Zhongwei Chen et al.Download PDFPatent Trials and Appeals BoardJul 31, 201914830062 - (D) (P.T.A.B. Jul. 31, 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. 14/830,062 08/19/2015 Zhongwei Chen 14261.0005-04000 2250 148366 7590 07/31/2019 Finnegan/ASML 901 New York Avenue NW Washington, DC 20001 EXAMINER STOFFA, WYATT A ART UNIT PAPER NUMBER 2881 NOTIFICATION DATE DELIVERY MODE 07/31/2019 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): regional-desk@finnegan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ZHONGWEI CHEN, JACK JAU, and WEIMING REN ____________________ Appeal 2017-010455 Application 14/830,062 Technology Center 2800 ____________________ Before JOSEPH L. DIXON, JAMES W. DEJMEK, and STEPHEN E. BELISLE, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-010455 Application 14/830,062 2 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–16, 21, and 22. Claims 17–20 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was scheduled for May 16, 2019, but was waived by Appellants. Therefore, we decide the appeal based upon the briefs. We reverse. Appellants’ disclosed and claimed invention generally relates to “a charged particle beam apparatus which employs a scanning electron microscope (SEM) to inspect particles and/or defects on a sample surface.” Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for inspecting a surface of a sample, comprising: providing an incidence side detector with a through hole; scanning said surface at an oblique angle of incidence with a primary electron beam passing through said through hole; detecting backscattered electrons generated from said scanning and traveling towards an incidence side of said primary electron beam with said incidence side detector; positioning an electrode adjacent to a path of said primary electron beam, along a path of said backscattered electrons, intersecting a first virtual axis, wherein said first virtual axis is 1 Appellants indicate that Hermes Microvision, Inc. is the real party in interest. App. Br. 3. Appeal 2017-010455 Application 14/830,062 3 perpendicular to a sample plane and intersecting an illuminated area of said surface, and closer than said incidence side detector to an illuminated area of said surface; attracting secondary electrons generated from said surface with said electrode to prevent said secondary electrons from otherwise hitting said incidence side detector; and generating a dark-field backscattered electron image from said backscattered electrons detected by said incidence side detector. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Coates US 4,743,757 May 10, 1988 Wells US 5,408,098 Apr. 18, 1995 Frosien US 7,326,927 B2 Feb. 5, 2008 Degenhardt et al. US 8,203,119 B2 June 19, 2012 REJECTIONS The Examiner made the following rejections: Claims 1–16, 21, and 22 stand rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Claims 1, 3, 21, and 22 stand rejected under 35 U.S.C. § 103 as being unpatentable over Degenhardt in view of Coates. Claims 2 and 4 stand rejected under 35 U.S.C. § 103 as being unpatentable over Degenhardt in view of Coates as applied to claims 1 and 3 above, and further in view of Wells. Appeal 2017-010455 Application 14/830,062 4 Claims 9 and 11 stand rejected under 35 U.S.C. § 103 as being unpatentable over Degenhardt in view of Coates as applied to claims 1 and 3 above, and further in view of Frosien. Claims 10 and 12 stand rejected under 35 U.S.C. § 103 as being unpatentable over Degenhardt in view of Coates and Wells as applied to claims 2 and 4 above, and further in view of Frosien. Claims 5–8 and 13–16 are not subject to an art rejection. Ans. 9. ANALYSIS 35 U.S.C. § 112(a), Written Description In rejecting independent claims 1 and 21, the Examiner finds a lack of written description support for positioning an electrode closer to an illuminated area of a surface than the recited incidence side detector. Final Act. 7–8. In particular, the Examiner finds Appellants merely describe the position of the electrode as being “close” to the surface, but do not otherwise specify a closeness relative to the incidence side detector. Final Act. 7. Additionally, the Examiner finds the drawings accompanying the originally filed Specification fail to provide adequate support because “there is no indication that they are to scale.” Final Act. 7. With respect to independent claims 1 and 21, Appellants argue the claims together. App. Br. 13. Therefore, we select independent claim 1 as the representative claim and address Appellants’ arguments thereto. Appellants contend that: one of ordinary skill in the art, upon reading these parts of the Application in conjunction with Figs. 1A, 1B, 2A, 3, 4A, 4B, 4C, 5A, 5B and 5C which all show the electrode placed closer than the first detector to the illuminated area on the surface of the Appeal 2017-010455 Application 14/830,062 5 sample, could reasonably conclude that the inventor had possession of the concept of providing an electrode closer than said first detector to an illuminated area of said surface to attract secondary electrons generated from said surface so as not to hit said first detector. App. Br. 14. Appellants further contend that: Hockerson-Halberstad, Inc. v. Avia Group Int’l is not pertinent to the claim amendment according to the figures as the Office alleged. Hockerson-Halberstad, Inc. v. Avia Group Int’l as specifically provided in the MPEP 2125 discusses the use of Prior Art’s drawings as the foundation of the rejection. MPEP 2125 states that when a “reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value” (MPEP 2125). Nowhere in the cited case law or MPEP explicitly provides that inventors must provide scale or measurement on the Application’s drawing. App. Br. 15.2 Similarly, Appellants argue that Appellants have presented claims according to the figures of the original disclosure, and thus have not introduced new matter. Therefore, Appellants submit that there is no new matter. App. Br. 16. We agree with Appellants that the Examiner’s findings are speculative and attempt to extend the findings of the Hockerson-Halberstadt case beyond its actual holding with regards to application of prior art rejections. Therefore, we find the Examiner’s written description rejection lacks sufficient factual findings to support a finding of a lack of written description support for the claimed invention of independent claims 1 and 21 2 Hockerson-Halberstadt, Inc. v. Avia Grp. Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000). Appeal 2017-010455 Application 14/830,062 6 and their respective dependent claims. Accordingly, we do not sustain the Examiner’s rejection of claims 1–16, 21, and 22 under 35 U.S.C. § 112(a). 35 U.S.C. § 103 With respect to independent claims 1 and 21, Appellants do not argue the claims separately. App. Br. 18. We select independent claim 1 as the representative claim for the group and address Appellants’ arguments thereto. Because independent claim 21 contains similar limitations, this claim will stand or fall with representative independent claim 1. Appellants assert, inter alia, the Examiner has not set forth the necessary rationale as to why one of ordinary skill in the art would have been motivated to combine the teachings of Degenhardt and Coates to yield the invention recited in independent claim 1. App. Br. 18–21. Rather, contrary to the Examiner’s reasoning, Appellants argue Degenhardt already provides a secondary charged particle detector such that disclosed charged particle beam device “can be operated to detect and analyze both types of secondary charged particles . . . .” App. Br. 19–20. Thus, Appellants assert Coates’ secondary electron assembly is not needed to be combined with Degenhardt’s device in order to operate as proffered by the Examiner. App. Br. 20. Instead, Appellants argue the addition of Coates would not improve Degenhardt’s device, particularly as Coates teaches an arrangement of a grid to shield a secondary electron detector. App. Br. 20. Accordingly, Appellants assert the Examiner “has not provided a valid rationale to combine an additional secondary electron detection assembly to Degenhardt’s apparatus, which comprises a detector capable of secondary electron detection in and of itself and provided with a specific structural Appeal 2017-010455 Application 14/830,062 7 arrangement.” App. Br. 20. In addition, Appellants assert the Examiner relies on impermissible hindsight in combining the cited references to arrive at the claimed invention. App. Br. 21. In response, the Examiner explains that although Degenhardt’s device is capable of detecting either secondary electrons or backscattered electrons (as acknowledged by Appellants, see App. Br. 19–20), the proposed combination allows for the simultaneous detection of both particles—an improvement to the device of Degenhardt alone. Ans. 6–7. Moreover, the Examiner explains the ability to combine the teachings of Degenhardt and Coates was within the level of the ordinarily skilled artisan and that one of skill in the art would have been motivated to combine the teachings as proposed by the Examiner based on the teachings of the references. Ans. 7. “[T]he desire to enhance commercial opportunities by improving a product or process is universal . . . .” DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). “[A]n implicit motivation to combine” may result from a desire to make a product or process “stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.” DyStar, 464 F.3d at 1368. Moreover, the law does not require that the references expressly articulate a motivation to combine. See, e.g., Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1359 (Fed. Cir. 2017). Instead, an obviousness analysis can “consider a range of real-world facts to determine ‘whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.’” Intercont’l Great Brands LLC v. Kellogg N. Am. Co., 869 F.3d 1336, 1344 (Fed. Cir. 2017) (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Appeal 2017-010455 Application 14/830,062 8 However, we are mindful that although one of ordinary skill in the art may understand that two references could be combined as reasoned by the Examiner, this does not imply a motivation to combine the references. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987 993–94 (Fed. Cir. 2017); see also Belden Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”); InTouch Techs., Inc. v. VGO Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014). Here, the Examiner has not provided sufficient evidence or technical reasoning that one of ordinary skill in the art would have been motivated to modify the device of Degenhardt to detect backscattered electrons and attract secondary electrons simultaneously when combined with the teachings of Coates. The Examiner has not identified that either reference provides a motivation for such operation. Instead, the Examiner merely explains that one of ordinary skill in the art could combine the teachings of Degenhardt and Coates to arrive at the claimed invention. Because we find it dispositive that the Examiner failed to set forth persuasive reasoning that one of ordinary skill in the art would have been motivated to combine the cited references in the manner proffered by the Examiner, we do not address other issues raised by Appellant’s arguments. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency is at liberty to reach a decision based on “a single dispositive issue”). Appeal 2017-010455 Application 14/830,062 9 Consequently, we do not sustain the obviousness rejection of independent claim 1, and independent claim 21 for similar reasons, over the combination of the Degenhardt and Coates references. CONCLUSIONS The Examiner erred in rejecting claims 1–16, 21, and 22 based upon a lack of a written description support under 35 U.S.C. § 112(a), and the Examiner erred in rejecting claims 1–16, 21, and 22 based upon obviousness under 35 U.S.C. § 103. DECISION For the above reasons, we reverse the Examiner’s rejections of claims 1–16, 21, and 22 under 35 U.S.C. § 112(a) and 35 U.S.C. § 103. REVERSED Copy with citationCopy as parenthetical citation