Brooks Automation, Inc.

Patent Trials and Appeals Board

Dec 15, 2021

2021000991 (P.T.A.B. Dec. 15, 2021)

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.
15/465,326 03/21/2017 Jairo T. MOURA 390-011458-US (C2I1) 1486
106446 7590 12/15/2021
Perman & Green, LLP
99 Hawley Lane
Stratford, CT 06614
EXAMINER
LOWE, MICHAEL S
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
12/15/2021 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 JAIRO T. MOURA, MARTIN HOSEK, TODD BOTTOMLEY,
and ULYSSES GILCHRIST
____________

Appeal 2021-000991
Application 15/465,326
Technology Center 3600
____________

Before BIBHU R. MOHANTY, JENNIFER MEYER CHAGNON, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

This is a decision on rehearing in Appeal Number 2021-000991. We
have jurisdiction under 35 U.S.C. § 6(b).
Requests for Rehearing are limited to matters misapprehended or
overlooked by the Board in rendering the original decision, or to responses
to a new ground of rejection designated pursuant to § 41.50(b). 37 C.F.R.
§ 41.52. Appellants may also present a new argument based upon a recent
relevant decision of either the Board or a Federal Court. 37 C.F.R. § 41.52
(a)(2) (2019).

Appeal 2021-000991
Application 15/465,326
2

ANALYSIS
The Decision mailed September 10, 2021, at pages 4–6 set forth the
basis for determining that the rejection of claim 1 under 35 U.S.C. § 103 as
unpatentable under Kirihata, Woith, and Lee was proper and affirmed.
The Appellant argues that the rejection of claim 1 was improper
because the “purpose of Kirihata is to realize high-speed rotation of a wafer
aligner” and that high-speed rotation “operates with the employment of
active gripping” and that therefore that “Kirihata expressly teaches against
the use of passive edge gripping” which results in slipping and lowered
positional accuracy (Request, 3). The Appellant argues that the rejection
undermines Kirihata which “must nonetheless operate at high speed (i.e.,
with active edge gripping)” (Request, 4). The Appellant also argues that the
“obvious to try” rationale asserting that there are selectable choices for speed
undermines the operation of Kirihata to operate at high-speed (Request, 4).
We have reviewed the Decision in light of the Appellant’s arguments
presented in the Request for Rehearing at pages 2–7, but are not persuaded
that the Decision to sustain the rejection of record was improper.
As noted above, the Decision at pages 4–6 set forth the basis for
determining that the rejection of claim 1 under 35 U.S.C. § 103 as
unpatentable under Kirihata, Woith, and Lee was proper. The Appellant has
not argued that the rejection of record fails to disclose any claim limitations,
but rather instead argues that the cited combination is improper because the
rejection undermines the Kirihata reference which is meant to operate at
“high-speed” (Request, 2–7).
First, as noted in the Decision to some extent, the terms “high-speed”
and “passive gripping” are “relative terms” (Dec. 5). Further, while the
Appellant argues that Kirihata operating at a lower speed would undermine
Appeal 2021-000991
Application 15/465,326
3

the operation of the device, this argument is not persuasive. The Decision
set forth that the modification of Kirihata by Woith, and Lee in the rejection
of record to use a transparent elastomer and passive gripping for the
advantage of having a wafer aligner with less wafer stress and particle
dusting and to allow the operator to see the pad align contact with the wafer
would have been obvious to one of ordinary skill in the art (Dec. 5). If the
features of having less wafer stress and particle dusting were desired, it
would have been obvious to one of ordinary skill in the art to modify the
Kirihata reference in view of Woith and Lee as set forth in the Decision at
pages 4–6.
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734, (2007)
emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art”, id., 127 S. Ct. at 1739, and
discussed circumstances in which a patent might be determined to be
obvious without an explicit application of the teaching, suggestion,
motivation test. In particular, the Supreme Court reaffirmed that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” Id. In KSR,
the Court also stated that when considering obviousness that “the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
127 S. Ct. at 418.
Here, no elements of the claim have been argued as missing from the
cited prior art, rather only that the combination of the prior art is improper
(Request, 2–7). We also disagree with the Appellant’s contention that
Kirihata’s device could not be modified to operate at less than “high-speed”
Appeal 2021-000991
Application 15/465,326
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and to use “passive gripping”. The Decision did not assert that Kirihata
disclosed operation at a low speed, but only that within the cited
combination of references that operation at a low speed would have been an
obvious modification, if desired, at which the machine could be set to
operate. The Appellant at page 7 of the Request also argues that Kirihata did
not disclose passive gripping, but this was shown in the prior art by Lee
(Dec. 5). Further, as noted above, both the terms “high-speed” and “passive
gripping” are relative terms. One of ordinary skill in the art would have
clearly seen an obvious advantage of having a machine such as Kirihata’s
that could operate at a lower speed if desired in order to have less particle
dusting by passive gripping for wafer manufacturing where very clean
manufacturing environments were required in the cited combination.
Further, one of ordinary skill in the art would have clearly recognized that it
is common in many manufacturing machines to have the machines set for
adjustable speed settings (low to high) and to use interchangeable gripping
holders based on the application that the machine is being used for. One of
ordinary skill in the art would clearly recognize the advantage of having a
machine with adjustable speed settings and interchangeable machine
gripping holders; such a machine would reduce cost and space as a different
machine would not be required for each speed setting or gripping holder.
Here, one of ordinary skill in the art would readily have inferred that the
device of Kirihata could be modified to use passive gripping surfaces and
transparent elastomers for the advantage of having a wafer aligner with less
wafer stress and particle dusting and to allow the operator to see the pad
contact the wafer if desired, even if slower speeds were used for higher
quality manufacturing. Therefore, the cited combination would have been
obvious and the rejection is deemed proper.
Appeal 2021-000991
Application 15/465,326
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For these above reasons, the Request for Reconsideration is not
persuasive and the rejection of record under 35 U.S.C. § 103 as unpatentable
under Kirihata, Woith, and Lee is deemed proper.

CONCLUSION
The Appellant’s request for reconsideration has not convinced us that
we have overlooked or misapprehended issues in the previous analysis in
light of the arguments presented.
Outcome of Decision on Rehearing:
Claims 35 U.S.C
§
Reference(s)/Basis Granted Denied
1–4, 6–11,
13, 14
103 Kirihata, Woith,
Lee
1–4, 6–11,
13, 14
Overall
Outcome
1–4, 6–11,
13, 14

Final Outcome of Appeal after Rehearing:
Claims 35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–4, 6–
11, 13, 14
Nonstatory double
patenting
1–4, 6–11,
13, 14

1–4, 6–
11, 13, 14
103 Kirihata, Woith,
Lee
1–4, 6–11,
13, 14

Overall
Outcome
1–4, 6–11,
13, 14

DECISION

REHEARING DENIED