Ex Parte FAN et al

Patent Trial and Appeal Board

Sep 24, 2014

12244548 (P.T.A.B. Sep. 24, 2014)

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.
12/244,548 10/02/2008 Chih-Shen FAN 0941/2293PUS1 2190
60601 7590 09/24/2014
Muncy, Geissler, Olds & Lowe, P.C.
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
EXAMINER
LIU, CHIA HOWMICHAEL
ART UNIT PAPER NUMBER
2882
MAIL DATE DELIVERY MODE
09/24/2014 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 CHIH-SHEN FAN,1
Li-Wei Chen, and I-Chin Sung
________________

Appeal 2013-000982
Application 12/244,548
Technology Center 2800
________________

Before MARK NAGUMO, N. HITNEY ILSON, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Chih-Shen Fan, Li-Wei Chen, and I-Chin Sung (“Fan”) timely appeal
under 35 U.S.C. § 134(a) from the Final Rejection2 of claims 1-19, which
are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6.
We affirm.

1 The Real Party in Interest is listed as VisEra Technologies Company
Limited. (Appeal Brief, filed 11 June 2012 (“Br.”), 2.)
2 Office action mailed 8 November 2011 (“Final Rejection”; cited as “FR”).
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OPINION
A. Introduction3
The subject matter on appeal relates to an adapter frame that holds
small-sized masks (used in photolithographic processes) in an aligner
suitable for larger-sized masks corresponding to larger sized wafers.
(Spec. 1 [0003].)
Claim 1 is representative of the dispositive issues and reads:
An adapter, comprising:
a frame including
an inner edge with a first side, a second side, a third
side and a fourth side,
wherein the first side and the fourth side are opposite
and the second side and the third side are opposite;
at least two fixed hold elements connected to the first side
of the inner edge of the frame;
a plurality of first flexible clip elements connected to the
second and third sides of the inner edge of the frame, and
at least two second flexible clip elements connected to the
fourth side of the inner edge of the frame.
(Claims App., Br. 23; some indentation, paragraphing, and emphasis added.)

3 Application 12/244,548, Adaptor of an aligner system to hold small-sized
mask using clips, 2 October 2008. We refer to the “ʼ548 Specification,” and
cite it as “Spec.”
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Application 12/244,548

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The Examiner maintains the following grounds of rejection:4
A. Claims 1-17 stand rejected under 35 U.S.C. § 102(b) in view
of Heerens.5
A1. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) in
view of Heerens.
B. Findings of Fact
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
C. Discussion
As the Appellant, Fan bears the procedural burden of showing
harmful error in the Examiner’s rejections. See, e.g., Shinseki v. Sanders,
556 U.S. 396, 409-10 (2009) (“Lower court cases make clear that courts
have correlated review of ordinary administrative proceedings to appellate
review of civil cases in this respect. . . . [T]he party seeking reversal
normally must explain why the erroneous ruling caused harm.”) (citations
omitted). See also, In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010)
(discussing the role of harmless error in appeals from decisions of the Board
of Patent Appeals and Interferences (now, the Patent Trial and Appeal
Board)).
Fan’s principal argument is that the Examiner erred in identifying
Heerens’s two top retainers 2036 as the fixed hold elements required by the

4 Examiner’s Answer mailed 19 July 2012 (“Ans.”).
5 Gert-Jan Heerens and Bastiaan Lambertus Wilhelmus Marinus van de
Ven, Assembly of a reticle holder and a reticle, U.S. Patent No. 7,236,233
B2 (26 June 2007).
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Application 12/244,548

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claims, because those elements are disclosed by Heerens as being adjustable
between several blocking positions. (Br. 14, l. 1-8.) Fan urges that the
terms “‘adjustable’ and ‘fixed’ really are opposite concepts for those skilled
in the art, and the ‘adjustable retainer’ cannot be met by [sic: cannot meet]
the fixed hold elements in claim 1.” (Id. at 16, ll. 9-11.)
This argument is not persuasive of harmful error. During
examination, claim terms are given “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.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997). We shall not, however, read limitations into the
claims from preferred embodiments. In re Am. Acad. Sci. Tech Ctr.,
367 F.3d 1359, 1369 (Fed. Cir. 2004).
In the present case, the ʼ548 Specification does not provide a
definition of the term “fixed.” As the Examiner finds, when the retainer is
locked in the blocking position, “[t]he locking device causes the retainer 203
to become fixed.” (FR 6, ll. 17-18.) Indeed, Heerens teaches that “[e]ach
movable reticle retaining element 2 is arranged to be fixed in the blocking
position” (Heerens, col. 13, ll. 23-24; emphasis added), and that “fixation of
each of the movable reticle retaining elements 2 may be achieved in various
ways.” (Id. at ll. 45-46; emphasis added.) Fan admits that “[o]nly when the
locking device works, the position of the adjustable retainers 2 is fixed for a

6 Throughout this Opinion, for clarity, we present labels of elements in
Figures in bold font, regardless of their presentation in the original
document.
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while, . . . ”. (Br. 14, ll. 13-14; emphasis added.) In the absence of a
definition of the term “fixed” in the Specification, and in the absence of
express limitations in the claims that exclude “fixed for a while,” we are not
persuaded of harmful error in the Examiner’s interpretation of the term
“fixed,” and thus are not persuaded of harmful error in the finding that this
limitation is met.
Fan raises no other substantive arguments regarding the rejection of
claim 1. We therefore affirm the rejection of claim 1 and all non-distinctly
argued claims.
Fan urges that claim 4 is patentable because Heerens “also fails to
disclose the fixed hold elements supporting a sidewall of the mask.” (Br. 16,
ll. 21-22; emphasis omitted.) Rather, according to Fan, Heerens teaches the
retaining elements “nearly or substantially making contact with the reticle
edge A without applying a clamping force thereon.” (Id. at 17, ll. 1-3, citing
Heerens, col. 13, ll. 27-36.) The ʼ548 Specification does not provide a
definition of the term “support.” A fixed element adjacent to a reticle that
prevents the reticle from moving laterally may be fairly said to “support” the
reticle. We are thus not persuaded of harmful error in the Examiner’s
interpretation of the term “support,” or in the Examiner’s finding that this
limitation is met by Heerens.
Fan urges that the limitation of claim 6, that the “first flexible clip
element clip third and fourth sidewalls and portions of the bottom surface of
the mask” is not met by Heerens “because the first flexible clip elements
clipping third and fourth sidewalls must generate a clipping force, but
Heerens teaches not applying a clamping force.” (Br. 18, ll. 9-14.) The
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Examiner responds that Heerens teaches that the retainers hold the reticle by
“force fixation, which is holding the reticle through force from the retainers.
As a result, the retainers support and contact the reticle. This is equivalent
to the claimed clipping force.” (Ans. 10, ll. 21-24.) Fan does not dispute
this finding.
In the absence of a definition of the term “clipping force,” we are not
persuaded of harmful error in the rejection of claim 6.7
Fan’s arguments for the patentability of independent claim 10, drawn
to a process of loading a mask into the adapter are merely cumulative with
the arguments made for claims 1, 4, and 6, and we find them unpersuasive
for the same reasons.
Fan urges, finally, that claim 18, which depends from claim 1, is
patentable because the Examiner’s rationale that using more clip elements
would hold the reticle in place better and allow for fewer degrees of freedom
of movement “are wrong in both aspects of science and engineering.”
(Br. 21, l. 3.) Fan argues the “[t]he extra clip element arranged parallel to
the existing clip element on the second/third side does not reduce any
displacement and deformation of the whole physical system. It is a common
knowledge in mechanics engineering.” (Id. at ll. 8-10.) These arguments
(and the others in this paragraph of the Brief), are not supported by citation

7 We note that claim 1 specifies that the first flexible clip element is
connected to the second and third sides of the inner edge of the frame, while
the “second flexible clip elements” are connected to the fourth side of the
inner edge of the frame. Thus, claim 6 appears to lack proper antecedent
basis for the first flexible clip clipping the fourth sidewall. We trust this
discrepancy will be addressed in any future examination.
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Application 12/244,548

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to evidence of record, nor are they explained by any substantial analysis.
The Examiner’s point, as we understand it, is that more elements in blocking
positions would have been expected to result in less freedom of movement
or greater security—like a belt and suspenders, to use a hackneyed phrase.
We are not persuaded of harmful error in the rejection of claim 18.
C. Order
We affirm the rejection of claims 1-19.
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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