Ex Parte Greenberg et al

Patent Trial and Appeal BoardMar 13, 2017

12169154 (P.T.A.B. Mar. 13, 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. 12/169,154 07/08/2008 Thomas Larson Greenberg STL3603 8768 75635 7590 03/15/2017 Hall Estill Attorneys at Law (Seagate - MKM) 100 North Broadway Suite 2900 Oklahoma City, OK 73102 EXAMINER BRAYTON, JOHN JOSEPH ART UNIT PAPER NUMBER 1756 NOTIFICATION DATE DELIVERY MODE 03/15/2017 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): danderson@hallestill.com okcipdocketing @ hallestill. com US PTO @ dockettrak. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS LARSON GREENBERG, THANH THIEN HA, LARRY DOUGLAS MONROE, SAM VI LUONG, CHINH THIEN DAO, and HUNG TUAN NGUYEN Appeal 2015-004689 Application 12/169,1541 Technology Center 1700 Before MARKNAGUMO, DONNA M. PRAISS, and JEFFREY R. SNAY, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING2 STATEMENT OF CASE This is in response to a Request for Rehearing of our Decision wherein we affirmed the Examiner’s §§ 102(b) and 103(a) rejections of all appealed claims. 1 The real party in interest is identified by Appellants as Seagate Technology LLC. App. Br. 1. 2 In this decision, we refer to the Specification filed July 8, 2008 (“Spec.”), the Final Office Action appealed from mailed May 8, 2014 (“Final Act.”), the Appeal Brief filed Nov. 7, 2014 (“App. Br.”), the Examiner’s Answer mailed Jan. 16, 2015 (“Ans.”), the Reply Brief filed Mar. 16, 2015 (“Reply Appeal 2015-004689 Application 12/169,154 Appellants request reconsideration of the affirmance of the rejections of claim 1 under 35 U.S.C. § 102(b) as anticipated by Hollars* * 3 and by Walter.4 Request 2.5 We have jurisdiction over the Request under 35 U.S.C. § 6(b). We have reconsidered our Decision of December 19, 2016, in light of Appellants’ comments in the Request for Rehearing, and we find no error in the disposition of the § 102(b) rejections. ANALYSIS A request for rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the [Patent Trial and Appeal Board (“Board”)].” See 37 C.F.R. 41.52(a)(1). In the Request, Appellants contend that “the Board overlooked Appellant’s evidence that the cited references do not disclose the heater operably exposed to the evacuation for sputtering feature of claim 1 and that error is key to its adverse Decision.” Request 1. Br.”), the Request for Rehearing filed Feb. 20, 2017, and our Decision mailed Dec. 19, 2016 (“Decision”). 3 Hollars et al., US 5,683,561, issued Nov. 4, 1997 (“Hollars”). 4 Walter, US 4,261,808, issued Apr. 14, 1981 (“Walter”). 5 Each of claims 2, 3, 5, 6, 10-15, 20, 23, 24, and 26—31 depends directly or indirectly from claim 1. App. Br. 11—15, Claims App’x. Appellants did not argue separately the Examiner’s rejections of the dependent claims under 35 U.S.C. §§ 102(b) and 103(a). Id. at 10. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), and based upon the lack of arguments directed to the subsidiary rejections, claims 2, 3, 5, 6, 10-15, 20, 23, 24, and 26—31 fell together with independent claim 1. Decision 2, 9. On the present record, reversal of the rejections for anticipation would require reversal of the rejections for obviousness, as the Examiner made no findings regarding the combined teachings of Walter and Hollars that would cure the alleged deficiencies of the references individually. 2 Appeal 2015-004689 Application 12/169,154 Anticipation by Hollars In our Decision, we sustained the Examiner’s rejection of apparatus claim 1, inter alia, under 35 U.S.C. § 102(b) as anticipated by Hollars. Decision 3—7. Appellants contend that our Decision “acknowledged Appellant’s evidence and arguments that Hollars’ sputtering chamber 28 operates at a different level of evacuation than its dwell chamber 22E,” but “ambiguously does not even address the heater operably exposed to the evacuation for sputterins feature of claim 1.” Request 3^4. Appellants concede that “claim 1 does not recite the terms ‘high,’ ‘low,’ or ‘equivalent’” in connection with the relative pressure levels in the areas where the heater and sputtering cathode reside, but assert “that is all irrelevant when analyzing whether Hollars discloses the heater operably exposed to the evacuation for sputtering feature of claim 1.” Id. at 4. According to Appellants, “[t]he skilled artisan readily ascertains that in Hollars the heater is operably exposed to the evacuation for separation in the dwell chamber 22E, which is different than the evacuation for sputtering in the sputtering chamber 28 where the cathode resides.” Id. Appellants conclude from this that “Hollars does not disclose the heater operably exposed to the evacuation for sputtering feature of claim 1.” Id. Appellants criticize the Board for “overlooking] Appellant’s evidence for one claim term (the heater operably exposed to the evacuation for sputtering) in exclusive favor of another claim term (vacuum chamber).'1'’ Id. at 5. At the same time, Appellants contend that these two claim terms “are not mutually exclusive.” Id. (emphasis by Appellants). There are a number problems with Appellants’ position in its Request for Reconsideration. First, Appellants do not direct us to any facts or 3 Appeal 2015-004689 Application 12/169,154 argument presented in its Appeal Brief or Reply Brief to establish that “the heater operably exposed to the evacuation for sputtering” recited in claim 1 limits the evacuation conditions of the heater relative to the evacuation conditions of the sputtering chamber. Second, Appellants’ position would have us find that “operably exposed to” means “having the same operating conditions as” rather than “open to the operating conditions of’ produced by the vacuum pump. No facts or arguments are presented in the Briefs to support such a claim construction. Indeed, such a construction would be inconsistent with Appellants’ acknowledgement that claim 1 does not recite relative terms relating to the pressure levels. Request 4 (“The Examiner’s rebuttal is true enough because claim 1 does not recite the terms ‘high,’ Tow,’ or ‘equivalent.’”). Third, our acceptance of Appellants’ argument would require us to find, without support, that the heater cannot be “operably exposed to” the operating conditions of both the evacuation for sputtering and the evacuation for separation. Request 5 (“Hollars’ heater is not exposed to the evacuation level for sputtering in the sputtering chamber 28, as required by claim 1, precisely because Hollars’ heater is instead operably exposed to the different evacuation level for separation in the dwell chamber 22E.”). In the Appeal Brief, Appellants argued that “Hollars clearly discloses a sputtering cathode and a heater in two different vacuum chambers.” App. Br. 6. According to Appellants, “[t]he skilled artisan understands that Hollars’ heater in the dwell chamber 22E is exposed to the lower evacuation for separation, not the higher evacuation for sputtering.” Id. at 7. In the Reply Brief, Appellants argued that the evacuation for sputtering is higher than the evacuation for separation in Hollars and that “the pressure drop 4 Appeal 2015-004689 Application 12/169,154 (‘different pressure levels’) clearly separates the evacuation for sputtering (occurring in the separation chamber 28) from the ‘evacuation for separation’ (simultaneously occurring in the dwell chamber 22E).” Reply Br. 5 (quoting Ans. 7) (emphasis omitted). Appellants’ repeated argument that different pressure levels between the sputtering cathode and the heater distinguishes Hollars’ apparatus from their claimed apparatus is unpersuasive because different pressures levels is not a structural element of the claimed apparatus for separating or shielding the heater from the sputtering cathode inside the vacuum chamber. Moreover, the Examiner explicitly finds that “[tjhere is no requirement of ‘high’ or ‘low’ or equivalent pressures between heater and sputtering cathode in the claim” (Ans. 7) and Appellants do not dispute, with probative evidence and argument, this functional interpretation of claim 1 (Request 4). Therefore, we conclude that Appellants have not shown that we should be persuaded by their arguments regarding the Examiner’s rejection of claim 1 as anticipated by Hollers. Anticipation by Walter In our Decision, we sustained the Examiner’s rejection of apparatus claim 1, inter alia, under 35 U.S.C. § 102(b) as anticipated by Walter. Decision 7—9. Appellants contend that, “precisely like for Hollars,” our Decision “overlooked [their] evidence for one claim term (the heater operably exposed to the evacuation for sputtering) in exclusive favor of another claim term (vacuum chamber).” Request 7—8 (emphasis omitted). Appellants criticize the Board for “not pointing] to any evidence or argument by the Office rebutting Appellant’s arguments that Walter does not 5 Appeal 2015-004689 Application 12/169,154 disclose the heater operably exposed to the evacuation for sputtering feature of claim 1.” Id. at 7 (emphasis omitted). Appellants also contend that “Walter’s heater 19 is not exposed to the evacuation level for sputtering in the upper chamber 25 where the sputtering cathodes 17a, 17b reside, as required by claim 1, precisely because Walter’s heater 19 is instead operably exposed to the different evacuation level for cleaning and heating in the lower chamber 26.” Id. at 7—8. In their Briefs, Appellants did not dispute that Walter’s vacuum chamber 10 is under a vacuum atmosphere, but rather, argued that the pressure is “different” between the area of the cathodes and the area of the heaters. App. Br. 9; Reply Br. 8. In light of the Specification and the evidence of record, under the broadest reasonable interpretation of claim 1 that the vacuum chamber, having sputtering cathodes and an inline heater inside, does not require a particular negative pressure for its vacuum atmosphere or equivalent pressure as between the sputtering area and the heating area, we found that Appellants identified no reversible error in the Examiner’s rejection of claim 1 as anticipated by Walter. As discussed above in connection with Hollars, there are many problems with Appellants’ position in its Request for Reconsideration. First, Appellants do not direct us to any facts or argument presented in its Appeal Brief to establish that “the heater operably exposed to the evacuation for sputtering” recited in claim 1 limits the evacuation conditions of the heater relative to the evacuation conditions of the sputtering chamber. Second, Appellants’ position would have us find that “operably exposed to” means “having the same operating conditions as” rather than “open to the operating conditions of’ produced by the vacuum pump. No facts or arguments are 6 Appeal 2015-004689 Application 12/169,154 presented in the Appeal Brief to support such a claim construction. Indeed, such a construction would be inconsistent with Appellants’ acknowledgement that claim 1 does not recite relative terms relating to the pressure levels. Request 4 (“[C]laim 1 does not recite the terms ‘high,’ ‘low,’ or ‘equivalent.’”). Third, Appellants’ argument presumes without support that the heater cannot be “operably exposed to” the operating conditions of both the evacuation for sputtering and the evacuation for separation. Request 7—8 (“Walter’s heater 19 is not exposed to the evacuation level for sputtering in the upper chamber 25 where the sputtering cathodes 17a, 17b reside, as required by claim 1, precisely because Walter’s heater 19 is instead operably exposed to the different evacuation level for separation in the lower chamber 26.”). CONCLUSION We do not find Appellants’ arguments persuasive of harmful error in our affirmance of the Examiner’s anticipation determination. These arguments essentially are the same as those that were present in the Briefs as to different pressures between the cathodes and the heaters. We do not find these repeated arguments persuasive for the reasons presented in the Decision. In addition, we do not find Appellants’ arguments persuasive of error because Appellants have not identified any facts or arguments in the Briefs that would support a claim construction of “operably exposed to the evacuation for sputtering” that would structurally distinguish the claimed apparatus from that of Hollars or Walter. Appellants’ Request has not persuaded us that our Decision misapprehended or overlooked any points of law or fact in determining that the Examiner did not reversibly err in finding 7 Appeal 2015-004689 Application 12/169,154 claim 1 anticipated by Hollars and Walter. Thus, we decline to alter our decision to affirm the Examiner’s §§102 and 103 rejections of the appealed claims. In conclusion, based on the foregoing, Appellants’ Request is granted to the extent that we have reconsidered our Decision, but is denied with respect to making changes to the final disposition of the rejections therein. This Decision on the Request for Rehearing incorporates our Decision, mailed December 19, 2016, and is final for the purposes of judicial review. See 37 C.F.R. § 41.52(a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). DENIED 8