Ex Parte Randhawa

Patent Trial and Appeal BoardOct 25, 2017

11299134 (P.T.A.B. Oct. 25, 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. 11/299,134 12/12/2005 Rubinder Randhawa 4267.005US1 9707 21186 7590 10/27/2017 SCHWEGMAN LUNDBERG & WOESSNER, P.A. P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER KO, JASON Y ART UNIT PAPER NUMBER 1711 NOTIFICATION DATE DELIVERY MODE 10/27/2017 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): uspto@slwip.com SLW @blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RUBINDER RANDHAWA Appeal 2017-000568 Application 11/299,1341 Technology Center 1700 Before JEFFREY T. SMITH, WESLEY B. DERRICK, and MICHAEL G. McMANUS, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-14. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. THE INVENTION The subject matter of the claims on appeal relates to a pulsed jet cleaning unit “based on the principle of enhancing formation of droplets of 1 Planar Semiconductor, Inc. is identified as the real party in interest. Appeal Br. 2. Appeal 2017-000568 Application 11/299,134 the cleaning medium by increasing the boundary surface area between the jets emitted th[r]ough the nozzles of the cleaning unit and the surrounding atmosphere.” Specification (filed December 12, 2012) (“Spec.”), Abstract. “The nozzles [of the cleaning unit] operate in a rapid pulse harmonic spray mode with the formation of pulsed fluid streams of discrete droplets injected onto the wafer surface.” Spec. 7. Claim 1—the sole independent claim—is representative. 1. A pulsed jet cleaning unit to clean flat objects arranged in a vertical orientation with a pulsed liquid jet, the pulsed jet cleaning unit comprising: a group of jet spray nozzles configured to be coupled to a source of supply of at least one type of a cleaning fluid, the at least one type of cleaning fluid to be supplied to the jet spray nozzles under pressure, the group of jet spray nozzles being configured to emit the at least one cleaning fluid through the jet spray nozzles in a pulsed mode to form pulsed jets; a flat object holding and driving mechanism to hold the flat objects and to move the fiat objects in the vertical orientation relative to the jet spray nozzles, the flat objects being semiconductor substrates; and droplet formation enhancement means installed in the jet spray nozzles for enhancing discontinuity of the pulsed jets and forming droplets of the cleaning fluid, the formed droplets each having an approximate pre-calculated amount of kinetic energy and approximate physical dimensions. Appeal Brief filed May 2, 2016 (“Appeal Br.”), (Claims App’x) 18. 2 Appeal 2017-000568 Application 11/299,134 THE REJECTIONS The Examiner maintains the following rejections for obviousness under 35 U.S.C. § 103: Claims 1-7, 11, and 12 over Thietje2 in view of Vawter3; Claims 8 and 9 over Thietje in view of Vawter and Kobayashi4; Claim 10 over Thietje in view of Vawter and Sato5; and Claims 13 and 14 over Thietje in view of Vawter and Matsunaga.6 DISCUSSION7 We are persuaded that the Examiner has failed to meet the Office’s burden of establishing the unpatentability of the claims. For any ground of rejection, “the [Ejxaminer bears the initial burden ... of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Claim 1 requires, inter alia, “droplet formation enhancement means installed in the jet spray nozzles for enhancing discontinuity of the pulsed jets and forming droplets of the cleaning fluid, the formed droplets each having an approximate pre-calculated amount of kinetic energy and approximate physical dimensions.” This is a means-plus-function limitation. 2 Thietje, US 5,468,302, issued November 21, 1995. 3 Vawter, US 1,902,202, issued March 21, 1933. 4 Kobayashi, US 6,357,483 Bl, issued March 19, 2002. 5 Sato et al., US 2004/0235308 Al, published November 25, 2004. 6 Matsunaga et al., US 5,800,867, issued September 1, 1998. 7 In our discussion, we refer to the Specification, the Final Office Action issued October 2, 2015 (“Final Act.”), the Appeal Brief, and the Examiner’s Answer issued September 16, 2016 (“Ans.”). 3 Appeal 2017-000568 Application 11/299,134 “Section 112, paragraph 6 provides that a patentee [or applicant] may define the structure for performing a particular function generically through the use of a means expression.” Kemco Sales, Inc. v. Control Papers Co., Inc., 208 F.3d 1352, 1360 (Fed. Cir. 2000). “[I]f one employs means-plus- function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant.” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994). The Examiner has not addressed the scope of the means-plus-fimction limitation of claim 1 or the dependent claims based on its description in the Specification. See generally Final Act.; Ans. The Examiner further fails to address squarely the means-plus-fimction limitation as to droplets formed “having an approximate pre-calculated amount of kinetic energy and approximate physical dimensions” (claim 1) in reasoning that “[i]t is expected that the formed drops all have some kinetic energy and physical dimensions” (Final Act. 4). The Examiner does maintain Appellant’s argument that Vawter’s teaching of a bullet in a nozzle is not persuasive because Appellant likewise teaches a bullet to form jets (Ans. 3), but fails to identify any basis in the Specification for the bullet being the means for “enhancing discontinuity of the pulsed jets and forming droplets . . . having an approximate pre calculated amount of kinetic energy and approximate physical dimensions” (claim 1). The Examiner has not, accordingly, met the burden of establishing a prima facie case of obviousness based on the prior art and we are constrained to reverse the rejection of the claims. In the event of further prosecution, we leave it to the Examiner to identify the structure in the Specification that corresponds to the recited 4 Appeal 2017-000568 Application 11/299,134 function as required to establish a prima facie case. Donaldson, 16 F.3d at 1195. In this regard, we note that the Specification sets forth “a cleaning medium ejected ... in the form of droplets having controlled kinetic energy and dimensions” and “droplet-formation enhancement means located inside the nozzle,” including, “a jet splitter, threaded grooves ... or ... a thin tube for the supply of gas into the flow of the liquid cleaning medium” (Spec. 6), but appears silent as to the droplets “having an approximate pre-calculated amount of kinetic energy and approximate physical dimensions” (claim 1). Appellant contends that “a person of ordinary skill in the art would understand that the physical dimensions and kinetic energies of the droplets are pre-calculated” and that “the skilled artisan would also understand how to calculate the physical dimensions and kinetic energies of the droplets.” Appeal Br. 9. Appellant further contends both that the person of ordinary would know why the calculations were needed and how to apply them. Id. Appellant fails to identity any evidence, however, supporting these contentions. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument. . . cannot take the place of evidence.”). The issue, however, is not merely whether a skilled artisan would recognize the need for and could undertake the necessary calculations. [Structure disclosed in the specification is “corresponding” structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link or associate structure to function is the quid pro quo for the convenience of employing § 112, | 6. B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). It is manifest that an ability to control the kinetic energy and dimensions of droplets need not include calculating these parameters, let alone calculating them before initiating the jet spray, highlighting the issue of whether there is 5 Appeal 2017-000568 Application 11/299,134 sufficient structure corresponding to the claimed function of providing droplets with pre-calculated kinetic energies and dimensions.8 We decline to set forth a new ground of rejection of the claims on appeal, as our primary role is review, not examination de novo. DECISION The Examiner’s decision rejecting claims 1-14 is REVERSED. REVERSED 8 In the event of further prosecution, the Examiner and Appellant may also wish to consider whether the written description requirement is met as to the recited pre-calculated parameters. 6