Ex Parte Schoeb

Patent Trials and Appeals Board

Mar 27, 2019

13045437 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/045,437 03/10/2011
20350 7590 03/29/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Reto Schoeb
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.
9253 l-080200US-799389 2922
EXAMINER
MACARTHUR, SYLVIA
ART UNIT PAPER NUMBER
1716
NOTIFICATION DATE DELIVERY MODE
03/29/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RETO SCHOEB
Appeal2017-006305
Application 13/045,437
Technology Center 1700
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
N. WHITNEY WILSON, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1---6, 12, and 14--18 under 35 U.S.C.
§ 103(a) as unpatentable over at least the basic combination of Miya
(US2004/0050491 Al, published Mar. 18, 2004) in view of Schob 567 (US
6,559,567 B2, issued May 6, 2003) and Schoeb EP 594 (EP O 989 594 A2,
published Mar. 29, 2000). 2 The Examiner also rejects claim 19 under
1 The real party in interest is stated to be Levitronix GmbH (Appeal Br. 3).
2 The Examiner applies additional prior art to dependent claims 5 and 6 ( e.g.,
Ans. 8, 9).
Appeal2017-006305
Application 13/045,437
35 U.S.C. 103(a) as unpatentable over Miya with Schob 567. 3 An oral
hearing was held on March 21, 2019.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
Independent claims 1, 16 and 19 are illustrative of the subject matter
on appeal ( emphasis added to highlight key limitations in dispute):
1. A treatment apparatus for treating a surface of a body
with a first treatment medium and a second treatment medium, the
treatment apparatus comprising a holding device rotatable about an
axis of rotation for receiving and holding the body and a rotary drive
rotationally fixedly coupled to the rotatable holding device as well as
a supply device for
supplying the first treatment medium and the second treatment
medium to the surface of the body held in the holding device are
provided, wherein the treatment apparatus includes a collection
container having a separation element, which separation element
divides the collection
container into a first chamber and a second chamber such that the first
treatment medium can be collected in the first chamber and the second
treatment medium can be separately collected in the second chamber,
further wherein the collection container includes a base chamber part
not displaceable with respect to the holding device and the separation
element is movably arranged between a first position and a second
position such that the first treatment medium can be led off into the
first chamber in the first position and the second treatment fluid can
be led off into the second chamber in the second position, wherein the
rotatable holding device is provided in a process chamber, wherein the
rotary drive is a bearingless motor including a stator and a rotor
magnetically journalled in a bearingless manner with respect to the
stator, wherein the rotor is a ring, wherein the bearingless motor is
configured to have the stator and the rotor within the process
chamber, and wherein the rotor forms the holding device.
3 The Examiner has withdrawn all rejections made on the grounds of
nonstatutory double patenting (Ans. 2, 3).
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Application 13/045,437
16. A treatment apparatus for treating a surface of a body
with a first treatment medium and a second treatment medium, the
apparatus comprising:
a process chamber;
a bearingless motor comprising;
a stator; and
a rotor, wherein the rotor is a ring, wherein the rotor is
magnetically journalled in a bearingless manner with respect to the
stator, wherein the rotor is a holding device, wherein the holding
device is rotable about an axis of rotation, wherein the holding device
is configured to receive and hold the body within the process
chamber, and wherein the rotor is disposed within the process
chamber;
a supply device configured to supply the first treatment medium
and the second treatment medium to the surface of the body when the
body is held in the holding device; and
a collection container, comprising:
a separation element, wherein the separation divides the
collection container into a first chamber and a second chamber,
wherein the separation element is movable between a first position
and a second position, wherein, when the apparatus is in use, the first
treatment medium is collected in the first chamber when the
separation element is at the first position, and the second treatment
medium is separately collected in the second chamber when the
separation element is at the second position; and
a base chamber part, wherein the base chamber part is not
displaceable with respect to the holding device.
19. A treatment apparatus for treating a surface of a body
with a first treatment medium and a second treatment medium, the
apparatus comprising:
a process chamber;
a holding device disposed within the process chamber, wherein
the holding device is rotatable about an axis of rotation, and wherein
the holding device is configured to receive and hold the body within
the process chamber;
a bearingless motor comprising:
a stator; and
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Appeal2017-006305
Application 13/045,437
a rotor, wherein the rotor is magnetically journalled in a
bearingless manner with respect to the stator, wherein the rotor is
rotationally fixedly coupled to the holding device, and
wherein the rotor is disposed within the process chamber;
a supply device configured to supply the first treatment medium
and the second treatment medium to the surface of the body when the
body is held in the holding device; and
a collection container, comprising:
a plurality of separation elements, wherein each of the
separation elements divides the collection container into two
chambers, wherein each separation element is movable between
a first position and a second position, wherein each separation
element is movable independently from each of the other separation
elements, wherein, when the apparatus is in use, the first treatment
medium is collected in a first one of the chambers when each
separation element is at the first position, and the second treatment
medium is separately collected in a second one of the chambers when
at least one of the separation elements is at the second position; and a
base chamber part, wherein the base chamber part is not displaceable
with respect to the holding device.
ANALYSIS
Claim 19
To establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art or the inferences and creative steps a person of
ordinary skill in the art would have employed. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988); KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417
(2007).
A preponderance of the evidence supports Appellant's position that
the Examiner has not pointed to any evidence to adequately establish that the
applied prior art teaches or suggests "each separation element is movable
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Application 13/045,437
independently from each of the other separation elements" as required in
claim 19 (Appeal Br. 19-21; Reply Br. 3, 4). Appellant reasonably points
out that the Examiner's apparent reliance on the movement of Miya's first to
third exhaust mechanisms does not establish that the guide parts/separation
elements of Miya's splash guard are independently movable from each other
(Ans. 14; Reply Br. 3). Appellant points out that to the contrary, Miya
describes that the splash guard 50 moves as a whole to different heights
(Reply Br. 3, 4).
In light of these circumstances, the Examiner has not shown that each
and every limitation of the claim is either described or suggested by the prior
art or would have been obvious based on the knowledge or inferences and
creativity of the ordinary artisan. See In re Fine, 837 F.2d at 1074; see also
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("A rejection based on
section 103 clearly must rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the invention from the prior
art.").
Accordingly, we reverse the Examiner's§ 103 rejection of claim 19.
Claims 1 and 16
Upon consideration of the evidence on this record and each of
Appellant's contentions, we find that the preponderance of evidence
supports the Examiner's conclusion that the subject matter of Appellant's
claims 1 and 16 is unpatentable over the applied prior art. We sustain the
Examiner's§ 103 rejection on claims 1 and 16 (as well as dependent claims
not separately argued) essentially for the reasons set out by the Examiner in
the Answer.
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Application 13/045,437
We add the following primarily for emphasis.
Appellant's principal arguments in the Appeal Brief are 1) that Miya
requires that its rotary drive mechanisms deliver fluid onto the wafer
substrate such that eliminating the rotary drive for a bearingless motor would
have been contrary to the function of Miya; 2) the cited art does not teach or
suggest "wherein the bearingless motor is configured to have the stator and
the rotor within the process chamber" as recited in claim 1; and 3) there is no
reason to combine the references because Miya and Schoeb EP 594 are
incompatible and render Miya unfit for its intended function; and 4) Miya
teaches away from the claimed invention because its base member is
displaceable contrary to the claimed requirement that the base chamber part
is not displaceable in claims 1 and 16 (Appeal Br. 13-17). In the Reply
Brief, Appellant reiterates these arguments.
Appellant's arguments mainly address the references separately and
do not fully address the rejection and the inferences of these references that
are presented on this record for our review.
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007). Likewise, it is also well settled that a
reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264--65 (Fed.
Cir. 1992).
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Application 13/045,437
Contrary to Appellant's argument, Miya teaches that its base may be
held fixed in place (Ans. 13; Miya ,r 226). There is no dispute that Miya
teaches the advantages of a wafer processing apparatus including a
moveable splash guard/separation element and processing fluid collection
chambers. Schob 567 and Shoeb EP 594 both exemplify the advantages of
bearingless motors, with Schoeb EP 594 illustrating the use of a bearingless
motor in a wafer processing device. Appellant has not shown reversible
error in the Examiner's determination that a person of ordinary skill in the
art would have, using no more than ordinary creativity, used a bearingless
motor as an alternative to a traditional motor with a bearing of Miya (e.g.,
Ans. 11, 12). One of ordinary skill would have readily appreciated that this
modification would mean that the treatment fluid(s) would need to be
separately supplied as indeed exemplified in EP 594.
It is well established that the obviousness inquiry does not ask
"whether the references could be physically combined but whether the
claimed inventions are rendered obvious by the teachings of the prior art as a
whole." In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane); see also
In re Keller, 642 F.2d 413,425 (CCPA 1981) (stating "[t]he test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference"); In re
Nievelt, 482 F .2d 965, 968 (CCP A 1973) ("Combining the teachings of
references does not involve an ability to combine their specific structures.").
Appellant has not shown that the proposed modification of Miya to
include bearingless motor( s) would not have been beyond the capabilities of
a person of ordinary skill in the art. We also "take account of the inferences
and creative steps that a person of ordinary skill in the art would employ,"
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and find a person of ordinary skill in the art would have overcome any
difficulties within their level of skill. KSR Int'l 550 U.S. at 418; see also id.
at 421 ("A person of ordinary skill is also a person of ordinary creativity, not
an automaton."); Ball Aerosol & Specialty Container, Inc. v. Limited
Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry
set forth by the Supreme Court, the PTO must take account of the
"inferences and creative steps," as well as routine steps, that an ordinary
artisan would employ ( emphasis omitted)).
With respect to Appellant's assertion that the applied prior art does
not exemplify that both the stator and the rotor are "within the process
chamber" as recited in claim 1, we note that Appellant's Specification
describes that the stator is encapsulated in its own enclosure located between
the wafer containing chamber and the fluid collection container 8 "within the
moveable separation elements" as being within the process chamber (Spec.
13:7-16; see also, Figs. la, lb, 2a, 2b). Accordingly, the broadest
reasonable interpretation of "within the process chamber" includes such a
configuration as described at page 8 of the Specification. One of ordinary
skill would have appreciated that the stator must be close enough to the rotor
to function properly as a bearingless motor. Thus, to have the stator of a
bearingless motor arranged close enough to the rotor "within the process
chamber" of Miya inclusive of the separation elements and their associated
fluid collection space would have been within the creativity of one of
ordinary skill in the art.
With respect to Appellant's argument regarding dependent claim 5, a
preponderance of the evidence supports the Examiner's obviousness
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determination (Appeal Br. 18; Ans. 13 (Examiner explains that Kamiyami's
Fig. 4 exemplifies separation elements moveable via a bellows)).
Accordingly, we affirm the Examiner's prior art rejections of claims
1---6, 12, and 14--18 under 35 U.S.C. § 103(a) for the reasons given above
and presented by the Examiner.
DECISION
The Examiner's§ 103 rejections of claims 1---6, 12, and 14--18 are
affirmed.
The Examiner's § 103 rejection of claim 19 is reversed.
TIME PERIOD FOR RESPONSE
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).
AFFIRMED-IN-PART
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