Ex Parte Hadar et al

Board of Patent Appeals and Interferences

Jun 1, 2009

10617138 (B.P.A.I. Jun. 1, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RON HADAR, JOHN ALEXANDER SMITH, GERHARD RUPP,
BERNHARD SCHIMUNEK, MARK ATTWOOD,
LIOR LANDESMANN, BRENT ELLIOTT,
TIM ROBINSON, and UZI LEV-AMI
____________

Appeal 2008-003162
Application 10/617,138
Technology Center 2100
____________

Decided: June 1, 2009
____________

Before LEE. E. BARRETT, JOSEPH L. DIXON, and JEAN R. HOMERE,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

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I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 29-33. The Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE and enter a New Ground of Rejection.

A. INVENTION
The invention at issue on appeal relates to method and apparatus for
automated bi-directional integration of peripheral data sources for a
production tool. (Spec. 1.)

B. ILLUSTRATIVE CLAIM
Claim 29, which further illustrates the invention, follows.
29. A method of configuring an intelligent sensor,
including:
establishing a network connection between the intelligent
sensor and a configuration database;
the intelligent sensor pulling configuration data from the
configuration database; and
the intelligent sensor monitoring process parameters of a
semiconductor manufacturing process chamber in accordance
with the configuration data.

C. REFERENCES
The Examiner relies on the following reference as evidence:

Schleiss US 2004/0075689 A1 Apr. 22, 2004
(filed Oct. 22, 2002)

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D. REJECTIONS
The Examiner makes the following rejection.

Claims 29-33 are rejected under 35 U.S.C. 102(e) as being anticipated
by Schleiss.

II. ISSUE
Have Appellants shown that the Examiner erred in finding that
Schleiss anticipates independent claim 29 under 35 U.S.C. § 102?
Specifically, the issue turns on whether Schleiss teaches “pulling”
configuration information?
III. PRINCIPLES OF LAW
35 U.S.C. § 102
"[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . " In re King, 801 F.2d
1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v.
American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)).
"[A]bsence from the reference of any claimed element negates anticipation."
Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir.
1986), overruled on other grounds by Knorr-Bremse Systeme Fuer
Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337 (Fed.Cir. 2004).
“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 California, 814
F.2d 628, 631 (Fed. Cir. 1987) (citation omitted). Analysis of whether a
claim is patentable over the prior art under 35 U.S.C. § 102 begins with a
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determination of the scope of the claim. We determine the scope of the
claims in patent applications not solely on the basis of the claim language,
but upon giving claims their broadest reasonable construction “in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citing In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (citation omitted)).
The properly interpreted claim must then be compared with the prior art.
Appellants have the opportunity on appeal to the Board to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).

VI. ANALYSIS
In the Examiner's statement of the rejection, the “Examiner notes that
while not specifically mentioned, a semiconductor process chamber is a
‘distributed process control system’ and one of ordinary skill in the art
would recognize that the Schleiss patent publication was able to be used in,
and intended for, a semiconductor process chamber or any manufacturing
plant." We find that Schleiss teaches and fairly suggests a wide range of
configurations and configurability within the support smart process modules
and objects in a processing plant, but does not expressly address the delivery
of the configuration information. In view of Appellants’ definition of
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“browser” in the Appeal Brief, which clearly teaches the limited alternatives
of a pull or a push of configuration information, Schleiss does not clearly
teach a pulling of configuration information. Moreover, we cannot find that
Schleiss necessarily would have required the intelligent sensor to pull
configuration data from the configuration database as recited in independent
claim 1. Therefore, we find that the teachings of Schleiss do not anticipate
claims 29-33.
New Grounds of Rejection
35 U.S.C. § 103(a)
Pursuant to our authority under 37 CFR § 41.50(b), we enter a new
grounds of rejection of claims 29-33 under 35 U.S.C. § 103(a) over Schleiss.
In view of the Examiner’s stated rejection under 35 U.S.C. § 102, we find
the Examiner's rejection to be flawed with regards to anticipation, but find
the teachings of Schleiss to fairly suggest to one of ordinary skill in the art at
the time the invention was made to have implemented the system of Schleiss
with the intelligent field devices pulling the configuration data rather than
having the configuration data pushed to the intelligent field devices.
Paragraph [0045] of Schleiss teaches that:
It will be understood that the functionality of the smart process
objects and process flow modules operates in the operator
workstation 20 and does not need to be downloaded to and
configured within the controllers, field devices, etc. within the
plant 10, which makes this functionality easier to implement,
view, change, etc. Further, this functionality enables system
level determinations to be made more easily than down within
the process devices, controllers, etc. because the information
pertaining to the devices on a system level is all typically
available to the operator workstation 20 in general and to the
execution engine 48 in particular whereas all of this information
is not typically made available to each controller and field
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device within the process plant 10. However, when it is
advantageous to do so, some of the logic associated with the
process flow modules, such as primitives, may be embedded in
the devices, equipment and controllers down within the process
plant. The use of smart process objects enables the execution
engine 48 to, for example, automatically detect leaks and
produce alarms with no or only minimal amounts of user
configuration activities, to calculate and track flow and mass
balances within the plant 10, to track losses within the plant 10
and to provide higher level diagnostics for the plant 10.
(Emphasis added.)

Paragraph [0048] Schleiss further teaches:

When implemented, any of the software described herein may
be stored in any computer readable memory such as on a
magnetic disk, a laser disk, or other storage medium, in a RAM
or ROM of a computer or processor, etc. Likewise, this
software may be delivered to a user, a process plant or an
operator workstation using any known or desired delivery
method including, for example, on a computer readable disk or
other transportable computer storage mechanism or over a
communication channel such as a telephone line, the Internet,
the World Wide Web, any other local area network or wide area
network, etc. (which delivery is viewed as being the same as or
interchangeable with providing such software via a
transportable storage medium). Furthermore, this software may
be provided directly without modulation or encryption or may
be modulated and/or encrypted using any suitable modulation
carrier wave and/or encryption technique before being
transmitted over a communication channel.

Clearly, Schleiss teaches and fairly suggests a wide range of
configurations and configurability within the support smart process modules
and objects in a processing plant. Therefore, we find that it would have been
obvious to want of ordinary skill in the art at the time invention was made to
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have a portion of the configuration functionality within the intelligent
sensor. Moreover, Appellants’ definition of “browser,” in the Appeal Brief,
clearly teaches the limited alternatives of a pull or a push of configuration
information. While Schleiss does not clearly teach a pulling of
configuration information, it would have been readily apparent to one skilled
in the art that "when it is advantageous to do so, some of the logic associated
with the process flow modules, such as primitives, may be embedded in the
devices . . . " as suggested by Schleiss in paragraph [0045]. Hence, the
process flow modules would have had sufficient communication and
processing capability to “pull” configuration data rather than requiring it to
be pushed to them.
Furthermore, while Schleiss is not specifically directed to semi-
conductor manufacturing process chambers as the Examiner indicates on
page 3 of the Answer (relying upon paragraph [0002] of Schleiss), the
Examiner notes that "while not specifically mentioned, a semi-conductor
process chamber is a ‘distributed process control system’ and one of
ordinary skill in the art would recognize that the Schleiss patent publication
was able to be used in, and intended for, a semi-conductor process chamber
or any manufacturing plant." Clearly, the teachings of the Schleiss patent
publication are lacking with respect to a disclosure of the use of the
intelligent sensor in a semi-conductor manufacturing process chamber, but
we agree with the Examiner's line of reasoning that, it would have been
readily apparent to skilled artisans that the generic intelligent sensor may be
used in any environment where the specific parameters are desired to be
monitored. Semiconductor manufacturing would have been one such
environment for the intended use of the intelligent sensor/controller and the
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intelligent sensor/controller would have been used in the semiconductor
manufacturing environment.
In Appellants' Brief at page 4, Appellants submitted a technical
dictionary definition of the term "pulling" to support their proposition that
claims 29-33 should be accorded their ordinary and customary meaning of
"getting information from a network site by going to the network site and
asking for the information", which Appellants argue, stems from their
disclosure of browsing functionality in the Specification in paragraphs
[0023]-[0024]. We agree with Appellants’ interpretation of the claim
terminology, but we additionally find that the disclosure of Schleiss at
paragraph [0048], discloses that "any of the software described herein may
be stored in any computer readable memory . . . using any known or desired
delivery method including... the Internet, the World Wide Web . . . ."
Therefore, we find that Schleiss clearly suggests the use of browser
functionality concerning the Internet and the World Wide Web as a means to
deliver configuration information. Hence, pulling and pushing of this
configuration information would have been the limited two choices as set
forth in Appellants' definition at page 4 of the Appeal Brief. Once
configured, the system would be used to monitor and operate within the
specific manufacturing process such as a semiconductor manufacturing
environment.
We find no evidence in the administrative record that “the intelligent
sensor pulling configuration data from the configuration database” would
have entailed anything more than mere rearrangement of known elements to
achieve an expected result (i.e., successful updating of configuration
information from a database) or would have been “uniquely challenging or
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difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l.
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
The conclusion of obviousness can be based on interrelated teachings
of multiple patents, the effects of demands known to the design community
or present in the marketplace, and the background knowledge possessed by a
person having ordinary skill in the art. An obviousness “analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S.
at 418. See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).

37 C.F.R. § 41.50(b)
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, “WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of [proceedings] (37 C.F.R. § 1.197 (b)) as to the rejected
claims”:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner . . .
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(2) Request rehearing. Request that the proceeding be reheard
under 37 C.F.R. § 41.52 by the Board upon the same record . .
.(emphasis added).

VI. CONCLUSION
For the aforementioned reasons, the Examiner has not shown
that Schleiss anticipates the invention recited in independent claim 1 and
does not necessarily require “pulling” configuration information. But we do
not find Appellants claims to be patentable and enter a new grounds of
rejection under 35 U.S.C. § 103(a) of claims 29-33.

VII. ORDER
We reverse the anticipation rejection of claims 29-33 and enter a new
grounds of rejection under 35 U.S.C. § 103(a) of claims 29-33.
REVERSED
37 C.F.R. § 41.50 (b)

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