Brooks Automation, Inc.

Patent Trials and Appeals BoardDec 15, 2021

2021000991 (P.T.A.B. Dec. 15, 2021)

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. 15/465,326 03/21/2017 Jairo T. MOURA 390-011458-US (C2I1) 1486 106446 7590 12/15/2021 Perman & Green, LLP 99 Hawley Lane Stratford, CT 06614 EXAMINER LOWE, MICHAEL S ART UNIT PAPER NUMBER 3652 MAIL DATE DELIVERY MODE 12/15/2021 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAIRO T. MOURA, MARTIN HOSEK, TODD BOTTOMLEY, and ULYSSES GILCHRIST ____________ Appeal 2021-000991 Application 15/465,326 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, JENNIFER MEYER CHAGNON, and ROBERT J. SILVERMAN, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING This is a decision on rehearing in Appeal Number 2021-000991. We have jurisdiction under 35 U.S.C. § 6(b). Requests for Rehearing are limited to matters misapprehended or overlooked by the Board in rendering the original decision, or to responses to a new ground of rejection designated pursuant to § 41.50(b). 37 C.F.R. § 41.52. Appellants may also present a new argument based upon a recent relevant decision of either the Board or a Federal Court. 37 C.F.R. § 41.52 (a)(2) (2019). Appeal 2021-000991 Application 15/465,326 2 ANALYSIS The Decision mailed September 10, 2021, at pages 4–6 set forth the basis for determining that the rejection of claim 1 under 35 U.S.C. § 103 as unpatentable under Kirihata, Woith, and Lee was proper and affirmed. The Appellant argues that the rejection of claim 1 was improper because the “purpose of Kirihata is to realize high-speed rotation of a wafer aligner” and that high-speed rotation “operates with the employment of active gripping” and that therefore that “Kirihata expressly teaches against the use of passive edge gripping” which results in slipping and lowered positional accuracy (Request, 3). The Appellant argues that the rejection undermines Kirihata which “must nonetheless operate at high speed (i.e., with active edge gripping)” (Request, 4). The Appellant also argues that the “obvious to try” rationale asserting that there are selectable choices for speed undermines the operation of Kirihata to operate at high-speed (Request, 4). We have reviewed the Decision in light of the Appellant’s arguments presented in the Request for Rehearing at pages 2–7, but are not persuaded that the Decision to sustain the rejection of record was improper. As noted above, the Decision at pages 4–6 set forth the basis for determining that the rejection of claim 1 under 35 U.S.C. § 103 as unpatentable under Kirihata, Woith, and Lee was proper. The Appellant has not argued that the rejection of record fails to disclose any claim limitations, but rather instead argues that the cited combination is improper because the rejection undermines the Kirihata reference which is meant to operate at “high-speed” (Request, 2–7). First, as noted in the Decision to some extent, the terms “high-speed” and “passive gripping” are “relative terms” (Dec. 5). Further, while the Appellant argues that Kirihata operating at a lower speed would undermine Appeal 2021-000991 Application 15/465,326 3 the operation of the device, this argument is not persuasive. The Decision set forth that the modification of Kirihata by Woith, and Lee in the rejection of record to use a transparent elastomer and passive gripping for the advantage of having a wafer aligner with less wafer stress and particle dusting and to allow the operator to see the pad align contact with the wafer would have been obvious to one of ordinary skill in the art (Dec. 5). If the features of having less wafer stress and particle dusting were desired, it would have been obvious to one of ordinary skill in the art to modify the Kirihata reference in view of Woith and Lee as set forth in the Decision at pages 4–6. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734, (2007) emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art”, id., 127 S. Ct. at 1739, and discussed circumstances in which a patent might be determined to be obvious without an explicit application of the teaching, suggestion, motivation test. In particular, the Supreme Court reaffirmed that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. In KSR, the Court also stated that when considering obviousness that “the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 127 S. Ct. at 418. Here, no elements of the claim have been argued as missing from the cited prior art, rather only that the combination of the prior art is improper (Request, 2–7). We also disagree with the Appellant’s contention that Kirihata’s device could not be modified to operate at less than “high-speed” Appeal 2021-000991 Application 15/465,326 4 and to use “passive gripping”. The Decision did not assert that Kirihata disclosed operation at a low speed, but only that within the cited combination of references that operation at a low speed would have been an obvious modification, if desired, at which the machine could be set to operate. The Appellant at page 7 of the Request also argues that Kirihata did not disclose passive gripping, but this was shown in the prior art by Lee (Dec. 5). Further, as noted above, both the terms “high-speed” and “passive gripping” are relative terms. One of ordinary skill in the art would have clearly seen an obvious advantage of having a machine such as Kirihata’s that could operate at a lower speed if desired in order to have less particle dusting by passive gripping for wafer manufacturing where very clean manufacturing environments were required in the cited combination. Further, one of ordinary skill in the art would have clearly recognized that it is common in many manufacturing machines to have the machines set for adjustable speed settings (low to high) and to use interchangeable gripping holders based on the application that the machine is being used for. One of ordinary skill in the art would clearly recognize the advantage of having a machine with adjustable speed settings and interchangeable machine gripping holders; such a machine would reduce cost and space as a different machine would not be required for each speed setting or gripping holder. Here, one of ordinary skill in the art would readily have inferred that the device of Kirihata could be modified to use passive gripping surfaces and transparent elastomers for the advantage of having a wafer aligner with less wafer stress and particle dusting and to allow the operator to see the pad contact the wafer if desired, even if slower speeds were used for higher quality manufacturing. Therefore, the cited combination would have been obvious and the rejection is deemed proper. Appeal 2021-000991 Application 15/465,326 5 For these above reasons, the Request for Reconsideration is not persuasive and the rejection of record under 35 U.S.C. § 103 as unpatentable under Kirihata, Woith, and Lee is deemed proper. CONCLUSION The Appellant’s request for reconsideration has not convinced us that we have overlooked or misapprehended issues in the previous analysis in light of the arguments presented. Outcome of Decision on Rehearing: Claims 35 U.S.C § Reference(s)/Basis Granted Denied 1–4, 6–11, 13, 14 103 Kirihata, Woith, Lee 1–4, 6–11, 13, 14 Overall Outcome 1–4, 6–11, 13, 14 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6– 11, 13, 14 Nonstatory double patenting 1–4, 6–11, 13, 14 1–4, 6– 11, 13, 14 103 Kirihata, Woith, Lee 1–4, 6–11, 13, 14 Overall Outcome 1–4, 6–11, 13, 14 DECISION REHEARING DENIED