Ex Parte Tung et al

Patent Trial and Appeal Board

Sep 17, 2018

14927291 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/927,291 10/29/2015 David M. Tung
105639 7590 09/17/2018
Duane Morris LLP (10/11) Seagate
IP Docketing
2475 Hanover Street
Palo Alto, CA 94304-1194
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.
R2463-00798 4723
EXAMINER
PHAM,HOAQ
ART UNIT PAPER NUMBER
2886
MAIL DATE DELIVERY MODE
09/17/2018 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 DAVID M. TUNG, and JOACHIM W. AHNER 1
(Applicant: Seagate Technology LLC)
Appeal2018---000948
Application 14/927 ,291
Technology Center 2800
Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and
JENNIFER R. GUPTA, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Seagate Technology LLC.
Appeal2018---000948
Application 14/927 ,291
Appellants request our review under 35 U.S.C. § I34(a) of the
Examiner's decision rejecting claims 1-20. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below:
1. An apparatus, comprising:
a photon emitter configured to emit photons onto an entire
surface edge of an article; and
a photon detector array configured to receive scattered photons
from the entire surface edge of the article, wherein the photon
detector array comprises a plurality of photon detectors, and
the scattered photons are photons emitted from the photon
emitter that are scattered from features smaller than 50 nm
along the surface edge of the article.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Chhibber et al.
Andrews et al.
US 2004/0207836 Al
US 2006/0181700 Al
Oct. 21, 2004
Aug. 1 7, 2006
THE REJECTI0N2
Claims 1-20 are rejected under 35 U.S.C § 103 as being unpatentable
over Chhibber in view of Andrews. Final Act. 2---6.
2 On page 2 of the Answer, the Examiner indicates that the double patenting
rejection is not presented for review because Appellants will file a terminal
disclaimer (Appeal Br. 11 ). Hence, this rejection is not listed here for
review.
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Appeal2018---000948
Application 14/927 ,291
ANALYSIS
To the extent that Appellants have presented substantive arguments
for the separate patentability of any individual claims on appeal, we will
address them separately consistent with 37 C.F.R. § 4I.37(c)(l)(vii).
Accordingly, as Appellants argue the independent claims together (Appeal
Br. 12), we select claim 1 as representative of this group for consideration in
this appeal.
Upon consideration of the evidence on this record and each of the
respective positions set forth in the record, we find that the preponderance of
evidence on this record supports the Examiner's findings and conclusion that
the subject matter of Appellants' claims is unpatentable over the applied art.
Accordingly, we sustain the Examiner's rejection on appeal essentially for
the reasons set forth in the Final Office Action and in the Answer, with the
following emphasis.
Appellants submit that Chhibber does not teach detecting particles or
defects smaller than 50 nm, as claimed. Appellants state that, instead,
Chhibber teaches detecting defect sizes in the range of 0.05 microns
( equivalent to 50 nm) to 100 microns ( equivalent to 100,000 nm). Appeal
Br. 12. Hence, it is undisputed that Chhibber teaches detecting defects of 50
nm in size. Ans. 2-3. Chhibber, Figure 4A.
We note that a prima facie case of obviousness exists where the
claimed ranges or amounts do not overlap with the prior art but are merely
close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783
(Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an
alloy "having 0.8% nickel, 0.3% molybdenum, up to 0.1 % iron, balance
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Appeal2018---000948
Application 14/927 ,291
titanium" as obvious over a reference disclosing alloys of 0. 7 5% nickel,
0.25% molybdenum, balance titanium and 0.94% nickel, 0.31 %
molybdenum, balance titanium. "The proportions are so close that prima
facie one skilled in the art would have expected them to have the same
properties.").
Thus, we agree with the Examiner that it would have been prima facie
obvious to have used the emitter and detector of Andrews to perform the
method according to Chhibber and arrive at the claimed subject matter, and
that one skilled in the artisan would have been capable of doing so.
Furthermore, as stated by the Examiner, the rejection does not propose
to implement the method of Andrews, but rather employs the emitter and
detector of Andrews in performing the method of Chhibber. Ans. 3. Hence,
Appellants' argument that Andrews' scan repetition system cannot be
combined with Chhibber (Appeal Br. 12-13) is found unpersuasive.
In view of the above, we affirm the rejection.
DECISION
The rejection is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a).
ORDER
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Appeal2018---000948
Application 14/927 ,291
AFFIRMED
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