Ex Parte Smith et al

Board of Patent Appeals and Interferences

Jun 22, 2012

11147938 (B.P.A.I. Jun. 22, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/147,938 06/08/2005 Jacob Smith 009381 USA/FEP/LPCVD 7974
44257 7590 06/25/2012
PATTERSON & SHERIDAN, LLP - - APPM/TX
3040 POST OAK BOULEVARD, SUITE 1500
HOUSTON, TX 77056
EXAMINER
CHEN, BRET P
ART UNIT PAPER NUMBER
1715
MAIL DATE DELIVERY MODE
06/25/2012 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)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JACOB SMITH, ALEXANDER TAM,
R. SURYANARAYANAN IYER, SEAN SEUTTER, BINH TRAN,
NIR MERRY, ADAM BRAILOVE, ROBERT SHYDO JR.,
ROBERT ANDREWS, FRANK ROBERTS,
THEODORE SMICK, and GEOFFREY RYDING
__________

Appeal 2011-007927
Application 11/147,938
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants request rehearing of our Decision1 affirming the Examiner’s
rejection of claims 30 and 45 through 52 under 35 U.S.C. §103(a) as unpatentable

1 DECISION mailed April 24, 2012.
Appeal 2011-007927
Application 11/147,938

2
over the disclosures of Gadgil, Conboy, Verplancken and Mori. (See Request for
Reconsideration (“Req.”) filed May 24, 2012).
Appellants contend that the merits panel improperly placed the burden on
Appellants to show that Verplancken’s disclosure relating to moving a substrate
support vertically is not enabling. (See Req. 2.) In this regard, Appellants assert
that:
The Board asserts that Verplancken is an issued U.S. patent that
is presumed to enable vertical motion of a substrate support.
Applicants submit that the presumption of validity applies only to the
claimed subject matter of an issued patent. Verplancken, a
published patent application, was ultimately patented on May 25,
2005, as U.S. Patent 6,905,737 (hereinafter "the '737 Patent"), and the
claims issued therein are entitled to a presumption that they are valid
under 35 U.S.C. § 282. See MPEP § 2164.08 ("All questions of
enablement are evaluated against the claimed subject matter"). The
claims of the '737 Patent are not directed to vertical movement of a
substrate support, so the presumption of validity, including the
presumption of enablement, does not apply to the subject of vertical
motion.
(Id.) However, notwithstanding Appellants’ arguments to the contrary, In re
Spence, 261 F.2d 244, 246 (CCPA 1958) referred to in the Decision states
that the entire disclosure of a published U.S. patent prior art, Verplancken,
enjoys a presumption of validity and operability. Even if such presumption
does not apply to the entire disclosure of Verplancken as argued by
Appellants, the burden of proving such prior art patent invalid for lacking
enablement still rests with Appellants. In re Sasse, 629 F.2d 675, 681
(CCPA 1980) (explaining that in attacking the operability of a publication
(not a US patent) cited as a reference, Appellants have the burden of
rebutting the presumption of operability by a preponderance of the
Appeal 2011-007927
Application 11/147,938

3
evidence.) This is especially true in this situation since Appellants have not
questioned the Examiner’s finding that the vertically moving mechanism
taught byVerplancken was conventional in the art at the time of the
invention as indicated at page 5 of the Decision. In other words, we find no
reversible error in the reasoning set forth at pages 5 and 6 of our Decision
which is reproduced below:
Here, Appellants do not question that the vertically moving and
rotating mechanisms suggested or implied by Verplancken and Gadgil
were conventional in the art at the time of the invention. (Compare
Ans. 4-8 with App. Br. 9-12 and Reply Br. 3-4.) Although
Verplancken and Gadgil, U.S. Patents, do not provide the details of
conventional vertically moving and rotating mechanisms for
providing the vertical movement of a substrate support and the
rotating movement for a substrate, the absence of the details of such
conventional mechanisms does not render their disclosures relating to
the vertical movement of a substrate support and the rotating
movement for a substrate non-enabling. See In re Buchner, 929 F.2d
660, 661 (Fed. Cir. 1991); Hybritech, Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986); Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
1452, 1463 (Fed. Cir. 1984). It is incumbent upon Appellants to show
that the disclosures of Verplancken and Gadgil do not enable one of
ordinary skill in the art to employ appropriate conventional
mechanisms to obtain their suggested vertical movement of a
substrate support and the rotating movement for a substrate, without
undue experimentation. In re Wands, 858 F.2d 731,737 (Fed. Cir.
1988); Spence, 261 F.2d at 246. However, on this record, Appellants
have not shown, much less adequately explained, why undue
experimentation is necessary to implement appropriate conventional
mechanisms to obtain the vertical movement of a substrate support
and the rotating movement for a substrate taught or suggested by
Verplancken and Gadgil.

Appeal 2011-007927
Application 11/147,938

4
In conclusion, based on the foregoing, we have granted Appellants’ Request
to the extent that we have reconsidered our Decision, but we deny Appellants’
request to make any change therein.

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED

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