Ex parte Miguelanez

• Decision Date: 30 January 2013
• Docket Number: Appeal 2010-005496
• Parties: Ex parte EMILIO MIGUELANEZ and GREG LABONTE Application 11/535, 851 Technology Center 2800
• Court: Patent Trial and Appeal Board

Ex parte EMILIO MIGUELANEZ and GREG LABONTE Application 11/535, 851 Technology Center 2800

Appeal 2010-005496

United States Patent and Trademark Office, Patent Trial and Appeal Board

January 30, 2013

FILING DATE: 09/27/2006

Before JOSEPH F. RUGGIERO, MARC S. HOFF, and STANLEY M. WEINBERG Administrative Patent Judges.

DECISION ON APPEAL

WEINBERG, Administrative Patent Judge.

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-6 and 8-21. We have jurisdiction under 35 U.S.C. § 6(b).

We affirm.

Claims 1-6, 8-13, and 15-20 stand rejected under 35 U.S.C. § 102(b) as anticipated by Tabor (US 2003/0014205 A1 (Jan. 16, 2003; filed May 24, 2002).^[1]

Claims 8-21 stand rejected under 35 U.S.C. § 101 for being directed to non-statutory subject matter.^[2]

Claims 14 and 21 have been objected to as being dependent upon a rejected base claim and are tentatively allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, assuming the § 101 rejections are overcome. 6/10/2009 Final Rejection, ¶ 4.

Claim 7 has also been objected to and indicated as being tentatively allowable, also assuming the § 101 rejections have been overcome. 6/10/2009 Final Rejection, ¶ 4. The Examiner's statement that the allowability of claim 7 depends upon resolution of the § 101 rejections is incorrect because claim 7 has not been rejected based upon § 101. See 6/10/2009 Final Rejection ¶ 2; Ans. 3, ¶ 1. Claim 7 has therefore not been rejected on any basis.

STATEMENT OF THE CASE

Appellants' invention relates to a method and apparatus for testing semiconductor devices on a wafer, circuit boards, packaged devices, or other electrical or optical systems. Spec. ¶ 0020.

Independent claim 1 is illustrative:

1. A test data analysis system for analyzing test data for multiple components fabricated on a wafer, comprising:

a memory configured to store the test data; and

a hybrid outlier system having access to the memory and configured to, for each of a plurality of test data for each of a plurality of selected components:

select a component as a central component;

identify a plurality of local components in a local area near the central component;

determine a derived value of the test data for the plurality of local components;

compare the test data for the central component to the derived value for the plurality of local components; and

identify whether the test data for the central component represents a hybrid outlier according to the comparison of the test data for the central component to the derived value for the plurality of local components.

The Anticipation Rejection

The Examiner finds that Tabor discloses every recited feature of representative claim 1. Ans. 4-5.

Appellants argue that Tabor does not qualify as prior art and therefore cannot support the rejection. App. Br. 17-18; Reply Br. 3-5.

ISSUE

Under § 102, has the Examiner erred by concluding that Tabor qualifies as prior art?

FINDINGS OF FACT

The record supports the following Findings of Fact:

1. The present application was filed on September 27, 2006. Paragraph 0001 of the application states:

This application is a continuation-in-part of U.S. Patent Application Serial No. 11/134, 843, filed on May 20, 2005, entitled METHODS AND APPARATUS FOR LOCAL OUTLIER DETECTION, and incorporates the disclosure of such application by reference. To the extent that the present disclosure conflicts with any referenced application, however, the present disclosure is to be given priority.

2. A rejection of claims 1-6, 8-13, and 15-20 as anticipated by Tabor was mailed on September 28, 2007.

3. On December 28, 2007, Appellants responded to the September 28, 2007 rejection by amending the Abstract. Appellants' response made no other amendment to the Specification.

4. A Final Rejection of claims 1-6, 8-13, and 15-20 as anticipated by Tabor was mailed on March 14, 2008.

5. Tabor's Application No. 10/154, 627 was filed on May 24, 2002.

6. On May 13, 2008, Appellants filed a Request For Reconsideration After Final Office Action which sought to amend the Specification as follows (footnote added):

This application is a continuation-in-part of U.S. Patent Application Serial No. 11/134, 843, filed on May 20, 2005, entitled METHODS AND APPARATUS FOR LOCAL OUTLIER DETECTION which is a continuation-in-part ("CIP") of U.S. Serial No. 10/817, 750, filed April 2, 2004, which is a CIP of U.S. Serial No. 10/730, 388, filed on December 7, 2003, which is a CIP of U.S. Serial No. 10/367, 355, filed on February 14, 2003, which is a CIP of U.S. Serial No. 10/154, 627, filed on May 24, 2002, and incorporates the disclosure of such applications^[3] by reference. To the extent that the present disclosure conflicts with any referenced application, however, the present disclosure is to be given priority.

7. In an Office Action mailed on February 9, 2009, prosecution was reopened and the May 13, 2008 amendment was objected to because it introduces new matter that was not supported by the original disclosure. 2/9/2009 Office Action 3. The Office Action again rejected claims 1-6, 8-13, and 15-20 as anticipated by Tabor. id. at 4.

8. On May 11, 2009, Appellants filed a Response to Office Action which sought to amend the Specification as follows (footnote added):

This application is a continuation-in-part of U.S. Patent Application Serial No. 11/134, 843, filed on May 20, 2005, entitled METHODS AND APPARATUS FOR LOCAL OUTLIER DETECTION which is a continuation-in-part ("CIP") of U.S. Serial No. 10/817, 750, filed April 2, 2004, which is a CIP of U.S. Serial No. 10/730, 388, filed on December 7, 2003, which is a CIP of U.S. Serial No. 10/367, 355, filed on February 14, 2003, which is a CIP of U.S. Serial No. 10/154, 627, filed on May 24, 2002, and incorporates the disclosure of such applications^[4] by reference. To the extent that the present disclosure conflicts with any referenced

9. In an Office Action mailed on June 10, 2009, the Examiner objected to the May 11, 2009 Specification Amendment and declined to enter it, stating that "it is improper to change the priority after the time define[d] in MPEP 201.11, 37 CFR 1.78 (a)(2)(ii), any change of priority after the date is by petition." 6/10/2009 Office Action 2. The Office Action also objected to the amendment filed on May 13, 2008 under 35 U.S.C. § 132(a), stating that it introduced new matter into the disclosure and the added material was not supported by the original disclosure. id. The Office Action included a Final Rejection of claims 1-6, 8-13, and 15-20 as anticipated by Tabor. id. at 4.

10.The file history of the present application does not indicate that Appellants filed a petition to accept an unintentionally delayed priority claim under 35 U.S.C. § 120 and 37 C.F.R. § 1.78(a)(3).

PRINCIPLES OF LAW

1. 35 U.S.C. § 120 states, in part (footnote added):

An application for patent for an invention disclosed . . . in an application previously filed in the United States . . . which is filed by an inventor or inventors named in the previously filed application^[5] shall have the same effect, as to such invention, as though filed on the date of the prior application . . . if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this section unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures ... to accept an unintentionally delayed submission of an amendment under this section.

2. 37 C.F.R. § 1.78(a) states, in part:

(2)(i) . . . any nonprovisional application . . . must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number) . . . and indicating the relationship of the applications.

(ii). . . [T]his reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application. . . . These time periods are not extendable. Except as provided in paragraph (a)(3) of this section, the failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (a)(2)(i) of this section is considered a waiver of any benefit under 35 U.S.C. 120 . . . to such prior-filed application.

(3) If the reference required by 35 U.S.C. 120 and paragraph (a)(2) of this section is presented after the time period provided by paragraph (a)(2)(ii) of this section, the claim under 35 U.S.C. 120 . . . may be accepted if the reference identifying the prior-filed application by application number . . . was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 120 . . . for the benefit of a prior-filed application must be accompanied by:

[the items specified in sub-sections (i) - (iii)].

ANALYSIS

An objection to an amendment and a refusal to enter an amendment are not usually considered to be under the Board's jurisdiction. In the present case, the objection and the refusal to enter Appellants' proposed Amendment bear directly on the claims and the Examiner's rejection under 35 U.S.C. § 102(b). FF 2, 4, 6, 8. We will therefore address the Examiner's refusal to enter the Amendment and the Examiner's conclusion that the proposed Amendment constitutes new matter. See In re Hengehold, 440...