Joanne Wu et al.Download PDFPatent Trials and Appeals BoardAug 26, 201914512446 - (D) (P.T.A.B. Aug. 26, 2019) Copy Citation 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. 14/512,446 10/12/2014 Joanne Wu 5222-28600/P4289 1737 61507 7590 08/26/2019 Entropy Matters LLC P.O. Box 2250 NEW YORK, NY 10021 EXAMINER RASTOVSKI, CATHERINE T ART UNIT PAPER NUMBER 2862 MAIL DATE DELIVERY MODE 08/26/2019 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 JOANNE WU, ELLIS CHANG, LISHENG GAO, SATYA KURADA, ALLEN PARK, and RAGHAV BABULNATH ____________ Appeal 2018-008617 Application 14/512,446 Technology Center 2800 ____________ Before LINDA M. GAUDETTE, MONTÉ T. SQUIRE, and SHELDON M. MCGEE, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON APPEAL1 The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision finally rejecting claims 1–37 under 35 U.S.C. § 101. We AFFIRM. 1 This Decision includes citations to the following documents: Specification filed October 12, 2014 (“Spec.”); Final Office Action dated September 19, 2017 (“Final Act.”); Advisory Action dated December 8, 2017 (“Advisory Act.”); Appeal Brief filed February 26, 2018 (“Appeal Br.”); Examiner’s Answer dated June 29, 2018 (“Ans.”); and Reply Brief filed August 29, 2018 (“Reply Br.”). 2 The Appellant is the Applicant, KLA-Tencor Corporation, also identified as the real party in interest. Appeal Br. 2. Appeal 2018-008617 Application 14/512,446 2 According to the Specification, at the time of the invention, it was known in the art to electrically test devices formed on wafers to determine if the devices function in the proper manner. Spec. 1:16–18. One of the most popular test methods involved measuring the elevated leakage current to identify a defective chip. Id. at 1:18–19. According to the Specification, when transistor geometries are decreased, intrinsic leakage current increases, making it difficult to distinguish between fault-free and faulty devices. Id. at 1:25–27. Moreover, leakage current testing is not directly correlated to defect types and, therefore, does not provide information on the root causes of reliability issues. Id. at 1:28–30. The invention is directed to methods and systems for detecting reliability defects on wafers that is said to overcome one or more of these disadvantages of the prior art test methods. Id. at 1:7–8, 2:4–5. Independent claim 1 is representative of the appealed claims, and is reproduced below. 1. A computer-implemented method for detecting reliability defects on a wafer, comprising: generating output for a wafer by scanning the wafer with light with an inspection system and detecting light from the wafer during the scanning with the inspection system, wherein the inspection system directs the light from a light source of the inspection system to the wafer during the scanning, wherein the light from the wafer is collected and detected by one or more channels of the inspection system during the scanning, and wherein the one or more channels comprise a detector configured to generate the output that is responsive to the light collected from the wafer; Appeal 2018-008617 Application 14/512,446 3 determining one or more characteristics of one or more patterned features formed on the wafer based on the output; and identifying which of the one or more patterned features will cause one or more reliability defects in a device being formed on the wafer based on the determined one or more characteristics, wherein said determining and said identifying are performed by a computer system, and wherein the computer system is coupled to the inspection system such that the output generated by the detector during the scanning is provided to the computer system. Appeal Br. 36 (Claims Appendix) (emphasis added). Independent claim 19 recites “[a] non-transitory computer-readable medium, storing program instructions executable on a computer system for performing a computer- implemented method for detecting reliability defects on a wafer.” Id. at 39. Claim 19 recites the steps of the computer implemented method. Id. The steps are similar to those recited in independent claim 1. Compare claim 19, with claim 1. Independent claim 20 recites “[a] system configured to detect defects on a wafer . . . with light and detecting light from the wafer during . . . scanning.” Appeal Br. 39–40. The claim 20 system comprises “an inspection subsystem configured to generate output for a wafer by scanning the wafer” and “a computer subsystem coupled to the inspection subsystem,” and configured to perform determining and identifying steps similar to those recited in claim 1. Id. at 40; compare claim 20, with claim 1. The Examiner rejected claims 1–37 under 35 U.S.C. § 101 as directed to patent ineligible subject matter. Final Act. 4. An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, Appeal 2018-008617 Application 14/512,446 4 has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excepted category, we are guided by the Supreme Court’s two-step framework, described in Alice (see id. at 217–18), and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 75–77 (2012). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219. Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (id. at 219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). If a claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221. “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort Appeal 2018-008617 Application 14/512,446 5 designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). In January of this year, the PTO published revised guidance on the application of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether a claim recites (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes), and (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)), or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance. The Appellant argues the claims as a group (see generally Appeal Br. 5–34), noting that independent claims 19 and 20 recite limitations similar to those in claim 1 (id. at 5). Accordingly, we focus our discussion on claim 1. Step 1 Under Step l of the Guidance, we consider whether the claimed subject matter falls within the four statutory categories set forth in § 101, namely “[p]rocess, machine, manufacture, or composition of matter.” Appeal 2018-008617 Application 14/512,446 6 Guidance, 84 Fed. Reg. at 53–54; see 35 U.S.C. § 101. Claim 1 recites a series of steps and, therefore, falls into the statutory category of a process. Step 2A, Prong I As indicated above, under Step 2A, Prong I of the Guidance, we next consider whether claim 1 recites a judicial exception, including one of the following groupings of abstract ideas: (1) mathematical concepts, e.g., mathematical relationships, mathematical formulas or equations, and mathematical calculations; (2) mental processes, e.g., concepts performed in the human mind, including observations, evaluations, judgments, and opinions; and (3) certain methods of organizing human activity, e.g., fundamental economic principles or practices (including hedging, insurance, mitigating risk), commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, business relations, and managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See Guidance, 84 Fed. Reg. at 52. The Examiner determined the claims are directed to the abstract idea of data/information gathering. Final Act. 5. Data/information gathering is not listed explicitly among the groupings of abstract ideas identified in the Guidance. However, the Final Office Action and the Answer were mailed prior to issuance of the Guidance. For the reasons discussed below, we determine claim 1 falls within the category of a mental process and, therefore, agree with the Examiner that claim 1 is directed an abstract idea. Claim 1 recites that the determining step is performed by a computer system that is coupled to an inspection system. The Specification discloses Appeal 2018-008617 Application 14/512,446 7 that the images, image data, or any other output generated by the inspection system may be used to determine one or more of any of the characteristics of the patterned features described in the Specification. Spec. 6:24–27. For example, images or image data generated by an inspection system may be used to determine one or more dimensions of one or more patterned features formed on the wafer. The one or more characteristics may be determined based on the output of the inspection system using any suitable method and/or algorithm. Id. at 6:27–30 (emphasis added). Claim 1 recites that the identifying step is performed by a computer system that is coupled to the inspection system. The Specification discloses that the identifying step includes determining one or more characteristics of the device based on the determined one or more characteristics of the one or more patterned features and determining if the one or more characteristics of the device will cause a reliability defect in the device. For example, the one or more characteristics of the patterned feature(s) may be input to a function or algorithm that defines a relationship between the one or more characteristics and one or more characteristics of the device. Spec. 7:29–8:4 (emphasis added). The Specification discloses that the device characteristic(s) can be quantitatively determined directly from the characteristic(s) of the patterned feature(s) determined from the inspection system output . . . . The device characteristic(s) determined for the patterned feature(s) can then be analyzed to determine if those patterned feature(s) will cause a reliability issue for the device and therefore if those patterned feature(s) are reliability defects. . . . Determining which patterned features will cause reliability defects based on the device characteristic(s) determined for the patterned features may be performed in any other suitable manner. Appeal 2018-008617 Application 14/512,446 8 Id. at 8:12–17, 21–23 (emphasis added). The Federal Circuit has stated that “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category.” Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016). We find that the step of determining falls into the category of a mental process because it could be performed in the human mind with the aid of pen and paper, e.g., determining a dimension by evaluation of data generated by an inspection system. See Spec. 7:18–21 ([C]haracteristic(s) of patterned features may be determined based on the output as described above to provide one or more measured values of the characteristic(s). Those characteristic(s) may then be subtracted from the as-designed values, which may be determined from any of the design or design data . . . .” (emphasis added)). We find that the step of identifying also falls into the category of a mental process because it could be performed in the human mind with the aid of pen and paper, e.g., an evaluation involving a comparison of “the sub-threshold leakage current for a patterned feature . . . to a threshold that separates acceptable sub-threshold leakage current values from sub-threshold leakage current values that may be problematic for the device.” Id. at 8:17–21 (emphasis added). Claim 1’s recitation of using a generic computer system to perform the steps of determining and identifying does not render the method patent eligible. See Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012), cert. denied, 134 S. Ct. 2870 (2014) (“Using a computer to Appeal 2018-008617 Application 14/512,446 9 accelerate an ineligible mental process does not make that process patent- eligible.”). The Appellant has not provided persuasive argument or evidence establishing that the claim 1 determining and identifying steps could not be performed via a mental process.3 Step 2A, Prong II According to the Guidance, even if a claim recites any one of the three groupings of abstract ideas, the claim is still not “directed to” a judicial exception (abstract idea), and thus is patent eligible, if “the claim as a whole integrates the recited judicial exception into a practical application of that exception.” Guidance, 84 Fed. Reg. at 53. Limitations that are indicative of “integration into a practical application” include: (1) improvements to the functioning of a computer, or to any other technology or technical field (see MPEP § 2106.05(a)); (2) applying the judicial exception with, or by use of, a particular machine (see id. § 2106.05(b); (3) effecting a transformation or reduction of a particular article to a different state or thing (see id. § 2106.05(c)); and (4) applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (see id. § 2106.05(e)). See Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”). In contrast, limitations that are not indicative of “integration into a practical 3 Appellant’s argument the “there is not a commercially available generic algorithm that could be used to perform the presently claimed determining and identifying steps” (Reply Br. 11) is contradicted by the above-quoted disclosure on pages 6–8 of the Specification. Appeal 2018-008617 Application 14/512,446 10 application” include: (1) adding the words “apply it” (or an equivalent) with the judicial exception, merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea (see MPEP § 2106.05(f)); (2) adding insignificant extra-solution activity to the judicial exception (see id. § 2106.05(g); and (3) generally linking the use of the judicial exception to a particular technological environment or field of use (see id. § 2106.05(h)). See Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”). The Appellant argues the claims include limitations that are indicative of “integration into a practical application.” The Appellant argues that the claims recite an improvement to the existing technology of detecting reliability defects on a wafer: “It is the incorporation of the claimed steps, not the use of the computer subsystem or computer system, that improve the existing technological process by allowing the identification of patterned feature(s) that will cause one or more reliability defects in a device being formed on a wafer as presently claimed.” Appeal Br. 24. The Appellant argues the present claims are analogous to those in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), which were determined to be patent eligible (see Appeal Br. 22–28): when looked at as a whole, claims 1, 19, and 20 are directed to a patentable, technological improvement over existing reliability defect detecting techniques such as those described in the prior art. The present claims use the limited steps in a process specifically designed to achieve an improved technological result in conventional industry practice. Id. at 26. The Appellant’s argument is not persuasive. The distinction drawn by the Federal Circuit between the claims held not patent-eligible in SAP Appeal 2018-008617 Application 14/512,446 11 America, Inc. v. Investpic, LLC, 898 F.3d 1161 (Fed. Cir. 2018), and those determined to be patent-eligible in McRO, is applicable to the claims in the present appeal: The claims in McRO were directed to the creation of something physical—namely, the display of “lip synchronization and facial expressions” of animated characters on screens for viewing by human eyes. . . . The claimed improvement was to how the physical display operated (to produce better quality images), unlike (what is present here) a claimed improvement in a mathematical technique with no improved display mechanism. Id. at 1167 (citing McRO, 837 F.3d at 1313). In other words, unlike the claims in McRO, claim 1 does not require an application of the abstract idea. See Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067–68 (Fed. Cir. 2011) (“The representative claim of the ’283 patent is directed to the single step of reviewing the effects of known immunization schedules . . . . The ’283 claims do not include putting this knowledge to practical use . . . . In contrast, the claims of the ’139 and ’739 patents require the further act of immunization in accordance with a lower-risk schedule, thus moving from abstract scientific principle to specific application.”). Rather, the inventive concept of claim 1 is embodied in the recited mental process. See Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) “[T]he ‘inventive concept’ cannot be the abstract idea itself . . . .”). The Appellant argues that the claims apply the judicial exception with the use of a particular machine: “[T]he present claims do require the use of a particular machine, namely the presently claimed inspection system or subsystem, which includes presently claimed hardware (e.g., a light source, one or more channels, a detector), and which generates output for a wafer Appeal 2018-008617 Application 14/512,446 12 that is required for other steps or functions performed by the present claims.” Appeal Br. 15. “[T]he present claims recite the manipulation of patent eligible subject matter (e.g., a wafer, which is manipulated by the presently claimed scanning of the wafer by an inspection system or subsystem).” Id. at 16. The Appellant’s argument is unpersuasive because the Appellant has not shown that the claimed method requires the use of anything other than generic equipment such as a generic computer system, detector, and light source. See, e.g., Spec. 6:5–6 (“The inspection system may include any suitable commercially available light- or electron beam-based inspection system known in the art.”), 19:14–17 (“In general, the term ‘computer system’ may be broadly defined to encompass any device having one or more processors, which executes instructions from a memory medium. The computer system may also include any suitable processor known in the art such as a parallel processor.”); see Alice, 573 U.S. at 222–223 (“[L]imiting the use of an abstract idea to a particular technological environment is not enough for patent eligibility.” (internal citations and quotation marks omitted)); Elec. Power Grp., 830 F.3d at 1354 (“[L]imiting the claims to the particular technological environment of power-grid monitoring is, without more, insufficient to transform them into patent-eligible applications of the abstract idea at their core.”); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715–16 (Fed. Cir. 2014) (explaining that “implement[ing] the abstract idea with routine, conventional activity” and “invocation of the Internet” is not sufficient to save otherwise abstract claims). Appeal 2018-008617 Application 14/512,446 13 The Appellant also argues claim 1 uses the judicial exception in a meaningful way such that claim 1, as a whole, does not monopolize the exception: [T]he limitations recited in the present claims clearly include highly specific functions (e.g., generating output for a wafer by scanning the wafer, determining one or more characteristics of one or more patterned features formed on the wafer based on the output, and identifying which of the one or more patterned features will cause one or more reliability defects in a device being formed on the wafer). . . . [T]he claims, which are directed to a complex manufactured industrial product (i.e., a wafer inspection subsystem or system that scans a wafer with light and detects light from the wafer during the scanning) or process, and which recite meaningful limitations along with an alleged judicial exception, sufficiently limit practical application of the alleged judicial exception. Appeal Br. 6–7. The Appellant’s argument is not persuasive. In addition to the steps of determining and identifying that we have determined fall into the category of mental processes, claim 1 recites a step of “generating output for a wafer by scanning the wafer with light with an inspection system and detecting light from the wafer during the scanning with the inspection system” (emphasis added). We determine that claim 1’s generating step is merely a data gathering step necessary to conduct the recited abstract idea, and, therefore, constitutes extra-solution activity insufficient to confer patent-eligibility to claim 1. See Guidance, 84 Fed. Reg. at 55, 55 n.31; MPEP § 2106.05(g); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (holding that mere data gathering is insufficient to confer patent eligibility). As explained by the Federal Circuit, claims focused on “collecting information, analyzing it, and displaying certain results of the collection and analysis” are Appeal 2018-008617 Application 14/512,446 14 directed to an abstract idea. Electric Power, 830 F.3d at 1353. “Information as such is an intangible,” hence abstract, and “collecting information, including when limited to particular content (which does not change its character as information), [i]s within the realm of abstract ideas.” Id. (citing cases). So, too, is “analyzing information . . . by mathematical algorithms, without more.” Id. at 1354 (citing cases, including Parker . . . and . . . Benson . . . ). And “merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.” Id. (citing cases). The claims here are directed [to] abstract ideas under those principles. SAP Am., 898 F.3d at 1167. Step 2B Under Step 2B of the Guidance, we determine whether the claim provides an “inventive concept,” i.e., whether the additional elements beyond the judicial exception, individually and in combination, amount to “significantly more” than the judicial exception itself. Guidance, 84 Fed. Reg. at 56. According to the Guidance, “simply append[ing] well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality,” is indicative that an inventive concept is absent. Id. The Appellant contends the limitations in claim 1 amount to significantly more than a mental process because they provide improvements to the technical field of detecting reliability defects on a wafer. Appeal Br. 5–6. The Appellant’s argument is unpersuasive because, as explained by the Examiner, “detecting light scanned over a wafer is well-understood, routine, and conventional.” Ans. 5 (citing Urano, US 2008/0297783 A1 (Dec. 4, 2008) ¶ 34; Bhaskar, US 8,126,255 B2 (Feb. 28, 2012) 9:29–32, as evidence Appeal 2018-008617 Application 14/512,446 15 of the conventional use of a light source and detector for scanning wafers). The Appellant has not addressed the disclosures in the cited references, which we find support the Examiner’s contention. See, e.g., Bhaskar 9:23– 32 (“One embodiment relates to a system configured to store image data generated by scanning a wafer with an inspection system. . . . The image data may include any image data that can be generated by a detector of an inspection system. Scanning of the wafer may be performed in any suitable manner (e.g., by scanning light across the wafer and detecting light reflected and/or scattered from the wafer during scanning).”). As further explained by the Examiner “[a]lthough Appellant differentiates between gathering data and [the claimed step of] generating output[,] . . . the act of making and recording a measurement is the generation of an output and . . . any measurement system generates output. Therefore generating output in this context is not significantly more than the abstract idea.” Ans. 9; see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (quoting In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989) (“We have held that mere ‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory.’”)). The Appellant argues that “even if the output generated by the inspection subsystem is routine and conventionally known, the combination of all of the elements recited in the claims is not routine and conventionally known.” Reply Br. 10. The Appellant argues “the present claims are not directed to a well known method or system for identifying reliability defects on a wafer and instead are directed to a completely different method or system for detecting reliability defects on a wafer.” Id. at 12. The Appellant’s arguments essentially are that the claims differ from the prior art Appeal 2018-008617 Application 14/512,446 16 methods, but novelty and nonobviousness are not enough to confer subject- matter eligibility. See SAP Am., 898 F.3d at 1163. ORDER Claims Rejected Basis Reference(s) Affirmed Reversed 1–37 § 101 1–37 Outcome 1–37 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation