Ex Parte 7262411 et al

Patent Trial and Appeal Board

Jun 26, 2014

95001313 (P.T.A.B. Jun. 26, 2014)

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
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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
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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
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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
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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.”
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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
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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
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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.
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Patent No. 7,262,411 B2

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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

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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