Ex Parte HarisDownload PDFPatent Trial and Appeal BoardJan 21, 201511093480 (P.T.A.B. Jan. 21, 2015) Copy Citation 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. Appeal 2013-000057 Application 11/093,480 2 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. Appeal 2013-000057 Application 11/093,480 3 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 Appeal 2013-000057 Application 11/093,480 4 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 Appeal 2013-000057 Application 11/093,480 5 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 Appeal 2013-000057 Application 11/093,480 6 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 Copy with citationCopy as parenthetical citation