Adolphus E. Mcclanahan et al.

Patent Trials and Appeals Board

Jan 6, 2020

14836616 - (D) (P.T.A.B. Jan. 6, 2020)

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.
14/836,616 08/26/2015 ADOLPHUS E. MCCLANAHAN TI-75104 8982
23494 7590 01/06/2020
TEXAS INSTRUMENTS INCORPORATED
P O BOX 655474, M/S 3999
DALLAS, TX 75265
EXAMINER
MONSUR, NASIMA
ART UNIT PAPER NUMBER
2866
NOTIFICATION DATE DELIVERY MODE
01/06/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspto@ti.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ADOLPHUS E. MCCLANAHAN, ALAN J. WEGLEITNER,
DANIEL A. FRESQUEZ, and MARK DAMONE GILLETTE
____________

Appeal 2019-000407
Application 14/836,616
Technology Center 2800
____________

Before LINDA M. GAUDETTE, DONNA M. PRAISS, and LILAN REN,
Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–12. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.

1 Our Decision refers to the Specification (“Spec.”) filed Aug. 26, 2015,
Appellant’s Appeal Brief (“Appeal Br.”) filed Apr. 26, 2018, the Examiner’s
Answer (“Ans.”) dated Aug. 31, 2018, and Appellant’s Reply Brief (“Reply
Br.”) filed Oct. 22, 2018.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Texas Instruments Incorporated as the
real party in interest. Appeal Br. 1.
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STATEMENT OF THE CASE
The invention relates to methods for probing wafers or testing
packaged devices in environments that are at a temperature below the
freezing point of water. Spec. ¶ 1. The Specification discloses setting a dry
gas flow to ensure the probe environment is at a positive pressure
differential relative to the external atmosphere. Id. ¶ 19. According to the
Specification, the dry gas flow may be increased or decreased to obtain a
reference pressure value. Id. ¶ 15. More particularly, the Specification
describes increasing the dry gas flow when the pressure is below the
predetermined positive pressure differential. Id. ¶ 22.
Claim 1, the sole independent claim on appeal reproduced below from
the Claims Appendix to the Appeal Brief, is illustrative (disputed limitation
italicized).
1. A method, comprising:
flowing a dry gas into a thermal chamber sealed and
maintained at a freezing temperature;
sensing a chamber pressure in the thermal chamber
during the flowing the dry gas into the thermal chamber; and
increasing a flow rate of the dry gas into the thermal
chamber when the chamber pressure is below a predetermined
pressure differential in reference to an ambient pressure.
ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections.”)). After considering
the positions of both the Examiner and Appellant, we are persuaded the
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Examiner reversibly erred for the reasons set forth in Appellant’s briefs and
discussed below.3

Rejection 1: Anticipation by Komatsu
The Examiner rejects claims 1, 7, 10, and 11 under 35 U.S.C.
§ 102(a)(1) as anticipated by Komatsu.4 Final Act. 4–6.
Appellant contends the Examiner’s finding that Komatsu discloses
“increasing a flow rate of the dry gas into the thermal chamber when the
chamber pressure is below a predetermined pressure differential in reference
to an ambient pressure” recited in claim 1 is in error, because Komatsu
merely discloses maintaining a predetermined depressurized atmosphere that
is below atmospheric pressure while dry gas is introduced into the space at a
controlled flow rate. Appeal Br. 6–7 (citing Komatsu ¶¶ 31, 33, 34, 36).
According to Appellant, Komatsu’s disclosure confirms that the pressure
within Komatsu’s space is lower than atmospheric pressure at all times while
the dry gas is introduced into the space. Appeal Br. 7; Reply Br. 7–9.

3 We understand from the Advisory Action and attachment dated May 24,
2018 that the Examiner’s rejection of claim 12 under 35 U.S.C. § 112(b) for
lacking antecedent basis to be withdrawn in view of Appellant’s
Amendment filed April 26, 2018 under 37 C.F.R. § 1.116 amending claim
12 to recite “The method of claim 1” rather than “The system of claim 1.”
Both the Advisory Action and the attachment indicate Appellant’s April 26,
2018 reply to the Final Office Action is entered and Appellant’s Amendment
complies with the Examiner’s form requirement set forth in the Final Office
Action. MPEP § 1206. The Advisory Action also indicates that the
Examiner’s Answer responds to Appellant’s arguments and the rejection to
the form of claim 12 is omitted from the Examiner’s Answer stating the
rejections applicable to the appealed claims.
4 US 2015/0145540 A1, published May 28, 2015.
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Appellant’s arguments are persuasive of harmful error. Komatsu is
directed to a semiconductor inspection system and method that prevents
condensation at an interface part that makes electrical connection by
evacuating the space surrounded by a mother board to a depressurized
atmosphere lower than the atmospheric pressure by about 10 kPa to 100 kPa.
Komatsu ¶¶ 7, 31. Komatsu teaches supplying dry gas into the space at a
predetermined flow rate to maintain this state and reliably prevent
condensation at the interface part. Id. ¶ 36. As Appellant correctly points
out, the Examiner’s finding (Ans. 15) that Komatsu’s flow rate controller
“can increase the pressure and also decrease the pressure to a predetermined
pressure differential by controlling the flow rate of the dry gas” and that this
is “the inherent feature of [a] control system” fails to explain why
Komatsu’s disclosure of controlling a gas flow rate necessarily discloses the
claimed step of increasing a flow rate of the dry gas into the thermal
chamber when the chamber pressure is below a predetermined pressure
differential. The Examiner finds (Ans. 16) that Komatsu’s controller can
control/change the pressure differential both above and below the ambient
pressure, however, the record contains no specific finding that increasing a
dry gas flow rate increases the pressure or pressure differential as required
by claim 1’s method.
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987). In order to anticipate, a reference must identify
something falling within the claimed subject matter with sufficient
specificity to constitute a description thereof within the purview of § 102. In
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re Schaumann, 572 F.2d 312, 317 (CCPA 1978). It is well established that
specific examples of the claimed subject matter are not necessary to
establish anticipation. Rather, to anticipate, one skilled in the art must be
able to “at once envisage” the claimed subject matter in the prior art
disclosure. In re Petering, 301 F.2d 676, 681 (CCPA 1962) (claimed
chemical compound described by prior art reference because one skilled in
the art would “at once envisage” each member of a limited class of chemical
structures).
The Examiner’s finding that Komatsu’s flow rate controller can both
increase and decrease a predetermined pressure differential fails to explain
how one skilled in the art would envisage the claimed step of “increasing a
flow rate of the dry gas into the thermal chamber when the chamber pressure
is below a predetermined pressure differential” from Komatsu’s method.
The Examiner’s position (Ans. 15) that Komatsu’s flow rate controller
inherently increases or decreases the flow of gas to maintain, increase, or
decrease a pressure differential is also insufficient to support anticipation by
Komatsu, because it fails to provide a basis for the claimed relationship
between increasing the flow rate of the dry gas and raising the pressure in a
chamber.
“It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. ‘Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.’” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed.
Cir. 2002) (citations and internal quotation marks omitted). “Inherency,
however, may not be established by probabilities or possibilities. The mere
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fact that a certain thing may result from a given set of circumstances is not
sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
and internal quotation marks omitted).
The Examiner’s rejection does not sufficiently explain why Komatsu
inherently discloses claim 1’s method. At most, the rejection presents the
probability that when Komatsu’s flow rate controller increases the flow rate
of gas, the pressure will increase. Such a probability is insufficient to
support anticipation of claim 1 over Komatsu.
In view of the above and for the reasons provided in the Appeal Brief
and the Reply Brief, we reverse the Examiner’s rejection of claim 1 as
anticipated by Komatsu.
Because claims 7, 10, and 11 require the same step of increasing a
flow rate of the dry gas when the chamber pressure is below a predetermined
pressure differential as in claim 1, we do not sustain the Examiner’s
rejection of claims 7, 10, and 11 as anticipated by Komatsu for the same
reasons.

Rejection 2: Obviousness over Komatsu and Miyata
The Examiner rejects claims 2–6, 9, and 12 under 35 U.S.C. § 103 as
being unpatentable over Komatsu in view of Miyata.5 Final Act. 7–14.
Claims 2–6, 9, and 12 depend directly or indirectly from claim 1.
The Examiner’s reliance on additional prior art in the rejection of
claims 2–6, 9, and 12 does not cure the deficiencies discussed above with
regard to claim 1. As noted in the Examiner’s Answer, Komatsu rather than

5 US 5,198,752, issued Mar. 30, 1993.
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Miyata is relied upon to teach the “predetermined pressure differential”
recited in claim 1. Ans. 18. Therefore, we do not sustain the Examiner’s
rejection of claims 2–6, 9, and 12 under § 103.

Rejection 3: Obviousness over Komatsu, Miyata, and Dyer
The Examiner rejects claim 8 under 35 U.S.C. § 103 as being
unpatentable over Komatsu, Miyata, and further in view of Dyer.6 Final
Act. 14–15. Claim 8 depends from claim 1 and requires using a manometer
to sense the chamber pressure. Appeal Br. 2 (Claims Appendix).
The Examiner’s reliance on additional prior art in the rejection of
claim 8 does not cure the deficiencies discussed above with regard to claim
1. Therefore, we do not sustain the Examiner’s rejection of claim 8 under
§ 103.

CONCLUSION
For these reasons and those the Appellant provides, we reverse the
Examiner’s prior art rejections of claims 1–12.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1, 7, 10, 11 102(a)(1) Komatsu 1, 7, 10, 11
2–6, 9, 12 103 Komatsu, Miyata 2–6, 9, 12
8 103 Komatsu, Miyata, Dyer 8
Overall
Outcome
1–12

6 US 5,379,632, issued Jan. 10, 1995.
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REVERSED