Ex Parte Ahner et al

Patent Trial and Appeal Board

Aug 31, 2017

14046596 (P.T.A.B. Aug. 31, 2017)

United States Patent and Trademark Office
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.
10-17434-00 6898
EXAMINER
BOLOGNA, DOMINIC JOSEPH
ART UNIT PAPER NUMBER
2877
MAIL DATE DELIVERY MODE
14/046,596 10/04/2013
105639 7590 09/01/2017
Duane Morris LLP (10/11) Seagate
IP Docketing
2475 Hanover Street
Palo Alto, CA 94304-1194
Joachim Walter Ahner
09/01/2017 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
Ex parte JOACHIM WALTER AHNER, DAVID M. TUNG,
SAMUEL KAH HEAN WONG, HENRY LUIS LOTT,
STEPHEN KEITH McLAURIN, MAISSARATH NASSIROU, and
FLORIN ZAVALICHE1
(Applicant: Seagate Technology LLC )
Appeal 2017-000316
Application 14/046,596
Technology Center 2800
Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
N. WHITNEY WILSON, Administrative Patent Judges.
HANLON, Administrative Patent Judge, concurring-in-part and dissenting-
in-part.
FRANKLIN, Administrative Patent Judge, for the majority.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Seagate Technology LLC,
Cupertino, CA. App. Br. 3
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Application 14/046,596
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1—20. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below:
1. An apparatus comprising:
a stage configured to hold an article;
a first photon emitter configured to emit photons having a
first wavelength into an internal region of the article and
causing the photons to internally reflect;
a second photon emitter configured to emit photons having
a second wavelength into the internal region of the article and
causing the photons to internally reflect;
a photon detector array configured to detect photons emitted
from the first and second photon emitters that are scattered from
features of the article; and
a computing device configured to detect features of the article
having a first size based on the scattered photons having the
first wavelength emitted from the first photon emitter and
features of the article having a second size based on the
scattered photons having the second wavelength emitted from
the second photon emitter.
The Examiner relies on the following prior art references as evidence
of unpatentability:
STATEMENT OF THE CASE
Dotan
Vokhmin
Warden et al.
(hereinafter “Warden”)
US 5,355,213
US 5,627,638
Oct. 11, 1994
May 6, 1997
US 2005/0141843 Al June 30, 2005
2
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Application 14/046,596
Chou et al. US 2012/0044346 A1 Feb. 23, 2012
(hereinafter “Chou”)
THE REJECTIONS
1. Claims 1—3, 8, and 9 are rejected under pre-AIA 35 U.S.C. § 102(b)
as being anticipated by Dotan.
2. Claim 4 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Dotan in view of Chou.
3. Claims 5—6 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Dotan in view of Vokhmin.
4. Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Dotan in view of Warden.
5. Claims 10 and 20 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Dotan in view of Chou.
6. Claim 11 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Dotan in view of Warden.
7. Claims 12—13 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Dotan in view of Vokhmin.
8. Claim 14 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Dotan in view of Warden.
9. Claims 15 and 18—19 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Dotan in view of Chou.
10. Claims 16—17 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Dotan in view of Vokhmin.
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Application 14/046,596
ANALYSIS
As an initial matter, to the extent that Appellant has presented
substantive arguments for the separate patentability of any individual claims
on appeal, we will address them separately consistent with 37 C.F.R.
§ 41.37(c)(l)(vii).
At dispute in this case is the claim interpretation of certain elements of
claim 1 (independent claim 15 contains similar language).2 These elements
are:
a first photon emitter configured to emit photons having a first
wavelength into an internal region of the article and causing the
photons to internally reflect;
a second photon emitter configured to emit photons having a
second wavelength into the internal region of the article and
causing the photons to internally reflect.
On the one hand, it is the Examiner’s position that the aforementioned
recitations do not require that the first wavelength is different from the
second wavelength. The Examiner admits that Dotan does not teach
emitting photons with different wavelengths. Ans. 3,4.
On the other hand, Appellants submit that claim 1 means that the first
wavelength is different from the second wavelength because of the
adjectives used in the claim. Appeal Br. 10. Reply Br. 2.
We note that the words of a claim must be given their “plain meaning”
unless the plain meaning is inconsistent with the Specification. The plain
2 The only other independent claim (claim 8) does not contain this
language, and we affirm claim 8 (and affirm rejections involving its
dependent claims 10, 12, 14, 20) for the reasons provided by the Examiner
in the record. Ans. 6—7.
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Application 14/046,596
meaning is the ordinary and customary meaning that would be given to the
term by one of ordinary skill in the art. The ordinary and customary
meaning of a term may be evidenced by a variety of sources, including “the
words of the claims themselves, the remainder of the specification, the
prosecution history, and extrinsic evidence concerning relevant scientific
principles, the meaning of technical term and the state of the art”. Phillips
v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). If extrinsic sources
evidence more than one definition for a term, the intrinsic record must be
consulted to choose the best meaning. See generally MPEP § 2111.01 (I)
and § 2111.01 (III). Intrinsic evidence includes the claim language,
specification and prosecution history.
In the instant case, it is not unreasonable to interpret the plain
meaning of the claim terms “a first wavelength” and “a second wavelength”
as implying distinct wavelengths, in view of the fact that different modifiers
are used to describe each wavelength. Furthermore, this interpretation is not
inconsistent with the Specification because an embodiment of the
Specification is emission of different light sources from respective photon
emitters. Spec. Tflf [0042—0043]. Thus, claim 1 is properly given this
interpretation. As such, because the Examiner admits that Dotan does not
teach emitting photons with different wavelengths, we agree with Appellants
that Dotan does not disclose the claimed subject matter.
We thus reverse Rejection 1, except with respect to claim 8. We
reverse Rejections 2-4. We affirm Rejection 5. We reverse Rejection 6.
We reverse Rejection 7, except with regard to claim 12. We affirm
Rejection 8. We reverse Rejections 9 and 10.
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DECISION
We reverse Rejection 1, except with respect to claim 8.
We reverse Rejections 2-4.
We affirm Rejection 5.
We reverse Rejection 6.
We reverse Rejection 7, except with regard to claim 12.
We affirm Rejection 8.
We reverse Rejections 9 and 10.
ORDER
AFFIRMED-IN-PART
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte JOACHIM WALTER AHNER, DAVID M. TUNG,
SAMUEL KAH HEAN WONG, HENRY LUIS LOTT,
STEPHEN KEITH McLAURIN, MAISSARATH NASSIROU, and
FLORIN ZAVALICHE
(Applicant: Seagate Technology LLC )
Appeal 2017-000316
Application 14/046,596
Technology Center 2800
Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
N. WHITNEY WILSON, Administrative Patent Judges.
HANLON, Administrative Patent Judge, concurring-in-part, dissenting-in-
part.
I respectfully concur in the reversal of the § 102(b) rejection of claim
1 and dissent in the reversal of the § 103(a) rejection of claim 15.
Claim 1 recites, in relevant part:
a computing device configured to detect features of the article
having a first size based on the scattered photons having the
first wavelength emitted from the first photon emitter and
features of the article having a second size based on the
scattered photons having the second wavelength emitted from
the second photon emitter. [Emphasis added.]
The Examiner finds:
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Application 14/046,596
Dotan discloses “detection of a contamination or flaw”.
Examples of the contamination or flaw that Dotan discloses
detection of are shown in Fig. 1 as “a scratch 4a, a dig 4b, or a
pit 4c”, (col. 5, lines 17-19). Each of these flaws inherently
have a size, as shown in Figure 1.
Ans. 6.
The Appellants argue:
[Detecting a flaw that inherently has a size . . . differs from
detecting features of the article having a first size and a second
size in the claimed fashion. For illustrative purposes, a mere
detection of a contamination or flaw, as disclosed by Dotan,
does not necessarily teach or suggest detection of features with
particular sizes, e.g., a first size and a second in the claimed
fashion.
App. Br. 11 (emphasis omitted).
Claim 1 recites that the computing device is configured to detect
features having a first size based on the scattered photons having the first
wavelength emitted from the first photon emitter and features having a
second size based on the scattered photons having the second wavelength
emitted from the second photon emitter. Thus, claim 1 recites that the size
of the feature detected is related to the wavelength of the scattered photons.
The Examiner does not direct us to any disclosure in Dotan describing such
a relationship. For that reason, 1 would reverse the § 102(b) rejection of
claim 1.
Claim 15, on the other hand, does not recite a computing device.
Claim 15 reads as follows, with emphasis added:
15. A method comprising:
emitting photons having a first wavelength from a first
photon emitter into an article from an edge of the article to
internally reflect the photons within the article;
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after emitting the photons having the first wavelength,
emitting photons having a second wavelength from a second
photon emitter into the article from the edge of the article to
internally reflect the photons within the article;
scattering the photons at a feature of the article; and
detecting the scattering with a photon detector array.
The majority interprets the terms “a first wavelength” and “a second
wavelength” as implying distinct (or different) wavelengths. In my opinion,
that interpretation is not the broadest reasonable interpretation in light of the
Appellants’ Specification. See In re Herz, 537 F.2d 549, 551 (CCPA 1976)
(“claims are given their broadest reasonable construction consistent with the
specification”).
The Appellants disclose:
The first photon emitter is configured to emit photons of a first
wavelength and the second photon emitter is configured to emit
photons of a second wavelength to allow the photon detector
array to detect different types of surface features of the article,
and the first and second wavelengths are different, in some
embodiments.
Spec. 1 84 (emphasis added).
Based on that disclosure, it is reasonable to infer that the Appellants
contemplated other embodiments wherein the first and second wavelengths
are the same.
Thus, giving the terms “first wavelength” and “second wavelength”
their broadest reasonable interpretation consistent with the Specification, I
would interpret “first wavelength” and “second wavelength” as
encompassing the same wavelength, whereby the designation “first
wavelength” and “second wavelength” correlates the wavelength with the
photon emitter (i.e., the first wavelength is emitted from the first photon
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emitter and the second wavelength is emitted from the second photon
emitter). See Ans. 4 (interpreting “‘first’ and ‘second’ as showing which
photons are emitted from which emitter but not necessarily showing that the
photons have a different wavelength”). For that reason, I would affirm the
§ 103(a) rejection of claim 15.
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