that Im fails to disclose a “translator receiving instructions from a
controller . . . .” Br. 3 (quoting language of independent claims 1 and 18).
Because this language is a recitation of a manner of intended use, and
because Im discloses all the structural limitations of the claims, the cited
language is incapable of distinguishing the claimed subject matter over Im,
so its absence in Im is irrelevant to the issue of patentability. Accordingly,
we affirm the Examiner’s rejections of the claims as obvious in light of Im,
alone or in combination with either Yamazaki reference.

C. Order
We affirm the Examiner’s rejections of all claims as obvious.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

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