Ex Parte Caveney et al

Patent Trial and Appeal Board

Sep 18, 2014

11179762 (P.T.A.B. Sep. 18, 2014)

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.
11/179,762 07/11/2005 Robert T. Caveney 390-012202-US(PAR) 2747
2512 7590 09/18/2014
Perman & Green, LLP
99 Hawley Lane
Stratford, CT 06614
EXAMINER
LOWE, MICHAEL S
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
09/18/2014 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 ROBERT T. CAVENEY, DAVID MARTIN, and
ULYSSES GILCHRIST
____________________

Appeal 2012-006684
Application 11/179,762
Technology Center 3600
____________________

Before RICHARD E. SCHAFER, SALLY G. LANE, and
JEFFREY A. STEPHENS, Administrative Patent Judges.

STEPHENS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-006684
Application 11/179,762
2
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134 from a rejection of claims
19–28 and 30. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part, reverse-in-part, and enter a new ground of
rejection.
Claimed Subject Matter
The claims on appeal are directed to robotic arms for the transport of a
substrate such as a semiconductor wafer during assembly or manufacture.
App. Br. 2–4. The transport assembly has three independently rotatable and
independently driven “arms”: an upper arm, a forearm, and a substrate
holder (or end effector). Id. The upper arm and forearm can be unequal in
length. Id. A method of transporting a substrate using such an assembly is
also claimed. Id.
Grouping of Claims on Appeal
Claims 1–18 were rejected and not appealed.2

1 The real party in interest is identified as Brooks Automation, Inc. App. Br.
1.
2 Appellants state that “[t]he claims on appeal are 19–28 and 30.” App. Br.
2. Appellants argue in the Reply that claims 1–18 “are not at issue in this
appeal and judgment on these claims should not be made during this
appeal.” Reply 2. Because the rejection of claims 1–18 was not appealed,
the Examiner’s rejection of these claims becomes a final agency action.
Claims 1–18 should have been canceled by Appellants and should be
canceled by the Examiner if the application is not abandoned. See Ex Parte
Ghuman, 88 USPQ 2d 1478 (BPAI 2008) (precedential), available at
http://www.uspto.gov/ip/boards/bpai/decisions/prec/rm081175.pdf;
37 C.F.R. § 41.31(c) (2011) (“An appeal, when taken, must be taken from
the rejection of all claims under rejection which the applicant or owner
proposes to contest.”); MPEP § 1215.03 (8th ed. Rev. 8, July 2010) (“A
withdrawal of the appeal as to some of the claims on appeal operates as an
authorization to cancel those claims from the application or reexamination
proceeding and the appeal continues as to the remaining claims.”).
Appeal 2012-006684
Application 11/179,762
3
Appellants group claims 19–21 and 23, which stand or fall with claim
19.
Appellants argue claim 22, which depends from claim 19, separately
from claim 19.
Appellants group claims 24–28, which stand or fall with claim 24.
Appellants argue claim 30, which depends from claim 24, separately
claim 24.
Claims 19, 22, 24, and 30 are reproduced below with disputed
limitations emphasized.
19. A method of transporting a substrate comprising:
providing a substrate transport apparatus with a drive section
having a frame and a first, second and third drives;
providing an arm assembly having an independently rotatable
upper arm and an independently rotatable forearm and an
independently rotatable substrate holder for holding the
substrate, the upper arm and forearm being of unequal length
from joint center to joint center and rotatably joined to each
other at a distal end of the upper arm, the upper arm being
rotatably mounted to the frame at an opposite end, the substrate
holder being rotatably joined to a distal end of the forearm at a
wrist joint; and
energizing the first, second and third drives for effecting
individual rotation of each of the upper arm, forearm and
substrate holder, the individual rotation of each of the upper
arm, forearm and substrate holder effecting movement of the
substrate on the substrate holder along a radial line for
transporting the substrate to and from a substrate holding area,
the radial line being substantially perpendicular to the substrate
holding area;
wherein the substrate holder rotates about a center of the
substrate during radial movement of the substrate and relative
rotation between the unequal length upper arm and forearm
Appeal 2012-006684
Application 11/179,762
4
changes direction during extension to offset motion along the
radial line.

22. The method of claim 19, wherein a linear drive is
drivingly connected to the arm assembly effecting translation
of the substrate along a vertical axis.

24. A substrate transport apparatus comprising:
a three link arm for selectably transporting substrates into two
spaced inline substrate holding stations facing the same
direction or into another three spaced inline substrate holding
stations facing the same direction, the three link arm having a
substantially rigid upper arm rotatably coupled to a stationary
drive section at a shoulder joint, a substantially rigid forearm
rotatably coupled to the upper arm at an elbow joint and an end
effector rotatably coupled to the forearm at a wrist joint;
wherein the wrist of the three link arm travels along parallel
paths to each substrate holding station and the shoulder joint
of the three link arm is fixed relative to the holding stations,
the upper arm and forearm being unequal in length from joint
center to joint center so that with the upper arm, forearm and
end effector of the substrate transport apparatus arranged in full
extension, the substrate transport apparatus has a reach that is a
maximum reach of the substrate transport apparatus for a
predetermined swing diameter of the substrate transport
apparatus with the upper arm, forearm and end effector in a
retracted configuration.

30. The substrate transport apparatus of claim 24, wherein
the spacing between holding areas conform to SEMI
Standards.
Appeal 2012-006684
Application 11/179,762
5
Rejections
The Examiner maintains the following rejections of claims 19–28 and
30 in the Answer:3
1) Claims 19–21 and 23 under 35 U.S.C. §103(a) as unpatentable over
Fukasawa (US 5,611,655, Mar. 18, 1997) and Bacchi (US 5,741,113,
Apr. 21, 1998);
2) Claim 22 under 35 U.S.C. § 103(a) as unpatentable over Fukasawa,
Bacchi, and Poduje (US 5,102,280, Apr. 7, 1992);
3) Claims 24–28 under 35 U.S.C. § 103(a) as unpatentable over
Fukasawa and Bacchi; and
4) Claim 30 under 35 U.S.C. § 103(a) as unpatentable over Fukasawa
and Bacchi.

ANALYSIS
Section 103 Rejection of Claims 19–21 and 23
Claim 19 recites that “relative rotation between the unequal length
upper arm and forearm changes direction during extension to offset motion
along the radial line.” The Examiner states that because this feature is in a
“wherein” clause at the end of the claim, it is not entitled to any weight.
Ans. 7. We disagree.
“A whereby clause in a method claim is not given weight when it
simply expresses the intended result of a process step positively recited.”

3 We note that although the Examiner withdrew the rejections relying on
Hofmeister (US 6,960,057 B1, Nov. 1, 2005) in response to Appellants’
remarks regarding common ownership (see Ans. 6; App. Br. 5), a related
reference not mentioned in Appellants’ remarks was published April 6, 2000
as WO 00/18547 and qualifies as prior art under pre-AIA 35 U.S.C.
§ 102(b).
Appeal 2012-006684
Application 11/179,762
6
Minton v. Nat’l Ass’n of Sec. Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir.
2003). “However, when the ‘whereby’ clause states a condition that is
material to patentability, it cannot be ignored in order to change the
substance of the invention.” Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329
(Fed. Cir. 2005). In Griffin v. Bertina, 285 F.3d 1029, 1033 (Fed. Cir.
2002), the Federal Circuit held that the Board did not err in giving limiting
effect to the “wherein” clauses in an interference because the wherein
clauses “relate back to and clarify what is required by the count.” The court
was not persuaded by the arguments that the wherein clauses in that case
“merely state the inherent result of performing the manipulative steps.” Id.
at 1034.
Minton, Hoffer, and Griffin establish that each claim reciting a
“wherein” or “whereby” clause must be considered on a case-by-case basis
to determine whether the clause is entitled to weight in the patentability
analysis. Here, the “wherein” clause of claim 19 does not merely express
the intended result of the steps positively recited. We agree with Appellants
that the wherein clause is limiting. It requires two positive actions that are
not readily recognizable as produced by or inherent in the other steps
recited: (1) that the substrate holder rotate about a center of the substrate
during radial movement of the substrate, and (2) that relative rotation of the
upper arm and forearm changes direction during extension to offset motion
along the radial line. These limitations could be considered to modify other
steps or could be considered separate steps. The Examiner provides no
additional explanation as to how the wherein clause merely recites an
intended result of the method.
We also agree with Appellants that the Examiner’s assertion that the
arm of Fukasawa is “capable of being operated in this way,” Ans. 7, is
Appeal 2012-006684
Application 11/179,762
7
insufficient evidence that Fukasawa teaches the limitation requiring a change
in the direction of relative rotation during extension. The Examiner states
that the change in direction “would occur if the arms were retracted far
enough to move one over the other and then extended.” Ans. 7. Although it
is conceivable that retraction of some links could occur “during extension,”
the Examiner does not assert that the transport assembly in Fukasawa would
necessarily operate in this way. The Examiner also does not explain whether
a change in the direction of relative rotation between an upper arm and
forearm of unequal length during extension was otherwise well known or
why such an operation would have been obvious to one of ordinary skill in
the art.
For the foregoing reasons, we reverse the rejection of claims 19–21
and 23.
Section 103 Rejection of Claim 22
Claim 22 depends from claim 19. Because we reverse the rejection of
claim 19, we also reverse the rejection of claim 22 and do not reach the
separate arguments made by Appellants with respect to claim 22.
Section 103 Rejection of Claims 24–28 and 30
Claim 24 recites in a “wherein” clause that “the wrist of the three link
arm travels along parallel paths to each substrate holding station and the
shoulder joint of the three link arm is fixed relative to the holding stations.”
The Examiner states in the Answer that because the limitation is in a
wherein clause, “the claim only requires [that] Fukasawa be capable of this
movement and since it has the same structure as applicants’ device it would
be capable of the same movement.” Ans. 8. Appellants argue the substance
of the Examiner’s rejection in the Appeal Brief, but do not address in the
Reply the Examiner’s comments regarding the effect of the wherein clause.
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Appeal 2012-006684
Application 11/179,762
10
holding station as recited in the claim. Appellants do not address whether
Bacchi teaches the limitation as properly interpreted.
Bacchi teaches that “[a] common application is to access specimens in
straight line rather than complex hand movements.” Bacchi col. 7, ll. 16–17.
Bacchi also teaches various equations expressing the mathematical
relationships between the lengths and angles of links shown in Figure 6A,
which can be used to control the motors to move the hand along a desired
path. Bacchi col. 7, l. 21—col. 8, l. 52. One of these equations is a
“constraint that sets out the relationship between the angles θS and θE of
motors 52 and 50 operating to move equal angular distances to achieve
straight line movement of hand 30.” Bacchi col. 8, ll. 20–23. This straight
line movement of the hand in Figure 6A of Bacchi would be understood by
one of ordinary skill in the art to move the wrist along a path toward
semiconductor wafer cassette 168r that is parallel to the Y0 axis. Thus,
Bacchi teaches moving the wrist along two parallel paths to the two
substrate holding stations shown in Figure 6A, as required by claim 24. The
wrist need not travel along path X0 and the hand need not be oriented along
this axis (i.e., θP need not be 90 degrees) in order for the claim limitation to
be met.
One of ordinary skill in the art would have been motivated to modify
Fukasawa to extend the arm to two substrate holding stations using a
shoulder joint that is fixed relative to them in order to avoid the need to
either use multiple robotic arms or move the robotic arm in front of each
station. As taught by Bacchi, straight line movements of the hand are “[a]
common application,” col. 7, l. 16, which evidences a motivation to employ
it in a variety of circumstances, including using the link disclosed in
Fukasawa. One of ordinary skill in the art would further be motivated to use
Appeal 2012-006684
Application 11/179,762
11
this “common application” to minimize or simplify movement of the
substrate (which need not be rotated to maintain orientation if the hand does
not rotate). One of ordinary skill in the art would further recognize that
orienting the hand directly along the path leading straight into the holding
station, which Appellants argue is required by claim 24, will help avoid
collision with the walls of the holding station.
Regarding claim 30, we also agree with the Examiner that “[t]he
essence in having standards is that they be used.” Ans. 8. The existence of
the standards themselves and the principles underlying them is sufficient
motivation for one of ordinary skill in the art to ensure that the transport
apparatus of claim 24 also meet claim 30’s added requirement that the
“spacing between holding areas conform to SEMI Standards.”
For the foregoing reasons, we affirm the Examiner’s rejection of
claims 24–28 and 30 under 35 U.S.C. § 103(a) as unpatentable over
Fukasawa and Bacchi.
Appellants argue that the Examiner provided insufficient articulation
of the rational underpinning for combining Fukasawa and Bacchi in
rejecting claims 24–28 and 30. Because we have provided a more detailed
explanation than the Examiner, we designate our affirmance of the rejection
of claims 24–28 and 30 a new ground of rejection under 37 C.F.R.
§ 41.50(b) to allow Appellants the opportunity to respond to additional
aspects of the rejection of these claims discussed herein.

ADDITIONAL NEW GROUND OF REJECTION
UNDER 37 C.F.R. § 41.50(b)
Pursuant to our authority under 37 C.F.R. § 41.50(b), we also enter a
new ground of rejection and reject claims 19–23 under pre-AIA 35 U.S.C.
Appeal 2012-006684
Application 11/179,762
12
§ 112, first paragraph, for failing to meet the written description
requirement.
The original Specification and claims nowhere describe that the
change in direction of relative rotation between the unequal length upper
arm and forearm in claim 19 is “to offset motion along the radial line,” as
recited in claim 19. To the contrary, paragraph 52 of the Specification
describes the change in rotation as causing, not offsetting, motion along the
radial line:
Likewise, the rotational direction θ2, θ3 of the substrate holder
203 and the forearm 202 may also change so that the substrate
holder is rotated clockwise and the forearm is rotated
counterclockwise to effect the translation of a substrate 106
along the substantially radial line R as seen in Fig. 3H.

Spec. ¶ 52. Thus, claim 19 lacks written description support as required by
pre-AIA 35 U.S.C. § 112, first paragraph.

DECISION
The Examiner’s rejection of claims 24–28 and 30 is affirmed, and this
affirmance is designated a new ground of rejection pursuant to our authority
under 37 C.F.R. § 41.50(b). The rejection of claims 19–23 is reversed.
We also enter a new ground of rejection of claims 19–23 under pre-
AIA 35 U.S.C. § 112, first paragraph, pursuant to our authority under 37
C.F.R. § 41.50(b).
Notice
“A new ground of rejection pursuant to this paragraph shall not be
considered final for judicial review.” 37 C.F.R. § 41.50(b). Section
41.50(b) provides that the Appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two
Appeal 2012-006684
Application 11/179,762
13
options with respect to the new ground of rejection to avoid termination of
the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED-IN-PART; REVERSED-IN-PART; 37 C.F.R. § 41.50(b)

JRG/pgc