Ex Parte Yudoovsky et al

Board of Patent Appeals and Interferences

Feb 16, 2012

12246086 (B.P.A.I. Feb. 16, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/246,086 10/06/2008 Joseph Yudoovsky 009406D1/PPC/CMP/CKIM 5419
44257 7590 02/16/2012
PATTERSON & SHERIDAN, LLP - - APPM/TX
3040 POST OAK BOULEVARD, SUITE 1500
HOUSTON, TX 77056
EXAMINER
BLAN, NICOLE R
ART UNIT PAPER NUMBER
1714
MAIL DATE DELIVERY MODE
02/16/2012 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 JOSEPH YUDOOVSKY and HUL CHEN
____________________

Appeal 2011-006238
Application 12/246,086
Technology Center 1700
____________________

Before TERESA STANEK REA, Deputy Under Secretary of Commerce for
Intellectual Property and Deputy Director of the United States Patent and
Trademark Office, and BRADLEY R. GARRIS and RAE LYNN P.
GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention relates to a substrate handler for use in a
planarization system having an integrated substrate cleaner (Spec. ¶ [0008]).
The substrate handler allows for increased throughput due to decoupling of
Appeal 2011-006238
Application 12/246,086

2
the movements of first and second robots via separate actuators (Id.). The
two independent claims 1 and 4 are illustrative:
1. A method for cleaning a substrate comprising:
in a substrate cleaner having a first and a second robot positionable
along a first axis of motion over a plurality of cleaning modules;
retrieving a substrate from an input module and placing the substrate
in a first cleaning module by the first robot;
retrieving the substrate from the first cleaning module and placing the
substrate in the second cleaning module by the first robot;
retrieving the substrate from the second cleaning module and placing
the substrate in a third cleaning module by the first robot;
retrieving the substrate from the third cleaning module and placing the
substrate in a dryer by the second robot; and
retrieving the substrate from the dryer and placing the substrate in an
output module by the second robot.
4. A method for cleaning a substrate comprising:
utilizing only a first and a second robot to move substrates through a
cleaner of a polishing system, wherein the second robot performs all
substrate transfers to a drying module of the cleaner and to an output
module.
Figure 2, reproduced below, depicts a front view of a substrate
handler 166 including a first robot 168 and a second robot 170 according to
the present invention (Spec. ¶¶ [0015], [0035], and [0037]).
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Appeal 2011-006238
Application 12/246,086

5
As illustrated in Figure 8, RT1 has a movable range that extends from
a buffer station 6 (input module) through cleaning stations 10-15 (Ohshimo,
¶ [0057], Figure 8). RT2 has a movable range that extends from cleaning
stations 10-15 through dryer 20 (id.). RT3 has a movable range that includes
dryer 20 and substrate unloading unit 36 (output module) (id.).2 Considering
the movable ranges disclosed in Ohshimo, RT2 would be capable of moving
a substrate from the cleaning stations 10-15 to dryer 20, but would not be
capable of moving a substrate from dryer 20 into output 36. RT3 would be
capable of moving a substrate from dryer 20 into output 36, but would not be
capable of moving a substrate from a cleaning station into dryer 20.
The Examiner contends that the term “second robot” is sufficiently
broad to encompass the combined structure of RT2 and RT3, which together
perform the functions of the second robot recited in claims 1 and 4 (Ans. 4,
6, and 9-10), namely transferring a substrate to a drying module (from a
cleaning station) and to an output module (see e.g. claim 4).3

2 Stations 8 and 9 are fastener washing tanks for washing the extremities of
substrate transporting devices RT1-RT3 (Ohshimo, ¶ [0049]), which are not
relevant to this analysis.

3 In the “Response to Arguments” section of the Answer, the Examiner, for
the first time, expresses an alternative rationale for unpatentability, which is
that it would have been obvious to one of ordinary skill in the art to
transform the RT2 and RT3 devices of Ohshimo into a single device, citing
In re Larson, 340 F.3d 965, 968 (CCPA 1965) (Ans. 10). This abstract
rationale is completely unrelated to the claim interpretation rationale of the
Examiner’s stated rejections. We decline to consider this new rationale
because it implicitly constitutes an unauthorized new ground of rejection.
The “Response to Arguments” section of the Answer is not an appropriate
place to raise a new rationale for unpatentability.

Appeal 2011-006238
Application 12/246,086

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Appellants contend that the Examiner’s interpretation of the term
“robot” as encompassing the combined structure of RT2 and RT3 is
unreasonably broad and does not comport with reasonable construction of
the claims at issue (Br. 11 and 14).4
II. DISPOSITIVE ISSUE
The dispositive issue arising from the contentions of the Examiner and
Appellants is: have Appellants provided persuasive support for their view
that the Examiner’s interpretation of the term “second robot” is
unreasonably broad? We answer this question in the negative.
III. DISCUSSION
Claims are to be given their broadest reasonable interpretation
consistent with the specification as they would be interpreted by one of
ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)
(“[T]he PTO applies to the verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant's specification.”).
Construing claims broadly during prosecution is not unfair to a patentee
because the patentee has the opportunity to amend the claims to obtain more
precise claim coverage. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004); see also Morris, 127 F.3d at 1056 (“It is the

4 Much of Appellants’ Brief is directed to the fact that not one of devices
RT1, RT2, or RT3, alone, would have been capable of performing the
function recited in the claims for the “second robot” (Br. 10-11), a position
not disputed by the Examiner.

Appeal 2011-006238
Application 12/246,086

7
applicants’ burden to precisely define the invention, not the PTO’s.”) (citing
35 U.S.C. § 112 ¶ 2).
A patentee may demonstrate an intent to deviate from the ordinary
and accustomed meaning of a claim term by including in the specification
expressions of manifest exclusion or restriction, representing clear disavowal
of claim scope. Am. Acad. of Sci. Tech. Ctr. at 1365.
Appellants have chosen to claim the “first robot” and the “second
robot” not by any particular structure, but by the functions they perform.5
The ordinary meaning of the term “robot,” likewise, is unlimited as to any
particular structure and is only a generic machine or device that operates
automatically or remotely.
Appellants have not identified (and we do not find) anything in their
Specification that conveys any special meaning for, or restrict the meaning
of, the general term “robot.” While the Specification references a particular
embodiment of a “second robot” 170, as illustrated in Figure 2, Appellants
do not advocate reading (and we decline to read) into the otherwise very
broad term “robot” any particular structural limitations from the disclosed
embodiment. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)
(“[A]lthough the specification often describes very specific embodiments of
the invention, we have repeatedly warned against confining the claims to
those embodiments.”).
Appellants have not proposed any particular features, supported by the
Specification on which to limit the scope of term “robot.” Although
Appellants state that, “[i]n the context of the present application, a person

5 Appellants do not dispute that the combined structure of RT2 and RT3
performs the functions of the “second robot” recited in the claims (see
generally Br.).
Appeal 2011-006238
Application 12/246,086

8
skilled in the art would understand the term ‘robot’ to be an individual and
distinct unit” (Br. 11-12 and 15), Appellants provide no support for why the
skilled artisan would make such an interpretation of the claim term.
Appellants’ attorney arguments do not take the place of evidence in the
record. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Even assuming
that a robot is an “individual and distinct unit,” as argued by Appellants,
Appellants fail to define the term “unit” so as to exclude the combined
structure of RT2 and RT3.6
On review of the record before us, we are not persuaded that the
Examiner was incorrect in determining that the broadest reasonable
interpretation of the claim term “robot,” unmodified by any particular
structure, mandates a meaning of the term that is different than its customary
meaning as would be understood by one of ordinary skill in the art. Thus,
we conclude that the term “second robot” of claims 1 and 4 does not
reasonably restrict the claims so as to exclude the combined structure of RT2
and RT3 of Ohshimo.
IV. CONCLUSION
On the record before us, we sustain the rejections maintained by the
Examiner.
V. DECISION
The decision of the Examiner is affirmed.

6 Appellants’ arguments with respect to the independent and distinct nature
of the devices of Ohshimo (Br. 12 and 15; Reply Br. 3) are not relevant to
the meaning of the term “robot” recited in Appellants’ claim.
Appeal 2011-006238
Application 12/246,086

9
VI. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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