Ex Parte 7,729,528 et al

Patent Trial and Appeal Board

Dec 11, 2014

95001874 (P.T.A.B. Dec. 11, 2014)

MOD PTOL-90A (Rev.06/08)

APPLICATION NO./
CONTROL NO.
FILING DATE FIRST NAMED INVENTOR /
PATENT IN REEXAMINATION
ATTORNEY DOCKET NO.
95/001,874 01/19/2012 7,729,528

EXAMINER
MERCHANT & GOULD PC
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
Hughes, Deandra
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE

12/15/2014 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.

UNITED STATES DEPARTMENT OF COMMERCE
U.S. Patent and Trademark Office
Address : COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________________________________________________________________________________

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

RUDOLPH TECHNOLOGIES, INC.
Patent Owner, Appellant, and Cross-Respondent

v.

CAMTEK, LTD.
Requester, Respondent, and Cross-Appellant
____________

Appeal 2014-007999
Inter Partes Reexamination Control 95/001,874
United States Patent 7,729,528 B2
Technology Center 3900
____________

Before JOHN A. JEFFERY, STEPHEN C. SIU, and DAVID M. KOHUT,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

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DECISION ON APPEAL
Patent Owner appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s
decision to reject claims 1–3, 6, 7, 9–11, 14, 17–19, 30–34, and 36.
Requester cross-appeals the Examiner’s decision declining to reject claims
4, 5, 8, 12, 13, 15, 16, 20–29, 35, and 37–53.
We have jurisdiction under 35 U.S.C. §§ 134 and 315, and we heard
the appeal on December 3, 2014. We affirm-in-part, and newly reject claims
30–34 and 36 under 37 C.F.R. § 41.77(b).

STATEMENT OF THE CASE
This proceeding arose from a request for inter partes reexamination
filed on behalf of Requester, on January 19, 2012, of United States Patent
7,729,528 B2 (“the ’528 patent”), issued to O’Dell on June 1, 2010.
The ’528 patent describes an automated wafer defect inspection
system. In one aspect, a computer system (1) develops a model of known
good quality substrates, and (2) compares other substrates to the model to
determine defects. See generally ’528 patent, col. 7, ll. 1–54; col. 13, ll. 4–
24; col. 16, ll. 38–45; Figs. 1–5. Claim 1 is illustrative of the invention and
is reproduced below:
1. An automated system for inspecting a substrate, the system
comprising:
a wafer test plate;
a substrate provider for providing a substrate to the test plate, wherein
the substrate is selected from a group consisting of a whole patterned wafer,
a sawn patterned wafer, a broken patterned wafer, at least one portion of a
patterned wafer, an individual die, at least one portion of an individual die, a
plurality of individual die, at least one portion of a plurality of individual
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die, multiple die in a waffle pak, a multi-chip module (MCM), a JEDEC
tray, and an Auer boat;
a visual inspection device for visual inputting of a plurality of known
good quality substrates having a user defined level of quality during training
and for visual inspection of other unknown quality substrates during
inspection;
an illuminator for providing short pulses of light to each of the
unknown quality substrates during movement between the substrate and the
visual inspection device; and
a microprocessor having processing and memory capabilities for
developing a model of good quality substrate and comparing unknown
quality substrates to the model.

RELATED PROCEEDINGS
This appeal is said to be related to various pending proceedings. In a
Notice of Concurrent Proceedings filed November 18, 2014, Patent Owner
cites two district court cases in connection with the ’528 patent, one of
which is currently pending and stayed. In the same notice, Patent Owner
cites four cases in connection with U.S. Patent 6,826,298, the parent of the
’528 patent. One of those cases is a district court case, and the others
involve appeals to the U.S. Court of Appeals for the Federal Circuit. Two of
those three appeals (Nos. 2012-1681 and 2013-1023) were consolidated and
decided. See August Tech. Corp. v. Camtek, Ltd., 542 Fed. Appx. 985 (Fed.
Cir. 2013) (unpublished). The other appeal (No. 2010-1458) has also been
decided. See August Tech. Corp. v. Camtek, Ltd., 655 F.3d 1278 (Fed. Cir.
2011). Accord PO App. Br. 3, 44–45; TPR Resp. Br. 3; TPR App. Br. 3; PO
Resp. Br. 3 (citing similar cases in connection with related proceedings).
1

1
Throughout this opinion, we refer to (1) the Right of Appeal Notice mailed
February 1, 2013 (“RAN”); (2) Patent Owner’s Appeal Brief filed April 30,
2013; (3) Requester’s Respondent Brief filed May 28, 2013 (“TPR Resp.
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THE APPEALED REJECTIONS AND PROPOSED REJECTIONS
Patent Owner appeals the Examiner’s rejecting the claims as follows:
Claims 1–3, 6, 7, 9–11, 14, and 17–19 under 35 U.S.C. § 103(a) as
obvious over Alumot (US 5,982,921; Nov. 9, 1999) and Moriya (US
5,298,963; Mar. 29, 1994) (“Issues C, L, and P”).
2
RAN 6–9.
3

Claims 30–34 and 36 under 35 U.S.C. § 102(b)
4
as anticipated by
Alumot (“Issues A and Q”). RAN 9–11.

Requester cross-appeals the Examiner’s not rejecting the claims as
follows:
Claims 32, 33, 35, and 36 under 35 U.S.C. § 102(b) as anticipated by
Moriya (“Issue B”).

Br.”); (4) the Examiner’s Answer mailed July 31, 2013 (“Ans.”)
(incorporating the RAN by reference); (5) Requester’s Cross-Appeal Brief
filed May 10, 2013 (“TPR App. Br.); (6) Patent Owner’s Respondent Brief
filed June 10, 2013 (“PO Resp. Br.”); and (7) Requester’s Rebuttal Brief
filed August 30, 2013 (“TPR Reb. Br.”).
2
For clarity, we refer to the letter-based issue identifiers used by the
Examiner on page 6 of the Examiner’s order granting/denying request for
inter partes reexamination mailed March 26, 2012. Accord TPR App. Br.
8–10 (referring to these letter-based issue identifiers).
3
Although the Examiner rejects three subsets of these claims separately as
obvious over Alumot and Moriya, we nonetheless consolidate those
rejections here for clarity and brevity. We likewise do the same for the
anticipation rejection.
4
Alumot issued less than one year before the filing date of the parent ’298
patent (April 29, 2000) of which the ’528 patent is a continuation, and,
therefore, does not technically qualify as prior art under § 102(b).
Nevertheless, it is undisputed that Alumot otherwise qualifies as prior art;
accordingly, we treat any error in this regard as harmless.
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Claims 4, 5, 8, 12, 13, 15, 16, 20–29, 37–39, 41, and 43–53 under 35
U.S.C. § 103(a) as obvious over Alumot and Moriya (“Issues C, D, E, H, J,
L, M, N, O, and P”).
Claims 40 and 42 under 35 U.S.C. § 103(a) as obvious over Alumot,
Moriya, and Kobayashi (US 5,245,671; Sept. 14, 1993) (“Issues F and G”).
Claims 43–53 under 35 U.S.C. § 103(a) as obvious over Moriya
(“Issues I and K”).

I. PATENT OWNER’S APPEAL
THE EXAMINER’S OBVIOUSNESS REJECTION
Regarding independent claim 1, the Examiner finds that Alumot’s
automated substrate inspection system includes, among other things, (1) a
visual inspection device for visual inputting plural known good quality
substrates having a user-defined level of quality during training, and (2) a
microprocessor having processing and memory capabilities for developing a
model of good quality substrate, and comparing unknown quality substrates
to the model. RAN 6. These features are said to be taught by the
functionality associated with Alumot’s die-to-die comparison. RAN 3–6.
The Examiner also cites Moriya for teaching the recited illuminator, and
concludes that claim 1 would have been obvious over the cited references’
collective teachings. RAN 6. Requester concurs with these findings and
conclusions. See TPR Resp. Br. 6–14.
Patent Owner argues that Alumot’s die-to-die comparison does not
train a model using plural known good quality substrates as claimed, but
rather uses a single die as a reference for a one-to-one comparison. PO App.
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Br. 30–35. According to Patent Owner, the claim requires using multiple
images to train the model—a requirement that is said to be supported by the
District Court’s interpretation of the term “training.” PO App. Br. 33, 35.

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Alumot and Moriya collectively would have taught or suggested an
automated substrate inspection system with a (1) visual inspection device for
visual inputting plural known good quality substrates having a user-defined
level of quality during training, and (2) microprocessor having processing
and memory capabilities for developing a model of good quality substrate,
and comparing unknown quality substrates to the model?

ANALYSIS
Claims 1–3, 6, and 7
We begin by noting that, unlike independent claim 9, claim 1 does not
recite training a model using plural known good substrates as Patent Owner
contends. See PO App. Br. 31–35. Rather, claim 1 recites, in pertinent part,
(1) a visual inspection system for visual inputting plural known good quality
substrates during training, and (2) a microprocessor for developing a model
of good quality substrate and comparing unknown quality substrates to the
model. Although the microprocessor must be able to develop a model
according to the claim, the recited model is not tied directly to plural known
good quality substrates—a fact underscored by the singular term “substrate”
recited in connection with the model as noted above. Nor does claim 1 tie
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the model to the training process associated with the visual inspection
device’s recited function.
The Federal Circuit’s interpretation of a similar limitation reciting
“visual inputting a plurality of known good quality wafers during training”
is telling in this regard. See August Tech., 655 F.3d at 1283 (emphasis
added). There, the court noted that “[t]his limitation requires multiple good
wafers to be used to train the system—so the inspection device will know a
flawed wafer when it sees one.” Id. (emphases added). Although the court
found that multiple wafers are needed to train the system, the court did not
state explicitly that they are needed to train the recited model, despite the
claim at issue in that case having a microprocessor limitation similar to that
at issue here, albeit in connection with provided wafers versus substrates in
the present appeal.
5,6
Notably, the court’s finding pertains explicitly to the
inspection device identifying flawed wafers—not the microprocessor that
develops the model and compares unknown quality wafers to the model in a
manner similar to the recited microprocessor limitation at issue here. See id.
Therefore, Patent Owner’s contentions that claim 1 requires training a model
are not commensurate with the scope of the claim.

5
Claim 1 in August Tech. recited, in pertinent part, (1) “a visual inspection
device for visual inputting a plurality of known good quality wafers during
training and for visual inspection of other unknown quality wafers during
inspection,” and (2) “a microprocessor having processing and memory
capabilities for developing a model of good quality wafer, and comparing
unknown quality wafers to the model.” August Tech., 655 F.3d at 1282.
6
By the very terms of claim 1 in the present appeal, a “substrate” is a
“wafer,” for a “substrate” consists of, among other things, (1) a whole
patterned wafer, (2) a sawn patterned wafer, (3) a broken patterned wafer, or
(4) at least one portion of a patterned wafer.
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But even if claim 1 required such training (which it does not), Alumot
still at least suggests the functionality of the recited visual inspection device
and microprocessor. We reach this conclusion even if we were to construe
the term “training” as “examining substrates to develop a model of a good
quality substrate” in a manner commensurate with Patent Owner’s proffered
definition of “training” in the context of wafers. See PO App. Br. 33, 35
(citing district court definition of “training” from related litigation).
Notably, it is undisputed that Alumot compares one die’s pattern,
serving as the inspected pattern, with light pattern of at least one other die,
serving as a reference pattern, to determine the likelihood of a defect being
present in the inspected pattern. PO App. Br. 34 (citing Alumot, col. 8, ll.
36–43); TPR Resp. Br. 8–9 (same). Accord RAN 6 (citing Alumot col. 8, ll.
36–43 in connection with the disputed visual inspection device and
microprocessor limitations).
Although Patent Owner and Requester acknowledge that Alumot’s
comparing one die’s pattern with a light pattern of at least one other die can
involve multiple dies, both parties interpret this multi-die comparison
differently. According to Patent Owner, Alumot suggests multiple one-to-
one die comparisons when considered in light of Alumot’s passage in
column 9, lines 3 to 10. PO App. Br. 34. Requester, however, interprets
Alumot as teaching an approach where one or more light patterns can serve
as a reference pattern that is compared with the inspected die. TPR Resp.
Br. 9.
Despite these divergent views of Alumot’s multi-die comparison,
when considered in context of the various cited passages, Alumot does not
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indicate clearly whether this multi-die comparison involves (1) multiple one-
to-one die comparisons as Patent Owner contends, or (2) comparing multiple
patterns collectively to an inspected die as Requester contends. At best, the
passage is ambiguous in this regard.
Nevertheless, even assuming, without deciding, that Alumot
contemplates multiple one-to-one die comparisons as Patent Owner argues,
Alumot at least suggests the other alternative, namely comparing multiple
patterns collectively to an inspected die under Requester’s interpretation.
That is, skilled artisans would understand that there are only two
possibilities to compare a die’s pattern with that of multiple other dies in
Alumot: the comparison is either done individually on a die-by-die basis
(i.e., multiple one-to-one comparisons) or collectively (i.e., plural-to-one
comparison). Given these two possibilities, we find that the weight of the
evidence on this record favors the Examiner’s and Requester’s position, at
least to the extent that Alumot at least suggests that training a model with
plural known good quality substrates, where the model is used as a basis for
comparison, would have at least been an obvious variation given Alumot’s
multi-die comparison. We reach the same conclusion regarding the
functionality of the visual inspection device and microprocessor recited in
claim 1 even assuming, without deciding, that the recited model that the
microprocessor develops is trained using plural known good quality
substrates under Patent Owner’s interpretation.
Therefore, we are not persuaded that the Examiner erred by rejecting
claim 1 as obvious over Alumot and Moriya, and dependent claims 2, 3, 6,
and 7 not argued separately with particularity.
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Claims 9–11, 14, and 17–19
We also sustain the Examiner’s obviousness rejection of claims 9–11,
14, and 17–19 over Alumot and Moriya. RAN 7–9. Despite nominally
arguing these claims separately, Patent Owner reiterates similar arguments
made in connection with claim 1 that we find unpersuasive for the reasons
previously discussed. See PO App. Br. 36.
Furthermore, Patent Owner’s arguments regarding the cited prior art
allegedly not including a controller for comparing pixel data for unknown
quality substrates to a model of a good quality substrate in connection with
independent claim 14 are unavailing and not commensurate with the scope
of the claim for an additional reason. As Requester indicates, claim 14
recites nothing concerning forming a reference model through training using
multiple known quality substrates, let alone training a model using multiple
real images from such substrates. TPR Resp. Br. 6, 13, 15 (noting these
points). Accordingly, Patent Owner’s arguments regarding claims 14 and
17–19 are likewise unpersuasive for this additional reason.

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THE EXAMINER’S ANTICIPATION REJECTION
Claims 30 and 31
We will not, however, sustain the Examiner’s anticipation rejection of
independent claim 30 reciting, in pertinent part, creating a reference model
based on first and second images collected from respective reference known
quality substrates.
The Examiner finds that Alumot collects first and second images
collected from respective reference known quality substrates, citing identical
passages from Alumot for teaching these image-collection limitations. RAN
9–10 (citing Alumot, col. 8, ll. 36–52; col. 24, ll. 7–17). As noted above,
the cited passage from Alumot’s column eight pertains to a die-to-die
comparison where one die’s pattern, serving as the inspected pattern, is
compared with the light pattern of at least one other die, serving as a
reference pattern, to determine the likelihood of a defect being present in the
inspected pattern. See Alumot, col. 8, ll. 36–52.
But the cited passage from Alumot’s column 24 does not pertain to a
die-to-die comparison, but rather to a repetitive-pattern comparison, namely
comparing repetitive pattern units on the same die or different article. See
Alumot, col. 24, ll. 1–17; col. 27, ll. 45–51 (distinguishing data generated
from real images in another like article in the die-to-die comparison from
another like pattern in the same article in the repetitive-pattern comparison).
Accord Request filed Jan. 19, 2012 (“Request”), at 134–135 (citing
Alumot’s repetitive-pattern comparison in connection with the image
collection limitations).
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The Examiner’s reliance on two different types of comparisons in
Alumot to teach the same image collection elements in claim 30 is
problematic for anticipation which must disclose necessarily the elements
arranged as claimed. See Net MoneyIn, Inc. v. Verisign, Inc., 545 F.3d 1359,
1369 (Fed. Cir. 2008); see also id. at 1371 (noting that it is insufficient for
anticipation for a cited prior art reference to include multiple, distinct
teachings that the artisan might somehow combine to achieve the claimed
invention). Id. at 1371. The Examiner’s reliance on these different
embodiments also conflicts with the Examiner’s exclusive reliance on
Alumot’s die-to-die comparison—not the repetitive-pattern comparison. See
RAN 3–4 (“[T]he ‘repetitive pattern’ comparison and the ‘die-to-database’
comparison use synthetic images . . . .‘Die-to-die’ comparison, however,
uses real images and as such, the response to arguments set forth in this
action will be limited to ‘die-to-die’ comparison, which is the basis of the
rejections at issue.”) (emphasis added).
But leaving these inconsistencies aside, we also find problematic the
Examiner’s reliance on Alumot’s column 8, lines 36 to 43 for necessarily
creating a reference model based on the first and second images as claimed.
As noted previously, Alumot does not indicate clearly whether the multi-die
comparison in this passage involves (1) multiple one-to-one die comparisons
as Patent Owner contends, or (2) comparing multiple patterns collectively to
an inspected die as Requester contends. At best, the passage is ambiguous in
this regard. Although creating a model based on two images would have
been obvious from this passage as noted above and as indicated in our new
ground of rejection, infra, we cannot say that the cited passages necessarily
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disclose that feature—a crucial requirement for inherent anticipation. See In
re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“Inherency . . . may not
be established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.”)
(citations omitted). Patent Owner’s contention that Alumot does not create a
model based on two images (PO App. Br. 37) are, therefore, persuasive to
the extent that Alumot does not necessarily disclose that feature.
Accordingly, we are persuaded that the Examiner erred in rejecting
independent claim 30 as anticipated by Alumot, and dependent claim 31 for
similar reasons.

Claims 32–34
We also do not sustain the Examiner’s rejection of independent claim
32 reciting, in pertinent part, a means for comparing the captured images to a
reference model to detect defects in the substrate. RAN 12. As Patent
Owner indicates (PO App. Br. 37), this means-plus-function limitation must
be construed to cover the corresponding structure in the Specification and its
equivalents. See In re Donaldson Co., Inc., 16 F.3d 1189, 1193 (Fed. Cir.
1994) (en banc). Citing various passages from the ’528 patent’s
Specification, Patent Owner construes the recited “means for comparing” to
a computer system having a processor and memory capabilities for (1)
saving the inputted good die, (2) developing a model therefrom, and (3)
comparing or analyzing other die in comparison to the model. PO App. Br.
37 (citing Spec. 7:13–18; 16:38–45). Accord Request, at 52 (citing Spec.
7:13–17 in connection with the recited means for comparing limitation).
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In light of this acknowledged corresponding structure, we find the
Examiner’s position problematic to the extent that Alumot’s computer
system does not necessarily disclose this corresponding structure or its
equivalents. As noted above, a key aspect of the ’528 patent’s computer
system is its capability to develop a model from saved inputted good die.
See Spec. 7:13–18. Notably, this inputted good die must be at least two
such die to create the model. See Spec. 13:13–19 (noting that although no
minimum or maximum number good die is required to create a model,
“definitionally” at least two such die are required).
Although the claim recites a means for comparing captured images to
a reference model as Requester indicates (TPR Resp. Br. 6, 16), the
corresponding structure to this comparing means nonetheless requires saving
at least two images and deriving the reference model from those images. As
such, we find that Alumot does not necessarily disclose that feature for the
reasons noted above; accordingly, we find Patent Owner’s contentions
persuasive to that extent.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 32 as anticipated by Alumot, and dependent claims 33, 34, and 36 for
similar reasons.

II. NEW GROUNDS OF REJECTION
We newly reject claims 30–34 and 36 under § 103(a) as obvious over
Alumot.
Regarding claims 30 and 31, we adopt the Examiner’s undisputed
findings regarding Alumot’s die-to-die comparison as teaching or suggesting
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all recited elements. See RAN 9–10. Although Alumot’s column 8, lines 36
to 43 does not necessarily create a reference model based on the first and
second images as recited in claim 30, it nonetheless at least suggests as
much. As noted previously, Alumot’s column 8, lines 36 to 43 indicates that
one die’s pattern is compared with the light pattern of at least one other die
serving as the reference pattern. In light of the multi-die comparison in this
passage, creating a model based on two images would have been at least an
obvious variation for the reasons indicated previously.
Regarding claims 32–34 and 36, we adopt the Examiner’s undisputed
findings regarding Alumot’s die-to-die comparison as teaching or suggesting
all recited elements. See RAN 11. We also adopt Patent Owner’s
construction of the recited “means for comparing” as a computer system
having a processor and memory capabilities for (1) saving the inputted good
die, (2) developing a model therefrom, and (3) comparing or analyzing other
die in comparison to the model. PO App. Br. 37 (citing Spec. 7:13–18;
16:38–45). Accord Request, at 52 (citing Spec. 7:13–17 in connection with
the recited means for comparing limitation).
As noted above, a key aspect of the ’528 patent’s computer system is
its capability to develop a model from saved inputted good die. See Spec.
7:13–18. Notably, this inputted good die must be at least two such die to
create the model. See Spec. 13:13–19 (noting that although no minimum or
maximum number good die is required to create a model, “definitionally” at
least two such die are required).
Although the claim recites a means for comparing captured images to
a reference model as Requester indicates (TPR Resp. Br. 6, 16), the
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corresponding structure to this comparing means nonetheless requires saving
at least two images and deriving the reference model from those images.
Although Alumot does not necessarily disclose that feature as noted above,
we nonetheless find that Alumot at least suggests as much, particularly in
view of the multi-die comparison described in Alumot’s column 8, lines 36
to 43 noted above.

III. THE CROSS-APPEAL
As noted above, Requester cross-appeals the Examiner’s not rejecting
the claims as follows:
Claims 32, 33, 35, and 36 under 35 U.S.C. § 102(b) as anticipated by
Moriya (“Issue B”).
Claims 4, 5, 8, 12, 13, 15, 16, 20–29, 37–39, 41, and 43–53 under 35
U.S.C. § 103(a) as obvious over Alumot and Moriya (“Issues C, D, E, H, J,
L, M, N, O, and P”).
Claims 40 and 42 under 35 U.S.C. § 103(a) as obvious over Alumot,
Moriya, and Kobayashi (“Issues F and G”).
Claims 43–53 under 35 U.S.C. § 103(a) as obvious over Moriya
(“Issues I and K”). TPR App. Br. 8–10.
The Examiner, however, denied reexamination with respect to these
particular grounds and issues, finding that the reexamination request did not
establish a reasonable likelihood that Requester would prevail (RLP) with
respect to claims 4, 5, 8, 12, 13, 15, 16, 20–29, 35, and 37–53.
7
Order

7
Specifically, the Examiner found that the request established an RLP with
respect to claims 1–3, 6, 7, 9–11, 14, 17–19, 30–34, and 36 of the ’528
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Granting/Denying Request for Inter Partes Reexamination, mailed Mar. 26,
2012 (“Reexam. Order”), at 2, 6–7.
Requester then petitioned to order reexamination of these claims,
seeking supervisory review of the Examiner’s order denying the
reexamination request for these claims. Petition filed Apr. 13, 2012. Ten
months later, Requester filed another petition requesting the Office decide
the first petition. Petition filed Feb. 13, 2013. The present cross-appeal
followed these petitions, Requester filing a notice of cross-appeal on March
13, 2013 and cross-appeal brief on May 10, 2013, and Patent Owner filing a
respondent brief on June 10, 2013.
About two weeks later, Requester’s first petition was denied, and the
second petition dismissed as moot in view of this denial. See Decision on
Petition Under 37 C.F.R. 1.927 and 1.181 mailed June 25, 2013 (“June 2013
Petition Decision”); Decision Dismissing Petition Filed Under 37 C.F.R.
§ 1.182 mailed July 8, 2013. On August 30, 2013, Requester filed a rebuttal
brief.
Despite acknowledging that determinations by the USPTO Director to
deny reexamination are final and non-appealable under 35 U.S.C. § 312(c),
Requester contends that because the first petition was not decided before
filing the Notice of Cross-Appeal, there was no final and non-appealable

patent, but failed to establish an RLP with respect to claims 4, 5, 8, 12, 13,
15, 16, 20–29, 35, and 37–53. Reexam. Order at 2. Although the
Examiner’s summary of the claims where Requester failed to establish an
RLP omits claims 32, 33, and 36, the Examiner nonetheless found that
Requester failed to establish an RLP with respect to these claims regarding
the proposed anticipation rejection over Moriya (“Issue B”). Reexam. Order
at 6.
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decision at that time. TPR App. Br. 10–11; TPR Reb. Br. 2–4. As such,
Requester reasons, the Board was the only opportunity to review the
Examiner’s decision not to reject the claims as proposed. See id.
Requester’s reasoning is unpersuasive. First, merely because a
pending petition has not yet been decided when an appeal is filed does not
automatically transform a petitionable matter into an appealable matter. Nor
has Requester provided any authority to support such a proposition. As
Patent Owner indicates (PO Resp. Br. 8), any remedy for such petitionable
matters is with the Director—not the Board. See MPEP § 1201 (“The Board
will not ordinarily hear a question that should be decided by the Director on
petition, and the Director will not ordinarily entertain a petition where the
question presented is a matter appealable to the Board.”).
Simply put, there is no final decision favorable to patentability for
Requester to appeal; as such, we lack jurisdiction to decide such issues. See
35 U.S.C. §§ 134(c); 312(c); see also 37 C.F.R. §§ 41.61(c), 1.927. It is
well settled that “the Director’s determination that an issue does not raise a
substantial new question of patentability is not a decision favorable to
patentability. Lack of a substantial new question of patentability is not a
favorable decision on patentability.” Belkin Int’l, Inc. v. Kappos, 696 F.3d
1379, 1383 (Fed. Cir. 2012). This is because “the decision on the substantial
new question preceded the actual reexamination, and merely raised a
‘question’ to be answered.” Id. Although this holding applies to the former
substantial new question of patentability standard for instituting
reexamination, it nonetheless applies equally to the newer RLP standard, for
the RLP determination likewise precedes reexamination.
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To be sure, the Examiner’s determination refusing to order inter
partes reexamination is final and nonappealable if (1) no petition is filed, or
(2) the petition decision affirms that an RLP was not established—neither of
which was satisfied when the notice of cross-appeal was filed as Requester
indicates. TPR Reb. Br. 2 (citing 37 C.F.R. § 1.927). We further recognize
that the Requester in Belkin did not file a petition, unlike Requester here.
TPR Reb. Br. 3 (citing Belkin, 696 F.3d at 1385). Nevertheless, the fact
remains that the Examiner’s denying reexamination with respect to the
particular grounds and issues noted above is not a favorable patentability
decision appealable to this Board, despite an associated undecided petition
when the cross-appeal was filed. That this petition was later denied in all
respects only underscores the lack of a favorable patentability decision
appealable to this Board. See June 2013 Petition Decision.
Because we lack jurisdiction to decide the grounds and issues raised
in Requester’s cross-appeal, we need not address their merits.

CONCLUSION
Under § 103, the Examiner did not err in rejecting claims 1–3, 6, 7, 9–
11, 14, and 17–19. The Examiner, however, erred in rejecting claims 30–34
and 36 under § 102. Accordingly, the Examiner’s decision rejecting claims
1–3, 6, 7, 9–11, 14, 17–19, 30–34, and 36 is affirmed-in-part.
We newly reject claims 30–34 and 36 under § 103.
We lack jurisdiction to decide the cross-appeal.

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DECISION
The Examiner’s decision rejecting claims 1–3, 6, 7, 9–11, 14, 17–19,
30–34, and 36 is affirmed-in-part, and we newly reject claims 30–34 and 36
under § 103.
Under 37 C.F.R. § 41.77(b), our decision includes a new ground of
rejection. That section provides that “a new ground of rejection . . . shall not
be considered final for judicial review.” That section also provides that
Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE
DECISION, must exercise one of the following two options with respect to
the new grounds of rejection to avoid termination of the appeal proceeding
as to the rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such
a response must be either an amendment of the claims so
rejected or new evidence relating to the claims so rejected, or
both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the
same record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
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must be in accordance with 37 C.F.R. § 41.79(c)-(d), respectively. Under 37
C.F.R. § 41.79(e), the time periods for requesting rehearing under paragraph
(a) of this section, for requesting further rehearing under paragraph (c) of
this section, and for submitting comments under paragraph (b) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-44 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
37 C.F.R. § 41.77

alw

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Patent Owner:

Merchant & Gould PC
P.O. Box 2903
Minneapolis, MN 55402-0903

Third-Party Requester:

Kevin C. Amendt
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
One Financial Center
Boston, MA 02111