Seagate Technology LLCDownload PDFPatent Trials and Appeals BoardMay 11, 20202019000979 (P.T.A.B. May. 11, 2020) 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. 14/029,725 09/17/2013 Joachim Walter Ahner STL 17551.00 3692 64776 7590 05/11/2020 Holzer Patel Drennan - Seagate Technology LLC 216 16th Street Suite 1350 Denver, CO 80202 EXAMINER HANSELL JR., RICHARD A ART UNIT PAPER NUMBER 2486 NOTIFICATION DATE DELIVERY MODE 05/11/2020 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): docket@hpdlaw.com hiplaw@blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOACHIM WALTER AHNER, TRAVIS WILLIAM GRODT, FLORIN ZAVALICHE, MAISSARATH NASSIROU, DAVID M. TUNG, TCHERNIO T. BOYTCHEV, STEPHEN KEITH McLAURIN, and HENRY LUIS LOTT Appeal 2019-000979 Application 14/029,725 Technology Center 2400 Before JOHNNY A. KUMAR, JUSTIN BUSCH, and JOYCE CRAIG, Administrative Patent Judges. BUSCH, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Seagate Technology LLC. Appeal Br. 2. Appeal 2019-000979 Application 14/029,725 2 CLAIMED SUBJECT MATTER Appellant’s disclosure generally relates to “a photon detecting array configured to take images of an article, and a mount configured to mount and translate the article in a direction by a sub-pixel distance.” Spec. ¶ 3, Abstract. More specifically, the invention addresses pixel resolution issues with a mount that translates the article being imaged “in a direction by a sub- pixel distance . . . based on a pixel size of the photon detecting array.” Spec. ¶ 3. Claims 1, 11, and 16 are independent and reproduced below: 1. An apparatus, comprising: a single light source for illuminating an article, wherein the single light source simultaneously emits photons onto an entire surface of the article; a photon detecting array comprising a fixed pixel resolution oriented to collect and detect photons scattered from surface features of the article; and a means for producing a composite image of the article, or a portion thereof, at a greater pixel resolution than the fixed pixel resolution of the photon detecting array by translating and imaging the article at sub-pixel distances. 11. An apparatus comprising: a photon detecting array configured to take images of an article and further configured to capture reflected light and scattered light from an entire surface of the article wherein the entire surface of the article is illuminated at the same time; and a mount configured to support and translate the article by a sub-pixel distance, wherein the sub-pixel distance is based on a pixel size of the photon detecting array. 16. A method, comprising: emitting photons onto an entire surface of an article at the same time at an angle of incidence ranging from 10° to 90°; receiving from a photon detecting array an initial image of the article at an initial location; Appeal 2019-000979 Application 14/029,725 3 translating the article a sub-pixel distance to a subsequent location and generating a subsequent image of the article at the subsequent location, wherein a mount is configured for the translating in an x-axis direction, a y-axis direction, and a z-axis direction; and combining the initial image and the subsequent image to generate a composite image at a greater pixel resolution than a pixel resolution of the photon detecting array. REJECTIONS Claims 1–3 and 5–10 stand rejected under 35 U.S.C. § 103 as obvious in view of Oldham (US 2005/0056768 A1; Mar. 17, 2005), Kinney (US 2004/0012775 A1; Jan. 22, 2004), and Nikoonahad (US 2004/0032581 A1; Feb. 19, 2004). Final Act. 5–13. Claims 16–20 stand rejected under 35 U.S.C. § 103 as obvious in view of Oldham, Kinney, Nikoonahad, Kreh (US 2005/0001900 A1; Jan. 6, 2005), and Hamamatsu (US 2005/0213086 A1; Sept. 29, 2005). Final Act. 13–15; Advisory Act. 6. Claims 11–15 stand rejected under 35 U.S.C. § 103 as obvious in view of Hayashi (US 2010/0053790 A1; Mar. 4, 2010), Kinney, and Oldham. Final Act. 15–21. Claim 4 stands rejected under 35 U.S.C. § 103 as obvious in view of Oldham, Kinney, Nikoonahad, and Handique (US 2013/0190212 A1; July 25, 2013). Final Act. 21–22. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments that the Examiner erred. In reaching this decision, we have considered all evidence presented and all arguments Appellant made. Arguments Appellant could have made, but chose not to make in the Briefs, are deemed waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-000979 Application 14/029,725 4 Appellant argues the claims in three groups: (1) claims 1–10, Appeal Br. 10–11; see Appeal Br. 15 (arguing claim 4 is patentable “by virtue of its dependency, as well as its own patentable features,” without separately arguing claim 4 with particularity); (2) claims 11–15, Appeal Br. 11–13; and (3) claims 16–20, Appeal Br. 13. We select independent claim 1 as representative of claims 1–10, independent claim 11 as representative of claims 11–15, and independent claim 16 as representative of claims 16–20. See 37 C.F.R. § 41.37(c)(1)(iv). CLAIMS 1–10 The Examiner finds the combination of Oldham, Kinney, and Nikoonahad teaches or suggests every limitation recited in representative claim 1. Final Act. 5–9; Ans. 3–6. Of particular relevance to this Appeal, the Examiner finds: (1) Oldham teaches an apparatus that emits photons onto a surface of an article and a photon detecting array with a fixed pixel resolution that collects and detects photons emitted from a sample’s surface, the apparatus including a mount that moves the article by sub-pixel distances to create a composite image having an effective resolution greater than the array’s fixed pixel resolution; (2) Kinney teaches a source light emitting photons onto an entire surface of the article and imaging scattered light from different points on the article’s surface; and (3) Nikoonahad teaches using multiple light sources to simultaneously light the entire surface of an article under inspection in order to collect and detect photons scattered from the article’s surface features. Final Act. 5–9 (citing Oldham ¶¶ 7, 8, 14, 21, 34, 35, Fig. 4, Abstract; Kinney ¶¶ 46, 53, 68, 69, 103, 106, 132, Fig. 7; Nikoonahad ¶¶ 71, 79, 90, 124, Figs. 3A–3B, 5, 9); Ans. 3–6 (additionally citing Oldham ¶¶ 4, 33, 42–44). Appeal 2019-000979 Application 14/029,725 5 Appellant argues the Examiner “provides no rationale to support any motivation to modify Oldham to collect and detect scattered photons, as claimed, instead of emitted photons, as taught by Oldham.” Appeal Br. 11; see also Reply Br. 2 (asserting “the Examiner has presented no teaching, suggestion, or motivation”). Appellant argues “Oldham teaches that it is important to excite biological samples in order to cause them to fluoresce” and “modifying Oldham to collect and detect scattered photons would render the teachings of Oldham inoperable for their intended purpose, because light would not be emitted from excited biological fibers.” Appeal Br. 11; Reply Br. 2. The Examiner finds that, although Oldham detects emitted, rather than scattered, photons, Oldham teaches measuring received light to identify fine features of an object’s surface. Ans. 4. The Examiner notes that the rejection relies on Oldham for its teaching of “image enhancement via sub- pixel imaging which Examiner respectfully submits is clearly analogous to sub-pixel imaging for enhanced pixel resolution [of other articles, such as a hard disk for a hard disk drive] as disclosed in the instant application.” Ans. 5 (citation omitted). The Examiner finds modifying Oldham with Kinney’s and Nikoonahad’s teachings does not render Oldham inoperable for its intended purpose because all three references measure light signals received from a target object, whether scattered or emitted, to optically characterize the objects. Ans. 5. We agree with the Examiner. As the Examiner notes, the Examiner does not rely on Oldham’s described methods with respect to either the particular type of sample or article being imaged (e.g., Oldham’s biological sample) or the illumination techniques (i.e., exciting the target biological samples to induce the samples to emit light) used. Rather, as noted above, Appeal 2019-000979 Application 14/029,725 6 the Examiner relies on Oldham to teach or suggest a photon detecting array having a fixed pixel resolution that captures features of an article, and a means to produce a composite image of the article at a greater effective resolution than the array’s fixed pixel resolution by moving the article sub- pixel distances. See Final Act. 5–6. Appellant has not explained sufficiently why using a different illumination method to detect features of an article by capturing scattered photons instead of emitted photons would render Oldham’s cited features inoperable for their intended purpose. More specifically, Oldham’s movement mechanism on which the sample is placed using sub-pixel sized steps so that the multiple sub-pixel shifted images may form a composite image that “improves the effective resolution of signal detection which may be better than the dimension of the pixel” would operate in exactly the same matter regardless of the type of photons the array collects and detects. Oldham ¶ 7. Oldham explicitly states that its “teachings may be applied to numerous different types and classes of photo and signal detection methodologies and are not necessarily limited to CCD based detectors.” Oldham ¶ 30. Oldham further discloses that, “although the present teachings are described in various embodiments in the context of sequence analysis, these methods may be readily adapted to other devices/instrumentation and used for purposes other than biological analysis.” Oldham ¶ 30 (emphasis added). Notably, Oldham’s independent claims are not limited to biological samples. See Oldham at 7–8 (claims 1–26). Furthermore, contrary to Appellant’s assertion that the Examiner provides no rationale for combining the Kinney’s and Oldham’s cited teachings, the Examiner explicitly cites various disclosures in Kinney that Appeal 2019-000979 Application 14/029,725 7 provide a rational underpinning supporting the Examiner’s provided reasons, Final Act. 7 (citing Kinney ¶¶ 2, 4, 5, 174, Fig. 7). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Specifically, the Examiner explains that adding Kinney’s teachings of an optical arrangement to inspect object defects and particle contamination by illuminating the entire surface at the same time to Oldham’s teachings for improving the effective resolution of a fixed resolution pixel array provides a “simple, cheap and compact inspection tool” that allows “rapid inspection of substrates under a variety of different illumination and detection modes.” Final Act. 7 (citing Kinney ¶¶ 2, 4, 5, 174, Fig. 7). For these reasons, we are not persuaded the Examiner erred in rejecting representative claim 1, or claims 2, 3, and 5–10, as obvious in view of Oldham, Kinney, and Nikoonahad. For the same reasons, we are not persuaded the Examiner erred in rejecting claim 4 as obvious in view of Oldham, Kinney, Nikoonahad, and Handique. CLAIMS 11–15 The Examiner finds the combination of Hayashi, Kinney, and Oldham teaches or suggests every limitation recited in representative claim 11. Final Act. 15–18; Ans. 7–8. Of particular relevance to this Appeal, the Examiner finds: (1) Hayashi teaches an apparatus with a photon detecting array that captures reflected and scattered light from an article’s entire surface; and (2) Kinney teaches illuminating an entire surface of the article at the same time. Final Act. 15–16 (citing Hayashi ¶¶ 95, 96, 125, Fig. 10; Kinney ¶¶ 53, 68, 69, 103, 106, Fig. 7); Ans. 8 (explaining that the rejection is based Appeal 2019-000979 Application 14/029,725 8 on findings that (1) Hayashi teaches everything recited in representative claim 11 except (a) capturing light from an entire surface of an article and (b) the mount and (2) Kinney teaches simultaneously illuminating the entire surface of an article being imaged). The Examiner also provides a rationale for combining Kinney’s teachings with Hayashi’s teachings. Final Act. 16–17. Specifically, the Examiner explains that adding Kinney’s teachings, which provide an optical arrangement to illuminate the entire surface of an object to be inspected at the same time, provides a higher speed and lower cost imaging system. Final Act. 17 (citing Kinney ¶¶ 2, 4, 5, 12, Fig. 7). Appellant argues modifying Hayashi according to Kinney’s teachings would not have been obvious because Hayashi teaches illuminating only a portion of a disk’s surface and, therefore, “Hayashi teaches away from illuminating the entire surface of the article.” Appeal Br. 12–13. Appellant notes Hayashi depicts illuminating only a “fan shaped” portion of the disk surface and Hayashi describes the importance of limiting illumination to unnecessary areas outside the inspection range in order to suppress unwanted reflections. Appeal Br. 12 (citing Hayashi ¶¶ 99–101, Fig. 13A). Appellant argues these disclosures teach away from illuminating the entire surface of the article and, further, modifying Hayashi’s system to illuminate the entire surface would render Hayashi unsatisfactory for its intended purpose. Appeal Br. 13. We are not persuaded Hayashi teaches away from illuminating the entire surface of the article, as recited in representative claim 11. Nor are we persuaded modifying Hayashi as the Examiner proposes would render Hayashi unsatisfactory for its intended purpose. Appeal 2019-000979 Application 14/029,725 9 Appellant is correct that Hayashi teaches shining light only at the inspection range and avoiding or “suppressing irradiation of light to unnecessary areas other than the inspection range.” Hayashi ¶ 101. Notably, however, when combined with Kinney’s teachings as the Examiner proposes, the entire surface being illuminated is the inspection range because the Examiner’s proposed combination images the entire surface of an article at the same time in order to produce a faster and lower cost imaging system. See Final Act. 17. Moreover, Kinney also addresses illuminating only the portions of the article being imaged and avoiding illuminating the portions that are not being imaged, which are analogous to Hayashi’s “unnecessary areas other than the inspection range,” Hayashi ¶ 101. In particular, Kinney collects scattered and diffracted light from the article’s surface, Kinney ¶¶ 71, 79, 90. Kinney explicitly discloses that, “[t]o minimize the deleterious effects of stray light, it is preferred that the illuminating beam be shaped so that only the substrate surface (and edges if desired) is illuminated.” Kinney ¶ 54 (emphasis added). Given Hayashi’s and Kinney’s similar purposes in illuminating only the portion of the article to be imaged to minimize negative effects of stray light, we are not persuaded by Appellant’s argument that Hayashi teaches away from “the entire surface of the article [being] illuminated at the same time” because the article’s entire surface is the portion being imaged in the proposed combination. For the same reasons, we disagree that modifying Hayashi’s cited teachings with Kinney’s cited teachings would render Hayashi unsatisfactory for their intended purpose. For these reasons, we are not persuaded the Examiner erred in rejecting representative claim 11, or claims 12–15, as obvious in view of Hayashi, Kinney, and Oldham. Appeal 2019-000979 Application 14/029,725 10 CLAIMS 16–20 The Examiner finds the combination of Oldham, Kinney, Nikoonahad, Kreh, and Hamamatsu teaches or suggests every limitation recited in representative claim 16. Final Act. 13–15; Advisory Act. 6; Ans. 9. Of particular relevance to this Appeal, the Examiner finds: (1) Oldham at least suggests the ability to move a platform in a third dimension because it would have been an obvious variation apparent to a person of ordinary skill in the art; and (2) in the alternative, Hamamatsu teaches a stage in a carrying system that moves in three dimensions. Advisory Act. 6 (citing Oldham ¶¶ 7, 8; Hamamatsu ¶¶ 82, 83); Ans. 9. Appellant notes representative claim 16 was amended, and Appellant asserts the combination of Oldham, Kinney, Nikoonahad, and Kreh does not teach “‘wherein a mount is configured for the translating in an x-axis direction, a y-axis direction, and a z-axis direction,’ as recited in Claim 16.” Appeal Br. 14. In the Appeal Brief, Appellant provides no further explanation or argument and fails to address the Examiner’s findings that Oldham and, alternatively, Hamamatsu teach the disputed limitation. A naked assertion that a limitation is not taught, without more, does not constitute a separate substantive argument for patentability. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011); 37 C.F.R. § 41.37(c)(1)(iv). Appellant belatedly asserts, for the first time in the Reply Brief, that the Examiner failed to establish Oldham inherently discloses three dimensional movement. Reply Br. 5. Appellant also belatedly argues the Examiner provided no motivation to combine Hamamatsu with the other references. These arguments could have been, but were not, raised in the Appeal Brief, and the arguments are not responsive to new evidence or findings set forth by the Examiner in the Answer. In the absence of a Appeal 2019-000979 Application 14/029,725 11 showing of good cause, these arguments are untimely and deemed waived. 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer . . . will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”); MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 1205.02 (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it unless the examiner subsequently withdrew the rejection in the examiner's answer.”) CONCLUSION For the above reasons, we affirm the Examiner’s rejections under 35 U.S.C. § 103 of: (1) claims 1–3 and 5–10 as obvious in view of Oldham, Kinney, and Nikoonahad; (2) claims 16–20 as obvious in view of Oldham, Kinney, Nikoonahad, Kreh, and Hamamatsu; (3) claims 11–15 as obvious in view of Hayashi, Kinney, and Oldham; and (4) claim 4 as obvious in view of Oldham, Kinney, Nikoonahad, and Handique. Appeal 2019-000979 Application 14/029,725 12 DECISION SUMMARY Claims Rejected 35 U.S.C. § References Affirmed Reversed 1–3, 5–10 103 Oldham, Kinney, Nikoonahad 1–3, 5–10 16–20 103 Oldham, Kinney, Nikoonahad, Kreh, Hamamatsu 16–20 11–15 103 Hayashi, Kinney, Oldham 11–15 4 103 Oldham, Kinney, Nikoonahad, Handique 4 Overall Outcome 1–20 TIME PERIOD FOR RESPONSE 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation