Lutz Rebstock

Patent Trials and Appeals Board

Jun 14, 2021

2020003990 (P.T.A.B. Jun. 14, 2021)

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.
12/817,310 06/17/2010 Lutz Rebstock 1229P015331-US(PAR) 5277
106446 7590 06/14/2021
Perman & Green, LLP
99 Hawley Lane
Stratford, CT 06614
EXAMINER
CARRILLO, BIBI SHARIDAN
ART UNIT PAPER NUMBER
1711
MAIL DATE DELIVERY MODE
06/14/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUTZ REBSTOCK
Appeal 2020-003990
Application 12/817,310
Technology Center 1700
Before TERRY J. OWENS, JEFFREY B. ROBERTSON, and
SHELDON M. MCGEE, Administrative Patent Judges.

MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 7–11, 19–21, 24, 27, 28, and 31–39.
We have jurisdiction. 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Brooks
Automation GmbH. Appeal Br. 1.
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Application 12/817,310

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CLAIMED SUBJECT MATTER
The claims are directed to methods of transferring articles between
stations. See independent claims 7, 21, 24.
The Specification teaches that articles such as a “Front Opening
Unified Pod [FOUP]” are used to transport semiconductor components, e.g.,
wafers, during production. Spec. 1. The FOUPs “need[] to be cleaned
occasionally to maintain the standard of cleanliness required in processing
semiconductor wafers” and it may be necessary to clean a FOUP after each
individual use to prevent cross-contamination between wafer loads. Id. The
Specification expresses a desire to shorten the time needed to execute a
cleaning cycle. Id.
Independent claim 7, reproduced below, is illustrative of the claimed
subject matter:
7. A method for transferring an article having multiple
portions, the method comprising:
moving the article, by a transfer mechanism, directly
between a first station and a second station, wherein the multiple
portions of the article are in an assembled configuration at the
first station; and
passing the article, supported on the transfer mechanism,
past a member during the movement of the transfer mechanism,
with the article supported thereon, from the first station to the
second station through the member, wherein the member
disassembles the multiple portions of the article supported on the
transfer mechanism coincident with the passing of the transfer
mechanism through the member, such that the member
disassembles the multiple portions of the article on-the-fly
during the article passing past the member;
wherein the multiple portions are disposed in separate
locations in the second station.
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STATEMENT OF THE CASE
The Examiner rejects claims 7–11, 19–21, 24, 27, 28, and 31–39
under 35 U.S.C. § 103 as unpatentable over the combined disclosures of
applicant admitted prior art2 (“AAPA”) and Miyamoto,3 with further
evidence provided by Barker4. Final Act. 4–7.5
Specifically, the Examiner finds that AAPA discloses all the
limitations recited in claims 7 and 21, except for the requirement that there
be a single transfer mechanism, and that the article’s disassembly occurs
“on-the-fly” during the article’s movement from the first station to the
second station. Id. at 4–6. To address these differences between AAPA and
claims 7 and 21, the Examiner turns to Miyamoto, which the Examiner finds
discloses a single robot that performs multiple functions. Id. at 5. The
Examiner reasons that using a single robot (i.e., transfer mechanism) would
have provided a more cost effective and efficient process, thus motivating
the skilled artisan to make that modification to AAPA. Id. The Examiner
relies on the teachings of Barker to establish “that it was well known in the
art to improve efficiency and throughput using robots for manipulation and
handling of workpieces.” Id.
The Examiner also finds that disassembling the article on-the-fly
during movement to the second station would achieve the same result as
disassembly after transfer to the second station. Id. at 6. The Examiner

2 Spec. 20:5–22; Figure 12.
3 Miyamoto, JP2005/109523 (A), published April 21, 2005. We rely on the
uncontested English machine translation of record.
4 Barker, US 2009/0082895 A1, published March 26, 2009.
5 The Examiner’s written description rejection of claims 7–11, 19–21, 24,
27, 28, and 31–39 (Final Act. 2–3) is withdrawn and not before us. Ans. 6.
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determines that it would have been well within the level of the skilled artisan
to have disassembled the article during movement (id.), and that “the skilled
artisan would have recognized the benefits of performing a more efficient
process by unlocking/disassembly during movement.” Ans. 7.
Independent claim 24 does not recite disassembly of the article’s
multiple portions on-the-fly between stations. Rather, claim 24 requires the
article’s multiple portions to be locked together at the first station and,
during transport to the second station, the article is stopped where a member
unlocks the multiple portions. Appeal Br. (Claims App. 2–3). The
Examiner’s findings and conclusions regarding independent claim 24 are set
forth at pages 6 and 7 of the Final Office Action.

OPINION
We review the appealed rejection for reversible error based on the
arguments and evidence presented by Appellant. 37 C.F.R.
§ 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (explaining that even if the Examiner had failed to make a prima
facie case, “it has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”).
We address the claims separately to the extent they are so argued by
Appellant. 37 C.F.R. § 41.37(c)(1)(iv).

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Claims 7 and 21
Appellant’s arguments are set forth at pages 9–22 of the Appeal
Brief.6 Because the arguments for claim 21 largely mirror those advanced
for claim 7, our discussion of Appellant’s arguments applies equally to these
claims and their dependent claims.
Appellant begins by block-quoting the entirety of claim 7 and the
relied-upon AAPA disclosure. Appeal Br. 9–10. Appellant then asserts that
the AAPA “is simply silent with respect to the above-described features of”
claim 7. Id. at 10. Appellant then contends there are “deficiencies of the
AAPA.” Id. Appellant repeats this argument for claim 21. Id. at 18–19.
Such vague assertions lack specificity and precision as to what claim
limitations are purportedly missing from AAPA, and thus lack persuasive
merit. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
Appellant continues by reproducing portions of Miyamoto and then
asserting that Miyamoto’s specific robot 3 does not have the capability of
carrying out the methods of claims 7 and 21. Appeal Br. 10, 19. That
argument is not persuasive because it does not address the underlying

6 We agree with the Examiner’s observation (Ans. 6) that Appellant’s
arguments with respect to claim 21 are very similar to those set forth for
claim 7. Compare, e.g., Appeal Br. 9 –10 (quoting claim 7 and AAPA), with
id. at 18–19 (quoting claim 21 and AAPA); compare id. at 10, with id. at 19
(each asserting hindsight); compare id. at 11, with id. at 20 (each attacking
Miyamoto’s disclosure individually); compare id. at 11–13, with id. at 20–
22 (each attacking Barker’s disclosure individually).
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rejection. Miyamoto was merely relied upon to evince that it was known in
the art to have a single robot perform multiple functions. Final Act. 5. The
Examiner did not propose a direct substitution of Miyamoto’s robot into
AAPA’s method as Appellant’s argument suggests. Id.
Appellant then asserts the evidentiary reference Barker does not
remedy the deficiencies of AAPA and Miyamoto. Appeal Br. 11–13, 20–22.
This line of argument is unpersuasive because it reflects a misunderstanding
of the rejection that was made. See Final Act. 5 (relying on Barker as
evidence that it was well known “to improve efficiency and throughput
using robots for manipulation and handling of workpieces.”). In other
words, the Examiner does not rely on Barker to teach specific elements of
the claim. Rather, Barker is used in the rejection merely to establish well-
known principles of efficiency in this art.
We are furthermore unpersuaded by Appellant’s assertion that the
Examiner relies on purported comments made by Appellant over eight years
ago during prosecution in rejecting claim 7. Appeal Br. 14–15. We see no
such reliance on this appeal record. See Final Act. 4–6 (detailing the basis
for the rejection of claims 7 and 21, which does not include comments made
during prosecution with respect to these claims).
We also reject Appellant’s argument alleging error in the Examiner’s
determination that disassembling an article during movement would have
been more efficient. Compare Ans. 7, with Reply Br. 3. Although
Appellant criticizes this determination as “merely conclusory,” Appellant
does not explain how carrying out the disassembly step during transfer
between stations would not necessarily eliminate a separate disassembly step
once the article arrives at the second station. Reply Br. 3. In the absence of
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such an explanation, we discern no error in the Examiner’s conclusion that
transferring and disassembling the article coextensively would be more
efficient than performing these steps separately. Ans. 7.
Appellant also advances an untimely argument in asserting that the
Examiner failed to address items 4, 5, 6, 7A, 7B, or 7C of the Declaration.7
Reply Br. 5. Nowhere did Appellant make this argument in its principal
Brief. See Appeal Br., generally. Rather, Appellant only referenced
paragraphs 7B and 7C in its argument pertaining to the individual teachings
of Miyamoto. Id. at 17. Even then, Appellant did not assert that paragraphs
7B and 7C of the Declaration were not properly considered. Id. Because
this argument is not responsive to a statement raised in the Examiner’s
Answer, and because Appellant has not shown good cause why this
argument could not have been made in its Appeal Brief, we do not consider
it for purposes of this present appeal. 37 C.F.R. § 41.41(b)(2).
Because Appellant has identified no reversible error in the Examiner’s
rejection of claims 7 and 21, we sustain it, along with the rejection of claims
8–11, 19, 20, 27, 28, 31, 32, and 35–39 not separately argued.
Claim 24
Appellant’s arguments regarding claim 24 likewise leave us
unpersuaded of reversible error in the rejection of this claim because these
arguments substantially repeat arguments provided for claims 7 and 21 and
are unpersuasive for the reasons given supra. Appeal Br. 23–27.

7 Declaration by inventor Lutz Rebstock dated September 26, 2018.
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CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
7–11, 19–
21, 24, 27,
28, 31–39
103(a) AAPA, Miyamoto, Barker 7–11, 19–
21, 24, 27,
28, 31–39

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED