Case 6:20-cv-01216-ADA Document 41-26 Filed 10/06/21 Page 1 of 11
`Case 6:20-cv-01216-ADA Document 41-26 Filed 10/06/21 Page 1 of 11
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`EXHIBIT 26
`EXHIBIT 26
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`Case 6:20-cv-01216-ADA Document 41-26 Filed 10/06/21 Page 2 of 11
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`PATENT4
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`SEP 0 9·261D
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`U:'iAillf,:lll"''' re Application of:
`GUSTAVO MATA ET AL.
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`Group Art Unit: 2125
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`Serial No.: 10/135,145
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`Filed: APRIL 30, 2002
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`Examiner: JAYPRAKASH N. GANDHI
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`Atty. Dkt. No.: 2000.0196ftreEIVED
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`For: AGENT REACTIVE SCHEDULING
`AN AUTOMATED MANUFACTURING
`ENVIRONMENT
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`SEP 0 9 2003
`Technology Center 2100
`RESPONSE TO OFFICE ACTION DATED AUGUST 21, 2003
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`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Sir:
`
`CERTIFICATE OF MAILING 37 CFR 1.8
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`I hereby certify that this correspondence is being deposited
`with the United States Postal Service with sufficient postage as
`first class mail in an envelope addressed to: Commissioner for
`Patents, P.O. Box 1450, Alexandria, VA 22313-1450, on
`September 5, 2003.
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`This paper is submitted in response to the Office
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`ion dated August 21, 2003, ("Paper
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`No. 5") for which the three-month date for response is November 21, 2003.
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`It is believed that no fee is due; however, should any fees under 37 C.F.R. §§ 1.16 to 1.21
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`be required for any reason, the Assistant Commissioner is authorized to deduct said fees from
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`Advanced Micro Devices, Inc. Deposit Account No. 0 l-0365/TT4739.
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`Reconsideration of the application is respectfully requested in light of the arguments
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`presented below.
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`Case 6:20-cv-01216-ADA Document 41-26 Filed 10/06/21 Page 3 of 11
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`REMARKS
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`Claims 1-53 remain pending in the case, and all were rejected in Paper No. 5. More
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`particularly, Paper No. 5 rejected:
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`claims 1, 12, 19, 26, 33, and 44 as anticipated under 35 U.S.C. § 102 (b) by
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`United States Letters Patent 5,444,632 ("Kline, et al."); and
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`claims 2-11, 13-18, 20-25, 27-32, 34-43, and 45-53 as obvious under 35 U.S.C. §
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`103 (a) over Kline, et al.
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`Applicants traverse each of the rejections. Paper No. 5 failed to indicate whether the drawings
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`have been accepted, and applicants request clarification of that issue.
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`I.
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`CLAIMS 1, 12, 19, 26, AND 33 ARE NOVEL OVER KLINE, ET AL.
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`Paper No. 5 rejected claims 1, 12, 19, 26, 33, and 44 as anticipated under 35 U.S.C. § 102
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`(b) by United States Letters Patent 5,444,632 ("Kline, et al."). Applicants traverse this rejection
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`as predicated on a misconstruction of Kline, et al. and assert that the claims are novel over a
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`proper construction of Kline, et al. Furthermore, Applicants respectfully submit that the
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`rejection fails to prima facie establish that the claims are anticipated.
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`A.
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`The Rejections are Predicated on a Misconstruction of Kline, et al.
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`In rejecting claims 1, 12, 19, 26, 33, and 44 as anticipated under 35 U.S.C. § 102 (b) by
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`United States Letters Patent 5,444,632 ("Kline, et al."), Paper No. 5 stated only that:
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`Kline discloses a method, computer-readable, and a
`computer system for scheduling in an automated manufacturing
`environment as shown figures 1-3, detecting an occurrence (figure
`3, 104 to 102), scheduling agent 250 being notified.
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`Detailed Action, p. 2, <J[ 2. Thus, the Office incorrectly equates the relationship between the
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`wafer specification module 104 and the schedule interpreter 102 in Figure 3 with "detecting an
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`occurrence of a predetermined event" and the scheduling agent 250 with the "software
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`scheduling agent(s)" recited in the claims.
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`The relationship between the wafer specification module 104 and the schedule interpreter
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`102 in Figure 3 is described in the specification:
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`Additionally, the scheduler module 110 is connected to the wafer
`specification module 104 in order to receive data, for example, the
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`Case 6:20-cv-01216-ADA Document 41-26 Filed 10/06/21 Page 4 of 11
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`sequence of steps, for example pattern, etch, deposit, etc. for the lot
`in the factory in terms of various process resources in order to
`transform for example the raw unprocessed wafers into completed
`wafers.
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`Col. 4, lines 38-45. Subsequent discussions of the role of the wafer specification module 104
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`support this characterization, of the wafer specification module as an information provider. (col.
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`4, lines 63-68; col. 7, lines 10-16; and col. 7, lines 27-30) Thus, the only reasonable construction
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`is that the wafer specification module 104 is simply a repository of wafer specifications.
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`Presumably, the Office relies on the legend "STATUS CHANGES (HOLD SCRAP)" in
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`Figure 3 for its incorrect construction. However, nothing in Kline, et al. supports the Office's
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`inference that the legend teaches detection of an event, as opposed to, for example, teaching the
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`kinds of wafer specifications that might be stored in Kline, et al. The specification contains no
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`explanation of this legend. The Office's inference is actually contrary to the rest of Kline, et al.
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`The teachings of a prior art reference must be taken as a whole when evaluating obviousness
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`rather than considered in bits and pieces. Panduit Corp. v. Dennison Mfg. Co., 1 U.S.P.Q.2d
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`(BNA) 1593, 1597 (Fed. Cir.), cert. denied, - U.S.-, 107 S. Ct. 2187 (1987). As established
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`above, when Kline, et al. is taken as a whole, it fails to teach that the wafer specification module
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`104 is anything other than an information provider. Accordingly, Applicants respectfully submit
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`that the Office's inference is in fact an exercise of hindsight bootstrapped from Applicants' own
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`disclosure.
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`In addition to the misconstruction of the wafer specification module 104, the Office has
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`misconstrued the element 250 in Kline, et al. The Office in Paper No. 5 clearly identifies the
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`element 250 as a "scheduling agent." However, Figure 1 just as clearly labels the element 250 a
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`workstation, which is described in col. 4, at lines 27-33 with respect to Figure 2 as a computing
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`apparatus operated by a user. Furthermore, the workstation 250 is unambiguously identified as
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`but a part of the scheduler module 110. Presumably, the scheduler module 110, as a whole,
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`possesses the functionality that the Office associates with the "software scheduling agent(s)"
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`recited in the claims. If so, the scheduler module 110 cannot rationally be construed as a
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`"software scheduling agent" since it includes not only significant hardware components as
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`illustrated in Figure 1, but a user as illustrated in Figure 2. Even if the Office maintains that the
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`workstation 250 is a "scheduling agent," it cannot be a "software scheduling agent" since it
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`in~ ~ignifi~~n~~~e-~omponen,'..': Since the Office's construction of the
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`Case 6:20-cv-01216-ADA Document 41-26 Filed 10/06/21 Page 5 of 11
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`workstation 250 is contrary to the actual disclosure of Kline, et al., Applicants' respectfully
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`submit that this misconstruction also arises in hindsight from Applicants' disclosure.
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`The Office's rejection of claims 1, 12, 19, 26, 33, and 44 as anticipated under 35 U.S.C. §
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`102 (b) by United States Letters Patent 5,444,632 ("Kline, et al.") is therefore predicated on two
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`major misconstructions of Kline, et al. As is set forth above, Applicants believe these
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`misconstructions arise from hindsight interpretation of Kline, et al. in light of Applicants'
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`disclosure. As is set forth below, upon proper construction, Kline, et al. fails to disclose every
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`element of Applicants' invention. Applicants therefore respectfully submit that the anticipation
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`rejection of claims 1, 12, 19; 26, 33, and 44 is improvident and request that it be withdrawn.
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`B.
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`Claims 1, 12, 19, 26, and 33 are Novel Over
`a Proper Construction of Kline, et al.
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`Claims 1, 12, 19, 26, 33, and 44 are novel over Kline, et al. when Kline, et al. is properly
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`In particular, Kline, et al. fails to disclose the limitation "software scheduling
`construed.
`agent(s)", recited in the singular or the plural in each of the independent claims 1
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`• See cl. 1, at
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`line 4; cl. 12, line 5; cl. 19, line 4; cl. 26, line 4; cl. 33, line 3; and cl. 44, at line 4. Applicants
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`described "software scheduling agents" in their specification at p. 10, lines 13-31:
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`Referring now to FIG. 1 and FIG. 2, the software agents
`265 each represent some "manufacturing domain entity," e.g., a lot
`130, a process tool 115, a resource, a PM, or a Qual.
`... The
`software agents 265, collectively, are responsible for efficiently
`scheduling and controlling the lots 130 of wafers 135 through the
`fabrication process .
`. . . Of particular interest to the present invention, the
`software agents 265 reactively schedule, initiate, and execute
`activities on behalf of their respective manufacturing domain
`entities.
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`Thus, "software scheduling agents" possess three characteristics:
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`as the phrase implies, they are implemented in software;
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`they represent some respective manufacturing domain entity; and
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`1 Applicants note that other limitations are also not shown. However, a single such deficiency is sufficient to
`obviate the anticipation rejection. In re Bond, 15 U.S.P.Q. 2d (BNA) 1566, 1567 (Fed. Cir. 1997) (an anticipating
`reference must disclose every limitation of the claim).
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`Case 6:20-cv-01216-ADA Document 41-26 Filed 10/06/21 Page 6 of 11
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`they reactively schedule.
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`When Kline, et al. is properly construed, it fails to disclose this limitation of each of the
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`independent claims.
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`Applicants' review of Kline, et al. fails to identify any "software scheduling agent." In
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`general, the scheduling functionality is performed by the scheduler module 110, which is
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`implemented in hardware as well as software. (col. 4, lines 3-33) Furthermore, the software
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`components involved in scheduling do not represent respective manufacturing domain entities,
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`but rather operate across the whole fab. (col. 4, line 57 to col. 6, line 48; Figure 4) Kline, et al.
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`does disclose one object that it labels an "agent," but it merely provides and/or obtains
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`information and does not schedule. (col. 7, lines 16-58) As established above, the workstation
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`250 identified in Paper No. 5 as a "scheduling agent" is not a "software scheduling agent"
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`because it is implemented not only in hardware, but also includes a human user. (col. 4, lines 7-
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`33; Figure 1 - Figure 2)
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`C.
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`The Office Failed to Establish Prima Facie
`That Claims 1, 12. 19, 26, and 33 are Anticipated
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`"It is by now well settled that the burden of establishing a prima facie case of anticipation
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`resides with the Patent and Trademark Office.
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`In re Piasecki, 745 F.2d 1468, 1472, 223
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`U.S.P.Q. 785, 788 (Fed. Cir. 1984) quoting In re Warner, 379 F.2d 1011, 1016, 154 U.S.P.Q.
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`173, 177 (C.C.P.A. 1967); Ex parte Skinner, 2 U.S.P.Q.2d (BNA) 1788, 1788-89 (Bd. Pat. App.
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`& Int. 1987). In doing so, " .. .it is incumbent upon the [Office] to identify wherein each and
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`every facet of the claimed invention is disclosed in the applied reference." Ex parte Levy, 17
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`U.S.P.Q.2d (BNA) 1461, 1462 (Pat. & Tm. Off. Bd. Pat. App. & Int. 1990). However, the
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`Office's rejection fell short of this standard.
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`· In rejecting claims 1, 12, 19, 26, 33, and 44 as anticipated under 35 U.S.C. § 102 (b) by
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`United States Letters Patent 5,444,632 ("Kline, et al."), Paper No. 5 stated only that:
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`Kline discloses a method, computer-readable, and a
`computer system for scheduling in an automated manufacturing
`environment as shown figures 1-3, detecting an occurrence (figure
`3, 104 to 102), scheduling agent 250 being notified.
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`Detailed Action, p. 2, 'J[ 2. Applicants respectfully submit that this rejection fails in that it:
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`Case 6:20-cv-01216-ADA Document 41-26 Filed 10/06/21 Page 7 of 11
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`fails to identify where Kline, et al. discloses "notifying a software scheduling
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`agent of the occurrence" as recited in cl. 1, at line 4; cl. 12, line 5; cl. 19, line 4;
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`cl. 23, by virtue of its dependence from cl. 19; and cl. 26, line 4;
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`fails to explain how the relationship between the wafer specification module 104
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`and the schedule interpreter 102 in Figure 3 constitutes "detecting an occurrence
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`of a predetermined event" as recited in cl. 1, at line 3; cl. 12, line 4; cl. 19, line 3;
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`cl. 23, by virtue of its dependence from cl. 19; and cl. 26, line 3; when that
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`relationship is described in the specification as simply transferring stored
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`information regarding wafer.specifications at col. 4, lines 38-45;
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`fails to identify a "software scheduling agent" or agents as recited in cl. 1, at line
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`4; cl. 12, line 5; cl. 19, line 4; cl. 23, by virtue of its dependence from cl. 19; and
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`cl. 26, line 4; cl. 33, line 3; and cl. 44, at line 4;
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`fails even to allege that, must less identify where, Kline, et al. teaches scheduling
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`responsive to the detection of the event as recited in cl. 1, at lines 5-6; cl. 12, lines
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`6-7; cl. 19, lines 5-6; cl. 23, by virtue of its dependence from cl. 19; and cl. 26,
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`lines 5-6; cl. 33, lines 5-6; and cl. 44, at lines 6-7; or
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`fails even to allege that, must less identify where, Kline, et al. teaches any of the
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`limitations recited in cl. 23 over and above the limitations of cl. 23 incorporated
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`from cl. 19 by virtue of its dependence therefrom.
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`Applicants therefore respectfully submit that the Office has failed to meet the standard of Ex
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`parte Levy and, hence, has failed to establish that Kline, et al. anticipates claims 1, 12, 19, 26,
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`33, and 44.
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`II.
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`CLAIMS 2-11, 13-18, 20-25, 27-32, 34-43, and 45-53 ARE ALLOWABLE
`UNDER 35 U.S.C. § 103 (a) OVER KLINE, ET AL.
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`The Office rejected claims 2-11, 13-18, 20-25, 27-32, 34-43, and 45-53 as obvious under
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`35 U.S.C. § 103 (a) over Kline, et al. The relevant inquiry is whether the prior art suggests the
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`invention and whether the prior art would have provided one of ordinary skill in the art with a
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`reasonable expectation of success. In re O'Farrell, 7 USPQ2d 1673 (Fed. Cir. 1988). Both the
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`suggestion and the reasonable expectation of success must be founded in the prior art and not in
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`the Applicant's disclosure. In re Vaeck, 20 USPQ2d 1438 (Fed. Cir. 1991). Applicants
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`Case 6:20-cv-01216-ADA Document 41-26 Filed 10/06/21 Page 8 of 11
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`respectfully submit that this rejection fails for three reasons. First, Kline, et al. fails to teach or
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`suggest all of the limitations of the claims. Second, the rejection relies on the misconstruction of
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`Kline, et al. discussed above, bootstrapped from Applicants' disclosure. Third, the rejection
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`employs the wrong standard for "obviousness" and impermissibly shifts the burden to Applicants
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`to establish prima facie the non-obviousness of the claims.
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`A.
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`Kline, et al. Fails to Teach or Suggest All the Limitations of the Claims
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`Kline, et al. fails to teach or suggest all the limitations of claims 2-11, 13-18, 20-25, 27-
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`32, 34-43, and 45-53. Each of the independent claims 1, 12, 19, 26, 33, and 44 each recite
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`"software scheduling agent(s)" in either the singular or the plural. Each of claims 2-11, 13-18,
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`20-25, 27-32, 34-43, and 45-53 are also limited by this recitation through their dependence from
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`one of these independent claims. 35 U.S.C. § 112, <JI 4. As established above, Kline, et al. does
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`not teach or suggest the use of "software scheduling agents." Thus, Kline, et al. fails to teach or
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`suggest all the limitations of claims 2-11, 13-18, 20-25, 27-32, 34-43, and 45-53.
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`B.
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`The Rejection Relies on a Misconstruction of Kline, et al.
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`The rejection relies on one of the misconstructions of Kline, et al. discussed above.
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`Paper No. 5 states:
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`As stated above Kline discloses all the claimed method as
`well as computer system for an automated manufacturing
`environment including in a very broad term an occurrence (status
`changes, figure 3) except point out specific detected occurrence as
`claimed by applicant.
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`Detailed Action, pp. 2-3, <JI 4. As Applicants established above, this is a misconstruction of the
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`relationship between the wafer specification module 104 and the schedule interpreter 102 in
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`Figure 3. The wafer specification module 104 is clearly an information repository providing
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`information when asked. (col. 4, lines 38-45, 63-68; col. 7, lines 10-16; and col. 7, lines 27-30)
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`Nothing in Kline, et al. supports the inference that the legend teaches detection of an event, as
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`opposed to, for example, teaching the kinds of wafer specifications that might be stored in Kline,
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`et al. The specification contains no explanation of this legend.
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`The Office's inference is actually contrary to the rest of Kline, et al. The teachings of a
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`prior art reference must be taken as a whole when evaluating obviousness rather than considered
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`Case 6:20-cv-01216-ADA Document 41-26 Filed 10/06/21 Page 9 of 11
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`in bits and pieces. Panduit Corp. v. Dennison Mfg. Co., 1 U.S.P.Q.2d (BNA) 1593, 1597 (Fed.
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`Cir.), cert. denied, - U.S. -, 107 S. Ct. 2187 (1987). Accordingly, Applicants respectfully
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`submit that the Office's inference is in fact an exercise of hindsight bootstrapped from
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`Applicants' own disclosure.
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`C.
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`The Rejection Employs the Wrong Standard for Obviousness and
`Improperly Shifts the Burden to Applicants to Prove Non-Obviousness
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`The rejection also employs the wrong standard for "obviousness" and improperly shifts
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`the burden to Applicants to prove "non-obviousness." Paper No. 5, in rejecting claims 2-11, 13-
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`18, 20-25, 27-32, 34-43, and 45-53 as obvious, stated:
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`Applicant demonstrated no criticality on these elements, so
`it would have been obvious to one of ordinary skill in the art to
`make occurrence to be detected as required during different
`manufacturing stage to correct and optimize overall scheduling
`system.
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`Detailed Action, pp. 2-3, <J[ 4.
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`"Criticality" is the wrong standard for obviousness whose
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`application is reversible error. Cf, inter alia, In re Clinton, 188 U.S.P.Q. (BNA) 365, 367
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`(C.C.P.A. 1976); In re Dow Chem. Co., 5 U.S.P.Q.2d (BNA) 1529, 1532 (Fed. Cir. 1989); In re
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`Fine, 5 U.S.P.Q.2d (BNA) 1596 (Fed. Cir. 1988); In re Antoine, 195 U.S.P.Q. 6 (C.C.P.A.
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`1977); In re Tomlinson, 150 U.S.P.Q. 623 (C.C.P.A. 1966).
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`Admittedly, "criticality" can sometimes be an issue in an obvious determinations:
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`Applicants can rebut a prima facie case of obviousness
`based on overlapping ranges by showing the criticality of the
`claimed range. "The law is replete with cases in which the
`difference between the claimed invention and the prior art is some
`range or other variable within the claims .... In such a situation,
`the applicant must show that the particular range is critical,
`generally by showing that the claimed range achieves unexpected
`results relative to the prior art range." In re Woodruff, 919 F.2d
`1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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`M.P.E.P. § 2144.05. Note, however, that "criticality" is an issue in rebuttal of a prima facie
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`case. The prima facie case, in this instance, is the disclosure of a claimed range of values by a
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`range already in the prior art:
`In the case where the claimed ranges "overlap or lie inside
`ranges disclosed by the prior art" a prima facie case of obviousness
`exists. Similarly, a prima facie case of obviousness exists where
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`Case 6:20-cv-01216-ADA Document 41-26 Filed 10/06/21 Page 10 of 11
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`the claimed ranges and prior art ranges do not overlap but are close
`enough that one skilled in the art would have expected them to
`have the same properties.
`"[A] prior art reference that discloses a range encompassing
`a somewhat narrower claimed range is sufficient to establish a
`prima facie case of obviousness." However, if the reference's
`disclosed range is so broad as to encompass a very large number of
`possible distinct compositions, this might present a situation
`analogous to the obviousness of a species when the prior art
`broadly discloses a genus.
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`M.P.E.P. § 2144.05 (citations omitted). Applicants are not trying to claim any range of values in
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`any of claims 2-11, 13-18, 20-25, 27-32, 34-43, and 45-53, and so "criticality" is not an issue.
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`In essence, the Office is impermissibly attempting to shift the burden to Applicants.
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`Paper No. 5, relying on the misconstruction discussed above, admits that Kline, et al. fails to
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`" ... [point] out specific detected occurrence as claimed by Applicant. Detailed Action, pp. 2-3, <}[
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`4. Thus, even an analogy to the range cases in which criticality is an issue would be inapposite
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`because they require a teaching or suggestion in the prior art of the claimed limitation, ~hich
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`the Office admits is not present. The Office is essentially requiring Applicants to produce
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`secondary indicia of non-obviousness when the obviousness of the claims has not yet been prima
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`facie established. Thus, the Office is impermissibly shifting its burden to prima facie establish
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`the obviousness of the claims to Applicant to prove prima facie the non-obviousness of the
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`claims. Applicants respectfully submit that the obvious rejection is improvident and should be
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`withdrawn.
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`CONCLUSION
`Applicants do not amend the claims, and traverse each of the rejections. Applicants
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`traverse the rejection of claims 1, 12, 19, 26, 33, and 44 as anticipated under 35 U.S.C. § 102 (b)
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`by United States Letters Patent 5,444,632 ("Kline, et al.") because:
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`the rejection relies on a misconstruction of Kline, et al. bootstrapped from
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`Applicants' own disclosure;
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`when Kline, et al. is properly construed, it fails to disclose all the limitations of
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`the claims; and
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`the prima facie case is deficient because the Office has failed to identify where
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`Kline, et al. allegedly teaches the limitations of the various claims.
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`Case 6:20-cv-01216-ADA Document 41-26 Filed 10/06/21 Page 11 of 11
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`Applicants traverse the rejection of claims 2-11, 13-18, 20-25, 27-32, 34-43, and 45-53 as
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`obvious under 35 U.S.C. § 103 (a) over Kline, et al. because:
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`when properly construed, Kline, et al. does not teach or suggest all the limitations
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`of the claims;
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`it relies on the same misconstruction of Kline, et al. upon which the anticipation
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`rejections rely; and
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`it employs the wrong standard for "obviousness" and impermissibly shifts the
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`burden to Applicants to establish primafacie the non-obviousness of the claims.
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`Applicants therefore respectfully submit that the claims are allowable and that the application is
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`in condition for allowance. Accordingly, Applicants request that the application be allowed to
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`issue.
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`The Examiner is invited to contact the undersigned attorney at (713) 934-4053 with any
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`questions, comments or suggestions relating to the referenced patent application.
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`Respectfully submitted,
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`WILLIAMS, MORGAN & AMERSON
`CUSTOMER NUMBER: 23720
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`Attorney for Applicants
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`10333 Richmond Dr., Suite 1100
`Houston, Texas 77042
`(713) 934-7000
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`Date: September 5, 2003
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