Ex Parte 6,924,891 et al

Board of Patent Appeals and Interferences

Sep 23, 2010

90008414 (B.P.A.I. Sep. 23, 2010)

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.
90/008,414 01/04/2007 6,924,891 003404BC01/05542-670RX1 9375
26185 7590 09/23/2010
FISH & RICHARDSON P.C.
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
STEELMAN, MARY J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/23/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte APPLIED MATERIALS, INC. &
APPLIED MATERIALS ISRAEL, LTD.1,
Appellant and Patent Owner
____________

Appeal 2010-003529
Reexamination Control 90/008,414
Patent US 6,924,891 B22
Technology Center 3900
____________

Before JOSEPH F. RUGGIERO, KARL D. EASTHOM, and KEVIN F.
TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge

DECISION ON APPEAL3
APPLIED MATERIALS, INC. and APPLIED MATERIALS
ISRAEL, LTD appeals under 35 U.S.C. §§ 134(b) and 306 from a final
rejection of claims 1-108. We have jurisdiction under 35 U.S.C. §§ 134(b)
and 306.

1 APPLIED MATERIALS, INC. and APPLIED MATERIALS ISRAEL,
LTD are the Patent Owner and the real party in interest (App. Br. 2).
2 Issued August 2, 2005 to Karpol et al.
3 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
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We AFFIRM-IN-PART, but enter a new ground of rejection under 37
C.F.R. § 41.50(b).

STATEMENT OF THE CASE4
This proceeding arose from a request for ex parte reexamination filed
by Negevtech, Ltd. on January 3, 2007 of United States Patent 6,924,891 B2
(the '891 Patent) issued to Avner Karpol et al. on August 2, 2005, based on
U.S. Patent Application 10/836,022 filed April 29, 2004. The application
for the '891 Patent was a continuation of U.S. Patent Application 10/436,920
(filed May 12, 2003, now U.S. Patent No. 6,798,505), which was a
divisional of U.S. Patent Application 10/044,454 (filed January 11, 2002,
now U.S. Patent No. 6,587,194), which was a divisional of U.S. Patent
Application 09/443,247 (filed November 17, 1999, now U.S. Patent No.
6,369,888).
The '891 Patent was asserted in litigation, namely Applied Materials,
Inc. and Applied Materials Israel, Ltd. v. Negevtech Ltd. and Nevevtech Inc.,
No. C04-03656 SI (N.D. Cal. filed Aug. 2004), where the parties stipulated
to dismissal without prejudice of the litigation (App. Br. 2).

4 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed November 2, 2009) and Reply Brief (“Reply Br.,” filed January
28, 2010), and the Examiner’s Answer (“Ans.,” mailed November 28, 2009).
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Patentee’s invention relates to the inspection of articles, and in
particular to the inspection of articles related to the manufacture of
semiconductor devices (Spec. Col. 1, ll. 15-20). The inspection methods and
devices disclosed are said to reduce speckle by at least partially altering the
coherence of the coherent light source (id. at col. 4, ll. 10-17, 21-29).
Claims 1and 10, which we deem to be representative, read as follows:
1. In the inspection of a patterned article used in
the manufacture of semiconductor devices, a method of
reducing speckle, said method comprising:
effecting relative movement between an
illuminating beam and said patterned article, said
illuminating beam being obtained by modifying a
coherent light beam so as to break, at least partially, its
coherence;
said modifying of said coherent light beam
comprising:
disposing a plurality of optical fiber bundles
sequentially along a light path between a source of said
illuminating beam and the patterned article, each of said
plurality of fiber bundles having a predetermined
number of fibers, each of said fibers having an input and
an output, wherein fibers of a first bundle of said
plurality of bundles receive said coherent light beam
through said input and fibers of a last bundle of said
plurality of bundles transmit an output beam through
said output.

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10. An inspection device, comprising:
a source of a coherent light beam; and an optical
apparatus, the apparatus comprising a plurality of optical
fiber bundles positioned sequentially along a light path
between the source and a patterned article to be
inspected so as to break, at least partly, a coherence of
said coherent light beam, each of said plurality of fiber
bundles comprising a predetermined number of fibers,
each of said fibers having an input and an output,
wherein fibers of a first bundle of said plurality of
bundles receive said light beam through said input and
fibers of a last bundle of said plurality of bundles
transmit an output beam through said output.

The prior art references relied upon by the Examiner in rejecting the
claims are:
Maciejko 4,360,372 Nov. 23, 1982
Obenschain 4,521,075 Jun. 4, 1985
Shibuya 4,619,508 Oct. 28, 1986
Ohtsuki 6,590,698 B1 Jul. 8, 2003
(priority to Nov. 30, 1998)
Neumann 6,693,664 B2 Feb. 17, 2004
(priority to Jun. 30, 1999)

The Examiner rejected claims on the following bases:
i) claims 1-3, 5-8, 10-12, 14-17, 93-96, 101-104 under 35 U.S.C.
§ 103(a) as unpatentable over Obenschain and Shibuya (Ans. 24-33);
ii) claims 4, 13, 51-56, and 69-76 under 35 U.S.C. § 103(a) as
unpatentable over Obenschain, Shibuya, and Ohtsuki (Ans. 33-40);
iii) claims 9 and 18 under 35 U.S.C. § 103(a) as unpatentable over
Obenschain, Shibuya, and Maciejko (Ans. 41-43);
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iv) claims 19-23, 25-28, 30, 32-35, 37, 39-42, 44, 46-49, 97-100, and
105-108 under 35 U.S.C. § 103(a) as unpatentable over Obenschain,
Shibuya, and Neumann (Ans. 43-56);
v) claims 24, 31, 38, 45, 57-68, and 77-92 under 35 U.S.C. § 103(a) as
unpatentable over Obenschain, Shibuya, Neumann, and Ohtsuki (Ans. 56-
68); and
vi) claims 29, 36, 43, and 50 under 35 U.S.C. § 103(a) as unpatentable
over Obenschain, Shibuya, Neumann, and Maciejko (Ans. 68-71).

ISSUES
Appellant argues, with respect to claim 1, that neither Obenschain nor
Shibuya teaches or suggests effecting relative movement between an
illuminating beam and a patterned article (App. Br. 13-15) and, with respect
to claims 1 and 10, that neither reference teaches or suggests inspection
(App. Br. 15-17). Appellant also argues that combination of Obenschain
and Shibuya does not render obvious the subject matter of claims 1, 10, and
19-22 (App. Br. 17-26). Appellant also argues that Ohtsuki fails to disclose
imaging the output of each of the fibers of a first bundle into a) the inputs of
all of the fibers in a second bundle or b) into the input of each of the fibers in
the second bundle, with or without a lens (App. Br. 27-33), and that
Obenschain, Shibuya, and Neumann fail to teach or suggest that fibers in the
bundles are of different lengths, and randomly disposed within each bundle
(App. Br. 33-34).
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The Examiner finds that under the broadest reasonable interpretation,
the illuminating beam traveling along an optical path to the target destination
“reads on the claim limitation” of effectuating relative movement and that in
VLSI processes, the relative movement between the illuminating beam and
the patterned article would be inherent (Ans. 7). The Examiner finds that it
is “routine in the art to utilize light sources in optical inspection systems”
(Ans. 8), and that the “‘inspection of a patterned article’ is an obvious use of
the device disclosed by the combination of Obenschain and Shibuya” (id.).
The Examiner also finds that the obviousness determination was not based
on improper hindsight and was proper (Ans. 13-17).
We have considered in this decision only those arguments that
Appellant actually raised in the Briefs. Arguments which Appellant could
have made but chose not to make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).
Thus, the issues arising from the respective positions of Appellant and
the Examiner are:
(i) Do Obenschain and Shibuya teach or suggest effecting relative
movement between the illuminating beam and a patterned article, per claim
1?
(ii) Do Obenschain and Shibuya teach or suggest inspection within the
context of claims 1 and 10?
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(iii) Would one of ordinary skill in the art have combined Obenschain
and Shibuya to result in the subject matter of claims 1 and 10 under 35
U.S.C. § 103?
(iv) Does Ohtsuki teach or suggest imaging the output of each of the
fibers of a first bundle into a) the inputs of all of the fibers in a second
bundle or b) into the input of each of the fibers in the second bundle?
(v) Do Obenschain, Shibuya, and Neumann teach or suggest that
fibers in the first and second bundles have different lengths randomly
disposed within each bundle?

FINDINGS OF FACT
1. The '891 Patent is directed to the inspection of articles, and in
particular to the inspection of articles related to the manufacture of
semiconductor devices (Spec. col. 1, ll. 15-20). The inspection
methods and devices disclosed are said to reduce speckle by at
least partially altering the coherence of the coherent light source
(id. at col. 4, ll. 10-17, 21-29).
2. The '891 Patent details that the at least partial breaking of the
coherence of the beam is accomplished by disposing a plurality of
optical fiber bundles sequentially along a light path between a
source of the illuminating beam and the patterned article (id. at col.
7, ll. 39-67; Figs. 1A, 2A, 2B).
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3. The '891 Patent provides that the article to be inspected is
positioned on an x-y stage (2) which is capable of moving the
article in two directions (id. at col. 6, ll. 23-27; Fig. 1A).
4. Obenschain is directed to a system for achieving very uniform
illumination of a target, by taking a beam of broadband spatially-
coherent light and converting into light with controlled spatial
incoherence (Abs.). The system includes a beam smoothing means
which converts the beam into a large number of differently delayed
beamlets with delay increments larger than the coherence time of
the beam (Obenschain col. 3, ll. 19-37).
5. Obenschain discloses in one embodiment that the beam smoothing
means may include first and second stairway prisms (31 and 31′)
which provide random time delays to the laser beam (Obenschain
col. 4, ll. 25-48; Figs. 3-4).
6. Shibuya is directed to an optical illumination arrangement, where a
coherent beam is modified by means for forming a substantially
incoherent light source through a plurality of optical paths
(Shibuya Abs.). The system is designed to supply a uniform
illuminating light of high brightness (Shibuya col. 1, ll. 6-9).
7. Shibuya discloses, in one embodiment, that a staircase prism (320),
constructed of twelve square pole prisms of different lengths to
provide an optical path difference (Shibuya col. 7, l. 51 – col. 8, l.
2; Figs. 10-11). In alternate embodiments, the use of an optical
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fiber (324) having a number fiber bundles, can be applied in place
of the prism, where the length of each fiber bundles is changed in
accordance with the necessary optical path difference needed
(Shibuya col. 8, ll. 45-52; Fig. 14).
8. Shibuya also provides that moving mirrors, “the scanning surface
[] is scanned in the X and Y directions by a spot light” (Shibuya
col. 3, ll. 29-35; Fig. 3)

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). When the specification states the meaning that a term
in the claim is intended to have, the claim is examined using that meaning,
in order to achieve a complete exploration of the applicant's invention and its
relation to the prior art. In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
Claims in a reexamination proceeding should be given their broadest
reasonable interpretation, consistent with the specification, because
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applicants had the right to amend, whereas in a district court, "claims should
be so construed, if possible, as to sustain their validity." In re Yamamoto,
740 F.2d 1569, 1571 n.*, 1571-72 (Fed. Cir. 1984) (citing ACH Hosp.
Systems, Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577 (Fed. Cir. 1984)).

ANALYSIS
(i) Effecting relative movement between the illuminating beam and a
patterned article
Claim 1
Appellant alleges that neither Obenschain nor Shibuya teaches or
suggests effecting relative movement between an illuminating beam and a
patterned article (App. Br. 13). The Examiner finds that under the broadest
reasonable interpretation, the illuminating beam traveling along an optical
path to the target destination “reads on the claim limitation,” and that in
VLSI processes, the relative movement between the illuminating beam and
the patterned article would be inherent (Ans. 7). Appellant argues that the
Examiner’s interpretation of the claim limitations and the Examiner’s
finding of inherency are not reasonable (Reply Br. 6-8). We agree with
Appellant.
We agree with Appellant that claim 1 requires relative movement
between the illuminating beam and the article, not just movement of the
illuminating light waves (Reply Br. 7 n. 16). The Examiner’s interpretation
of “effecting relative movement between an illuminating beam and said
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patterned article” is not reasonable in the context of the Specification (FF 3).
In addition, we agree with Appellant that in semiconductor device
manufacture, scanning may not be necessary because the entire surface may
be exposed at once (Reply Br. 8), thus any finding of scanning as necessarily
required in VLSI processes would be in error. As such, under the findings
made by the Examiner in the rejection of claim 1 (Ans. 24-27), we do not
find that the Examiner has shown that all of the elements of claim 1 are
taught or suggested by Obenschain and Shibuya.
Although we find the Examiner erred in rejecting claim 1, claims 10
and 19-22 do not require the missing element related to the relative
movement of the beam. Appellant’s remaining arguments with respect to
independent claims 10 and 19-22 all reference those made against the claim
1. Thus, in order to determine the propriety of the rejections of those other
independent claims, we also consider Appellant’s additional arguments with
respect to claim 1 below as directed to those independent claims.

(ii) Inspection within the context of claims 1 and 10
Claims 1 and 10
Appellant argues that neither Obenschain nor Shibuya teaches or
suggests “inspection,” as recited in claims 1 and 10 (App. Br. 15, 17).
Appellant finds error in the Examiner’s reliance on Shibuya’s disclosed
illumination and the Examiner’s reliance on Admitted Prior Art (APA) not
recited in the statement of rejection (App. Br. 16). The Examiner finds that
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it is “routine in the art to utilize light sources in optical inspection systems”
(Ans. 8), and that the “‘inspection of a patterned article’ is an obvious use of
the device disclosed by the combination of Obenschain and Shibuya” (id.).
The Examiner also acknowledges citing the APA, but indicates that it is used
as evidence of inherency or what is commonly known in the art (Ans. 8-9).
The Examiner also finds that Shibuya’s illumination involves inspection and
the Specification does not provide a specific definition of inspection
(Ans. 12). Appellant responds that projecting a pattern of a photomask onto
a wafer for photolithography is not a form of inspection and that the
Examiner’s assertions are not backed up by any evidence (Reply Br. 11-12).
We generally agree with the Examiner.
While Appellant may be correct that the Examiner should have recited
the APA in the statement of the rejection (App. Br. 16), see In re Hoch, 428
F.2d 1341, 1342 n.3 (CCPA 1970), the Examiner did include such a positive
recitation in the statement, even though it may not have been the rejection
heading. (Final Rejection 11 (citing a patent to Karpol).) In any event, we
need not reach that consideration because, we agree with the Examiner’s use
of common knowledge in finding inspection to be obvious. We do not find
that Appellant has adopted a special meaning for “inspection” in the claims
or the Specification, such that the claims may read upon many types
inspection. Considering inspection generally, we find that light sources are
generally used in optical inspection systems and that using a light source,
such as provided by the combination of Obenschain and Shibuya, as a source
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for inspection to be obvious. In coming to such a conclusion, it is not
necessary to utilize the cited APA or inherent disclosures of the cited
references. Claim 10 only requires “[a]n inspection device,” and “a
patterned article to be inspected,” and we find such inspection can be
accomplished by the combination of Obenschain and Shibuya. Claim 1
further recites that the patterned article is “used in the manufacture of
semiconductor devices,” but we do not find that to further qualify the
inspection process. We find no reason for the combination of Obenschain
and Shibuya to not provide illumination, of which an obvious application
would be general inspection.
Appellant also argues that one of ordinary skill in the art would not
have used the combination of Obenschain and Shibuya for inspection of a
patterned article (Reply Br. 13), and doing so would render Shibuya
unsuitable for its intended purpose of photolithography (id.). However, the
combination would be suitable for the purpose of Obenschain, which is to
obtain uniform illumination (FF 4). Also, contrary to the argument,
Shibuya’s manufacturing method does not preclude inspection during
manufacture. If the staircase prism of Obenschain is replaced with fibers
bundles, per Shibuya, as provided in the rejection (Ans. 27), the purpose of
Obenschain would not be thwarted. “Common sense teaches, however, that
familiar items may have obvious uses beyond their primary purposes.” KSR,
550 U.S. at 420. As such, we do not find Appellant arguments with respect
to inspection to be compelling.
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(iii) Combination of Obenschain and Shibuya
Claims 1 and 10
Appellant argues that combination of Obenschain and Shibuya does
not render obvious the subject matter of claims 1 and 10 (App. Br. 17-25).
More specifically, Appellant argues that the structures of Obenschain and
Shibuya are not similar and cannot be merely substituted for one another
(App. Br. 19), that there is nothing in Shibuya that suggests that all prisms,
in general, may be replaced by fiber bundles (App. Br. 19-20), and that the
combination of the references is guided by improper hindsight (App. Br. 21-
22). Appellant also argues that even if the prisms in Obenschain could be
replaced by groups of fiber bundles, only one fiber bundle would be used,
and if two fibers bundles were utilized, they would be provided in parallel
and not in sequence (App. Br. 23-24). The Examiner finds that the similar
functions and results of Obenschain and Shibuya would have motivated the
combination and would have suggested the substitution of fiber bundles for
prisms (Ans. 14-17). Appellant also responds that any such substitution
would have to come from a finite number of identified, predictable solutions
(Reply Br. 15-18).
We agree with the Examiner that the combination of Obenschain and
Shibuya is proper and that one of ordinary skill in the art would have been
motivated to substitute Shibuya’s fiber bundles for the prisms of
Obenschain. While Appellant may be correct that the structures are not
similar, the functions of the systems in Obenschain and Shibuya are similar
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and both systems have similar objectives: obtaining uniform illumination
(FF 4, 6). Both involve breaking the coherence of coherent light and
creating a focused spot (id.). We find these similarities without comparison
to Appellant’s Specification. Even if a vacuum tube and a transistor appear
structurally dissimilar, their similar functions can suggest the substitution of
one for the other. As such, we do not find Appellant’s argument to be
compelling.
Additionally, we need not find a general relationship between prisms
and fiber bundles to find the combination to be proper. Shibuya discloses
that an optical fiber, having a number fiber bundles, can be applied in place
of the staircase prism, where the length of each fiber bundles is changed in
accordance with the necessary optical path difference needed (FF 7). This is
not a general equivalence of prisms and fiber bundles, as Appellant argues
that the Examiner is finding (App. Br. 19-20); this is a finding of using a
fiber bundle to achieve the same effect as the staircase prism to supply an
optical path difference. We agree with the Examiner that one of ordinary
skill in the art would have been motivated to substitute fiber bundles for the
specific prisms of Obenschain in view of the teachings of Shibuya. As such,
we do not find Appellant’s argument to be compelling.
Appellant also argues that even if the prisms in Obenschain could be
replaced by groups of fiber bundles, only one fiber bundle would be used,
and if two fibers bundles were utilized, they would be provided in parallel
and not in sequence (App. Br. 23-24). While we cannot say for certain that
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one of ordinary skill in the art could not have utilized a single fiber bundle as
suggested by Appellant, we find the suggestion from Shibuya, i.e., applying
an optical fiber, having a number fiber bundles, in place of the staircase
prism, could also provide for a fiber bundle to be used in place of each prism
in Obenschain (FF 5). And similarly for Appellant’s suggestion that such
bundles would be provided in parallel, we find the suggestion in Shibuya
sufficient for one of ordinary skill in the art to try the fiber bundles in
sequence, as they are provided in Obenschain’s system. We find these
alternatives to be a finite number of identified, predictable solutions, which a
person of ordinary skill had good reason to pursue. As such, we do not find
Appellant’s argument to be compelling.
Lastly, Appellant also argues that any such substitution of fiber
bundles for the staircase prisms of Obenschain would have to come from a
finite number of identified, predictable solutions (Reply Br. 15-18). Such an
argument would carry more weight if we agreed that the Examiner was
finding a general correspondence between fiber bundles and prisms in all
applications, which we do not. The actual suggestion in Shibuya that a fiber
bundle be provided in place of a staircase prism to provide the same function
is a finite and predictable solution, and we find such a substitution to be
obvious in the context of the proffered rejection. As such, we do not find the
Examiner erred in combining Obenschain and Shibuya to teach this disputed
limitation as provided in the rejection of claims 1 and 10.

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Claims 2-9, 11-50, and 93-100
With respect to claims 2-9, 93, and 94, those claims depend from
claim 1, where we found the Examiner erred in rejecting claim 1 supra. As
such, we likewise find that the Examiner erred in rejecting claims 2-9, 93,
and 94 by virtue of their dependence. With respect to claims 11-50 and 95-
100, Appellant argues that these claims are improperly rejected for the same
reasons as argued for claim 10 (App. Br. 25-26). Since we do not find that
the Examiner erred in rejecting 10, we find no error in the rejections of
claims 11-50 and 95-100.

(iv) Imaging the output of each of the fibers of a first bundle into a)
the inputs of all of the fibers in a second bundle or b) into the input of each
of the fibers in the second bundle
Claims 51-68, 71, 72, 75, 76, 79, 80, 83, 84, 87, 88, 91, and 92
Appellant argues that the claim language of “‘each . . . into . . . all’
requires a one-to-all relationship from each fiber in the first bundle to the
fibers of the second bundle” (App. Br. 27). Appellant also argues that
Ohtsuki provides for the output of each fiber to be coupled to the inputs of
32 out of the 128 fibers, or less than all of the fibers (App. Br. 28), and that
the other portion of Ohtsuki relied upon by the Examiner discloses coupling
the output of fibers into a wavelength conversion system, and not another
fiber bundle (App. Br. 28-29). The Examiner finds that the broadest
reasonable interpretation of the claim language is that the output light of
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each fiber is imaged to each or all fibers in the second bundle, whether
combined or separately, as illustrated in Figs. 17 and 18 of Ohtsuki (Ans.
20). We agree with Appellant.
As Appellant points out, the embodiments of Ohtsuki illustrated in
Figs. 11, 17, and 18 have the output of an optical fiber imaged into a
wavelength conversion system, or between such systems (Reply Br. 20).
While this arrangement could provide for outputs of fibers from one bundle
to be imaged into the inputs of the fibers of another bundle, we do not find
that this is the same as the “each to all”-type limitation found in claims 51-
68, 71, 72, 75, 76, 79, 80, 83, 84, 87, 88, 91, and 92. Those embodiments of
Ohtsuki still provide a more or less one-to-one relationship, and
“combining” through the wavelength conversion system(s) does not change
that relationship, although specific outputs may no longer to the same
specific inputs. As such, we do not find that the disclosure of Ohtsuki
suggests the recitations of claims 51-68, 71, 72, 75, 76, 79, 80, 83, 84, 87,
88, 91, and 91, and the rejection acknowledges that the base references,
Obenschain and Shibuya, do not teach the same (Ans. 59). Thus, we find
that the Examiner erred in rejecting those claims over the proffered basis.

Claims 69, 70, 73, 74, 77, 78, 81, 82, 85, 86, 89, and 90
Similarly, claims 69, 70, 73, 74, 77, 78, 81, 82, 85, 86, 89, and 90
recite that the output of each of the fibers of the first bundle is imaged into
the input of each of the fibers in the second bundle, and Appellant notes that
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“the Examiner does not appear to dispute that the claim limitations of ‘each .
. . into each’ requires that the output of every fiber in the first bundle be
input into every fiber in the second bundle” (App. Br. 29-30). We concur
with Appellant and find that Obenschain, Shibuya, and Ohtsuki fails to teach
or suggest all of the limitations of those claims as well.

(v) Fibers in the first and second bundles have different lengths
randomly disposed within each bundle
Claims 101-108
With respect to claims 101-108, those claims recite, in part, that
“fibers of different lengths are randomly disposed within each bundle.”
Appellant argues that the optical path difference in the fibers used to
replicate the staircase prism does not have a random pattern, but sets a well-
defined spiral function (App. Br. 33-34). The Examiner finds that Shibuya
teaches that the length of each fiber bundle is changed and Fig. 14 of
Shibuya shows such differences “randomly disposed” within each bundle
(Ans. 24, 33). We agree with Appellant.
We do not find that Shibuya teaches or suggests that different lengths
of fiber be randomly disposed with the bundle, even though different lengths
are clearly taught (FF 7). Nothing in Shibuya suggests such a random
distribution, and Fig. 14 does not provide support for such a distribution.
While Shibuya could well distribute the different length fibers randomly,
there is no disclosure thereof sufficient to find claims 101-108 to be obvious
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over Obenschain and Shibuya. As such, we find the Examiner erred in
rejecting claims 101-108 as being obvious over Obenschain and Shibuya.

CONCLUSIONS
We find that: (i) the Examiner erred in finding that Obenschain and
Shibuya teach or suggest effecting relative movement between the
illuminating beam and a patterned article, per the rejection of claim 1; (ii)
Obenschain and Shibuya teach or suggest inspection within the context of
claims 1 and 10; (iii) one of ordinary skill in the art would have combined
Obenschain and Shibuya to result in the subject matter of claim 10 under 35
U.S.C. § 103; (iv) Ohtsuki fails to teach or suggest imaging the output of
each of the fibers of a first bundle into a) the inputs of all of the fibers in a
second bundle or b) into the input of each of the fibers in the second bundle;
and (v) Obenschain, Shibuya, and Neumann fail to teach or suggest that
fibers in the first and second bundles have different lengths randomly
disposed within each bundle.

New Ground of Rejection Under 37 C.F.R. § 41.50(b)

At Least Independent Claim 1 is Unpatentable Over the Teachings of
Obenschain and Shibuya
Claim 1 provides, in part, “effecting relative movement between an
illuminating beam and said patterned article, said illuminating beam being
obtained by modifying a coherent light beam so as to break, at least partially,
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21
its coherence.” We find that Obenschain and Shibuya suggest that the
coherence of a coherent light beam may be broken to produce an
illuminating beam, as discussed supra. With respect to the earlier portion of
the limitation of claim 1, Shibuya provides that by moving mirrors, “the
scanning surface is scanned in the X and Y directions by a spot light” (FF 8).
While this embodiment in Shibuya is different than the embodiment
discussed in the prior rejection of claim 1, i.e., staircase prisms and fiber
bundles of different lengths, we find that such movement of a spot light is
analogous to effecting relative movement between the illuminating beam
and the patterned article.
In responding to the prior rejection of claim 1, Appellant argues that
Shibuya’s motion of a coherent light beam would not be the same as the
motion of a beam with at least partially broken coherence (App. Br. 14).
While we agree that they are not the same, we find the scanning of the
coherent light beam would have suggested the scanning of the beam with
broken coherence. We find the cited portion of Shibuya (FF 8) would have
suggested to one of ordinary skill in the art that relative movement could
have been effectuated for a beam with broken coherence. As such, we find
that the cited portion of claim 1 would have been obvious over Obenschain
and Shibuya.
With respect to the other elements of claim 1, we rely on the
Examiner’s findings with respect to the prior rejection of claim 1 over
Obenschain and Shibuya (Ans. 24-27) and our findings of fact (FF 4-8). We
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22
also adopt the Examiner’s motivation to combine Obenschain and Shibuya
provided in that rejection (Ans. 27). Additionally, as discussed supra, we do
not find Appellant’s arguments with respect to inspection and with respect to
the impropriety of combining Obenschain and Shibuya to be compelling. As
such, we find claim 1 to be unpatentable over Obenschain and Shibuya
under 35 U.S.C. § 103.
We note that sections of Shibuya relied upon in this new ground of
rejection were clearly available to both the Examiner and Appellant,
although they were cited by neither. We provide this new ground to ensure
that Appellant is given a fair opportunity to respond to the thrust of this
rejection. See In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005) (citing In
re Konig, 539 F.2d 1300, 1302 (CCPA 1976)).

DECISION
We reverse the Examiner’s decision to reject claims 1-9, 51-94, and
101-108, and we affirm the Examiner’s decision to reject claims 10-50 and
95-100.
In addition, we have entered a new ground of rejection under 37
C.F.R. § 41.50(b) for independent claim 1. Although we decline to reject
every claim under our discretionary authority under 37 C.F.R. 41.50(b), we
emphasize that our decision does not mean the remaining claims are
patentable. Rather, we merely leave the patentability determination of these
claims to the Examiner. See MPEP § 1213.02.
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23
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

AFFIRM-IN-PART
37 C.F.R. § 41.50(b)

Appeal 2010-003529
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United States Patent 6,924,891 B2

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ack

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