Ex Parte SCHWARZENBACHER et al

Patent Trial and Appeal Board

Jul 19, 2018

13849072 (P.T.A.B. Jul. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/849,072 03/22/2013
91286 7590 07/23/2018
Harness, Dickey & Pierce, P.L.C. (Lam)
P.O. Box 828
Bloomfield Hills, MI 48303
FIRST NAMED INVENTOR
Reinhold SCHW ARZENBACHER
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.
4303-1090 8071
EXAMINER
BARSS, KEVIN R
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
07/23/2018 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):
sstevens@hdp.com
troymailroom@hdp.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REINHOLD SCHWARZENBACHER and
ULRICH TSCHINDERLE
Appeal2016-008343
Application 13/849,072 1
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
ARTHUR M. PESLAK, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Reinhold Schwarzenbacher and Ulrich Tschinderle ("Appellants")
seek review under 35 U.S.C. § 134(a) of the Examiner's decision, as set
forth in the Final Office Action dated June 10, 2015 ("Final Act."), rejecting
claims 1-17 under 35 U.S.C. § 103 as unpatentable over Hohenwarter (US
7,837,803 B2, issued Nov. 23, 2010). We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 The Appeal Brief identifies LAM Research AG as the real party in interest.
Appeal Br. 1.
Appeal 2016-008343
Application 13/849,072
CLAIMED SUBJECT MATTER
The disclosure "relates generally to apparatus for treating surfaces of
wafer-shaped articles, such as semiconductor wafers, and more particularly
for collector structures for use with such apparatus." Spec. 1, 11. 6-9.
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A collector assembly for use with a spin chuck, said
collector assembly comprising a base component, a top
component and a first intermediate component configured to be
fitted between the base component and the top component,
wherein the base component, top component and first
intermediate component are configured so as to be
interconnectable to form a process enclosure and so as to be
separable from one another, said base component and said
intermediate component each comprising collector wall
segments such that when said base component, top component
and first intermediate component are interfitted, said wall
segments together define an outer side wall of said collector, and
said process enclosure is open to a central area surrounded by
said collector assembly.
Appeal Br. 5 (Claims App.).
ANALYSIS
As for claim 1, the Examiner finds that Hohenwarter discloses a
collector assembly comprising a base component ( collector level L3), a top
component ( collector level L 1 ), and a first intermediate component
( collector level L2), which are configured to be interconnectable to form a
process enclosure and to be separable from one another. Final Act. 4 ( citing
Hohenwarter, Fig. 1, col. 3, 11. 13-20). The Examiner determines that it
would have been obvious to one of ordinary skill in the art, as taught by
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Application 13/849,072
Hohenwarter, "that any number of levels can be combined and[,] in that
varying number of levels[,] that the levels must be interconnectable and
separable in order to create the appropriate number of levels required for a
specific operation." Id. at 5 (emphasis added).
Appellants contend that Hohenwarter fails to disclose that collector 4
is formed from components that are separable and interfitted, as claimed.
Appeal Br. 2-3; see Hohenwarter, Fig. 1. Appellants contend that collector
4 could be made instead as a single, integral member that extends axially
over all the collector levels Ll-L3 and exhaust levels El-E3, and its
operation would be as described in Hohenwarter. Id. at 3.
The Examiner responds that "it would be within the ordinary skill of
someone in the art to use stackable layers versus building a new system each
and every time they wanted to increase the number of layers. It would
obviously be more cost effective in terms of both time and money to use a
stackable system than build a new system each time." Ans. 12. The
Examiner further submits that the layers shown in Hohenwarter, "even if
considered to be a unitary construction, can be considered to be interfitted
and removable from each other, even if by a destructive method." Id. at 13
( emphasis added).
We agree with Appellants that Hohenwarter does not describe that the
collector levels are configured to be separable from one another, and are
interfitted with each other, as claimed. The Examiner's position that the
collector levels "must be interconnectable and separable in order to create
the appropriate number of levels required for a specific operation" is not
supported by any description or drawing in Hohenwarter. Additionally, the
Examiner does not establish that Hohenwarter necessarily (i.e., inherently)
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Appeal 2016-008343
Application 13/849,072
discloses such interconnectable and separable collector levels. Even
assuming this is a possible configuration of the components in Hohenwarter,
"[i]nherency ... may not be established by probabilities or possibilities. The
mere 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 assertion that the layers shown in Hohenwarter "can
be considered to be interfitted and removable from each other, even if by a
destructive method," appears to be premised on a construction of the phrase
"separable from one another" that is inconsistent with Appellants'
disclosure. See Ans. 13 ( emphasis added). Particularly, Figure 1 shows a
collector assembly having three process levels, and Figures 3 and 4 show
how the components shown in Figure 1 are "separable from one another" to
result in a collector assembly with two process levels (Fig. 3) or one process
level (Fig. 4). See Spec. 12, 1. 13-13, 1. 22; Figs. 1, 3, 4. The Specification
describes that selected components are removed from the collector assembly
shown in Figure 1, and the remaining components are then reassembled to
produce the collector assembly shown in Figure 3 or 4. Id. The disclosed
separation of the components does not utilize any "destructive method," as
this would destroy the collector assembly. Construing the phrase "separable
from each other" to encompass separation that would result in destroying the
claimed base component, top component, and/ or first intermediate
component would be unreasonable, as it would be inconsistent with the
disclosure and not give appropriate weight to the term "separable." See, e.g.,
Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)
( denouncing claim constructions that render claim language superfluous). In
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Application 13/849,072
addition, such a construction is incongruous with the Examiner's position,
noted above, that it would be more cost effective in terms of both time and
money to use a stackable system than build a new system each time. Using
a destructive method to separate the components would require the building
of a new system each time. Thus, the Examiner does not establish that
Hohenwarter discloses all limitations of claim 1 under a proper construction
of "separable from one another."
Furthermore, the Examiner's proposed use of a "destructive method"
does not provide a proper rationale for one of ordinary skill in the art to
modify Hohenwarter to result in the collector assembly recited in claim 1.
For these reasons, we do not sustain the rejection of claim 1, or of
claims 2-17 depending therefrom.
DECISION
We reverse the rejection of claims 1-17.
REVERSED
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