Ex Parte DiBella et al

Patent Trials and Appeals BoardMar 30, 2016

11741416 - (D) (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111741,416 04/27/2007 2512 7590 Perman & Green, LLP 99 Hawley Lane Stratford, CT 06614 03/30/2016 FIRST NAMED INVENTOR Anthony V. DiBella 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. 390-012619-US(PAR) 2944 EXAMINER TIGHE, BRENDAN P ART UNIT PAPER NUMBER 3652 MAILDATE DELIVERY MODE 03/30/2016 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 ANTHONY V. DIBELLA, DENNIS POOLE, and WILLIAM FOSNIGHT Appeal2014-002544 Application 11/741,416 Technology Center 3600 Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Anthony V. DiBella et al. (Appellants) appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1-22. We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b ). We REVERSE. THE INVENTION Appellants' invention relates to a device for handling and transporting flat, thin work pieces. Claims 1, 14, and 22 are independent. Claim 1 is illustrative and is reproduced below: Appeal2014-002544 Application 11/7 41,416 1. A substrate transport apparatus for a substrate processing tool, the transport apparatus comprising: a drive section; a movable arm operably connected to the drive section; an end effector connected to the moveable arm for holding and transporting a substrate in the processing tool; and a substrate inertial capture edge grip connected to the end effector and arranged so that the grip effects capture and centering of the substrate onto the end effector from substrate inertia. THE REJECTIONS The Examiner has rejected: (i) claims 3 and 12-22 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the enablement requirement; (ii) claims 1, 4, and 7 under 35 U.S.C. Â§ 102(b) as being anticipated by Morikawa (US 2007/0128008 Al, pub. June 7, 2007); (iii) claims 2, 5, 6, 8-15, 19, 20, and 22 under 35 U.S.C. Â§ 103(a) as being unpatentable over Morikawa and Blank (US 7 ,048,316 B 1, iss. May 23,2006);and (iv) claims 16-18 under 35 U.S.C. Â§ 103(a) as being unpatentable over Morikawa, Blank, and Gilchrist (US 2003/0035711 Al, pub. Feb. 20, 2003). 2 Appeal2014-002544 Application 11/7 41,416 ANALYSIS Claims 3 and 12-22--Â§112,first paragraph--Enablement The Examiner maintains that the disclosure is not enabling, stating, inter alia, that "[i]t is unclear how the controller is programmed to position the end effector(s) to pick the substrate in an eccentric position on the contact surfaces of the front and rear pads" (claim 3), that "[i]t is unclear how the substrate mapper, i.e., the sensor, maps the substrates" (claim 12), and that "[i]t is unclear how the rear pad spring loaded adjustment mechanism is constructed to provide adjustment" (claim 21 ). Final Act. 2. In the Response to Arguments section of the Answer, the Examiner clarifies that with respect to claim 3, "the specification fails to include a program and/or a flow chart denoting control steps to control the robot." Ans. 7. For claim 12, the Examiner states that "the specification fails to set forth what mapping includes and how it differs from presence detection." Id. at 8. As to claim 21, the Examiner asserts that there is "no dear correiation of aU of the elements to provide adjustment and the drawing only depicts a dark unclear structure." Id. at 9. The lack of clarity alleged by the Examiner does not establish that the claims are not enabled by the Specification, for the reasons identified by Appellants at pages 2--4 of the Reply Brief. In particular, the Examiner fails to explain why the disclosure, as filed, is not sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. The Examiner's rejection does not adequately address the factors set forth in In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988), and thus does not provide Appellants or the Board with an indication as to why the disclosure would require undue experimentation in 3 Appeal2014-002544 Application 11/7 41,416 order for a person of ordinary skill in the art to make and use the invention. The Examiner's findings and conclusions here touch on one factor, namely the amount of direction or guidance provided by the Specification, but no connection is made between that and any other enumerated Wands factors, such that a well-grounded conclusion can be reached that undue experimentation would be necessary in order to make and use the claimed invention. The rejection is not sustained. Claims 1, 4, and 7--Anticipation--Morikawa The Examiner cites to paragraph 24 of Morikawa as disclosing each of the limitations of claim 1. Final Act. 3. In the Response to Arguments section of the Answer, the Examiner elaborates on the rejection and takes the position that Morikawa's edge grip pads 58a and the two pads denoted 58b "contain sloping surfaces as does Appellants' pads and would inherently allow shifting of a supported substrate by inertia when they are moved." Ans. 10. The Examiner also asserts that the phrase '"and arranged so that the grip effects capture and centering of the substrate' [emphasis added] is functional language." Id. As such, the Examiner considers this phrase as reciting an "intended use of the claimed invention," and that Morikawa "is capable of performing the intended use" and thus, "it meets the claim." Id. at 10-11. Appellants acknowledge that Morikawa's paragraph 24 discloses "'slippage of the substrate due to the inertial force accompanying the movement of the transfer arm,"' but assert that Morikawa does not disclose "that the slippage due to the inertial force is used to capture and center the substrate onto the end effector as called for in Appellants' claim 1." Appeal Br. 14. Appellants argue that, in contrast, Morikawa discloses that slippage 4 Appeal2014-002544 Application 11/7 41,416 is undesirable and that Morikawa discloses "specific movements of the transfer arm 50," in order "to suppress slippage of the wafer W due to the inertial force accompanying the movement of the transfer arm 50." Id., citing Morikawa, iii! 73, 80, and 86. Appellants assert that nothing can be "gleaned from Morikawa that would in any way suggest that the mere support members 58a, 58b, 58c of Morikawa are capable of what is recited in Appellants' claim," because "the reason why Morikawa teaches controlling motion to suppress inertia is exactly because the substrate support members 5 8a, 5 8b allow the substrate to slide." Appeal Br. 17. Appellants assert that, moreover, "the Examiner does not explain why the end effector in Morikawa is allegedly capable of what is recited in claim 1." Reply Br. 4. Despite that Figures 6A and 6B of Morikawa depict support members 58a and 58b (2) 1 including sloping surfaces, there is nothing to suggest that these surfaces wouid operate to capture and center a substrate using substrate inertia, as claimed. Rather, as noted by Appellants, Morikawa discloses moving transfer arm 50 in a particular direction to suppress "slippage of the wafer W due to the inertial force accompanying the movement of the transfer arm 50." Morikawa, if 73; see also Appeal Br. 14. Given that there does not appear to be any discemable structure that is capable of performing either a centering function or a capturing function using substrate inertia, the Examiner's position that Morikawa's support members are capable of being arranged so that they effect capture and centering of the substrate onto 1 58b (2) is used to denote that there are two support members that are both labeled 58b. 5 Appeal2014-002544 Application 11/7 41,416 the end effector from substrate inertia, is not supported by a preponderance of the evidence. The rejection of claim 1 and of claims 4 and 7 depending therefrom, as being anticipated by Morikwa is not sustained. Claims 2, 5, 6, 8-15, 19, 20, and 22--0bviousness--Morikawa/Blank Claims 2, 5, 6, and 8-13 The Examiner does not rely on Blank in any manner that remedies the deficiencies of Morikawa noted above. Claims 2, 5, 6, and 8-13 depend from claim 1 and for the same reasons, the rejection of these claims is not sustained. Claims 14, 15, 19, 20, and 22 Independent claim 14 recites, in part, that "the asymmetry of the front and rear pads ... causes simultaneous centering and capture of the flat work piece on the at least one end effector when the flat work piece is displaced by inertia from the skewed and eccentric position." Similarly, independent claim 22 recites, in part, "moving the end effector to inertiaUy dispiace the flat work piece from the skewed and eccentric position, to the asymmetric front and rear pads operating on the flat work piece when inertially displaced to simultaneously center and capture the flat work piece on the end effector." As discussed supra, the Examiner has not adequately shown that Morikawa discloses any structure that is capable of centering and capturing a work piece (substrate) from substrate inertia (see Spec. i-f 38). Because the Examiner does not rely on Blank for this limitation, the Examiner's position as to the alleged obviousness of claims 14 and 22 suffers from the same deficiency as does the anticipation rejection over Morikawa. As such, the rejection of claims 14 and 22 and of claims 15, 19, and 20 depending from claim 14 is not sustained. 6 Appeal2014-002544 Application 11/7 41,416 Claims 16-18--0bviousness--Morikawa/Blank/Gilchrist The Examiner does not rely on Blank or Gilchrist in any manner that remedies the deficiencies of Morikawa noted above. Accordingly, the rejection of claims 16-18 is not sustained. DECISION The rejection of claims 3 and 12-22 under 35 U.S.C. Â§ 112, first paragraph as failing to comply with the enablement requirement is reversed. The rejection of claims 1, 4, and 7 under 35 U.S.C. Â§ 102(b) as being anticipated by Morikawa is reversed. The rejection of claims 2, 5, 6, 8-15, 19, 20, and 22 under 35 U.S.C. Â§ 103(a) as being unpatentable over Morikawa and Blank is reversed. The rejection of claims 16-18 under 35 U.S.C. Â§ 103(a) as being unpatentable over Morikawa, Blank, and Gilchrist is reversed. REVERSED 7