Ex Parte Biberger et al

Patent Trial and Appeal BoardNov 30, 2018

13741677 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/741,677 01/15/2013 26161 7590 12/04/2018 FISH & RICHARDSON P.C. (BO) P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 FIRST NAMED INVENTOR Josef Biberger 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 23505-0040001 1053 EXAMINER BAE, GYOUNGHYUN ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 12/04/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): P ATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEF BIBERGER and RALPH PUL WEY Appeal2018-001827 Application 13/741,677 1 Technology Center 3700 Before LINDA E. HORNER, JOHN C. KERINS, and ALYSSA A. FINAMORE, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's rejections of claims 1-10 and 14-20. Final Office Action (February 28, 2017) ("Final Act."). 2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). 1 Carl Zeiss Microscopy GmbH ("Appellant") is the applicant as provided for under 37 C.F.R. Â§ 1.46 and is the real party in interest. Appeal Brief (July 13, 2017) ("Appeal Br."), at 1. 2 Claims 11-13 are withdrawn from consideration. Final Act. 1. Appeal 2018-001827 Application 13/741,677 The Examiner rejected some of the claims as failing to comply with the enablement requirement because the claim scope is broader than the scope of enablement. The Examiner rejected all of the claims as unpatentable over combined prior art teachings. As to enablement, Appellant argues that the rejection is defective because the Examiner failed to identify the essential matter missing from the claims. As to obviousness, Appellant contests the Examiner's stated reasons for combining the prior art in the manner claimed. As explained below, we agree with Appellant that the Examiner failed to show that the claims lack adequate enabling disclosure for the claim scope and that the claimed subject matter would have been obvious in view of the prior art teachings. Thus, we REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter relates to a method to raster scan a surface of an object using a particle beam. Specification (January 15, 2013) ("Spec."), 1: 13-15. Claim 1 is the sole independent claim on appeal and is reproduced below. 1. A method of raster scanning a surface of an object, the method comprising: using a particle beam source that generates an output consisting of a single particle beam; determining a basic set of raster points within the surface; after determining the basic set of raster points within the surface, determining a boundary of a two-dimensional surface portion of the surface of the object, wherein the entire two-dimensional surface portion is to be raster scanned by the single particle beam; determining an ordered set of raster points based on a shape of the two-dimensional surface portion by sequentially ordering all raster points of the basic set which are located within 2 Appeal 2018-001827 Application 13/741,677 the two-dimensional surface portion, wherein for more than 50% of all pairs of raster points Pi and Pj of the ordered set, a distance between raster point Pi and a respective closest edge of the boundary of the two-dimensional surface portion is smaller than a distance between raster point Pj and a respective closest edge of the boundary of the two-dimensional surface portion, wherein the raster point Pi is earlier in the ordered set than the raster point Pj; and sequentially directing the single particle beam to the ordered set of raster points within the two-dimensional surface portion in an order that is the same as an order of the raster points in the ordered set of raster points, or in an order that is reversed of the order of the raster points in the ordered set of raster points. Appeal Br. 13 (Claims Appendix). EVIDENCE Chao US 2002/0066863 Al June 6, 2002 Nair US 2002/0146172 Al Oct. 10, 2002 Nelson US 6,947,057 B2 Sept. 20, 2005 Ward US 2009/0179161 Al July 16, 2009 Sandstrom US 2010/0127431 Al May 27, 2010 Brailove US 2010/0317140 Al Dec. 16, 2010 Lang US 2012/0112089 Al May 10, 2012 REJECTIONS The Final Office Action includes the following rejections: 1. Claims 1-10 are rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the enablement requirement. 2. Claims 1-8, 14, and 15 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Sandstrom, Lang, Nelson, and Nair. 3. Claims 9 and 10 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Sandstrom, Lang, Nelson, Nair, and Brailove. 4. Claims 16-19 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Sandstrom, Lang, Nelson, Nair, and Ward. 3 Appeal 2018-001827 Application 13/741,677 5. Claim 20 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Sandstrom, Lang, Nelson, Nair, and Chao. ANALYSIS Enablement The Examiner determined that the scope of claims 1-10 is broader than the scope of enablement of the disclosure because the claims omit "essential matter." Final Act. 6. The Examiner explained that claim 1 recites "a basic set of raster points within the surface" but does not describe a "relationship between the two elements for the invention to properly operate." Id. at 7. The Examiner suggested Appellant amend the claims to define the basic set of raster points by adding the text shown in underlining and deleting the text shown in strikethrough below: Id. a basic set of raster points distributed with equal or random spacing between to be sequentially scanned in an ordered fashion for all the raster points within the basic set without any repeated scanning within the a portion of a surface on a workpiece object for thermos-optically removing material from or depositing a reaction product material of a process gas on the portion of the surface on the workpiece object by optically generating the single particle beam on the raster points. We agree with Appellant that the Examiner has not made clear what portion of claim 1 corresponds to "the two elements" referenced in the rejection or what type of relationship is required between these elements for the invention to operate properly. Appeal Br. 3. We infer from the Examiner's proposed amendment that "the two elements" refer to two raster points within the claimed basic set. See also Examiner's Answer (October 19, 2017) ("Ans."), at 15 (discussing that the claimed "ordered set of raster 4 Appeal 2018-001827 Application 13/741,677 points" requires at least two points to be ordered). The Examiner's proposed amendment does not further define, however, the relationship between these raster points. The Examiner has not explained adequately why or how the claim scope needs to be narrowed to recite a particular relationship between the raster points within the basic set of raster points in order for the method of claim 1 to operate properly. Further, the Examiner's position is not supported by Appellant's disclosure. The Specification describes a variety of configurations of the raster points. In one exemplary embodiment, the raster points of the basic set are arranged in a regular two-dimensional rectangular lattice, and in other embodiments, the raster points are not arranged in a regular two-dimensional rectangular lattice, e.g., a hexagonal lattice. Spec. 6: 18-7:6; see also Figs. 2, 6 (rectangular lattice), Fig. 10 (hexagonal lattice). The Specification also describes that the distances between adjacent raster points can be randomly varied. Id. at 7:6-9. The Specification does not describe that a particular relationship between raster points of the basic set is critical or necessary in order for the method of claim 1 to be operable. Thus, the Examiner has not supported adequately the rejection based on the scope of enablement, and we do not sustain the rejection of claims 1-10 under 35 U.S.C. Â§ 112, first paragraph. Obviousness The Examiner found that Sandstrom discloses a method of raster scanning a surface using multiple particle beams. Final Act. 8. The Examiner found that Sandstrom does not disclose "using a single particle beam source that generates an output consisting of a single particle beam." Id. at 10 ("Sandstrom [sic] is silent regarding a single particle beam."). The 5 Appeal 2018-001827 Application 13/741,677 Examiner found that Lang discloses a particle beam device in the form of a scanning electron microscope that generates a single particle beam. Id. The Examiner determined that it would have been obvious to modify Sandstrom by replacing the multiple particle beams of Sandstrom with the particle beam device of Lang "in order 'Using a deflection device,' for 'the primary electron beam' to be 'guided in a raster-type fashion over a surface of the sample to be examined."' Id. at 10-11 (quoting Lang ,r 3). In the response to arguments portion of the Final Office Action, the Examiner explained that the proposed modification would make Sandstrom's device and control "simpler and economic compromising the productivity." Final Act. 2. The Examiner's rejection provides an explanation about how one having ordinary skill in the art would implement the proposed modification, but does not provide an adequate explanation about why one having ordinary skill in the art would have been led to make this proposed modification. As noted by Appellant, Sandstrom is directed to "methods to scan workpieces with large arrays [ of light sources] while preserving the scaling of throughput proportional to array size, even for very large arrays." Appeal Br. 5-6 ( emphasis omitted) ( quoting Sandstrom ,r 2 ). Although using a single particle beam might be simpler, using only a single beam in place of a large array of light sources frustrates Sandstrom's goal of achieving high throughput. The Examiner also found Lang discloses that a single scanning electron microscope "is advantageous over usage of a large array of electron beam devices in scanning 'a raster pattern over the sample 114. "' Ans. 18 ( citing Land ,r 79). Although paragraph 79 of Lang discusses using the primary electron beam of the scanning electron microscope to scan in a 6 Appeal 2018-001827 Application 13/741,677 raster pattern over the sample, it does not teach that using the single beam has advantages over using an array of beam devices. See Reply Brief (December 14, 2017), at 1 (arguing that the Examiner mischaracterized Lang). Thus, the Examiner has failed to provide adequate reasoning based on rational underpinnings to explain why one having ordinary skill in the art would have been motivated, based on the teaching in Lang, to replace the large arrays of light sources in Sandstrom with a single particle beam. The Examiner does not rely on any of Nelson, Nair, Brailove, Ward, and Chao to cure the deficiency in the Sandstrom/Lang combination. For this reason, we do not sustain the rejections of claims 1-10 and 14-20 under 35 U.S.C. Â§ 103(a). DECISION The decision of the Examiner rejecting claims 1-10 and 14-20 is reversed. REVERSED 7