Ex Parte 7262411 et alDownload PDFPatent Trial and Appeal BoardJun 26, 201495001313 (P.T.A.B. Jun. 26, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,313 02/17/2010 7262411 F050.84RE 1159 24978 7590 06/27/2014 GREER, BURNS & CRAIN, LTD 300 S. WACKER DR. SUITE 2500 CHICAGO, IL 60606 EXAMINER MENEFEE, JAMES A ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 06/27/2014 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 ____________ FEI COMPANY Requester v. THE REGENTS OF THE UNIVERSITY OF CALIFORNIA Patent Owner ____________ Appeal 2013-003261 Reexamination Control No. 95/001,313 Patent 7,262,411 B2 Technology Center 3900 ____________ Before KEVIN F. TURNER, STEPHEN C. SIU, and STANLEY M. WEINBERG, Administrative Patent Judges. SIU, Administrative Patent Judge DECISION ON REQUEST FOR REHEARING Appeal 2013-003261 Reexamination Control No. 95/001,313 Patent No. 7,262,411 B2 2 Patent Owner requests rehearing of our Decision entered July 16, 2013 (“Decision”), in which we affirmed the Examiner’s rejection of claims 1-5, 7, 11-13, 19-22, and 25-38 as obvious over Faruqi and Kleinfelder; claims 9 and 10 as obvious over Faruqi, Kleinfelder, and Berezin; claims 5, 6, and 8 as obvious over Faruqi, Kleinfelder, and Hancock; and claims 14-38 as obvious over Faruqi and Turchetta III (Decision 19). Patent Owner argues that the Decision overlooks “the radically different environment of Kleinfelder compared to the environment of Faruqi” (Req. Reh’g 3). We disagree with Patent Owner’s contention for at least the reasons previously set forth in the Decision (see e.g., Decision 8-9). Patent Owner relies on “37 CFR 1.132 Declaration of Robert B. Bilhorn” (dated April 8, 2011) (“Bilhorn Declaration”) to support its contention that it would not have been obvious to one of ordinary skill in the art to have combined the teachings of Faruqi and Kleinfelder. In particular, Patent Owner argues that the Decision overlooks the fact that Kleinfelder “does not mention electron microscopy” (Req. Reh’g. 3). We are not persuaded by Patent Owner’s argument that the combination of Faruqi and Kleinfelder fails to disclose or suggest electron microscopy at least because, as previously discussed in the Decision, Faruqi discloses this feature. In any event, the Specification discloses that in electron microscopy, an image is detected using an “active pixel detector” that contains a “plurality of pixels” (col. 3, ll. 36-40), in which electrons that are “generated by an incident high energy electron [beam]” (col. 3, ll. 41-42) are collected. Each pixel “integrates the collected electrons during an exposure period” (col. 3, ll. 44-45). In other words, one of ordinary skill in the art would have Appeal 2013-003261 Reexamination Control No. 95/001,313 Patent No. 7,262,411 B2 3 understood, in light of the Specification, that “electron microscopy” entails collecting electrons that are scattered by passing an electron beam through a specimen to be imaged and detecting the electrons thus collected via a “pixel detector.” Kleinfelder discloses imaging a specimen by using an “Active Pixel Sensor” (Abstract) with an “electron source.” The device is placed in an “electron beam” (p. 214, l. 1) and an “energy spectrum” is observed (p. 214, Fig. 9). In the process, electrons are “liberated” and “dispersed and collected over a radius including a number of pixels” (p. 214, 2 nd paragraph). In other words, Kleinfelder discloses a process of imaging a specimen that entails collecting electrons that are scattered by passing an electron beam through a specimen to be imaged and detecting the electrons thus collected via a “pixel detector.” Patent Owner does not demonstrate persuasively a meaningful difference between “electron microscopy,” as disclosed in the Specification as collecting electrons scattered from a specimen by exposing the specimen to an electron beam and the process disclosed by Kleinfelder that also entails collecting electrons scattered from a specimen by exposing the specimen to an electron beam. Patent Owner also argues that “[n]o artisan would have the ‘reasonable expectation of success’ required for substituting the radiation hardened bump-bonded detector in Faruqi with that used in the radically less-demanding environment of Kleinfelder” (Req. Reh’g. 4) because, according to Patent Owner, Kleinfelder tested a sensor using “low flux levels of Fe-55 X-rays, Sr-90 X-rays . . . and 1.5 GeV electrons” while Faruqi allegedly uses “doses in the TEM of 500,000 rad, . . . followed by an Appeal 2013-003261 Reexamination Control No. 95/001,313 Patent No. 7,262,411 B2 4 additional 1,000,000 rad” (Req. Reh’g 3-4, citing Bilhorn Declaration at ¶¶ 25, 39). We are not persuaded by Patent Owner’s arguments for at least the reasons previously provided in the Decision. Patent Owner’s argument appears to be that it would not have been obvious to one of ordinary skill in the art to have combined the teachings of Faruqi and Kleinfelder because Faruqi uses a specific system (i.e., “Medipix” system) for the express purpose of functioning in a “harsh environment” (Req. Reh’g 4) while Kleinfelder’s system supposedly cannot function in a “harsh environment” as expressly desired by Faruqi. However, Patent Owner has not demonstrated persuasively that the environment required by Faruqi is “harsh” and is more “harsh” than the environment required by the system of Kleinfelder. As described above, Patent Owner argues that Kleinfelder tests a sensor using “low flux levels of Fe-55 X-rays, Sr-90 X-rays . . . and 1.5 GeV electrons” (citing Bilhorn Declaration ¶ 39, citing Kleinfelder “just under the Fig. 11 caption”) and appears to equate such conditions with an “environment” that is not “harsh” (or at least less “harsh” than the “environment” of Faruqi). First, we note that Kleinfelder discloses at Patent Owner’s cited portion of “just under the Fig. 11 caption” that the “radius of electron diffusion is also heavily dependent on the pixel collection diode size and topology” (Kleinfelder “just under the Fig. 11 caption” at p. 215). This disclosure does not appear to relate to Patent Owner’s argument. We note that Kleinfelder also discloses that a “prototype array was tested with Sr-90 and Fe-55 sources and also in an electron beam” (p. 213, ll. 6). We therefore agree with Patent Owner that Kleinfelder discloses testing Appeal 2013-003261 Reexamination Control No. 95/001,313 Patent No. 7,262,411 B2 5 a device with Sr-90 and Fe-55 sources. However, while Patent Owner’s expert (Dr. Bilhorn) states that Kleinfelder tests a device with Sr-90 and Fe- 55 sources, neither Patent Owner nor Dr. Bilhorn provides sufficient evidence to demonstrate persuasively that this testing environment of Kleinfelder is not “harsh” or what a “harsh” environment would entail. Even if the testing environment of Kleinfelder could be characterized as “not harsh” (or at least “less harsh” than that of Faruqi), Patent Owner and Dr. Bilhorn fail to demonstrate persuasively that Kleinfelder discloses that the device cannot be operated in any environment other than the environment in which Sr-90 and Fe-55 sources (and an electron beam) are tested (i.e., that the testing conditions used by Kleinfelder are the only conditions under which the system is capable of operating). Rather, Patent Owner and Dr. Bilhorn merely assert that the environment used by Kleinfelder to test the device is not “harsh” (or at least less “harsh” than Faruqi’s environment) based on the fact that Kleinfelder used Sr-90 and Fe-55 sources while testing the device. Patent Owner and Dr. Bilhorn also argue that the “environment” used by Faruqi is “harsh” because Faruqi uses “doses in the TEM of 500,000 rad . . . followed by an additional 1,000,000 rad” (Bilhorn Declaration ¶ 25, citing Faruqi at p. 275). We note that Faruqi discloses a “very approximate estimate for the amount of radiation falling on the detector would be [about] 500 krad . . . corresponding to an electron dose at the detector of [about] 2 X 10 6 electrons/μm 2 ” and that “there has not been a further deterioration with more than twice that dose” (p. 275, left column). Presumably, Patent Owner and Dr. Bilhorn argue that the use of about “500 krad,” as disclosed by Appeal 2013-003261 Reexamination Control No. 95/001,313 Patent No. 7,262,411 B2 6 Faruqi, would be considered to be a “harsh environment” by one of ordinary skill in the art and that Kleinfelder does not (and cannot) operate in such an environment. However, Patent Owner does not assert or demonstrate that Kleinfelder discloses or suggests that operating in an environment of “500 krad” would be unacceptable. Indeed, Patent Owner does not assert that Kleinfelder discloses a specific preferred electron dose or any unacceptable electron dose at the detector at all much less one that is substantially different from “500 krad.” In the absence of such a showing by the Patent Owner, we are not persuaded by Patent Owner’s arguments for reasons previously provided in the Decision. Patent Owner argues that Kleinfelder discloses “minority carriers . . . may diffuse to neighboring pixels . . . [b]ut for low-rate sparse-event images, centroid analysis of this diffusion may be used to increase position resolution” (Req. Reh’g. 5-6, citing Kleinfelder at Abstract). Based on this disclosure of Kleinfelder, Patent Owner asserts that “Kleinfelder . . . is only suitable for ‘low-rate, sparse-event images” (Req. Reh’g 6). While we agree with Patent Owner that Kleinfelder discloses that “for low-rate, sparse-event images, centroid analysis of this diffusion may be used to increase position resolution” (Abstract), we disagree with Patent Owner that this disclosure of Kleinfelder indicates that it is only suitable for “low-rate, sparse-event images.” Rather, Kleinfelder merely discloses that one of ordinary skill in the art would use “centroid analysis” with “low-rate, sparse-event images” and not that the system would be operable only with “low-rate, sparse-event images.” Appeal 2013-003261 Reexamination Control No. 95/001,313 Patent No. 7,262,411 B2 7 Patent Owner argues that we overlooked or misapprehended that Faruqi discloses a “passive detector” while Kleinfelder discloses “an active detector.” Patent Owner presumably argues that it would not have been obvious to one of ordinary skill in the art to have combined the teachings of Faruqi and Kleinfelder because Faruqi discloses one type of detector while Kleinfelder discloses a different type of detector. We disagree with Patent Owner’s argument for at least the reasons previously discussed in the Decision. Patent Owner argues that Turchetta III fails to disclose or suggest a substrate of 30 μm or less (Req. Reh’g 7-8). This issue was addressed in the decision (see e.g., Decision 15-16). Patent Owner does not provide persuasive evidence showing that we overlooked or misapprehended any points with respect to this issue. Patent Owner re-iterates arguments pertaining to secondary considerations (Req. Reh’g 8-10). In particular, Patent Owner argues that the invention is “revolutionary” and that the invention received “praise . . . from Requester” (Req. Reh’g 9-10). This issue was fully addressed in the Decision (see, e.g., Decision 12-13). For example, Patent Owner previously argued that “[i]n 2009, the Real Party in Interest, FEI Company, stated that it had achieved a ‘Quantum Leap in Low-Dose, High-Contrast Biological Imaging’ that will ‘revolutionize electron microscopy of biological structures’ by using ‘direct electron detection that enables the acquisition of low-noise images of delicate biological samples’” (PO App. Br. 13). Patent Owner stated that the Examiner “had dismissed the 2009 statements as ‘market fluff’ and deemed Appeal 2013-003261 Reexamination Control No. 95/001,313 Patent No. 7,262,411 B2 8 the statements to be irrelevant” but that “such copying [and] praise and recognition for the invention . . . are among the factors to be considered in an obvious analysis.” Id. We agree with Patent Owner that “[o]bjective indicia of nonobviousness play a critical role in the obviousness analysis.” Leo Pharmaceutical Products, Ltd. v. Rea, 726 F.3d 1346, 1358 (Fed. Cir. 2013). Also, “[o]bjective evidence of nonobviousness need only be ‘reasonably commensurate with the scope of the claim’.” Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013). However, in the present case and as discussed in the Decision, after careful consideration of any objective indicia of nonobviousness proffered by Patent Owner, we are not persuaded that Patent Owner has provided sufficient objective evidence regarding alleged “copying” or “praise,” or a nexus between the evidence and the claimed invention. For example, claim 1 recites detecting the microscopy signal with an active pixel detector. Patent Owner argues that the press release discloses a system that uses “direct electron detection that enables the acquisition of low-noise images of delicate biological samples” and that “[t]he nexus to the theory of obviousness is spot-on” (PO App. Br. 14) but does not demonstrate how this statement in the cited press release relates to the claim feature of “detecting the microscopy signal with an active pixel detector.” In other words, based on Patent Owner’s evidence and arguments, we disagree with Patent Owner that a nexus has been shown sufficiently between the evidence (e.g., direct electron detection and low-noise images of biological samples) and the claimed invention (e.g., “detecting the microscopy signal with an Appeal 2013-003261 Reexamination Control No. 95/001,313 Patent No. 7,262,411 B2 9 active pixel detector”). Indeed, Patent Owner does not assert or show persuasively that the press release discloses an “active pixel detector” at all. 1 As such, Patent Owner has also not demonstrated persuasively that the product described in the press release is a “copy” of the claimed invention since the product described in the press release is not disclosed as detecting a microscopy signal with an active pixel detector, as recited in claim 1, for example. Likewise, regarding the alleged “praise,” to the extent that the purported statement in the press release can be considered “praise” at all (i.e., the disclosure of a system of “direct electron detection that enables the acquisition of low-noise images of delicate biological samples”), Patent Owner has not shown persuasively a nexus between “direct electron detection” or acquiring “low-noise images of delicate biological samples” and any of the claim features (e.g., “detecting the microscopy signal with an active pixel detector”). As described above, the evidence provided (i.e., the press release) does not recite an active pixel detector at all. We note that the cited press release also states that the statements contained therein are “forward-looking statements” that may be affected by “failure of the product or technology,” “unexpected technology problems,” or “other factors that could cause actual results to differ materially from the forward-looking statements” (Exhibit A, filed June 22, 2010, FEI Company, Press Release, 2009). Even assuming that Patent Owner demonstrates a nexus between the statement “direct electron detection that enables the 1 We note that Patent Owner also does not demonstrate persuasively that the press release discloses the use of the detector disclosed by either Kleinfelder or Turchetta. Appeal 2013-003261 Reexamination Control No. 95/001,313 Patent No. 7,262,411 B2 10 acquisition of low-noise images of delicate biological samples” (of the press release) and the claimed invention, Patent Owner does not show persuasively that such statements, in fact, constitute “praise” in view of further clarifying statements in the press release cautioning “failure of the product or technology,” “technology problems,” or “other factors” that may result in failure. One of ordinary skill in the art would not have understood statements cautioning failure of a product to be praise for the potentially failing product. We are not persuaded by Patent Owner’s arguments. The Request for Rehearing has been considered, but it is DENIED with respect to making any modifications to the original decision. Pursuant to 37 C.F.R. § 41.79(d), this decision is final for the purpose of judicial review. A party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. Appeal 2013-003261 Reexamination Control No. 95/001,313 Patent No. 7,262,411 B2 11 REHEARING DENIED alw Patent Owner: Greer, Burns & Crain 300 S. Wacker Drive 25 th Floor Chicago, IL 60606 Third Party Requester: Michael O. Scheinberg P.O. Box 164140 Austin, TX 78716-4140 Copy with citationCopy as parenthetical citation