Ex Parte Bachrach

Board of Patent Appeals and Interferences

Apr 14, 2009

10444530 (B.P.A.I. Apr. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ROBERT Z. BACHRACH
____________________

Appeal 2008-6246
Application 10/444,530
Technology Center 3600
____________________

Decided:1 April 14, 2009
____________________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
Robert Z. Bachrach (Appellant) seeks our review under 35 U.S.C.
§ 134 from a final rejection of claims 26 to 37 and 39 to 49. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention pertains to an apparatus for handling
semiconductor wafer carriers in a semiconductor substrate manufacturing
facility. (Spec. 1, ll. 9-23.) Claim 26, reproduced below, is representative of
the subject matter on appeal.
26. An apparatus for storing and moving wafer carriers,
comprising:
a storage apparatus frame adapted to be positioned
adjacent an overhead transport mechanism adapted to support a
plurality of wafer carriers and transport the plurality of wafer
carriers along a wafer carrier transport path;
at least one shelf supported by the frame and adapted to
support and store a wafer carrier; and
a movable portion supported by the frame, the movable
portion being adapted to extend and retract relative to the
frame, so as to contact a wafer carrier supported by the
overhead transport mechanism, and so as to remove the wafer
carrier from the overhead transport mechanism, such that the
movable portion supports the wafer carrier and the adjacent
overhead transport mechanism no longer supports the wafer
carrier.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Matsumoto US 5,372,241 Dec. 13, 1994
Weiss US 6,454,512 B1 Sept. 24, 2002
Bonora US 6,579,052 B1 June 17, 2003

Appellant’s Admitted Prior Art (AAPA), Specification pages 1 and 2.
The following rejections are before us for review:
1. Claims 26-36 and 41-49 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over AAPA, Matsumoto, and Bonora;
2. Claims 37, 39, and 40 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over AAPA, Matsumoto, Bonora, and Weiss.
Appellant identifies claims 26 to 49 as the claims on appeal. (“Brief
on Appeal (Second Resubmitted Appeal Brief),” dated Sept. 15, 2006 (App.
Br.) 3.) However, claim 38 is subject only to an objection as being
dependent upon a rejected base claim. (Id.; Final Rej. 4.) Appellant does
not appear to seek our review of the objection to claim 38. (See App. Br. at
7; see also id. at 18 (requesting that the Board “indicate the allowability of
application claims 26 through 37 and 39 through 49”).) As Appellant notes
(id. at 3), the Examiner indicated that claim 38 would be allowable if
rewritten in independent form (Final Rej. 4). Because claim 38 is not the
subject of a rejection, the objection thereto does not present a matter within
the jurisdiction of the Board. Cf. In re Mindick, 371 F.2d 892, 894 (CCPA
1967).

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ISSUES
The issues before us include whether the Appellant has shown that the
Examiner erred in rejecting claims 26-36 and 41-49 under 35 U.S.C.
§ 103(a) as being unpatentable over AAPA, Matsumoto, and Bonora. This
issue turns on whether the cited references disclose all of the limitations of
the rejected claims and whether a rational reason exists as to why one of
ordinary skill in the art would have combined the references to arrive at the
claimed subject matter.
The issues before us also include whether the Appellant has shown
that the Examiner erred in rejecting claims 37, 39, and 40 under 35 U.S.C.
§ 103(a) as being unpatentable over AAPA, Matsumoto, Bonora, and Weiss.
This issue turns on whether the cited references disclose all of the limitations
of the rejected claims.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Appellant’s Admitted Prior Art (AAPA) teaches that the
following were known in the art: an overhead wafer carrier transport
mechanism, a storage buffer with at least one shelf, a robot to transfer the
wafer carrier between locations, and kinematic mounts on wafer carriers.
(Spec. 1, l. 15 – 2, l. 20.) Appellant explains that kinematic mounts are
mechanical couplings used to align a wafer carrier on a platform. (Spec. 2,
ll. 11-13.)
2. Matsumoto discloses an automated system for carrying objects
between production regions and for transferring the objects from one carrier
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means to another. (Matsumoto, col. 1, 16-21; col. 2, ll. 8-13.) Matsumoto
teaches a first carrier 12 that moves along a gantry-like bridge member 11.
(Id., col. 2, l. 68 – col. 3, l. 4.) A second carrier 22 travels on an overhead
track 21 and carries object 4 between production regions. (Id., col. 3, ll.
4-11; Figs. 3, 4.) The first carrier 12 comprises a loading table 122, upon
which object 4 is loaded, and rod-like support member 121 mounted below
the loading table 122. (Id., col. 3, ll. 22-26.) The support member 121
vertically telescopically supports the table (id.), and is mounted to a first
driving unit in the bridge member 11 (id., col. 3, ll. 27-30).
3. During operation, Matsumoto’s second carrier 22 transports
object 4 and moves into a position over the first carrier 12. (Matsumoto,
col. 5, ll. 55-60; Fig. 4.) The support member 121 of the first carrier 12
extends upwardly to lift the loading table 122, such that object 4 is
transferred from the second carrier 22 to the first carrier 12. (Id., col. 5, ll.
60-64.) The support member 121 of the first carrier 12 is also capable of
contracting to lower the loading table 122. (Id., col. 5, ll. 51-55.) During
this transfer operation, the loading table 122 is vertically aligned with the
carrier transport path. (Id., Fig. 4.)
4. The vertical, double-headed arrow in Matsumoto’s Figure 4
further indicates that the loading table 122 extends and retracts, via
telescoping support member 121, relative to the bridge member 11.
5. Therefore, Matsumoto discloses, at least inherently, an actuator
adapted to extend and retract the loading table 122 relative to the bridge
member 11.
6. Bonora discloses a conventional local tool buffer 10 to store
wafer-carrying pods adjacent to a process tool 12. (Bonora, col. 2, ll. 18-26,
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50-54; Fig. 1A.) Bonora further discloses a plurality of shelves 18 supported
by the buffer frame. (See id., col. 2, ll. 26-29; Fig. 1A.) The shelves are
capable of supporting and storing wafer-carrying pods. (Id., col. 2, ll. 26-29,
50-54.)
7. Bonora also discloses that “it is known to transfer [wafer-
carrying] pods around within a tool bay on an overhead delivery system
which may comprise a series of pod hand-off interfaces for transferring pods
to vertical elevators which in turn lower the pods into the local buffer or
directly down onto the tool load port.” (Bonora, col. 9, ll. 14-19.)
8. Bonora teaches a moving gripper 120 which grips wafer-
carrying pods and transfers the pods from one location to another.
(Bonora, col. 10, l. 62 – col. 11, l. 12.) One of Bonora’s embodiments has
autokinematic pins 150 on a plate 148 mounted on the top side of the bracket
140 which supports the gripper 120. (Id., col. 12, l. 61 – col. 13, l. 1; Fig. 7.)
The autokinematic pins 150 mate with detents on the lower surface of a pod
132 so as to securely hold the pod on the plate. (Id., col. 13, ll. 5-13.)
9. Bonora states that the disclosed “storage, delivery and retrieval
system may be provided in various orientations with respect to the process
tool it is serving.” (Bonora, col. 4, ll. 38-40.) Bonora further teaches that
various configurations of shelves may be used, and that the shelves may be
positioned as needed for a particular application. (Id., col. 4, ll. 47-51; col.
8, ll. 42-56.)
10. Weiss discloses a cart 12 for transporting and delivering wafer
carriers 18 to loadports. (Weiss, col. 1, ll. 30-35; col. 2, ll. 50-52.) Weiss’s
cart 12 has a carrier support assembly 16 mounted to the frame 14. (Id., col.
1, ll. 33-38; col. 2, ll. 50-52.) “The carrier support assembly comprises a
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cradle configured to support the carrier, a lifting mechanism operative to
raise and lower the cradle vertically, and a horizontal slide mechanism
operative to move the cradle horizontally to and from a position outboard of
the cart.” (Id., col. 1, ll. 38-42.) Thus, Weiss discloses a movable cradle
adapted to extend laterally relative to the frame supporting the cradle and
beyond the footprint of the frame.
11. The prior art of record indicates that the person of ordinary skill
in the art of wafer carrier handling has a high level of skill. (See, e.g.,
Bonora, col. 1, l. 25 – col. 2, l. 34; Matsumoto, col. 1, ll. 15-47.)

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, ___,
127 S. Ct. 1727, 1734 (2007) (quoting 35 U.S.C. § 103). The question of
obviousness is resolved on the basis of underlying factual determinations
including: (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, (3) the level of skill
in the art, and (4) where in evidence, so-called secondary considerations.
Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); see also KSR Int’l
Co., 550 U.S. at ___, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”). The scope and content of the
prior art includes the explicit and inherent teachings of the prior art. In re
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Zurko, 258 F.3d 1379, 1383-84 (Fed. Cir. 2001) (citing In re Napier, 55 F.3d
610, 613 (Fed. Cir. 1995)).
In KSR, the Supreme Court emphasized “the need for caution in
granting a patent based on the combination of elements found in the prior
art,” KSR Int’l Co., 550 U.S. at ___, 127 S. Ct. at 1739, and discussed
circumstances in which a patent might be determined to be obvious. The
Court noted that “when a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result.” Id. at ___, 127 S. Ct. at 1740 (citing United States v. Adams, 383
U.S. 39, 50-51 (1966)). The operative question in this “functional approach”
is thus “whether the improvement is more than the predictable use of prior
art elements according to their established functions.” Id. at ___, 127 S. Ct.
at 1740.
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).

ANALYSIS
The Rejection of Claims 26-36 and 41-49 Under 35 U.S.C. § 103(a) as
Being Unpatentable Over AAPA, Matsumoto, and Bonora
Independent Claims 26 and 41
Appellant argues independent claims 26 and 41 as a group. (See App.
Br. 7, 10, 11, 14.) We select claim 26 as the representative claim, and claim
41 stands or falls with claim 26. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
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AAPA teaches that an overhead wafer carrier transport mechanism
and a storage buffer with at least one shelf were known in the art. (Fact 1.)
Bonora elaborates on the configuration of a conventional storage buffer by
disclosing a storage frame supporting several wafer carrier shelves. (Fact 6.)
Bonora further discloses that it was known to transport wafer-carrying pods
via an overhead delivery system comprising a series of pod interfaces
transferring the pods to vertical elevators which lower the pods into the local
storage buffer. (Fact 7.) Matsumoto teaches a movable portion supported
by a frame (the bridge member) and positioned under an overhead transport
mechanism. (Facts 2-4.) Matsumoto’s movable portion extends and retracts
relative to the frame so as to remove wafer carriers from the overhead
transport mechanism. (Facts 3-4.) It would have been obvious to replace
one of Bonora’s shelves with Matsumoto’s support member and loading
table so as to transfer the wafer carrier directly from the overhead transport
to the storage buffer without the need for additional interfaces. This is
merely a simple substitution of one known element for another to obtain
predictable results. See KSR Int’l, 550 U.S. at ___, 127 S. Ct. at 1740.
Appellant argues that the Examiner erred in finding that Matsumoto
discloses the recited storage apparatus frame. (App. Br. 9.) Appellant
contends that Matsumoto’s “bridge member 11 (along with the carrier 12)
appears to be part of a carrier system and not a frame of a storage apparatus
58 as recited by Applicant’s claims.” (Id.) Appellant’s argument is not
persuasive as the rejection is based on the combined teachings of the cited
references, and Bonora teaches a frame for storing wafer containers (Fact 6).
Appellant also argues that Matsumoto’s movable portion moves solely
linearly along the frame, but does not extend and retract vertically relative to
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the frame. (App. Br. 10.) Appellant’s argument ignores Matsumoto’s
disclosure of a loading table with a support member that extends and retracts
vertically relative to the bridge member (Facts 2-4).
Appellant further asserts that the cited references fail to teach a single
frame that supports both a shelf and a movable portion. (App. Br. 11.) This
argument is not persuasive because the combination of references teaches a
single frame supporting a shelf, as disclosed in Bonora, and a movable
portion, as disclosed in Matsumoto.
Appellant also argues that “the Examiner has not provided the
required explicit or implicit motivation to combine the references that is
absolutely required to support a § 103 rejection” (App. Br. 12), and that
impermissible hindsight has been employed (id. at 13). The Supreme Court
has rejected the rigid requirement of a teaching, suggestion or motivation to
combine known elements in order to show obviousness. KSR Int’l Co., 550
U.S. at ___, 127 S. Ct. at 1741. And, for the reasons discussed above, we
disagree with the argument that the conclusion of obviousness is based on
impermissible hindsight.
Appellant has failed to persuade us that the Examiner erred in
rejecting claim 26 as obvious over the cited references. Thus, we affirm the
rejection of claim 26 as well as the rejection of claim 41, which falls with
claim 26.

Dependent Claims 27-36 and 42-49
Appellant asserts that dependent claims 27 through 36 and 42 through
49 are separately patentable. (See App. Br. 14.) However, for each claim,
Appellant offers little more than a statement that a recited feature renders the
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claim patentable and that the references do not disclose the feature. (App.
Br. 14-17.) Appellant does not explain or show with specificity why
the Examiner’s findings as to particular features and the Examiner’s
obviousness determinations are incorrect (Final Rej. 2-4; Ans. 3-5, 9-11).
Appellant’s conclusory assertions of patentability do not persuade us of
Examiner error.
As to claim 27, Appellant asserts that recitation of a movable portion
vertically aligned with the carrier transport, “as opposed, for example,
to being horizontally aligned,” imparts patentability. (App. Br. 15.)
Appellant’s assertion is not persuasive because Matsumoto teaches this
feature. (Fact 3.)
For each of claims 28-30 (concerning the quantity and location of the
shelves), Appellant further asserts that “the Examiner does not appear to
have addressed [the recited feature.]” (Id.) The Examiner did address the
recited features, and properly found that Bonora teaches a plurality of
shelves and that the shelves may be placed at any location on the frame as
needed (Final Rej. 3; Ans. 4-5). (See Fact 9.) Further, the Examiner
reasonably concluded that a person of ordinary skill could readily configure
the location of the overhead transport and the shelves to meet the design
needs of a particular system (Ans. 10). (See Facts 9, 11.)
Claim 31 recites that the movable portion is adapted so as to
kinematically couple with the wafer carrier. Appellant asserts that “[t]he
[autokinematic] pins disclosed in Bonora are on a separate robot and not on
an apparatus equivalent to Appellant’s ‘movable portion.’” (App. Br. 16.)
The kinematic coupling feature does not render the claimed invention
patentable. AAPA discloses that conventional wafer carriers had kinematic
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mounts. (Fact 1.) The wafer carriers in Bonora have detents for kinematic
coupling, and Bonora’s moving gripper bracket has mating pins on its top
side. (Fact 8.) Thus, the inclusion of autokinematic pins on the moving
loading table of Matsumoto is the obvious combination of prior art elements
according to known methods to yield predictable results. See KSR Int’l Co.,
550 U.S. at ___, 127 S. Ct. at 1739.
Appellant has not shown error in the Examiner’s rejection of
dependent claims 27-36 and 42-49.

The Rejection of Claims 37, 39, and 40 Under 35 U.S.C. § 103(a) as Being
Unpatentable Over AAPA, Matsumoto, Bonora, and Weiss
Claims 37, 39, and 40 depend indirectly from independent claim 26.
Appellant contends that claims 37, 39, and 40 are patentable for the same
reasons previously given for claim 26 because Weiss does not overcome the
purported deficiencies of the other cited references. (App. Br. 14.)
Appellant asserts: “Specifically, Weiss does not teach a platform that
extends and retracts relative to the frame to contact a wafer carrier that is
supported by an overhead transport system.” (Id.) As discussed above, we
have found Appellant’s arguments concerning claim 26 to be unpersuasive.
Claims 37, 39, and 40 recite that the movable portion is adapted to
extend laterally relative to the frame. Weiss teaches a movable carrier
support assembly adapted to extend vertically and laterally relative to the
supporting frame. (Fact 10.) To replace one of the shelves on Bonora’s
storage buffer with the carrier support assembly disclosed by Weiss would
have been prima facie obvious as a simple substitution of one known
element for another to obtain predictable results. Appellant identifies each
of these three dependent claims under separate headings, but, for each,
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merely states that the claim recites a feature that renders the claim patentable
and that the feature has not been identified in the cited references. (App.
Br. 17-18.) Appellant does not explain or show with any specificity why
the Examiner’s findings regarding the recited features are incorrect (Final
Rej. 4; Ans. 5-6). As such, Appellant has failed to show that the Examiner
erred in rejecting claims 37, 39, and 40 as obvious over the cited references.

CONCLUSIONS
We conclude that the Appellant has failed to show that the Examiner
erred in rejecting claims 26-36 and 41-49 under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Matsumoto, and Bonora. We also conclude that
Appellant has failed to show that the Examiner erred in rejecting claims 37,
39, and 40 under 35 U.S.C. § 103(a) as being unpatentable over AAPA,
Matsumoto, Bonora, and Weiss.

DECISION
The decision of the Examiner to reject claims 26 to 37 and 39 to 49
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) (2007).

AFFIRMED

vsh

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