Ex Parte Preikszas

Patent Trial and Appeal Board

Oct 28, 2016

12931356 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/931,356 01127/2011
54004 7590 10/31/2016
MUIRHEAD AND SATURNELLI, LLC
200 FRIBERG PARKWAY
SUITE 1001
WESTBOROUGH, MA 01581
FIRST NAMED INVENTOR
Dirk Preikszas
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.
FRM-096US 4852
EXAMINER
PURINTON, BROOKE J
ART UNIT PAPER NUMBER
2881
MAILDATE DELIVERY MODE
10/31/2016 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 DIRK PREIKSZAS
Appeal2015-001573
Application 12/931,356
Technology Center 2800
Before BRADLEY R. GARRIS, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals the Examiner's final rejection of claims 1-1 7.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 In this decision, we refer to the Final Office Action appealed from, mailed
September 10, 2013 ("Final Act."), the Appeal Brief dated July 8, 2014
("App. Br."), the Examiner's Answer to the Appeal Brief dated September 8,
2014 ("Ans."), and the Reply Brief dated November 7, 2014 ("Reply Br.").
2 Appellant identifies Carl Zeiss Microscopy GmbH as the Real Party in
Interest. App. Br. 2.
Appeal2015-001573
Application 12/931,356
The Claimed Invention
Appellant's disclosure relates to a particle beam device and to a
method for operation of a particle beam device. Spec. 1, 11. 5-7, Abstract.
Claim 1 is representative of the claims on appeal and is reproduced below
from the Claims Appendix to the Appeal Brief (App. Br. 21, 22) (key
disputed limitations italicized):
1. A particle beam device, comprising:
a sample chamber;
a sample which is arranged in the sample chamber;
a first particle beam column having a first optical axis,
wherein the first particle beam column has a first beam
generator for generating a first particle beam and has a first
objective lens for focusing the first particle beam onto the
sample, wherein, when the first particle beam strikes the
sample, interactions between the first particle beam and the
sample create first interaction particles;
a second particle beam column having a second optical
axis, wherein the second particle beam column has a second
beam generator for generating a second particle beam and has a
second objective lens for focusing the second particle beam
onto the sample, wherein, when the second particle beam
strikes the sample, interactions between the second particle
beam and the sample create second interaction particles;
at least one detector which is arranged in a first cavity in a
first hollow body, wherein the first cavity has a first inlet
opening, wherein a third axis runs from the first inlet opening to
the detector, wherein the first optical axis of the first particle
beam column and the second optical axis of the second particle
beam column are arranged on one plane, wherein the third axis
is arranged inclined with respect to or at right angles to the
plane, wherein the sample is at a sample potential, wherein the
first hollow body is at a first hollow body potential, and
wherein a first hollow body voltage is a first potential
difference between the first hollow body potential and the
sample potential;
at least one control electrode, which is at a control
electrode potential, arranged on the first particle beam column,
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Application 12/931,356
a control electrode voltage being a third potential difference
between the control electrode potential and the sample
potential, wherein the second particle beam column has a
terminating electrode which is at a terminating electrode
potential, wherein a terminating electrode voltage is a fourth
potential difference between the terminating electrode potential
and the sample potential, wherein at least one of: the first
hollow body voltage, the control electrode voltage or the
terminating electrode voltage is chosen such that the first
interaction particles or the second interaction particles enter the
first cavity in the first hollow body through the first inlet
opening, and wherein the control electrode voltage is set by a
third voltage supply unit and the terminating electrode voltage
is set by a fourth voltage supply unit.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Thompson et al., US 5, 164,594
(hereinafter "Thompson")
Sanderson et al., US 5,223,711
(hereinafter "Sanderson")
Holle US 5,463,218
Brooks et al., US 6,417,625 Bl
(hereinafter "Brooks")
Nov. 17, 1992
June 29, 1993
Oct. 31, 1995
July 9, 2002
Matsuya US 2004/0227099 Al Nov. 18, 2004
Tokuda et al.,
(hereinafter "T okuda")
Ogawa
Gerlach et al.,
(hereinafter "Gerlach")
US 6,927,391 B2 Aug. 9, 2005
US 2006/0249692 Al Nov. 9, 2006
US 2008/0308742 Al Dec. 18, 2008
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Application 12/931,356
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 1--4, 6-8, and 13 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Thompson in view of
Tokuda, Gerlach, Sanderson, and Ogawa. Final Act. 2.
2. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thompson, Tokuda, Gerlach, Sanderson, and Ogawa as
applied to claim 1 above, and further in view of Brooks. Final Act. 6.
3. Claims 9-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thompson, Tokuda, Gerlach, Sanderson, and Ogawa as
applied to claim 1 above, and further in view of Holle. Final Act. 6.
4. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Thompson in view of Ogawa. Final Act. 8.
5. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thompson and Ogawa as applied to claim 14 above, and
further in view of Gerlach, Sanderson, and Tokuda. Final Act. 9.
6. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thompson in view of Tokuda, Gerlach, Sanderson, and
Matsuya. Final Act. 11.
OPINION
Rejection 1
Appellant argues claims 1--4, 6-8, and 13 as a group. We select claim
1 as representative of this group, and the remaining claims stand or fall with
claim 1. 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv).
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Application 12/931,356
The Examiner determines that the combination of Thompson, Tokuda,
Gerlach, Sanderson, and Ogawa suggests a particle beam device satisfying
all of the limitations of claim 1 and would have rendered claim 1 obvious.
Final Act. 2--4. The Examiner finds that the combination of Thompson,
Tokuda, Gerlach, Sanderson suggests nearly all of claim 1 's limitations, but
that it does not "explicitly teach wherein the control electrode voltage is set
by a control-electrode-voltage supply unit and the terminating electrode is
set by a terminating electrode voltage supply unit," as recited in the claim.
Id. at 4. The Examiner, however, relies on Ogawa for teaching this missing
limitation. Id. In particular, the Examiner finds that Ogawa teaches that "an
electrode voltage is set by a voltage supply unit for a first particle beam
column and an electrode voltage on another electrode in a second beam
column is set by a second voltage supply unit." Id. (citing Ogawa, i-f 17).
Based on the above findings, the Examiner concludes that it would
have been an obvious to a person of ordinary skill in the art at the time of the
invention have added "more voltage supply units to set the control electrode
voltage and terminating electrode voltage of the first and second beam
columns of Thompson, respectively, via the first and second power supply
units of Ogawa" because the modification "would have allowed the operator
more flexibility in setting voltages for separate beam column components"
and a "voltage for a terminating electrode and the voltage for the control
electrode could have been separately optimized for desired performance of
the two beam columns." Final Act. 4.
Appellant argues that the Examiner has failed to establish a prima
facie case of obviousness because the "cited references do not teach or fairly
suggest every element of Appellant's claimed invention." App. Br. 12. In
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particular, Appellant argues that: (1) the Examiner's "duplication of
essential parts" argument is insufficient to support the Examiner's analysis
(id. at 14); (2) the Examiner's analysis is factually and legally inaccurate
with respect to the Thompson reference (id. at 15); (3) Thompson does not
teach or suggest that the voltage(s) for both electrodes may be set
"independently from each other" as claimed (id. at 16); ( 4) the Examiner has
not adequately explained or provided sufficient motivation for one of
ordinary skill in the art to modify Thompson's system in the manner
proposed (id. at 17); and ( 5) Thompson appears to explicitly teach away
from Appellant's claimed invention (id.).
We are not persuaded by Appellant's arguments. Based on the record
before us, we find that the Examiner's finding that the combination of
Thompson, Tokuda, Gerlach, Sanderson, and Ogawa suggests all of
claim 1 's limitations is supported by a preponderance of the evidence and
based on sound technical reasoning. Thompson, Abstract, Fig. 1, col. 5,
11. 25-32; Tokuda, Figs. 16, 26, 27; Gerlach, Fig. 2b; Sanderson, Figs. 1, 2,
col. 5, 11. 40-50; Ogawa, i-f 17. Appellant's argument reveals no reversible
error in the Examiner's analysis and factual findings in this regard.
The Examiner also provides a reasoned basis and identifies sufficient
evidence in the record to evince why one of ordinary skill would have
combined the teachings of the references to arrive at Appellant's claimed
invention. Final Act. 4 (explaining that one of ordinary skill would have
been motivated to combine modified Thompson's and Ogawa's teachings
because such modification would have allowed the operator more flexibility
in setting voltages for separate beam column components and a voltage for a
terminating electrode and the voltage for the control electrode could have
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Application 12/931,356
been separately optimized for desired performance of the two beam
columns); Ogawa, i-f 17. See also KSR Int'! Co. v. Teleflex, Inc., 550 U.S.
398, 420 (2007) (explaining that any need or problem known in the art can
provide a reason for combining the elements in the manner claimed).
Appellant fails to direct us to sufficient evidence or provide an
adequate technical explanation to show why the Examiner's articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error.
We do not find Appellant's argument regarding the "mere duplication
of essential parts" (App. Br. 14) persuasive because it does not adequately
address the Examiner's principal finding that Ogawa explicitly teaches the
voltage supply unit limitations of claim 1 and the Examiner's stated
reasoning for combining Ogawa's teachings with modified Thompson's
teachings to arrive at Appellant's claimed invention, which, as previously
discussed above, is well-supported by the evidence and based on sound
technical reasoning.
Appellant's argument regarding both electrodes being set
independently from one another is unpersuasive because it attacks the
references individually rather than the collective teachings of the prior art as
a whole. One cannot show non-obviousness by attacking references
individually where the rejection is based on a combination of references.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant's argument is
premised on what Appellant contends Thompson teaches individually, and
not the combined teachings of the cited references as a whole and what the
combined teachings would have suggested to one of ordinary skill in the art.
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As previously discussed, the Examiner relies on Ogawa-not Thompson-
for suggesting that the voltage supply units for the control and terminating
electrodes may be independently set.
Appellant's contention that Thompson teaches away from the claimed
invention is unpersuasive because Appellant does not identify sufficient
evidence to support it, and we will not read into the references a teaching
away where no such language exists. Cf DyStar Textilfarben GmbH v. CH
Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006); see also In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). As the Examiner correctly
points out (Ans. 2), Appellant does not identify any teaching in Thompson
or the other cited references which discourages one of ordinary skill in the
art from combining their teachings to arrive at the claimed invention as
found by the Examiner. In re Fulton, 391 F.3d 1195, 1201 (finding that
there is no teaching away where the prior art's disclosure "does not criticize,
discredit, or otherwise discourage the solution claimed").
Appellant's argument that "Thompson's tubular electrode 5 is not an
electrode of the second beam column/source 15," which is raised for the first
time at page 4 in the Reply Brief, appears to be untimely because it was not
previously raised by Appellant in the Appeal Brief. 37 C.F .R. § 41.41 (b )(2).
In any event, this argument is unpersuasive because it mischaracterizes the
Examiner's findings regarding Thompson's teachings. We are not
persuaded, contrary to what Appellant's argument suggests, that the
Examiner identifies Thompson's tubular electrode 5 as a terminating
electrode. See Final Act. 3 (identifying "part 16" of Thompson Fig. 1 ).
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Accordingly, we affirm the Examiner's rejection of claims 1--4, 6-8,
and 13 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Thompson, Tokuda, Gerlach, Sanderson, and Ogawa.
Rejections 2. 3, 4. 5, and 6
Arguing all the claims together, Appellant does not present separate or
any additional substantive arguments in the Appeal Brief in response to the
Examiner's Rejections 2 through 6. Rather, Appellant contends
categorically that the "Tokuda, Gerlach, Sanderson, Ogawa, Brooks, Holle,
Matsuya" references do not overcome the "deficiencies in the use of
Thompson" and that the Examiner "presents piece-meal, hindsight
reasoning" and uses "select piece-meal disclosures of [the] cited prior art
references" to arrive at Appellant's claimed invention. App. Br. 18; see also
Reply Br. 9 (asserting that the "deficiency of Thompson with respect to
Appellant's claimed invention is not overcome by citing to the use of
another reference or rationale").
Appellant's contentions in this regard are conclusory and, without
more, insufficient to establish reversible error in the Examiner's findings and
analysis. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Accordingly, for the reasons discussed above in affirming the
Examiner's Rejection 1, we affirm the Examiner's Rejections 2 through 6.
DECISION/ORDER
The Examiner's rejections of claims 1-17 are affirmed.
It is ordered that the Examiner's decision is affirmed.
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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
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