Ex Parte Tung et alDownload PDFPatent Trial and Appeal BoardSep 17, 201814927291 (P.T.A.B. Sep. 17, 2018) Copy Citation 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. 2 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 3 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 4 Appeal2018---000948 Application 14/927 ,291 AFFIRMED 5 Copy with citationCopy as parenthetical citation