Ex Parte Simon

Patent Trial and Appeal Board

Dec 31, 2015

13198425 (P.T.A.B. Dec. 31, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/198,425 08/04/2011
909 7590 01/05/2016
Pillsbury Winthrop Shaw Pittman, LLP (NV)
PO Box 10500
McLean, VA 22102
FIRST NAMED INVENTOR
Klaus SIMON
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.
081468-0397355 7761
EXAMINER
KENNEDY, TIMOTHY J
ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
01/05/2016 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):
docket_ip@pillsburylaw.com
heather.marthers@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KLAUS SIMON
Appeal2014-000979
Application 13/198,425
Technology Center 1700
Before BEYERL YA. FRANKLIN, MICHAEL P. COLAIANNI, and
N. WHITNEY WILSON, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 11-19 and 21-27. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 11 is illustrative of Appellant's subject matter on appeal (with
text in bold for emphasis):
11. An imprint lithography apparatus, comprising:
1 Appellant identifies the real party in interest as ASML Netherlands BV
(Appeal Br. 2).
Appeal2014-000979
Application 13/198,425
a substrate table arranged to hold a substrate;
an imprint template holder arranged to hold an imprint template; and
at least two imprintable medium dispensers, a first of the
imprintable medium dispensers located at or adjacent to one side of the
imprint template holder and configured to dispense imprintable medium
for movement of the substrate table in a first direction and not a second
direction different than the first direction, and a second of the imprintable
medium dispensers located at or adjacent to an opposite side of the imprint
template holder and configured to dispense imprintable medium for
movements of the substrate table in the second direction and not the
first direction,
wherein at least one of the at least two imprintable medium dispensers
is arranged to dispense a plurality of discrete droplets of imprintable medium
onto the substrate.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Jacobson et al.
(hereinafter "Jacobson")
U.S. 6,517,995 Bl Feb. 11,2003
Sreenivasan et al. U.S. 2004/0022888 Al Feb. 5, 2004
(hereinafter "Sreenivasan")
Ono2 JP 2000-289037 Oct. 17, 2000
THE REJECTION
Claims 11-16, 19, 21-25 rejected under 35 U.S.C. §103(a) as being
unpatentable over Jacobson view of Ono and Sreenivasan.
ANALYSIS
As an initial matter, to the extent that Appellant has presented
substantive arguments for the separate patentability of any individual claims
2 We use the machine translation of Ono as provided in the record.
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Application 13/198,425
on appeal, we will address them separately consistent with 37 C.F.R.
§ 41.37(c)(l)(vii). The claims that are addressed separately are identified
hereafter.
We affirm the rejection based on the findings of fact, conclusions of
law, and rebuttals to arguments expressed by the Examiner in the Answer,
and add the following for emphasis.
The Examiner's position for the rejection is set forth on pages 3---6 of
the Answer which we incorporate herein by reference. Basically, the
Examiner finds that the primary reference of Jacobson teaches the claimed
subject matter except for the claimed arrangement pertaining to the
imprintable medium dispensers configured in the particular way claimed by
Appellant. The Examiner relies upon Ono for teaching two dispensers that
can be configured independently, allowing for custom dispensing of
respective fluids from the respective dispensers (Ans. 3--4) and concludes it
would have been obvious to have incorporated the arrangement of Ono into
the apparatus of Jacobsen for custom dispensing. The Examiner relies upon
Sreenivasan for teaching the aspect of the claimed subject matter pertaining
to the dispensers arranged to dispense a plurality of discrete droplets onto
the substrate. Ans. 3.
Appellant argues that the Examiner's reliance upon Ono is not correct
because Ono does not teach the aspect of the claimed subject matter
involving one of the dispensers configured to dispense imprintable medium
for movement of the substrate table in a first direction and not a second
direction different than the first direction, and the second dispenser
configured to dispense imprintable medium for movements of the substrate
table in the second direction and not the first direction, for the reasons stated
3
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Application 13/198,425
in the record. Appeal Br. 7-8. Appellant argues that the dispensers 15a and
15b of Ono appear to be indiscriminate as to which direction the base 12
moves and there is no disclosure that dispenser 15a (or 15b) is configured to
dispense for one direction but not for another. Appeal Br. 8.
In reply, the Examiner repeats the finding that Ono allows for
independent dispensing from the two dispensers along any XY travel of the
substrate table. Ans. 7-8. The Examiner emphasizes that the dispensers and
table of Ono are the same structure as the corresponding structure set forth in
Appellant's claim 11. Ans. 8. It thus appears that the Examiner views the
"configured to" language in claim 11 as implying function or use or purpose,
and not structure. Because the Examiner interprets the claim in this manner,
the Examiner concludes that because the patentability of an apparatus claim
depends on the claimed structure, not on the use or purpose of that structure,
there is a primafacie case ofunpatentability. 3
On the other hand, Appellant argues that claim 11 requires more structure
than the claim as construed by the Examiner. Reply Br. 5---6. Therein,
Appellant states:
3 We note that "apparatus claims cover what a device is, not what a device
does." Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990). Therefore, the patentability of an apparatus claim depends
on the claimed structure, not on the use or purpose of that structure, Catalina
Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002), or the function or result of that structure. In re Danly, 263 F.2d 844,
848 (CCPA 1959); In re Gardiner, 171F.2d313, 315-16 (CCPA 1949). If
the prior art structure possesses all the claimed characteristics including the
capability of performing the claimed function, then there is a prima facie
case ofunpatentability. See e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Cir. 1997).
4
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Application 13/198,425
The Examiner further contends at pages 8-9 that "there is no structure
beyond a movable table and two dispensers that dispense in a certain
direction of table travel." Respectfully, that argument overgeneralized
the claim language. Claim 11 specifies more than dispenser that
dispense in a certain direction of travel. Rather, claim 11 recites the
more specific arrangement of one dispenser structurally arranged to
dispense imprintable medium for when the substrate table is moving
in a first direction and not a second direction different than the first
direction, and another dispenser structurally arranged to dispense
imprintable medium for when the substrate table is
moving in the second direction and not the first direction.
Appellant submits that Ono does not teach such structure. Reply Br. 5.
Appellant's Specification discloses that when the substrate table 134,
234 is scanned in the X-direction, the left hand dispenser 146, 246 (shown
below in Figure 5) is used to deposit imprintable medium onto a target.
Spec. [0071]. The Specification then discloses that when the substrate table
134, 234 is scanned in the negative X-direction, the right hand dispenser
146, 246 is used to deposit the medium onto the substrate 140, 240. Spec.
[0073]. Figure 5 is reproduced below:
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Application 13/198,425
Figure 5
Figure 5 illustrates an embodiment of Appellant's imprint lithographic
apparatus.
Appellant does not direct us to parts of the Specification describing
how the two dispensers are "configured to" dispense the medium onto the
substrate according to claim 11 in terms of structure. See generally, Appeal
Brief and Reply Brief. We use the above-mentioned description found in the
Speciation to interpret claim 11. 4 Based upon the above-mentioned
disclosure, the manner in which the left hand dispenser and right hand
dispenser are used to dispense the medium onto the substrate is described in
terms of independently dispensing a respective dispenser depending upon
which direction the table is moving. We cannot discern any structure
involved in this independent control of each dispenser other than that which
is depicted in Figure 5 (for example), which depicts, inter alia, substrate
4 The plain language of a claim and the specification provides two primary
indicators of a claim term's meaning. Phillips v. AWH Corp., 415 F.3d
1303, 1314--16 (Fed. Cir. 2005) (en bane).
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Application 13/198,425
table 134, 234, left hand dispenser 146, 246, right hand dispenser 146, 246,
imprint template 140, 240, imprint template holder 141, and UV source 150,
250. The plain language of claim 11, viewed in light of the Specification as
discussed above, is thus interpreted as having the structure described in the
Specification as discussed herein.
Hence, we agree with the Examiner's stated claim interpretation in
the paragraph bridging pages 8-9 of the Answer. Therein, the Examiner
correctly states that there is no structure beyond a movable table and two
dispensers (that dispense depending upon the direction of the movement of
the table). It follows that because Ono teaches the same structure (Ans. 8,
Ono, [0030--0031and0042---0044]), the apparatus of Ono is capable of
performing the claimed function, absent proof provided by Appellant
showing otherwise. When an examiner determines that the structure of the
claimed subject matter is identical to that of the prior art, the burden shifts to
1• ' ' .i1 ' .i1 • ' ' I' '• • .i1 T appncanc w prove Illar Ille pnor an cannm runcnon m Ille same manner. 1n
re King, 801 F.2d 1324, 1327 (Fed. Circ. 1986). Appellants have not met
this burden.
In view of the above, we affirm the rejection of claim 11.
Appellant separately argues claims 13 and 22. These claims each
further recite "wherein the imprintable medium dispenser which is located
upstream of the imprint template is arranged to provide
imprintable medium onto the substrate prior to the target portion being
located beneath the imprint template". Appellant argues that Ono does not
teach this claimed subject matter. Appeal Br. 11-12.
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In reply, the Examiner points out that the rejection involves the
combination of Jacobsen in view of Ono (as well as Sreenivasan), and
accordingly, Appellant's arguments do not address the merits of the
combination. Ans. 10. We agree and note that the test for obviousness is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art; one cannot show non-obviousness by
attacking references individually where the rejections are based on
combinations of references. In re Young, 927 F.2d 588, 591 (Fed. Cir.
1991); In re Merck & Co., Inc., 800 F.2d 1091, 1097-98 (Fed. Cir. 1986); In
re Keller, 642 F.2d 413, 425 (CCPA 1981).
In reply, Appellant argues that the Examiner has not provided
technical reasoning for making the combination. Because this argument
could have been made in the Appeal Brief, and Appellant has not explained
why it was not, such argument is deemed waived. 5 We add that the
Examiner gave reasons for combining Jacobsen in view of Ono on page 4 of
the Answer.
In view of the above, we affirm the rejection of claims 13 and 22.
5 Pursuant to 37 C.F.R. § 41.37(c) (1), any arguments not included in the
Appeal Brief will be deemed waived for purposes of the appeal. 37 C.F.R.
§ 41.37(c)(l)(iv); see also Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010).
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Application 13/198,425
Appellant separately argues claim 14 on page 12 and 13 of the Appeal
Brief. 6 Claim 14 recites that at least one of the dispensers comprises a row
of apertures, a series of rows of apertures, or an array of apertures.
The Examiner finds the Jacobsen teaches that the dispensers 1140 can
be an inkjet head and views an inkjet head as an array of apertures. Ans. 5
Appellant argues that Jacobsen does not teach this subject matter.
Appeal Br. 12. However, neither in the Appeal Brief nor in the Reply Brief
does Appellant adequately explain why an inkjet head cannot be viewed as
an array of apertures. Appeal Br. 12-13. Reply Br. 8-9. We are thus
unpersuaded by Appellant's arguments.
Appellant separately argues claims 16 and 25 on page 13 of the
Appeal Brief. Claims 16 and 25 each recite "two additional imprintable
medium dispensers, such that an imprintable medium dispenser is located at
or adjacent to each side of the imprint template holder."
The Examiner finds that Jacobsen teaches additional sets of dispensers
at col. 15, 11. 3-5, and such dispensers inherently would be adjacent to each
side of the imprint template holder. Ans. 5-6.
Appellant argues that there is no teaching in Jacobsen that the location
of the dispenser is at or adjacent each side of the imprint template holder.
6 Appellant discusses claims 15 and 24 (Appeal Br. 12) but these claims are
not separately considered. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) ("a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art" is not a
substantive argument that requires claims be separately addressed).
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Application 13/198,425
Appeal Br. 13. Appellant argues that Figure 11 of Jacobson teaches that the
dispensers are provided on the same side of stamp 1150. Id.
In reply, the Examiner states that his interpretation of the term
"adjacent" is such that the location of dispensers 1140 as shown in Figure 11
suggests the claimed location of the dispensers.
Appellant does not direct us to Specification disclosure that
specifically defines the term "adjacent to". Paragraph [0085] of the
Specification discusses an embodiment wherein the dispenser is located at or
adjacent to each side of the imprint template holder, but the specific meaning
of this phrase is not provided therein.
It is well established that "the PTO must give claims their broadest
reasonable construction consistent with the specification ... Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation." In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007). "[A]s applicants may amend claims
to narrow their scope, a broad construction during prosecution creates no
unfairness to the applicant or patentee." Id.
In the instance case, there is no indication that intrinsic evidence
defines the term or that the term "adjacent" has a specialized meaning in the
relevant art. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.Cir.2005)
(en bane). Under such circumstances, we can look to dictionaries for
definitions of the word "adjacent" for assistance in determining the term's
meaning to one skilled in the art. Webster's Third New International
Dictionary provides several different definitions of "adjacent". One
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definition is "not distant", and another is "relatively near and having nothing
of the same kind intervening. "7
In view of the above, we thus agree with the Examiner that the
dispensers shown in Figure 11 of Jacobsen are "adjacent to" the holder 1125.
While Appellant argues in the Reply Brief, on pages 9-10, that the claim
requires that each side of the imprint template holder has an associated
imprintable medium dispenser, this argument is deemed waived and
therefore unpersuasive (see footnote 5, supra). Furthermore, claims 16 and
25, as currently written, do not indicate that each side of the holder has an
associated dispenser.
In view of the above, we affirm the rejection of claims 11-16, 19, 21-
25 under 35 U.S.C. §103(a) as being unpatentable over Jacobson view of
Ono and Sreenivasan.
DECISION
The rejection is affirmed.
7 Adjacent is defined as:
la: not distant or far off ... : nearby but not touching ... b: relatively near and
having nothing of the same kind intervening: having a common border:
ABUTTING, TOUCHING: living nearby or sitting or standing relatively
near or close together ... c: immediately preceding or following with nothing
of the same kind intervening.
Webster's Third New International Dictionary of the English Language
Unabridged 26 (2002).
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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).
cdc
ORDER
AFFIRMED
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