Ex Parte Amundsen et al

Patent Trial and Appeal Board

Oct 30, 2017

12177737 (P.T.A.B. Oct. 30, 2017)

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.
12/177,737 07/22/2008 Paul E. Amundsen 0100.2061-015 4988
21005 7590 11/01/2017
HAMILTON, BROOK, SMITH & REYNOLDS, P.C.
530 VIRGINIA ROAD
P.O. BOX 9133
CONCORD, MA 01742-9133
EXAMINER
PETTITT, JOHN F
ART UNIT PAPER NUMBER
3744
NOTIFICATION DATE DELIVERY MODE
11/01/2017 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.department @hbsr.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL E. AMUNDSEN,
MAUREEN C. BUONPANE, DOUGLAS ANDREWS, and
JORDAN JACOBS
Appeal 2016-006612
Application 12/177,737
Technology Center 3700
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paul E. Amundsen et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from a rejection of claims 21—54.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Claims 1—20 are canceled. Appeal Br. 26 (Claims App.)(filed Oct. 5,
2015).
Appeal 2016-006612
Application 12/177,737
CLAIMED SUBJECT MATTER
The claims are directed to managing safety functions in a cryopump.
Spec. 2,1. 7. Claim 21, reproduced below, is illustrative of the claimed
subject matter:
21. A method of controlling a cryopump, the method
comprising:
monitoring a temperature sensor coupled to the cryopump
to determine whether the temperature sensor is functioning;
determining a potentially unsafe condition in response to
an inability to determine a reading from the temperature sensor
coupled to the cryopump;
automatically responding to the inability to determine the
temperature reading by initiating an automated safety purge
routine that releases a normally open purge valve coupled to the
cryopump to deliver purge gas to dilute potentially hazardous
gas; and
preventing the safety purge routine from being aborted by
maintaining the normally open purge valve open until the
potentially unsafe condition changes to a safe condition.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Martin
Rubin
Mizuno
Matte
Gross
Jankins
Yamartino
Ushiku
Amundsen “Amundsen ’
US 4,105,900
US 4,472,176
US 5,333,676
US 5,727,392
US 5,761,090
US 6,272,400 B1
US 6,327,863 B1
US 2002/0193891 A1
” US 2004/0261426 A1
Aug. 8, 1978
Sept. 18, 1984
Aug. 2, 1994
Mar. 17, 1998
June 2, 1998
Aug. 7, 2001
Dec. 11,2001
Dec. 19, 2002
Dec. 30, 2004
2
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EVIDENCE RELIED ON BY APPELLANTS
Declaration under 37 C.F.R. § 1.132 of Dr. Doreen Ball-DiFazio dated
Sept. 8, 2014 (“Ball-Difazio Declaration” or “Ball-Difazio Decl.”).
REJECTIONS2
(I) Claims 23, 24, 31, 32, 36, 43, and 54 are rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Final Act. 4.
(II) Claims 23, 24, 31, 32, 34,3 36, 43, and 54 are rejected under
35 U.S.C. § 112, second paragraph, as indefinite.4 Final Act. 5.
(III) Claims 23, 24, 31, 32, 36, 43, and 54 are rejected under
35 U.S.C. § 103(a) as unpatentable over Amundsen ’426 and Matte. Final
Act. 7.
(IV) Claims 23, 24, 31, 32, 36, 43, and 54 are rejected under
35 U.S.C. § 103(a) as unpatentable over Matte and Amundsen ’426. Final
Act. 8.
2 A rejection of claims 23, 24, 31, 32, 36, 43, and 54 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the enablement requirement is
withdrawn in the Answer. Ans. 12 (mailed Apr. 21, 2016).
3 The heading for this rejection does not include claim 34, but the body of
the rejection addresses claim 34. Final Act. 5 (mailed Jan. 5, 2015).
4 The rejection of claims 22 and 35 under 35 U.S.C. § 112, second
paragraph, as being indefinite, is withdrawn in the Answer. Ans. 13.
3
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(V) Claims 21, 22, 25—30, 33—35, 37-42, and 44—54 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Yamartino, Jankins, Ushiku,5
and Rubin.6 Final Act. 9.
(VI) Claims 21—54 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamartino, Jankins, Ushiku, Rubin, and Matte.7 Final
Act. 14.
The Examiner additionally objects to the drawings under 37 C.F.R.
§ 1.83(a) and to certain amendments to the Specification filed under
35 U.S.C. § 132 as introducing new matter. Final Act. 2. The reasons for
the objection to the drawings in the paragraph bridging pages 2 and 3 of the
Final Action appears to be coextensive with the reasons for the rejection of
the claims under 35 U.S.C. § 112, first paragraph, as failing to meet the
written description requirement, and as is further discussed below. See Final
Act. 4—5.
5 In the Final Action, the Examiner relied on any one of Martin, Gross,
Mizuno, or Ushiku in Rejection (V) for temperature sensor malfunction, but
in the Answer only relies on Ushiku to simplify matters. Ans. 4. Ushiku is
also the only reference relied upon for this feature in Rejection (VI). Ans. 9.
6 Rejection (V) is discussed on pages 9—13 of the Final Action. An identical
rejection is discussed on pages 15—19 of the Final Action. Because the
rejection on pages 15—19 is duplicative of Rejection (V), the decision does
not address the rejection twice.
7 Rejection (VI) is discussed on pages 14 and 15 of the Final Action. An
identical rejection is discussed on pages 19 and 20 of the Final Action.
Because the rejection on pages 19 and 20 is duplicative of Rejection (VI),
the decision does not address the rejection twice.
4
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The objection to the Specification and the objection to Figures 3 and 7
are not coextensive with any of the rejections discussed below, and such
objections are not within our jurisdiction.8
OPINION
Rejection (I); 35 U.S.C. § 112, 1st Paragraph, Written Description
The Examiner finds that performing the safety purge “inside the
process chamber” is new matter because “the safe purge operations
disclosed are only described relative to a cryopump having a gate valve.”
Final Act. 4 (citing Spec. Figs. 4 and 6).
Appellants argue that the Specification reasonably conveys to those
skilled in the art that the applicant was in possession of the claimed
cryopump in situ method. Appeal Br. 11. Appellants assert that the
Specification discloses in situ features and that “the example methods of the
safety purge routine using a gate valve are non-limiting.” Id. at 12.
According to Appellants, the Ball-Difazio Declaration avers that “it was
known at the time of the invention that a gate valve between the process
chamber and the cryopump is an optional feature of a cryogenic vacuum
system, and that the in situ cryopump generally meant that the cryopump did
not have a gate valve.” Id. (citing Ball-Difazio Deck Tflf 6—7). Appellants
contend that because “the gate valve is inconsequential with respect to the
safety purge routine, the broadest reasonable interpretation of the claims
would include cryopumps outside or inside the process chamber, without
8 We do not address the objection to Figures 3 and 7 and the objection to the
Specification (see Appeal Br. 23—24) because such matters are not
appealable and instead should be addressed via petition.
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regard to inconsequential and unclaimed features such as gates valves.” Id.
at 13.
The Examiner responds that “there is no safe purge operation
disclosed anywhere that does not operate the gate valve 116.” Ans. 13. The
Examiner states that although Appellants’ Specification discloses that
“cryopump 104 may be an ‘in situ’ cryopump,” the disclosed safe purge
operation requires a gate valve, and “there is no description of how a safe
purge operation is performed with an in situ cryopump.” Ans. 14 (emphasis
added). The Examiner notes that there is a difference between whether one
of ordinary skill in the art could have modified the disclosed safe purge
operation for use in an in situ cryopump and whether the Specification
sufficiently discloses the claimed method of operating a safe purge in an in
situ cryopump, and the Examiner concludes that “there is insufficient
evidence that one skilled in the art can reasonably conclude that the inventor
had possession of the claimed invention at the time of filing.” Ans. 16.
In reply, Appellants argue that Examiner has failed to establish “by a
preponderance of evidence why a person skilled in the art would not
recognize in applicant’s disclosure a description of the invention defined by
the claims.” Reply Br. 2 (citing MPEP 2163). According to Appellants, the
Specification discloses the steps of controlling a cryopump during a safety
purge routine and the “steps are the same whether the cryopump is
implemented inside (in situ) or outside the process chamber, and whether or
not the cryopump has a gate valve.” Id. Appellants assert that for “a
cryopump configuration that does not include a gate valve, the[] disclosed
gate valve operations are clearly not required (and clearly not performed)
during a safety purge routine.” Id.
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Appellants have the better position on this point. A written
“description must ‘clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.’” AriadPharms.,
Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)
(quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)).
Here, the Specification discloses that “the cryopump 104 may be in situ
inside, for example, the process chamber 102,” and “can remove gases from
the process chamber 102.” Spec. 5:24—25 and 6:14; see also Appeal Br. 11.
According to the Ball-Difazio Declaration, “an in situ cryopump generally
meant that the cryopump did not have a gate valve.” Ball-Difazio Decl. 17.
As Appellants note, none of the claims recite a gate valve (see Appeal Br.
13), and the Examiner has not made an enablement rejection based on the
grounds that a disclosed critical limitation, i.e., a gate valve, is missing from
a claim. Indeed, the Examiner withdrew an enablement rejection of the
claims at issue stating “it is considered that in view of all of the evidence as
a whole, that those of ordinary skill in the art would have been able to make
and perform the safe purge operations as presently claimed.” Ans. 12.
Given that the Examiner does not contest Dr. Ball-Difazio’s assertion that
“[f]rom the perspective of one skilled in the art of cryogenic vacuum
technology, whether a cryopump includes a gate valve is inconsequential
with respect to the implementation of the inventive safety purge routines set
forth in pending Claims 23, 24, 31, 32, 36, 43, 44 and 54” (Ball-Difazio
Decl. 1 8), we agree with Appellants that the Specification conveys with
reasonable clarity to those skilled in the art that, as of the filing date,
Appellants were in possession of a purge routine that includes a purge
“inside a process chamber” as recited in claims 23, 24, 31, 32, 36, 43, and
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54. See Vas-Cath, 935 F.2d at 1563. Accordingly, we reverse the
Examiner’s rejection of claims 23, 24, 31, 32, 36, 43, and 54 as failing to
comply with the written description requirement.
Claim 54
For claim 54, the Examiner also finds that emitting purge gas “at
cryopumping surfaces” is new matter because “there is no disclosure of the
emitting being at the surfaces.” Final Act. 4.
Appellants do not make separate arguments for the additional
rejection of claim 54. See Appeal Br. 10-13. Consequently, we affirm the
Examiner’s rejection of claim 54 as failing to comply with the written
description requirement with respect to the limitation “at cryopumping
surfaces.”
Rejection (II); 35 U.S.C. § 112, 2nd Paragraph
Claims 23, 24, 31, 32, 36, and 43
The basis for the indefmiteness rejection is that “there is no way to
discern the scope of the limitations” with regard to the in situ safety purge
limitation discussed above. Final Act. 6. “As the statutory language of
‘particularity]’ and ‘distinctness]’ indicates, claims are required to be cast
in clear — as opposed to ambiguous, vague, indefinite — terms.” In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). In this case, there is no
conflict between the claims and the corresponding description in Appellants’
Specification, as discussed above, as to what constitutes “in situ,” or inside a
process chamber, and what constitutes a safety purge routine. We are not
persuaded that the Examiner has established that a person of ordinary skill in
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the art would not be able to determine the metes and bounds of the limitation
and the claims as a whole.
Accordingly, the rejection of claims 23, 24, 31, 32, 36, and 43 under
35 U.S.C. § 112, second paragraph, is reversed.
Claim 34
The Examiner finds that “the recitation, ‘a temperature reading by
initiating a safety purge routine’ is indefinite since the claim already recites
‘a temperature reading.’” Final Act. 5.
Appellants argue that the second instance of “a temperature reading”
is part of the phrase “the inability to determine a temperature reading.”
Appeal Br. 15. Appellants assert that “the” was added before “ability” to
refer back the “‘an inability to determine a temperature reading,”’ and that
the second instance of “a temperature reading” is “definite in the context of
the limitation as a whole.” Id. at 15—16.
The Examiner responds that “it is unclear if the ‘a temperature
reading’ would be referring to the earlier temperature reading or another
temperature reading and it is considered that the ambiguity created is
unnecessary and would not exist were the Appellants] to have appropriately
claimed‘the temperature reading.’” Ans. 17.
In reply, Appellants argue that providing antecedence to the term
“‘inability to determine a temperature reading’” is proper and that it “is not
necessary to provide antecedent to ‘temperature reading’” as part of this
phrase. Reply Br. 4—5.
Appellants have the better position here. Although the terminology,
“the temperature reading,” could be used in claim 34 as suggested by the
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Examiner, using this terminology is not necessary because the phrase “the
ability to determine” refers to the previously recited “inability to determine”
in claim 34, and, therefore, proper antecedent basis is provided in claim 34
in its current form.
Accordingly, the rejection of claim 34 under 35 U.S.C. § 112, second
paragraph, is reversed.
Claim 54
The Examiner finds that “it is not clear what is included by ‘at
cryopumping surfaces.’” Final Act. 6.
According to Appellants, the Specification discloses “on the
cryopumping surfaces” and “around the cryopumping surfaces,” and that
claim 54 is definite because it is consistent with the Specification. Appeal
Br. 15 (citing Spec. 6:14—16 and 7:9-17).
We agree with the Examiner that claim 54 is indefinite because claim
54 is amenable to at least two plausible claim constructions as explained
below. See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008)
(precedential) (“if a claim is amenable to two or more plausible claim
constructions, the USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim . . . indefinite”).
The Examiner explains that the rejection is based on “the term ‘at
cryopumping surfaces’ as the specification did not appear to support any
directing of purge gas in some defined way ‘at’ the surfaces.” Ans. 16.
According to the Examiner, purge gas enters into the cryopump and it is
“unclear what is included and excluded by the phrase: ‘at cryopumping
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surfaces.’” Ans. 17. Thus, the Examiner interprets the term “at” to require a
specific direction for emission, i.e., toward the cryopumping surfaces.
Appellants’ Figure 3 depicts a cross-sectional view of a cryopump with an
unlabeled conduit extending toward unlabeled cryopanels (cryopumping
surfaces). Although the conduit is unlabeled and the Specification does not
disclose that this conduit emits purge gas, no other conduit is disclosed as
emitting purge gas into the cryopump in Appellants’ Figure 3. Accordingly,
the Examiner’s interpretation of at cryopumping surfaces to mean toward the
cryopumping surfaces is plausible.
Appellants’ use the term “at” to include in, on, or near, and assert that
the Specification discloses “directing the nitrogen into the cryopump 104
close to the second-stage array 122b,” which supports “at” the surfaces.
Reply Br. 4 (citing Spec. 6:11—15).
This second interpretation of “at” in claim 54 focuses on the “close
to” limitation so as to mean near the second-stage array with the directional
limitation “directing . . . into” meaning broadly into the cryopump.
Appellants’ interpretation is also plausible, and, thus, both interpretations are
supported by the disclosure and Figure 3.
Accordingly, claim 54 is subject to at least two plausible claim
interpretations. Because those skilled in the art would not understand what
is required by claim 54, we reject claim 54 under 35 U.S.C. § 112, second
paragraph, as indefinite.
Rejections (III) and (IV); Obviousness—Amundsen ’426 and Matte
The Examiner finds that Amundsen ’426 discloses most of the claim
limitations recited in claims 23, 24, 31, 32, 36, 43, and 54, but does not
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disclose that “the safe purge method is performed with a cryopump having
cryopumping surfaces inside a process chamber.” Final Act. 7. The
Examiner relies on Matte as disclosing a cryopump having cryopumping
surfaces inside a process chamber, and concludes that it would have been
obvious to “modify the method of Amundsen [’426] to have the cryopanels
inside a semiconductor process chamber” for, inter alia, “the purpose of
providing the safety features of Amundsen [’426] to semiconductor
processes using in-situ cryopumps.” Id. at 8.
Appellants argue that “Amundsen [’426] is not prior art to the present
application since the present application claims priority to parent
application, U.S. Application No. 11/136,325, filed May 23, 2005, which in
turn claims priority to Amundsen [’426].” Appeal Br. 16.
The Examiner responds that “inasmuch as the identified claims are
new matter and are not supported by the present disclosure nor the
disclosure of the parent application, these claims do not have a right to
priority to Amundsen [’426] . . . the filing date for these claims would not
disqualify Amundsen [’426].” Ans. 17.
Appellants reply that “the identified claims are not new matter[,] but
supported in the specification of the present application, as originally filed,”
and “Amundsen [’426] is not prior art to the present application, as the
present application claims priority to Amundsen [’426].” Reply Br. 5.
Appellants’ assertion that Amundsen ’426 is not prior art (due to a
claim to priority to Amundsen’426) appears to be based on the fact that
Amundsen ’426 is a continuation-in-part (CIP) to the parent of the present
application, Amundsen (US 7,415,831 B2) (hereinafter “Amundsen ’831”).
However, in some instances, a parent of a CIP application may be prior art
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to claims of the CIP application and those of its child applications. See In re
Chu, 66 F.3d 292, 296-297 (Fed. Cir. 1995).
The listed inventorship in Amundsen ’426 is identical to the listed
inventorship in the application under appeal. Thus, the only subsection of
35 U.S.C. § 102 under which Amundsen ’426 could be qualified as prior art
is 35 U.S.C. § 102(b). In order to quality under this subsection, Amundsen
’426 would have to have been published “more than one year prior to the
date of the application for patent in the United States.” Here, Amundsen
’426 was published on December 30, 2004. The present application claims
priority to (is a continuation of) Amundsen (US 7,415,831 B2) (hereinafter
“Amundsen ’831”), which was filed on May 23, 2005, less than one year
before Amundsen ’426 was published. Appellants, however, are entitled to
this priority date only for claims that are supported by Amundsen ’831 ’s
disclosure. The Amundsen ’831 specification discloses that “cryopump 104
may be in situ inside, for example, the process chamber 102,” and that
“cryopump 104 can remove gases from the process chamber 102.”
Amundsen ’831, 3:59-60 and 4:16—17. Amundsen ’831 also discloses “a
controller 120 coupled to the cryopump 104, and the normally open valve
would open to supply the purge gas to the cryopump 104.” Id. at 5:16—18.
As such, Amundsen ’ 831 supports performing the safety purge inside the
process chamber. Thus, based on the proper claim of priority to May 23,
2005, Amundsen ’426 is not prior art to claims 23, 24, 31, 32, 36, 43, and
54. Therefore, we reverse Rejections (III) and (IV).
Rejection (V); Yamartino, Jankins, Ushiku, and Rubin
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The Examiner finds that Yamartino discloses most of the limitations
of the independent claims, including an automated safety purge routine.
Final Act. 9. The Examiner relies on Ushiku as teaching the inability to
determine a temperature reading, and considers that it would have been
obvious to use the teachings of Ushiku as the impetus to perform the safety
purge of Yamartino to ensure that the cryopump system is operated safely.
Id. at 10. The Examiner relies on Jankins as disclosing “preventing the host
controller (16) from operating the cryopump when components are
determined to not be functioning correctly,” and states that Jankins teachings
would “modify the local control [(of Yamartino)] to prevent the host
controller (16) from aborting the purging of Yamartino for the purpose of
ensuring safe operation of the cryopump and ensuring that the cryopump
cannot be commanded to do unsafe operations by the host controller (16).”
Id. at 10—11. The Examiner relies on Rubin as disclosing a normally open
purge valve, and concludes that it would have been obvious “to modify
Yamartino’s purge valve to be normally open so that the hydrogen may be
purged if the power were to fail or some other malfunction were to occur
that would prevent the actuation of the purge valve.” Id. at 13.
Inability to Determine a Reading From a Temperature Sensor
Appellants argue that none of the references disclose “determining a
potentially unsafe condition in response to an inability to determine a
reading from a temperature sensor coupled to a cryopump.” Appeal Br. 18.
According to Appellants, the Examiner cannot rely on Ushiku for this
feature because Ushiku generally discloses that “determining if a
temperature sensor is malfunctioning is well known for proper control and
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operation.” Id. Appellants contend that because “Ushiku discloses a system
for detecting abnormal sensitivity of a temperature sensor, not determining a
potentially unsafe condition in response to an inability to determine a
reading from a temperature sensor coupled to a cryopump,” the Examiner’s
conclusion of obviousness is unsupported. Id. at 20.
The Examiner responds that “the rejection is based upon the
combination of the teachings of the references, while the entirety of the
Appellants’ approach is based upon singularly identifying only what each
reference teaches in isolation.” Ans. 17—18. The Examiner states that
Yamartino monitors temperature sensor (26) coupled to cryopump (12, 16)
and determines a potentially unsafe condition based on temperature sensor
(26), and Ushiku determines if a temperature sensor is malfunctioning to
ensure proper control and operation, and, thus, the combined teachings of
Yamartino and Ushiku “determine that an unsafe condition exists if the
temperature sensor is unable to determine a reading and [would] perform the
safety purge of Yamartino when a temperature sensor malfunctions for the
purpose of ensuring that hydrogen is purged and that the cryopump system is
operated safely.” Ans. 18—19.
Appellants assert, in reply, that they are not attacking the references
individually, and are pointing out that “a prima facie case of obviousness
requires a factual finding ‘that the prior art include each element claimed.’”
Reply Br. 8 (citing MPEP § 2143 (A)(1)). Appellants assert that the
“claimed methods and systems specifically require responding to ‘an
inability to determine a reading from a temperature sensor coupled to a
cryopump’ and recite ‘initiating the automated safety purge routine’ in
response to this specific event.” Id. at 9—10. According to Appellants, the
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Examiner improperly relies on “the general teaching of determining a
malfunctioning temperature sensor” to initiate the automated safety purge
routine because this is “contrary to the requirement under MPEP § 2143
(A)(1) ‘that the prior art include each element claimed,’” including
“‘determining a potentially unsafe condition in response to an inability to
determine a reading from a temperature sensor coupled to a cryopump.’” Id.
at 10.
Appellants’ arguments are not persuasive, because they are not
commensurate with the Examiner’s rejection. See Ans. 20. The Examiner
states that the rationale for the proposed modification is “for the purpose of
ensuring that hydrogen is purged and that the cryopump system is operated
safely.” Final Act. 10. Appellants do not assert persuasively that this
rationale is improper. Further, the Examiner is correct in pointing out that
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The fact that “determining a potentially unsafe condition in response to an
inability to determine a reading from a temperature sensor coupled to a
cryopump” is not specifically mentioned in either Yamartino or Ushiku does
not, without more, establish that the Examiner erred. What a reference
teaches or suggests must be examined in the context of the knowledge, skill,
and reasoning ability of a skilled artisan and is not limited to what a
reference specifically “talks about” or what is specifically “mentioned” or
“written” in the reference. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d
1371, 1380 (Fed. Cir. 2005). “A person of ordinary skill is also a person of
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ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 421 (2007).
Here, Yamartino monitors temperature and performs a safety purge if
the temperature is too high. See Yamartino 4:24—36 (“if the second stage
array 17 of cryopump 12 rises in temperature to above about 22 K, controller
18 is programmed to determine that an unsafe condition exists and
automatically . . . purge gas is applied for about 5 minutes . . . [to] change
the unsafe condition to a safe condition.”); see also Ans. 21. Yamartino also
discloses that “[controller 18 is able to make conclusions regarding unsafe
and safe conditions based upon a function of operational modes as well as
sensed and measured parameters, for example, gate position, second stage
array 17 temperature, and time.” Id. at 4:40-50; see also Ans. 21. Ushiku
detects failure in pump temperature sensors. Ushiku ^fl[ 28 and 29; see also
Ans. 18. Because Yamartino determines a safe or unsafe condition based on
a temperature sensor, a failed temperature sensor would not allow a
determination that a safe or unsafe condition exists, and, thus, we agree with
the Examiner’s conclusion that “it would [have been] obvious to determine
an unsafe condition based on the inability to provide a temperature reading
from the temperature sensor for the purpose of ensuring that the safety purge
operation would be able to operate at the correct temperatures to prevent
explosions and fires.” Ans. 21. Appellants have not shown error in the
Examiner’s findings and reasoning.
Normally Closed Valve
Appellants also argue that Yamartino’s automated safety purge
routine uses a normally closed valve, and that Rubin does not remedy this
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deficiency of Yamartino because, inter alia, Rubin is non-analogous art.
Appeal Br. 20. Nonetheless, Appellants contend that because “a routine
involving a normally closed valve requires different steps and components
than a routine involving a normally open valve,” Yamartino’s safety purge
“could not be achieved using a normally open valve.” Id. at 21. Moreover,
according to Appellants, modifying Yamartino’s system to use a normally
open valve is not as simple as replacing the valve, but would require “a
substantial modification” of Yamartino that would “change the principle of
operation” of Yamartino. Id.
In response, the Examiner notes that “there is no support for the
allegation that Rubin is non-analogous art,” because whether a reference is
analogous art includes a determination that “(1) the reference is from the
same field of endeavor as the claimed invention (even if it addresses a
different problem); or (2) the reference is reasonably pertinent to the
problem faced by the inventor (even if it is not in the same field of endeavor
as the claimed invention).” Ans. 22 (citing MPEP 2141.01(a)). The
Examiner finds that Rubin is analogous art because “Rubin is ‘reasonably
pertinent’ to the problem at hand which is controlling the opening of a purge
valve.” Id.
The Examiner also notes that Appellants’ assertion that Yamartino’s
safety purge could not be achieved using a normally open valve is
unsupported and “implies that in modifying Yamartino that those of ordinary
skill in the art would be unable somehow to modify the controller of
Yamartino.” Ans. 23. According to the Examiner, “those of ordinary skill
in the art are fully capable of making even extensive programming changes
to the controller,” and Appellants have provided “no evidence that the
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controller could not be reprogrammed.” Ans. 23—24. The Examiner further
notes that “[configuring a valve to open when the power is interrupted is not
a change of the principle of operation,” because Yamartino’s “cryopump is
still purged of hydrogen gas by opening the purge valve in unsafe conditions
and the change is merely how the valve is opened.” Ans. 24.
Appellants reply that “Rubin merely teaches automatically opening a
normally open purge valve after a power interruption, which is a known
feature of normally open purge valves configured in a cryopump.” Reply
Br. 11 (citing Spec. 2:25—26). According to Appellants, because Rubin does
not maintain the purge valve open until the potentially unsafe condition
changes to a safe condition, Rubin cannot teach modifying the gate valve
routine of Yamartino to include this limitation. Id. at 12. Appellants
contend that, moreover, Rubin is non-analogous art because “Rubin’s
controlling the release of the purge gas based on the relative pressure would
actually frustrate the purging of the cryopump due to warmed cryopump
panels.” Id. Appellants assert that “even if Yamartino was hypothetically
modified with Rubin, the combination would only teach opening a normally
open purge valve with a power interruption,” and would not maintain a
“normally open purge valve open until the potentially unsafe condition
changes to a safe condition.” Id. at 13. Appellants also assert that the
modification “would rely on the check valve of Rubin to operate to release
purge gas based on relative pressure, which would clearly require substantial
modification to the cryopump routine of Yamartino,” which would “change
Yamartino’s principles of operation when releasing purge gas, as the release
operation would now depend on both pressure and temperature.” Id. at 13.
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Appellants’ arguments are not persuasive. Although the Examiner’s
reason for modifying Yamartino based on the teachings of Rubin was “so
that the hydrogen may be purged if the power were to fail” (Final Act. 13),
Appellants do not explain adequately why the valve would open only during
a power interruption. Yamartino’s controller automatically opens purge
valve 29 to begin the purge routine (Yamartino, 4:28—36 and 5:46—50; see
also Final Act. 9) and, thus, is open as part of Yamartino’s safety purge
routine, and would remain open until closed by the controller. The
advantage attained during power interruption is not lost for other operations
of Yamartino, including the purge routine.
Appellants’ arguments that Rubin is non-analogous art are also not
persuasive. Assuming, for the purpose of argument, that Rubin is not in the
same field of endeavor, Appellants do not persuasively argue that Rubin is
not pertinent to the problem addressed by Appellants’ invention.
Specifically, Appellants’ assertion that “Rubin is not pertinent to addressing
the problem of ensuring the dilution of flammable gas caused by the release
of hazardous gas from warmed cryopump panels,” is not well taken. Reply
Br. 12. We decline to narrowly define the problem to read the field of
invention into the problem solved. The problem with which the inventor
was involved is preventing hydrogen ignition by purging the hydrogen
(hazardous gas) from the system by dilution. Spec. 2:14—15. Rubin
discloses that “purge gas is permitted to rapidly sweep therethrough
removing any hydrogen left in the system,” and is therefore reasonably
pertinent to the inventors’ problem. Rubin 3:53—55; see also Final Act. 12.
In addition, the Examiner relies on Rubin’s teaching of a normally open
valve to modify Yamartino’s purge valve 29 to a normally open valve, and
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does not rely on Rubin’s controlling the release of the purge gas based on
the relative pressure. Yamartino’s purge valve will still operate based on
Yamartino’s controller 18 determining an unsafe condition. See Yamartino
5:43-50.
Furthermore, as discussed supra, the Examiner relies on Rubin’s
teaching of a normally open valve to modify Yamartino’s purge valve 29 to
a normally open valve. The Examiner does not rely on Rubin’s check valve,
and, thus, would not require substantial modification to the cryopump
routine of Yamartino, and, therefore, would not change Yamartino’s
principles of operation. Specifically, as discussed above, Yamartino’s purge
valve is opened as part of Yamartino’s safety purge routine, and the
Examiner only relies on Rubin for a normally-open purge valve, but does not
rely on Rubin to maintain the purge valve open. Instead, the Examiner relies
on Jankins for this limitation, so as “to prevent the host controller (16) from
aborting the purging of Yamartino.” Final Act. 11. Jankins is discussed
below.
Claims 21, 22, 25—30, 33, 45, 46, and 49—51
Appellants also argue that the references do not disclose “preventing
the safety purge routine from being aborted by maintaining the normally
open purge valve open until the potentially unsafe condition changes to a
safe condition.” Appeal Br. 21 (emphasis omitted). Although Appellants do
not attribute this claim limitation to any particular claim, this limitation, or a
substantially similar limitation, is found only in independent claims 21, 29,
and 33. Independent claims 34 and 41 recite, inter alia, “a safety purge
routine that releases a normally open purge valve.” These claims do not
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require the purge valve to remain open. Independent claim 44 recites an
interlock, and the Specification discloses that “purge valves can be
automatically controlled by the controller and maintained open by activating
an interlock, which prevents any user or host controller from closing the
purge valve.” Spec. 3:21—23. Thus, although claim 44 requires something
similar to “maintaining the normally open purge valve open,” because claim
44 does not require that the valve is open “until the potentially unsafe
condition changes to a safe condition,” Appellants’ arguments are not
commensurate with the scope of claim 44. Therefore, Appellants’
arguments on this point do not apply to independent claims 34, 41, and 44,
and their associated dependent claims.
Appellants state that the Examiner relies on Yamartino and Jankins
for this limitation, but that Yamartino discloses automatically locking a gate
valve while purging, “which is a separate component of the cryopump than
the claimed purge valve,” and that “locking the valve closed is not analogous
to the claimed maintaining a valve open.” Appeal Br. 21. Appellants assert
that “Jankins does not cure the deficiencies of Yamartino,” because Jankins
“controls components of a cryopump (i.e., a controller),” but does not
disclose “a safety purge routine or maintaining valves open.” Id. at 21—22.
According to Appellants, because “neither Jankins nor Yamartino teaches a
purge routine that involves maintaining valves open,” their combined
teachings do not render obvious this element. Id. at 22. Appellants contend
that the Ball-Difazio Declaration supports Appellants’ position, at least by
Dr. Ball-DiFazio’s statement that
she does not believe that the claimed feature of a cryopump that
was configured to respond to an inability to determine a
temperature reading by automatically initiating a safety purge
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routine and preventing the safety purge routine from being
aborted is obvious to one skilled in the art of cryogenic vacuum
technology.
Id. (citing Ball-DiFazio Decl. 12—14).
The Examiner responds that Yamartino’s disclosure of operating the
purge gas for the 5 minutes is “maintaining the purge valve open until the
unsafe condition changes to a safe condition.” Ans. 25 (citing Yamartino,
4:5—14). The Examiner notes that, moreover, the rejection is based on the
combined teachings of Yamartino and Jankins, and that because Jankins
discloses “preventing the host controller (16) from operating the cryopump
when components are determined to not be functioning correctly . . . Jankins
further establishes that during maintenance operations, it is well known and
obvious to prevent other control systems aborting maintenance and operating
the cryopump.” Id. According to the Examiner, the statements in
paragraphs 12—14 of the Ball-DiFazio Declaration are based on the “‘belief’
and opinion” of Dr. Ball-DiFazio, which are given no patentable weight,
because they are based “on the ultimate legal conclusion at issue.” Ans. 26
(citing MPEP 716.01 (c)).
Appellants reply that “Yamartino does not disclose that the valve is
maintained open during the unsafe condition,” because Yamartino discloses
that “operating of the purge gas may fail or be aborted before a full 5
minutes, even if the unsafe condition continues to exist, and the regeneration
of the cryopump is later restarted to change the unsafe condition to a safe
condition.” Reply Br. 15 (citing Yamartino, 2:12—27; 4:5—8; and 6:9—24).
According to Appellants, “[ajborting the purge gas during the unsafe
condition indicates that the purge valve may be controlled closed (i.e., not
maintained open) during the unsafe condition.” Id. Appellants assert that
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Jankins does not remedy the deficiencies of Yamartino, because Jankins
does not suggest ‘“preventing the safety purge routine from being aborted’
and more specifically preventing such aborting ‘by maintaining the normally
open purge valve open.’” Id. at 15—16. Appellants argue that Jankins
performs offline maintenance on a cryopump, not a safety purge routine on a
cryopump and that “Jankins does not even disclose that the performing
offline maintenance includes maintaining purge valves open.” Id. at 16.
According to Appellants, Jankins’ “preventing other systems from operating
the cryopump during offline maintenance does not make obvious the
specific step of ‘preventing the safety purge routine from being aborted, ’ and
more specifically preventing the aborting ‘by maintaining the normally open
purge valve open,’” as recited. Id.
Appellants’ arguments are persuasive. Yamartino discloses that “[i]f
regeneration is aborted or if there is a purge gas failure before a full 5
minutes of purge gas is applied through cryopump 12, then ... an unsafe
condition continues to exist and . . . regeneration is restarted” and purge gas
is applied for another 5 minutes so that the unsafe condition changes to a
safe condition, or a purge gas is for 5 minutes without restarting
regeneration. Yamartino 4:5—14. Thus, contrary to the Examiner’s
assertion, Yamartino’s safety purge routine can be aborted. Yamartino
discloses with respect to the flow chart of Figure 2 the steps of the purge
process in which “[controller 18 opens purge valve 29 in step 61 and allows
warm purge gas from the purge gas source via line 28 to flow through the
interior of cryopump 12 and out through exhaust valve 27.” Id. at 5:47—50;
Fig. 2. Following Yamartino’s step 61, and the regeneration is aborted in
step 66, the regeneration is either restarted (step 74) or the gas is reapplied
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for 5 minutes at step 61. Id. at 6:9—30. Alternately, if a gas failure occurs
(step 68), “regeneration must be aborted in step 70, the purge gas problem
fixed in step 72, regeneration restarted in step 74, and purge gas applied in
step 61.” Id. at 6:44—47. We agree with Appellants that aborting the purge
or a purge gas failure would entail reopening the purge valve to reapply
purge gas to the cryopump. See Reply Br. 7. The Examiner does not point
to any portion of Yamartino that discloses that the purge valve remains or is
maintained open during a regeneration abort, or purge gas failure.
As to Jankins, we agree with Appellants that the Examiner does not
explain adequately how Jankins offline maintenance relates to Yamartino’s
safety purge routine. Appeal Br. 22. Jankins uses network controller (12) to
“ensure proper operation of the cryopump,” and teaches “performing offline
maintenance which prevents host controller (16) from commanding the
cryopump.” Final Act. 11. However, Yamartino’s purge routine is part of
normal operation (for regeneration), and is not associated with maintenance.
The Examiner’s reasoning for the proposed modification of Yamartino, i.e.,
“preventing the system from being operated when offline maintenance is
needed on the cryopump and until the offline maintenance is complete and it
is safe to operate the cryopump” (Final Act. 11—12) is not commensurate
with the scope of the claims. Rather, as Appellants point out, Jankins does
not suggest “preventing the safety purge routine from being aborted.” Reply
Br. 15—16. There is no evidence that Jankins’ method is used for anything
other than offline maintenance. Moreover, the claims also require
“maintaining the normally open purge valve open,” and there is no evidence
that Jankins maintains a normally open valve open as part of offline
maintenance. See Reply Br. 16. As discussed above, Yamartino does not
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disclose this feature, and the Examiner does not explain adequately how the
combined teachings of the references maintain a normally open valve open.
Furthermore, Jankins method is based on network controller (12) and host
controller (16), whereas Yamartino has a single controller (18), and the
Examiner does not provide sufficient explanation as to how to modify
Yamartino to work with the two controller system of Jankins.
For these reasons, we reverse the Examiner’s rejection of claims 21,
22, 25—30, 33, 45, 46, and 49—51 as unpatentable over Yamartino, Jankins,
Ushiku, and Rubin.
Claims 34, 35, 37—42, 44, 47, 48, 52, and 53
Appellants’ arguments with respect to “preventing the safety purge
routine from being aborted by maintaining the normally open purge valve
open until the potentially unsafe condition changes to a safe condition” do
not apply to claims 34, 35, 37—42, 44, 47, 48, 52, and 53, because these
claims do not include this limitation, and thus, the only arguments that apply
to these claims are discussed above under the headings: Inability to
Determine a Reading From a Temperature Sensor and Normally Closed
Valve. Accordingly, we affirm the rejection of these claims as unpatentable
over Yamartino, Jankins, Ushiku, and Rubin for the reasons discussed above
under the headings: Inability to Determine a Reading From a Temperature
Sensor and Normally Closed Valve.
Claim 54
For the reasons discussed above, we conclude that claim 54 is
indefinite. Thus, the prior art rejection must fall because it is necessarily
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based on a speculative assumption as to the meaning of the claims. “All
words in a claim must be considered in judging the patentability of that
claim against the prior art. If no reasonably definite meaning can be ascribed
to certain terms in the claim, the subject matter does not become obvious—
the claim becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385 (CCPA
1970). See also In re Steele, 305 F.2d 859, 862 (CCPA 1962) stating “[o]ur
analysis of the claims indicates that considerable speculation as to meaning
of the terms employed and assumptions as to the scope of such claims were
made by the examiner and the board. [W]e do not think a rejection under 35
U.S.C. § 103 should be based on such speculations and assumptions.” Thus,
we reverse the rejection of claim 54, pro forma, because rendering a
decision on whether it distinguishes over the cited references would require
speculation as to the scope of the claimed subject matter. We note that this
is a procedural reversal rather than one based upon the merits of the
35 U.S.C. § 103 rejection.9
Rejection (VI); Claims 21—54
Claims 21—33, 45, 46, and 49—51
The Examiner relies on the same findings as in Rejection (V) and adds
the teachings of Matte to reject claims 23, 24, 31, and 32. Final Act. 14.
Claims 23 and 24 depend from claim 21, and claims 31 and 32 depend from
claim 29. The Examiner does not rely on the teachings of Matte in any
manner that would remedy the deficiencies of Rejection (V) in relation to
9 “Our decision is not to be construed as meaning that we consider the
claims on appeal to be patentable as presently drawn.” Steele, 305 F.2d at
863.
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claims 21 and 29 discussed above. See Final Act. 14—15. For the same
reasons, we reverse the rejection of claims 21—33, 45, 46, and 49—51 as
unpatentable over Yamartino, Jankins, Ushiku, Rubin, and Matte.
Claims 34—44, 47, 48, 52, and 53
Appellants do not separately argue Rejection (VI) and instead rely on
the arguments from Rejection (V) and assert that “Matte fails to disclose
elements of the independent claims, including the safety purge routine
recited in the independent claims.” Appeal Br. 23. According to
Appellants, “even if Yamartino could be modified to be an in situ cryopump
[(as disclosed in Matte)], which Appellant does not concede, such
modification would still not cure the deficiencies that any hypothetical
combination of the cited art fails to disclose the above-mentioned elements
of the Claims 21—54.” Reply Br. 17.
For the reasons discussed above in Rejection (V), Appellants’
arguments with respect to “maintaining the normally open purge valve open
until the potentially unsafe condition changes to a safe condition” do not
apply to independent claims 34, 41, and 44, and their respective dependent
claims, and, thus, we affirm the rejection of claims 34-44, 47, 48, 52, and 53
as unpatentable over Yamartino, Jankins, Ushiku, Rubin, and Matte.
Claim 54
As discussed above, because claim 54 is indefinite, the prior art
rejection must fall because it is necessarily based on a speculative
assumption as to the meaning of the claims. Thus, we reverse the rejection
of claim 54, pro forma.
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Objections under 37 C.F.R. § 1.83(a)
These objections correlate to issues for which we have reversed the
Examiner, and are reversed. To the extent that any objection is not
coextensive with any of the rejections discussed above, such objections are
not within our jurisdiction, as noted above.
DECISION
(I) The Examiner’s rejection of claims 23, 24, 31, 32, 36, 43, and
54 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement is reversed as to 23, 24, 31, 32, 36, 43, and
is affirmed as to claim 54.
(II) The Examiner’s rejection of claims 23, 24, 31, 32, 34, 36, 43,
and 54 under 35 U.S.C. § 112, second paragraph, as indefinite is reversed as
to claims 23, 24, 31, 32, 34, 36, and 43, and is affirmed as to claim 54.
(III) The Examiner’s rejection of claims 23, 24, 31, 32, 36, 43, and
54 under 35 U.S.C. § 103(a) as unpatentable over Amundsen ’426 and Matte
is reversed.
(IV) The Examiner’s rejection of claims 23, 24, 31, 32, 36, 43, and
54 under 35 U.S.C. § 103(a) as unpatentable over Matte and Amundsen ’426
is reversed.
(V) The Examiner’s rejection of claims 21, 22, 25—30, 33—35, 37—
42, and 44—54 under 35 U.S.C. § 103(a) as unpatentable over Yamartino,
Jankins, Ushiku, and Rubin is reversed as to claims 21, 22, 25—30, 33, 45,
46, 49-51, and 54, and is affirmed as to claims 34, 35, 37—42, 44, 47, 48, 52,
and 53.
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(VI) The Examiner’s rejection of claims 21—54 under 35 U.S.C.
§ 103(a) as unpatentable over Yamartino, Jankins, Ushiku, Rubin, and Matte
is reversed as to claims 21—33, 45, 46, 49-51, and 54, and is affirmed as to
claims 34-44, 47, 48, 52, and 53.
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)(l)(iv).
AFFIRMED-IN-PART
30