Ex Parte Heiland

Patent Trial and Appeal BoardFeb 12, 2019

11855057 (P.T.A.B. Feb. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/855,057 09/13/2007 79526 7590 02/14/2019 KBS Law / International 100 Matawan Road, Suite 120 Matawan, NJ 07747 FIRST NAMED INVENTOR Peter Reiland 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. 9771-072US 6080 EXAMINER PROBST, SAMANTHA A ART UNIT PAPER NUMBER 3762 NOTIFICATION DATE DELIVERY MODE 02/14/2019 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): international@kbsiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER REILAND Appeal2018-002059 Application 11/855,057 1 Technology Center 3700 Before LINDA E. HORNER, STEFAN STAICOVICI, and FREDERICK C. LANEY, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE- Peter Reiland ("Appellant") appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision in the Non-Final Office Action (dated Jan. 18, 2017, hereinafter "Non-Final Act.") rejecting claims 1, 3-7, 9-13, 15, and 16.2 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b ). SUMMARY OF DECISION We REVERSE. 1 Integrated Dynamics GmbH is identified as the real party in interest in Appellant's Appeal Brief (filed May 23, 2017, hereinafter "Br."). Br. 4. 2 Claims 2, 8, and 14 are canceled. Br. 21-23 (Claims App.). Appeal2018-002059 Application 11/855,057 INVENTION Appellant's invention is related to an apparatus and "method for shielding an appliance against environmental noise." Spec. 1, 11. 8-9. Claims 1, 13, and 15 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A vibration isolation system, comprising an environmental noise shielding apparatus comprising: a housing defining a space inside the housing, wherein the housing holds a semiconductor inspection appliance to be isolated, and wherein the housing is substantially fluid tight, so that air flow and, as a consequence, sound propagation between the space defined inside the housing and an environmental space outside the housing is prevented, the housing thus shielding the appliance against environmental sound; and the appliance and a cooling element arranged in the space defined inside the fluid tight housing, the cooling element being designed as a compressor cooling element, Peltier element, or cooling meander circuit; wherein the environmental noise shielding apparatus has an opening flap; wherein a supply apparatus is provided for the cooling element, with the supply device being arranged outside of the housing; and wherein walls of the housing are formed from multiple layers of a composite material. REJECTIONS I. The Examiner rejects claims 1, 4, 5, 9, 10, and 12 under 35 U.S.C. Â§ I03(a) as being unpatentable over Fukuda et al. (US 2004/0264133 Al, pub. Dec. 30, 2004, hereinafter "Fukuda"), Ristic-Lehmann et al. (US 2005/0100728 Al, pub. May 12, 2005, hereinafter "Ristic- Lehmann"), and Jeong et al. (US 2005/0262868 Al, pub. Dec. 1, 2005, hereinafter "Jeong"). 2 Appeal2018-002059 Application 11/855,057 II. The Examiner rejects claims 3 and 13 under 35 U.S.C. Â§ I03(a) as being unpatentable over Fukuda, Ristic-Lehmann, Jeong, and Germagian et al. (US 2006/0139877 Al, pub. June 29, 2006, hereinafter "Germagian"). III. The Examiner rejects claims 6 and 7 under 35 U.S.C. Â§ I03(a) as being unpatentable over Fukuda, Ristic-Lehmann, Jeong, and Bash et al. (US 2004/0020224 Al, pub. Feb. 5, 2004, hereinafter "Bash"). IV. The Examiner rejects claim 11 under 35 U.S.C. Â§ I03(a) as being unpatentable over Fukuda, Ristic-Lehmann, Jeong, and Claerbout (US 2004/0163337 Al, pub. Aug. 26, 2004). V. The Examiner rejects claims 15 and 16 under 35 U.S.C. Â§ I03(a) as being unpatentable over Fukuda, Ristic-Lehmann, Jeong, Germagian, and Bash. ANALYSIS Re} ections I, III, and IV Independent claim 1 recites, inter alia, "[a] vibration isolation system, comprising ... a housing ... wherein the housing holds a semiconductor inspection appliance to be isolated ... the appliance ... arranged in the space defined inside the ... housing." Br. 21 (Claims App.). The Examiner finds that "the semiconductor inspection station is not a part of the [ claimed] vibration isolation system and all that is required is for the system [is to be] capable of including a semiconductor inspection station." Non-Final Act. 2, 17. According to the Examiner, The drives 20 are taught to be capable of mounting and fabrication within the isolation of 10 making them capable of being an inspection station and [drive] 20 in box 10 is capable 3 Appeal2018-002059 Application 11/855,057 of being a semiconductor inspection appliance since as explained in para.0009 the disk drive 20 is, for example a semiconductor memory that a user can inspect by looking in 20). Id. at 17. In response, Appellant argues that because claim 1 "recites that 'the housing holds a semiconductor inspection appliance'," "it will be clear to an astute reader that the 'semiconductor inspection appliance' is positively recited in claim 1 and, therefore, required by the claimed vibration isolation system." Br. 12. Appellant further takes the position that "a 'semiconductor inspection appliance' is not merely an electronic device having semiconductor components that can be visually inspected by a person, as ... indicated by the Examiner." Id. According to Appellant, as "semiconductor inspection appliances are relatively large in size" and Fukuda's "box (10) is for holding a plurality of disk drives (20)," Fukuda's "disk drive box (10) ... cannot ... accommodate ... a 'semiconductor inspection appliance"' because "the space inside box ( 10) is too small." Id. at 13. First, we agree with Appellant that independent claim 1 positively recites a "semiconductor inspection appliance." See Br. 12. The use of the term "holds," which is the present tense of the verb "hold," reasonably suggests to the person of ordinary skill in the art that the claimed "vibration isolation system" includes a "semiconductor inspection appliance." Moreover, as noted above, because claim 1 further recites, "the appliance ... arranged in the space defined inside the ... housing," claim 1 requires a "semiconductor inspection appliance" that is located (positioned) inside the claimed housing. See Br. 21 (Claims App.). 4 Appeal2018-002059 Application 11/855,057 Second, it is well settled that "claims under examination before the PTO are given their broadest reasonable interpretation consistent with the specification." In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148 (Fed. Cir. 2012). In this case, although Appellant's Specification does not assign or suggest a particular definition to the phrase "semiconductor inspection appliance," we note that the Specification does refer to "inspection machines ... in the semiconductor industry" and "inspection appliances in the semiconductor industry." Spec. 1, 11. 15-16 and 24--25. An ordinary and customary meaning of the term "inspect" is "[t]o examine carefully and critically, especially for flaws." 3 As such, in light of the plain language meaning of the term "inspect" and consistent with Appellant's Specification, we construe the phrase "semiconductor inspection appliance" to mean an appliance (device) that "examine [ s] carefully and critically" a semiconductor device. In contrast, Fukuda's drive 20 constitutes an appliance (device) for storing data, such as a "semiconductor memory." See Fukuda, para. 9. Stated differently, Fukuda's drive 20 does not "examine[s] carefully and critically" a semiconductor device, but rather constitutes a semiconductor device that stores data. As such, we do not agree with the Examiner that Fukuda's drive 20 is "capable of being an inspection station." Examiner Answer (dated Sept. 22, 2017, hereinafter "Ans.") at 18. In conclusion, Fukuda fails to disclose ""[a] vibration isolation system, comprising ... a housing ... [that] holds a semiconductor inspection appliance ... the appliance ... arranged in the space defined inside the ... housing," as called for by independent claim 1. The 3 See https://www.thefreedictionary.com/inspect (last visited January 12, 2019). 5 Appeal2018-002059 Application 11/855,057 Examiner's use of the Ristic-Lehmann and Jeong disclosures does not remedy the deficiency of Fukuda discussed supra. See Non-Final Act. 5-10. Accordingly, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. Â§ 103(a) of claims 1, 4, 5, 9, 10, and 12 as unpatentable over Fukuda, Ristic-Lehmann, and Jeong. As to Rejections III and IV, the Examiner's use of the Bash and Claerbout disclosures does not remedy the deficiency of the Fukuda, Ristic- Lehmann, and Jeong combination discussed supra. See Non-Final Act. 10- 12. Accordingly, for the foregoing reasons, we do not sustain the rejections under 35 U.S.C. Â§ 103(a) of claims 6 and 7 as unpatentable over Fukuda, Ristic-Lehmann, Jeong, and Bash and of claim 11 as unpatentable over Fukuda, Ristic-Lehmann, Jeong, and Claerbout. Re} ections II and V Independent claim 13 recites, inter alia, "[a] vibration isolation system, comprising ... a ... housing for ... defining a space ... and ... at least one semiconductor inspection appliance arranged in the space." Br. 22 (Claims App.). In a similar manner, independent method claim 15 requires "providing a semiconductor inspection appliance" and "introducing the semiconductor inspection appliance ... into a ... housing." Id. at 23. As such, like independent claim 1, independent claims 13 and 15 likewise positively recite a "semiconductor inspection appliance." As to claim 3, because claim 3 depends from independent claim 1, claim 3 also includes such a limitation. The Examiner's use of the Germagian and Bash disclosures does not remedy the deficiency of the Fukuda, Ristic-Lehmann, and Jeong combination discussed supra. See Non-Final Act. 6-10, 12-17. 6 Appeal2018-002059 Application 11/855,057 Accordingly, for the foregoing reasons, we also do not sustain the rejections under 35 U.S.C. Â§ 103(a) of claims 3 and 13 as unpatentable over Fukuda, Ristic-Lehmann, Jeong, and Germagian and of claims 15 and 16 as unpatentable over Fukuda, Ristic-Lehmann, Jeong, Germagian, and Bash. SUMMARY The Examiner's decision to reject claims 1, 3-7, 9-13, 15, and 16 under 35 U.S.C. Â§ 103(a) is reversed. REVERSED 7