Ex Parte Ota et alDownload PDFPatent Trial and Appeal BoardSep 2, 201612340936 (P.T.A.B. Sep. 2, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/340,936 12/22/2008 29393 7590 09/07/2016 ESCHWEILER & AS SOCIA TES, LLC NATIONAL CITY BANK BUILDING 629 EUCLID A VE., SUITE 1000 CLEVELAND, OH 44114 FIRST NAMED INVENTOR Kan Ota 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 ATTORNEY DOCKET NO. CONFIRMATION NO. EATNP269US 1014 EXAMINER FORD, NATHAN K ART UNIT PAPER NUMBER 1716 NOTIFICATION DATE DELIVERY MODE 09/07/2016 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): Docketing@eschweilerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAN OTA, STANLEY W. STONE, and STEVE T. DRUMMOND Appeal2014-001508 Application 12/340,936 Technology Center 1700 Before TERRY J. OWENS, N. WHITNEY WILSON, and KIMBERLY McGRAW, Administrative Patent Judges. McGRAW, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-15 and 21. App. Br. 3. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal2014-001508 Application 12/340,936 BACKGROl.J1'-JD Appellants' Specification states their invention is directed to a device for protecting the clamping surface of an electrostatic chuck during tuning of an ion beam, wherein sputtered material is generally prevented from contacting the clamping surface of the electrostatic chuck. Spec. 2. Claims 1 and 21 are the only independent claims on appeal. Claim 1 is representative and is reproduced below. 1. An end station for an ion implantation system, the end station comprising: a process chamber configured to receive an ion beam; an electrostatic chuck configured to selectively translate a workpiece through the ion beam; a shield, wherein the shield is configured to selectively overlie at least a portion of a clamping surface of the electrostatic chuck, therein selectively protecting the at least a portion of the clamping surface from one or more contaminants associated with the ion beam; and a docking station positioned within the process chamber, wherein the docking station is configured to selectively support the shield within the process chamber during the translation of the workpiece through the ion beam. Appeal Br. 9 (Claims App'x). THE REJECTIONS Claims 1, 6, 8-15, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mitchell (US 2004/0234359 Al, pub. Nov. 25, 2004 ("Mitchell")) in view of Ferrara (US 6,710,360, iss. Mar. 23, 2004). Final Act. 3. Claims 2-5 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mitchell in view of Ferrara and Mitchell (US 2 Appeal2014-001508 Application 12/340,936 2008/0138175 Al, pub. June 12, 2008). Id. at 4. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Mitchell, Ferrara, and Urban (US 6,918,735 B2, iss. July 19, 2005). Id. ANALYSIS Claim 1 requires a "docking station positioned within the process chamber, wherein the docking station is configured to selectively support the shield within the process chamber during the translation of the workpiece through the ion beam." Independent claim 21 recites similar limitations. The Examiner states that Mitchell teaches most of the limitations of claims 1 and 21 but admits that storage buff er 13 0 (the docking station) of Mitchell is not positioned within process chamber 136. Ans. 3; Advisory Act. 2; Final Act. 3. However, the Examiner concludes that merely "rearranging the parts of an invention involves only routine skill in the art." Final Act. 2. The Examiner explains in view of a smaller, first chamber-space appended to a larger, second chamber-space without any physical separation therebetween, i.e., both spaces share the same environment, a later modification that does nothing more than relocate the first space within the formal confines of the second space fails to constitute an advance that exceeds the purview of ordinary skill. Ans. 5. However, the Examiner does not explain what would have led one of ordinary skill in the art to modify Mitchell such that it meets the requirements of the Appellants' claim 1 or 21. "[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to 3 Appeal2014-001508 Application 12/340,936 support the legal conclusion of obviousness." KSR Int 'l Co. v. Telej?ex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). "The mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness." Ex parte Chicago Rawhide Mfg. Co., 223 USPQ 351, 353 (Bd. Pat. App. & Inter. 1984). "The prior art must provide a motivation or reason for the worker in the art, without the benefit of the appellant's specification, to make the necessary changes in the reference device." Id. The Examiner has not provided the required articulated reasoning with rational underpinning as to why one of ordinary skill in the art would rearrange the components of Mitchell. Accordingly, we conclude that the Examiner's findings do not support a conclusion of obviousness with respect to the disputed limitation of independent claims 1 and 21. We therefore reverse the Examiner's rejection of independent claims 1 and 21. As the remaining rejections of the dependent claims do not cure the deficiency in the Examiner's rejection of claim 1, we also do not sustain the Examiner's rejections of dependent claims 2-15 under 35 U.S.C. § 103(a). DECISION The rejections of claims 1-15 and 21under35 U.S.C. § 103 are reversed. REVERSED 4 Copy with citationCopy as parenthetical citation