Ex Parte Humphrey et al

Patent Trial and Appeal Board

Dec 15, 2017

13725827 (P.T.A.B. Dec. 15, 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.
13/725,827 12/21/2012 Alan E. Humphrey P001.01.01 (73924.0013) 1052
26582 7590 12/19/2017
HOLLAND & HART, LLP
222 South Main Street, Suite 2200
P.O. Box 11583
SALT LAKE CITY, UT 84147
EXAMINER
MARKOFF, ALEXANDER
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
12/19/2017 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):
patentdocket @ hollandhart. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN E. HUMPHREY,
JAMES H. DUVALL, and JERRY BROZ
Appeal 2017-007241
Application 13/725,827
Technology Center 1700
Before BEVERLEY A. FRANKLIN, GEORGE C. BEST, and
JULIA HEANEY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-16 and 28-34 of Application
13/725,827 under 35 U.S.C § 112, 2 as indefinite. Final Act. 2 (June 30,
2016).1 These claims were further rejected under 35 U.S.C. § 112, ^ 1 as
1 On March 13, 2000, the ’827 Application was granted special status based
upon the age of one of the named inventors. Decision on Petition (March
13, 2013). We, therefore, take up this appeal of out of turn.
This is the second appeal in the ’827 Application. On November 17,
2015, we affirmed the Examiner's final rejection of claims 1-16 and 28-34.
See Ex parte Humphrey, No. 2016-000246, slip op. (PTAB November 17,
2015) (available at http://bit.ly/2mlDUMT). On January 11, 2016,
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Application 13/725,827
lacking written description support. Id. at 4. Claims 1-16 and 28-34 were
also rejected under 35 U.S.C. § 102(b) as anticipated. Id. at 5. Appellants* 2
seek reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.
BACKGROUND
The ’ 827 Application describes apparatus and methods for cleaning
integrated circuit manufacturing equipment. Spec. 1-2. In particular,
Appellants describe methods for manufacturing a cleaning wafer or substrate
for cleaning foreign matter and particulates from the surfaces of automated
and manual integrated chip manufacturing equipment. Id. 13.
Claim 1 is representative of the ’827 Application’s claims and is
reproduced below from the Claims Appendix.
1. A method of making an uncompressed integrated chip
manufacturing apparatus cleaning wafer for an integrated chip
manufacturing apparatus having a first section configuration and
a second section configuration different than the first section
configuration, the method comprising the cross good girls steps
of:
A. receiving first section configuration information
about the first section configuration and second section
configuration information about the second section
configuration;
B. based on the first section configuration information,
selecting a predetermined first cleaning wafer feature for a
Appellants filed a Request for Continued Examination and amended, inter
alia, independent claims 1 and 28.
2 International Test Solutions, Inc., is identified as the applicant and the real
party in interest. Appeal Br. 1.
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predetermined first portion on a predetermined first cleaning side
of the uncompressed integrated chip manufacturing apparatus
cleaning wafer;
C. based on the second section configuration
information, selecting a predetermined first projection to
(i) extend outwardly from the predetermined first
cleaning side of the uncompressed integrated chip
manufacturing apparatus cleaning wafer and
(ii) provide predetermined urging of the
predetermined first portion away from the first section
configuration;
D. having an uncompressed integrated chip
manufacturing apparatus cleaning wafer made with:
(i) said predetermined first cleaning wafer surface
feature on the predetermined first portion of the
predetermined first cleaning side of said uncompressed
integrated chip manufacturing apparatus cleaning wafer;
and
(ii) said predetermined first portion extending
outwardly from the predetermined first cleaning side of
the uncompressed integrated chip manufacturing
apparatus cleaning wafer.
Appeal Br. 18 (some paragraphing and indentation added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-16 and 28-34 are rejected under 35 U.S.C. § 112, 2 as
indefinite for failing to particular point out and distinctly claim the
subject matter which the applicant regards as the invention.
Answer 2—4.
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2. Claims 1-16 and 28-34 are rejected under 35 U.S.C. § 112, 1 as
failing to comply with the written description requirement.
Answer 4-7.
3. Claims 1-16 and 28-34 are rejected under 35 U.S.C. § 102(b) as
anticipated by Hashimoto.3 Answer 8-9.
DISCUSSION
Rejection 1. The Examiner rejected claims 1-16 and 28-34 as
indefinite. Answer 2—4. The Examiner asserts multiple bases for this
ground of rejection, some affecting all of the pending claims, while others
affect a more limited set of claims. We address each of the Examiner’s
asserted bases for this rejection in turn.
First, the Examiner asserts that all of the claims on appeal are
indefinite because
independent claims 1 and 28 and some of the dependent claims
(6,13,16) recite a step of “having an uncompressed integrated
chip manufacturing apparatus cleaning wafer made with...”.
It is not clear from the claims whether the referenced step
constitutes a step of manufacturing of the referenced wafer or a
mere step of selecting of the available wafer.
Id. at 2.
3 JP 2007-035684, published February 8, 2007. We are unable to find a
translation of Hashimoto in the prosecution history of the ’ 827 Application
even though it appears that both the Examiner and Appellants had one
available. See, e.g., Final Act. 6 (citing Hashimoto’s description provided in
2-29); Appeal Br. 15 (arguing that Hashimoto “does not describe or
illustrate any kind of projection from the wafer”). PTAB staff, therefore,
obtained a translation of Hashimoto from the Examiner. We enter that
translation into the record and provide a copy of it to Appellants with this
Opinion.
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During prosecution, the PTO gives the language of the proposed
claims the broadest reasonable meaning of the words in their ordinary usage
as they would have been understood by a person of ordinary skill in the art at
the time of filing, taking into account any definitions or other enlightenment
provided by the written description contained in the specification. In re
Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997). A rejection for
indefmiteness is appropriate if, after the broadest reasonable interpretation
has been applied to the claims, the metes and bounds of the claimed
invention are not clear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014)
(per curiam). In determining whether a particular claim is definite, the
claim’s language must be analyzed in light of the content of the particular
application, the prior art’s teaching, and the interpretation that would be
given to the claim’s language by a person of ordinary skill in the art at the
time the invention was made. In re Skvorecz, 580 F.3d 1262, 1268 (Fed.
Cir. 2009) (quoting MPEP § 2173.02).
Appellants argue that this rejection is procedurally improper at this
stage of prosecution. Appeal Br. 8-9 (citing MPEP § 706). We lack
jurisdiction to consider this argument. Our authority is defined by statute
and is limited to the review of adverse decisions by examiners which at least
indirectly relate to matters involving the rejection of claims. In re
Hengehold, 440 F.2d 1395, 1404, (CCPA 1971); see also 35 U.S.C. § 6(b)
(defining the PTAB’s duties); 35 U.S.C. § 134 (granting applicant the right
to appeal once any of the claims have been twice rejected). Rejections of
claims involve examination for compliance with the statutory provisions of
Title 35, United States Code, as set forth in §§ 100, 101, 102, 103, and 112.
In re Harnisch, 631 F.2d 716, 721 (CCPA 1980). An examiner’s
discretionary, procedural, or nonsubstantive decisions not directly connected
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with the merits of issues involving rejections are reviewable by petition
under 37 C.F.R. § 1.181 to the Director, not by appeal. In re Berger, 279
F.3d 975, 984-85 (Fed. Cir. 2002).
Nonetheless, we conclude that the Examiner’s assertion that the
claims are indefinite for the reason identified above is not persuasive. When
considered in the context of the entirety of claims 1 and 28, it is clear that
the phrase in question refers to the step of manufacturing the referenced
wafer. This is because the preamble establishes that the claim as a whole is
directed to a method for making i.e. a method for manufacturing.
Thus, we cannot sustain the Examiner’s rejection on this basis.
Second, the Examiner concluded:
The claims are also indefinite because it is not clear how a
predetermined first projection of the uncompressed cleaning
wafer may provide urging of the predetermined first wafer
portion of the uncompressed wafer from the first section
configuration.
The same deficiency exist [sic, exists] in claim 14 with
respect to a second side portion and a predetermined second
projection.
This is because the “urging” is defined by diclosure
disclosure [sic] as placing the cleaning wafer into a cleaning
position by application of vacuum, mechanical, electrostatic
or other force (Abstract), or as resuming a former (non-
compressed) shape by the compressed protrusions and surface
features (paragraph [0059] of the specification as filed).
It is not clear how a predetermined first projection of
the uncompressed cleaning wafer may provide urging of the
predetermined first wafer portion of the uncompressed wafer
away from the first section configuration.
It is not clear how a predetermined first projection of
the uncompressed cleaning wafer may provide placing the
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cleaning wafer into a cleaning position by application of
vacuum, mechanical, electrostatic or other force.
It is not clear how a predetermined first projection of
the uncompressed cleaning wafer may provide resuming a
former (non-compressed) shape of the predetermined first
portion away from the first section configuration.
The referenced limitation could not be understood in view
of the disclosure.
There is even no disclosure that the predetermined first
portion is compressed.
Answer 3—4.
We cannot sustain this rejection on this basis. We disagree with the
Examiner that the term “urging” is defined by the ’827 Application’s
disclosure. Moreover, when considered in view of the Specification, a
person having ordinary skill in the art would have understood that the claim
requires the predetermined first projection to aid in separation of the wafer
from the surface that has been cleaned after compression is released.
Third, the Examiner concluded that claims 1-16 are indefinite because
the term “said predetermined first cleaning wafer surface feature” in claim 1
lacks proper antecedent basis. Answer 4. The Examiner also concluded that
claim 16 is also indefinite because the term “the selected protrusion” lacks
proper antecedent basis. Id.
We cannot sustain these rejections on these bases. The definiteness
requirement of 35 U.S.C. §112, 2 does not require express antecedent basis
with exactly the same wording. Rather, the question is whether the scope of
these claims remains unclear after consideration of the claim language and
the ’827 Application’s Specification.
In this case, we agree with Appellants that a person of ordinary skill in
the art at the time of the invention would have been able to determine the
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antecedent basis of the claim terms identified by the Examiner. As the
Federal Circuit has explained, a claim is not indefinite merely because more
suitable language or modes of expression are available. Skvorecz, 580 F.3d
at 1268.
For the reasons set forth above, we cannot sustain the rejection of
claims 1-16 and 28-34 as indefinite.
Rejection 2. The Examiner rejected claims 1-16 and 28-34 as failing
to comply with the written description requirement. Answer 4-6. In
particular, the Examiner concluded that independent claim 1 does not
comply with the written description requirement “because the limitation of
‘a predetermined first projection to . . . (ii) provide predetermined urging of
the predetermined first portion away from the first section configuration’ is
not supported by the original disclosure.” Id. at 5. The Examiner concluded
that similar issues rendered independent claim 28 and dependent claim 14
noncompliant with the written description requirement. Id. at 6; see also
id. at 14-16.
For an applicant to comply with the 35 U.S.C. § 112, 1 written
description requirement, the applicant’s specification must “convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
he or she was in possession of the invention.” Carnegie Mellon Univ. v.
Hoffmann-LaRocheInc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting
Vas-Cath v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)).
We cannot sustain the rejection of claims 1-16 and 28-34 as failing to
comply with the written description requirement on this basis. As
Appellants have explained, the ’827 Application’s written description
supports claims 1, 14, and 28 as amended. See Appeal Br. 12-14.
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The Examiner also concluded that claim 31 is not supported by the
original disclosure. Answer 6-7. In particular, the Examiner states:
Claim 31 recites “a predetermined level of tuck [sic, tack]
per square inch”.
Such is not supported by the original disclosure.
It is also noted that the similar issue has been previously
raised with respect to claim 32.
The referenced claim (32) has been amended to recite
“predetermined level of tuck [sic tack]” and is not rejected for
the referenced issue since the claims are interpreted as reciting
“level of tuck [sic, tack]” according to its conventional meaning
of pounds of force per square inch.
Claim 31 still recites “a predetermined level of tuck [sic,
tack] per square inch”.
Recitation of “pounds of force per square inch per square
inch” as it is claimed now is not supported by the original
disclosure and contradicts to [sic] the ordinary meaning of the
term “level of tuck [sic, tack]”, which is provided by the
Declaration of one of the inventors.
Id.
We cannot sustain the rejection of claim 31 on this basis. Like the
Examiner, we credit the Declaration of James H. Duvall, filed on February
10, 2014 to the extent that it explains that a person having ordinary skill in
the art would have understood the term “level of tack” to be referring to the
degree of tackiness as measured in terms of force per unit area, e.g., pounds
of force per square inch. We, therefore, agree with the Examiner that the
inclusion of the phrase “per square inch” in claim 31 is redundant.
The Examiner, however, erred by failing to consider how a person of
ordinary skill in the art would have understood claim 31. This is because an
applicant complies with the written description requirement when the
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Specification conveys with reasonable clarity to those skilled in the art that
the applicant possessed the claimed invention as of the filing date sought.
We conclude that a person having ordinary skill in the art would have
interpreted claim 31’s use of the phrase “per square inch” as specifying the
specific units of the area to be used in measuring the predetermined level of
tack.4 Thus, a person of ordinary skill in the art would have understood that
the applicant possessed the invention of claim 31 as of the filing of the ’ 827
Application.
In sum, we cannot sustain the rejection of any of the pending claims
for failure to comply with the written description requirement.
Rejection 3. The Examiner rejected claims 1-16 and 28-34 as
anticipated by Hashimoto. Answer 8-9.
Appellants present argument for reversal of this rejection with respect
to claim 1. Appeal Br. 15-17. Appellants do not present any argument or
even mention independent claim 28 in connection with this rejection. Id.
Because claim 28 contains limitations that are similar to those Appellants do
argue in connection with claim 1, we infer that Appellants intended to make
the same arguments for reversal of the rejection of claim 28 as they
4 We note that the potential ambiguity created by the inclusion of the
redundant “per square inch” in claim 31 would better have been addressed in
the course of analyzing the claim for compliance with 35 U.S.C. § 112, ^ 2.
Because we conclude that a person of ordinary skill in the art would have
understood the redundant phrase as specifying a particular unit of measure,
we do not enter a new ground of rejection for indefmiteness. Nonetheless,
should prosecution of the ’ 827 Application continue, we respectfully suggest
that Appellants consider amending claim 31 to remove the phrase “per
square inch.”
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presented with respect to claim 1. We, therefore, limit our discussion with
respect to this rejection to claim 1, with the understanding that our analysis
applies with equal force to the Examiner’s rejection of claim 28.
Appellants point out that the rejection of claim 1 requires the steps of
selecting and manufacturing a cleaning wafer that includes a predetermined
first projection that extends outwardly from the cleaning wafer’s surface and
urges the cleaning wafer away from the surface being cleaned. Id. at 15-16.
Appellants argue5 that Hashimoto “does not describe or illustrate any kind of
projection from the wafer, much less a projection that provides
predetermined urging of the first portion of the wafer away from the first
section configuration of the surface being cleaned.” Id. at 15.
The Examiner responds that Hashimoto describes a cleaning wafer
compris[ing] a [sic] flat tacky areas 2 and areas 1 with increased
roughness provided on the area by printing coating and by
providing irregularity.
[Hashimoto] addresses the problem that when the cleaning
layer of the cleaning wafer is made from the material with the
adhesion more than 0.2 N/10 mm the cleaning wafer has a [sic]
good cleaning/dust removing properties, but poor conveyance
properties because it sticks to the equipment. On the other hand,
when the cleaning layer of the cleaning wafer is made from the
material, which has the adhesion less than 0.2 N/10 mm the
cleaning wafer does not provide adequate cleaning results
because the adhesion of dust to the equipment is higher than the
5 Appellants also “object[] to the very consideration of [Hashimoto] at this
late stage of the proceedings.” Appeal Br. 16. As we have discussed above,
we do not have jurisdiction to consider Appellants’ procedural objections to
the manner in which examination has been conducted. The remedy for an
examiner’s failure to follow proper examination procedure is to petition the
Director pursuant to 37 C.F.R. § 1.181.
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adhesion of the dust to the cleaning material with the adhesion
less than 0.2 N/10 mm.
[Hashimoto] solves this problem by using the materials
with the adhesion more than 0.2 N/10 mm and by providing
irregularities by printing the irregularities on the smooth surface.
The printed irregularities of [Hashimoto] are readable on
the claimed projections.
[Hashimoto] teaches the irregularities (projections) from
[sic, are made from] polymeric materials which are compressible
and elastic/resilient (at least [0015-18]) such [sic] materials will
inherently at least partially resume a former (non-compressed)
shape after being compressed.
Moreover, the features/irregularities/projections of the
disclosed by [Hashimoto] wafer are made from the same
materials as used by the appellants (at least [0058] of the
appellants’ specification), such as acrylic polymers, urethane
polymers, butadiene polymers, styrene polymers, etc. See
[Hashimoto] at least at [0016].
Thus, the features/irregularities/projections of
[Hashimoto] have the same properties as the argued claimed
projections.
Answer 19-21.
We begin our analysis by considering the proper interpretation of the
claim term “projection.” As discussed above, during prosecution, the
proposed claim language is given the broadest reasonable meaning of the
words in their ordinary usage as they would have been understood by a
person of ordinary skill in the art, taking into account any definitions or
other enlightenment provided by the specification. Morris, 127 F.3d at
1054-55.
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After review of the ’827 Application’s Specification, we conclude that
the broadest reasonable meaning of the term “projection” is “a part that juts
out.” See Webster’s Ninth New Collegiate Dictionary 940 (1985). This
interpretation is consistent with the Specification’s repeated use of the term
“protruding surface features” to describe aspects of the cleaning wafer that
provide offset or minimize contact with the flat surfaces of the wafer
handling hardware until a vacuum or electrostatic force is applied. See, e.g.,
Spec. 19, 58, 59; see also Figs. 2, 20. In these descriptions, the projecting
surface features are described as “protruding.” The word “protruding” is the
present participle of the verb protrude. The ordinary meaning of the verb
protrude is “to jut out from the surrounding surface or context.” See
Webster’s at 947.
In rejecting claim 1, the Examiner found that the surface roughness
described by Hashimoto corresponds to the claimed projections. See
Answer 19-21. Hashimoto’s surface roughness, however, is not a
description of a projection or the feature which protrudes from the surface of
the cleaning wafer.
We, therefore, cannot sustain the Examiner’s rejection of claim 1 as
anticipated by Hashimoto. Accordingly, we also reverse the anticipation
rejection of claims 2-16 and 28-34.
CONCLUSION
For the reasons set forth above, we cannot sustain the rejection of
claims 1-16 and 28-34 as indefinite. We also cannot sustain the rejection of
these claims for failure to comply with the written description requirement.
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Finally, we reverse the rejection of claims 1-16 and 28-34 as anticipated by
Hashimoto.
REVERSED
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