Carl Zeiss SMT GmbH

Patent Trials and Appeals Board

Mar 1, 2022

2021002903 (P.T.A.B. Mar. 1, 2022)

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. 16/510,055 07/12/2019 Rolf Freimann 36066-0022002 1045 26161 7590 03/01/2022 FISH & RICHARDSON P.C. (BO) P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER WHITESELL GORDON, STEVEN H ART UNIT PAPER NUMBER 1759 NOTIFICATION DATE DELIVERY MODE 03/01/2022 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): PATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROLF FREIMANN, JUERGEN BAIER, and STEFFEN FRITZSCHE Appeal 2021-002903 Application 16/510,055 Technology Center 1700 Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and SHELDON M. MCGEE, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-5, 11-13, 23, 27, 29, and 32-40. 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. Appellant identifies the real party in interest as Carl Zeiss SMT GmbH. (Appeal Br. 1.) Appeal 2021-002903 Application 16/510,055 2 CLAIMED SUBJECT MATTER The claimed invention is directed to an optical system comprising first and second optical control loops. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An optical system, wherein: i) the optical system comprises: a first optical control loop configured to regulate a position and/or spatial orientation of a first optical element relative to a first module sensor frame; and a first module control loop configured to regulate a position and/or spatial orientation of the first module sensor frame relative to a base sensor frame; and ii) the optical system comprises: a second optical control loop configured to regulate a position and/or spatial orientation of a second optical element relative to a second module sensor frame; and a second module control loop configured to regulate a position and/or spatial orientation of the second module sensor frame relative to the base sensor frame. (Appeal Br. Claim App.). REJECTION The Examiner maintained the rejection of claims 1-5, 11-13, 23, 27, 29, and 32-40 are rejected under 35 U.S.C. §103 as obvious over Butler (US 2012/0105819 A1, published May 3, 2012) in view of Kwan (US 2014/0185029 A1, published July 3, 2014). (Ans. 3; Final Act. 2-5.) OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has Appeal 2021-002903 Application 16/510,055 3 long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections,” citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)). After review of the respective positions Appellant and the Examiner provide, we AFFIRM the Examiner’s prior art rejection under 35 U.S.C. § 103 for the reasons presented by the Examiner in the Final Action and the Answer. We add the following. We limit our discussion to independent claim 1 as argued by Appellant. 37 C.F.R. § 41.37(c)(1)(iv) (2020). Appellant does not provide separate substantive arguments addressing independent claim 23. (Appeal Br. 3-4.) Claims 2-5, 11-13, 23, 27, 29, and 32-40 stand or fall with independent claim 1. The Examiner finds Butler teaches an optical system that comprises an optical control loop configured to regulate a position and/or spatial orientation of the optical element relative to the control module. (Final Act. 2.) The Examiner finds Butler differs from the claimed invention by failing to describe a second identical optical control loop. Addressing this difference, the Examiner cites Kwan for teaching optical system comprising multiple optical elements having actuator and sensor control loops applied to each of the multiple optical elements was known to persons of ordinary skill in the art. (Final Act. 3.) The Examiner determines it would have been obvious to provide an optical system control loop having each of the control elements applied to a single optical element such as taught by Butler to control each of the multiple optical elements of a projection system. (Final Act. 3.) Appeal 2021-002903 Application 16/510,055 4 Appellant argues the Examiner did not properly establish that it would have been obvious to a person of ordinary skill in the art to modify Butler in view of Kwan for 4 specific reasons. (Appeal Br. 2-3.) Appellant’s arguments lack persuasive merit. The Examiner has specifically addressed Appellant’s arguments in the Answer. (Ans. 3-5.) Appellant offers no persuasive argument against the Examiner’s rationale based on duplicating Butler’s optical control loop including all its parts. The fact that the reference is silent with regards to duplicating the optical control loop and all its parts does not overcome a rejection based on obviousness. See In re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It is well settled that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced.”) Appellant has not disputed that optical systems comprising multiple optical control loop configurations were known to persons of ordinary skill in the art. Additionally, and contrary to the implication of Appellant’s economic argument, “[t]hat a given combination would not be made by businessmen for economic reasons does not mean that persons skilled in the art would not make the combination because of some technological incompatibility.” In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983). Appellant has not revealed a technological incompatibility in the proposed duplication of optical control. Thus, we sustain the Examiner’s rejection under 35 U.S.C. § 103(a) for the reasons the Examiner presents and the reasons presented above. Appeal 2021-002903 Application 16/510,055 5 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-5, 11-13, 23, 27, 29, 32-40 103 Butler, Kwan 1-5, 11-13, 23, 27, 29, 32-40 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