Ex Parte Moran et al

Board of Patent Appeals and Interferences

Jan 5, 2012

11247622 (B.P.A.I. Jan. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS J. MORAN and LUTZ REBSTOCK
____________

Appeal 2010-008239
Application 11/247,622
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2010-008239
Application 11/247,622

2
DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
twice rejecting claims 1-21, the only claims pending in the Application.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellants, conventional semiconductor cleaning apparatuses
utilize ambient air which “bears the risk that particles are introduced into the
treatment chamber, even if the air is filtered, because every filter is a compromise
between filter effectiveness and the amount of air that can be passed through.”
(App. Br. 5 (citing Spec. [0005]).) Appellants’ cleaning apparatus is a closed-loop
system, and is said to prevent the introduction of foreign particles, thereby
avoiding possible contamination of articles in the treatment chamber. (App. Br. 6.)
Claim 4 is representative of the invention and is reproduced below from the Claims
Appendix to the Appeal Brief:
4. An apparatus for cleaning and drying articles used in the production
of semiconductors, having a closable treatment chamber in which the articles are
cleaned by means of a liquid and subsequently dried by a gas, having an
arrangement for moving the gas within the treatment chamber when it is closed,
so that a closed-loop gas flow within the treatment chamber results, and having a
condensation dryer arranged in the treatment chamber, wherein the arrangement is
adapted to circulate the gas within the closed treatment chamber to the
condensation dryer, and wherein the condensation dryer is configured for
extracting from the gas moisture from the articles that is absorbed by the gas
during the drying process in order to dry the gas.

1 Office Action mailed Mar. 5, 2009
2 Corrected Appeal Brief filed Dec. 22, 2009 (“App. Br.”), 1.
Appeal 2010-008239
Application 11/247,622

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The pending claims stand rejected as follows (Ans.3 4-10)4:
1. claims 1, 2 and 12 under 35 U.S.C. § 103(a) as unpatentable over Thompson
(US 5,562,113) in view of Bran (US 5,539,995, issued October 8, 1996) and
Childers (US 5,173,258, issued December 22, 1992), and further in view of
Sumida (US 5,947,135, issued September 7, 1999);
2. claims 4, 5, 7-8, 10, 15, 17-18 and 21 under 35 U.S.C. §103(a) as
unpatentable over Thompson in view of Bran and Childers;
3. claims 3 and 13-14 under 35 U.S.C. §103(a) as unpatentable over Thompson
in view of Bran, Childers, and Sumida, and further in view of Ipsen (US 2,973,352,
issued February 28, 1961 );
4. claim 16 under 35 U.S.C. § 103(a) as unpatentable over Thompson in view
of Bran and Childers, and further in view of Hirae (US 2001/0001392 A1, issued
May 24, 2001);
5. claims 19 and 20 under 35 U.S.C. §103(a) as unpatentable over Thompson
in view of Bran and Childers, and further in view of Fochtman (US 4,977,839,
issued December 18, 1990);
6. claim 6 under 35 U.S.C. §103(a) as unpatentable over Thompson in view of
Bran and Childers as applied to claim 5, and further in view of Keyser;
7. claim 9 under 35 U.S.C. §103(a) as unpatentable over Thompson in view of
Bran and Childers as applied to claim 8, and further in view of Smith; and

3 Examiner’s Answer mailed Mar. 18, 2010.
4 Appellants do not include the rejections of claims 6, 9, and 11 (grounds 6-8 infra)
in their list of “GROUNDS OF REJECTION TO BE REVIEWED ON APPEAL”
(App. Br. 3-4). See 37 C.F.R. § 41.37(c)(1)(vi) (requiring “[a] concise statement
of each ground of rejection presented for review”). However, Appellants clearly
identify these claims as appealed. (App. Br. 2.) We will consider the patentability
of these claims on the basis of the arguments made in support of patentability of
independent claim 4, from which they indirectly depend.
Appeal 2010-008239
Application 11/247,622

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8. claim 11 under 35 U.S.C. §103(a) as unpatentable over Thompson in view of
Bran and Childers as applied to claim 10, and further in view of Ipsen.
Appellants’ arguments are directed to the Examiner’s proposed combination
of Thompson, Bran, and Childers. (Ans. 10; see generally, App. Br. 4-17.)
Appellants present several arguments in support of patentability. (See generally,
App. Br. 4-17.) We discuss only the following issue, which we identify as
dispositive of the appeal: did the Examiner rely on impermissible hindsight
reasoning in determining it would have been obvious, within the meaning of
35 U.S.C. §103(a), to have used a closed-loop gas flow and condenser (see
appealed independent claims 1 and 4) in Thompson’s apparatus based on the
teachings of Childers and Bran?
Thompson, discussed in paragraph [0005] of the Specification, describes the
use of ambient air to dry semiconductor articles. The Examiner concedes that
Thompson does not disclose a condenser or closable treatment chamber in which it
is possible to recirculate the ambient air, or another gas used for drying. (Ans. 4.)
The Examiner finds that Childers discloses a system in which a gaseous medium is
circulated in a closed loop which includes a dehumidifier to remove water from the
gaseous medium. (Id.) The Examiner concludes “[i]t would have been obvious to
one of ordinary skill in the art at the time the invention was made to have
circulated the drying gas of [Thompson] through a closed loop and a dehumidifier
(to remove the water from the vapor) as taught by [Childers] to allow the drying
gas of [Thompson] to be reused within the system.” (Id.; see also, id. at 12 (adding
that “allowing the gas to be reused by the system reduces costs by lowering the
amount of new materials needed”).) The Examiner relies on Bran for a teaching of
placing a condenser inside a treatment chamber (see id. at 12), acknowledging that
Appeal 2010-008239
Application 11/247,622

5
the combination of Thompson and Childers does not teach this claim limitation.
(see id. at 5).
Appellants contend the Examiner’s proposed motivation for combining
Thompson and Childers is not supported by the teachings of the references.
Childers is concerned with decontaminating objects which have been contaminated
with harmful microbial life. (See Childers col. 4, ll. 19-22.) Appellants correctly
point out that the aim of Childers’ system is not to remove moisture from a gas to
allow reuse of the gas; rather, Childers is concerned with controlling humidity of a
gas in a sterilization system (App. Br. 13; see also, Childers col. 4, ll. 9-135) to
prevent “the buildup of moisture” which is said to be “highly detrimental to the
sterilization process” (Rep. Br.6 5 (quoting Childers col. 1, ll. 36-42)). Appellants
also maintain that one of ordinary skill in the art would not have seen any benefit
in modifying Thompson’s apparatus to include a complex closed-loop gas flow and
condenser system to enable reuse of the drying gas, since Thompson utilizes
ambient air, “which . . . is free.” (Rep. Br. 3.)
During examination, the Examiner bears the initial burden of establishing a
prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). “Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.” KSR
Int’l v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)); see also, Ball Aerosol and Specialty Container, Inc. v. Ltd.
Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (“[T]he analysis that ‘should be

5 “The unit 10 provides a means and a method for decontaminating enclosure 12
and for recirculating, filtering and controlling the water and decontaminant vapor
content of the gaseous medium within the enclosure 12 and unit 10.”
6 Reply Brief filed May 13, 2010
Appeal 2010-008239
Application 11/247,622

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made explicit’ refers not to the teachings in the prior art of a motivation to
combine, but to the court’s analysis.”).
Appellants have persuasively argued that the Examiner’s proposed
motivation for combining the applied prior art is not supported by the evidence of
record. Rather, the Examiner appears to have relied on impermissible hindsight
reasoning in determining it would have been obvious to have used a closed-loop
gas flow and condenser in Thompson’s apparatus.
Accordingly, we reverse the Examiner’s decision to reject appealed claims
1-21.
REVERSED

tc
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.
11/247,622 10/10/2005 Thomas J. Moran 4965-000238/CO 9352
27572 7590 01/05/2012
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
WALDBAUM, SAMUEL A
ART UNIT PAPER NUMBER
1714
MAIL DATE DELIVERY MODE
01/05/2012 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)