Ex Parte Haris

Patent Trial and Appeal Board

Jan 21, 2015

11093480 (P.T.A.B. Jan. 21, 2015)

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.
11/093,480 03/30/2005 Clinton M. Haris 390-010546-US(PAR) 9655
2512 7590 01/22/2015
Perman & Green, LLP
99 Hawley Lane
Stratford, CT 06614
EXAMINER
LOWE, MICHAEL S
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
01/22/2015 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 CLINTON M. HARIS
____________

Appeal 2013-000057
Application 11/093,480
Technology Center 3600
____________

Before STEFAN STAICOVICI, CHARLES N. GREENHUT, and
JILL D. HILL, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Clinton M. Haris (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting under 35 U.S.C. § 103(a) claims 1–8, 12, and
13 as unpatentable over Imahashi (US 5,695,564, issued Dec. 9, 1997) and
White (US 6,235,634 B1, issued May 22, 2001) and claims 9–11 as

1 According to Appellant, the real party in interest is Brooks
Automation, Inc. Appeal Br. 1.
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unpatentable over Imahashi, White, and Ozawa (US 2004/0105737 A1,
published June 3, 2004)2. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.

INVENTION
Appellant’s invention relates to a transfer chamber for transporting
substrates from one processing workstation to an adjacent processing
workstation. Spec. 1, ll. 5–8.
Claims 1 and 13 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. In a semiconductor fabrication facility having at least a
first workstation system and a second workstation system
connected by means of a primary substrate handling system,
the improvement comprising:
the first workstation and second workstation systems
being connected by a secondary transport system comprising a
bridging chamber communicating with the at least first and
second workstation systems, constructed to admit at least one
substrate there through,

2 The Examiner succinctly refers to the teachings of Dimitri (US
6,038,490, issued Mar. 14, 2000); Ngo (US 7,231,278 B2, issued June 12,
2007; Conboy (US 6,985,794 B1, issued Jan. 10, 2006; and Skalecki (US
2008/0095047 A1, published Apr. 24, 2008) on form PTO 892, mailed Nov.
10, 2011, as evidence of “secondary pathways when the primary pathway is
not available.” See Ans. 4; see also Final Act. 5. However, because the
Examiner does not apply these references in the rejections of the instant
appeal, we will not consider them.
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wherein the primary substrate handling system is an
automated material handling system configured to transport
substrates in cassettes and forms a first transport path that is a
primary path for moving substrates between the first
workstation and second workstation systems and the bridging
chamber is linked to the primary substrate handling system and
forms a bypass transport path to the primary transport path of
the primary substrate handling system, and
a controller connected to the secondary transport system,
the controller being configured to create the bypass transport
path where the bypass transport path is created and configured
to transport substrates on information that the primary
transport path is unavailable.

ANALYSIS
Each of independent claims 1 and 13 requires, inter alia, a controller
configured to create a bypass transport path to transport substrates based
upon information that the primary transport path is unavailable. Appeal Br.
11 and 13, Claims App.
The Examiner finds that the combined teachings of Imahashi and
White disclose a controller, as called for by each of independent claims 1
and 13. Final Act. 2–3; see also Ans. 3 (“. . . the combination would clearly
be made for a controller programmed or setup with the path bypass
limitations found in the claims to avoid obstacles of any sort including lack
of path availability.”). The Examiner finds that Imahashi discloses a
bridging member U3 between workstations, formed by elements U1, U2,
and U4, that forms a bypass to a primary transport system “capable of
moving substrates in a path separate from the primary transport” system.
Final Act. 2. According to the Examiner, because Imahashi discloses
“altering a transfer path to avoid obstacles” and because an unavailable
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transport path constitutes “an obstacle to moving a substrate” the controller
of Imahashi is “configured to transport the substrates along either the
primary path or the secondary path through the bridging chamber.” Final
Act. 3, 5 (citing Imahashi, col. 15, ll. 29–32).
We do not agree with the Examiner’s findings because as Appellant
persuasively argues, Imahashi’s obstacles described in column 15, lines
29–32, refer to external obstacles of the transport system with respect to the
plan of the building in which the transport system is installed and not to
obstacles in the transport path of the substrates. See Appeal Br. 5–6.
Furthermore, although we appreciate the Examiner’s position that “many
paths are apparent” in Figure 1 of Imahashi (see Ans. 3), nonetheless, we
agree with Appellant that Imahashi “is completely silent with respect to
‘controlled path changing for obstacle avoidance.’” Reply Br 3. As the
Appellant correctly notes, “Imahashi, when considered in its entirety,
discloses but a single transfer path through the multi-chamber process
system.” Appeal Br. 7.
The Examiner further finds that White discloses a primary automated
conveyor 420, at least two workstations, and a bypass device 460. Final Act.
3. According to the Examiner, “White teaches in figure 25 . . . a bypass for
changing movement of a substrate between paths.” Ans. 3 (citing White,
col. 3, ll. 61–66 and col. 13, ll. 49–53).
We do not agree with the Examiner’s findings that White’s conveyor-
to-conveyor transfer path constitutes creating a bypass transport path to
transport substrates based upon information that the primary transport path is
unavailable, as called for by independent claims 1 and 13. More
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specifically, robot 460 only changes the path of a substrate between
conveyors 426A and 426B and the intra-conveyor robot modifies the path
along a single conveyor, 426A or 426B. See White, col. 13, ll. 28–53 and
fig. 25. As Appellant correctly notes, “the transfer of substrates along the
single conveyor 426A or 426B is not impacted in any way by the transfer of
substrates along the AGV aisle 420 and vice versa.” Reply Br. 4.
Furthermore, although we appreciate that White discloses reprogramming its
system to bypass a faulty processing island, i.e., 425, 430, 440, 442, 446,
448, 450, this does not mean that it can bypass the primary transport path,
namely, AGV aisle 420. Appellant is correct that, “White is moving
substrates past a disabled processing island and nothing more.” Reply Br. 4.
Finally, we do not agree with the Examiner’s stance that as long as the
controller of Imahashi and White is capable of performing the recited
function, namely, to create a bypass transport path to transport substrates
based upon information that the primary transport path is unavailable, then
the controller of Imahashi and White “meets the claim.” Ans. 2–3.
Appellant is correct that when functional language is associated with
programming or some other structure required to perform the function, that
programming or structure must be present in order to meet the claim
limitation. See Reply Br. 5–6 (citing See Typhoon Touch Technologies, Inc.
v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011)). As such, in these
circumstances, the “capable of” test requires that the prior art structure be
capable of performing the function without further programming. Id. The
Examiner has not provided any findings that the controller of Imahashi and
White is capable of creating a bypass transport path to transport substrates
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based upon information that the primary transport path is unavailable, as
called for by each of independent claims 1 and 13, without further
programming.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of claims 1–8, 12, and 13 as unpatentable
over Imahashi and White.
With respect to the rejection of claims 9–11, the Examiner’s use of the
disclosure of Ozawa does not remedy the deficiencies of Imahashi and
White, as described supra. See Final Act. 4–5. Accordingly, we also do not
sustain the rejection of claims 9–11 over the combined teachings of
Imahashi, White, and Ozawa.

SUMMARY
We reverse the Examiner’s decision to reject claims 1–13.

REVERSED

pgc