Ex Parte Buczkowski

Board of Patent Appeals and Interferences

Jun 19, 2012

11475792 (B.P.A.I. Jun. 19, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/475,792 06/26/2006 Andrzej Buczkowski NAN137 US 1786
34036 7590 06/19/2012
Silicon Valley Patent Group LLP
4010 Moorpark Avenue
Suite 210
San Jose, CA 95117
EXAMINER
SONG, MATTHEW J
ART UNIT PAPER NUMBER
1714
MAIL DATE DELIVERY MODE
06/19/2012 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 ANDRZEJ BUCZKOWSKI
____________

Appeal 2011-002128
Application 11/475,792
Technology Center 1700
____________

Before TERRY J. OWENS, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-002128
Application 11/475,792

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-40. We have jurisdiction under 35 U.S.C. § 6.
Appellant’s claimed invention relates to the measurement of
photoluminescence or structures that measure photoluminescence. App. Br.
5-6. Claim 1 is illustrative:
1. A non-contact method of detecting defects in a
semiconductor workpiece, the method comprising:
irradiating a portion of a semiconductor workpiece;
measuring photoluminescence from the irradiated portion
of the semiconductor workpiece; and
estimating a density of defects in the irradiated portion of
the semiconductor workpiece based on the measured
photoluminescence.
Appellant requests review of the following rejection (App. Br. 8) from
the Examiner’s final office action:1
Claims 1-40 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Silva, U.S. 4,978,862 issued Dec. 18, 1990.
OPINION
The dispositive issues for this appeal are: Did the Examiner err in
determining that Silva describes a non-contact method of detecting defects
in a semiconductor workpiece comprising irradiating a portion of a
semiconductor workpiece and measuring photoluminescence from the
irradiated portion of the semiconductor workpiece as required by the subject

1 The Examiner withdrew the rejection under 35 U.S.C. § 103(a) over the
combination of Smith and Rao. (Ans. 3).
Appeal 2011-002128
Application 11/475,792

3
matter of independent claims 1, 13, 19, and 24; and an apparatus for
detecting defects in a semiconductor workpiece comprising a detector
configured to measure photoluminescence from the semiconductor
workpiece as required by the subject matter of independent claims 28, 32, 35
and 38? 2
We answer these questions in the affirmative and REVERSE. We
reverse for the reasons provided by Appellant in the Briefs.
With respect to the anticipation rejection of claims 1 and 28, the
Examiner bears the initial burden of establishing a prima facie case of
anticipation. In re King, 801 F.2d 1324, 1326-27 (Fed. Cir. 1986).
Anticipation under 35 U.S.C. § 102 requires that “each and every element as
set forth in the claim is found, either expressly or inherently described, in a
single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999).
Appellant argues that Silva does not expressly or inherently disclose
measuring photoluminescence, but is directed to scatterometry, which is a
completely different type of optical metrology. (App. Br. 9-13). Appellant
also argues:
It is well known in the art that scatterometry is
completely different type of metrology than photoluminescence
metrology. Scatterometry is the measurement of light that is
scattered, e.g., by reflection or diffraction, from a sample. In
other words, scattered light is composed of the same photons
that are in the illuminating radiation. Thus, photoluminescence
is a completely different physical phenomenon (which operates
in the quantum level) than the scattering of light (which

2 All of the claims are related to the measurement of photoluminescence or
structures that measure photoluminescence. We will limit our discussion to
independent claims 1 and 28.
Appeal 2011-002128
Application 11/475,792

4
operates in the classical physics level). A scatterometry device
does not measure photoluminescence and a photoluminescence
type metrology device does not measure scattered, i.e., reflected
or diffracted light. In fact, as is well known, in order to operate,
a photoluminescence type metrology device needs to be
specifically configured to isolate the photoluminescence from
the illuminating light that is returned by the sample.
(Id. at 9-10).
The Examiner has not adequately refuted Appellant’s arguments. The
Examiner has not identified a portion of Silva that expressly or inherently
discloses measuring photoluminescence. An inherent characteristic must be
inevitable, and not merely a possibility or probability. See In re Oelrich,
666 F.2d 578, 581 (CCPA 1981). The Examiner has not directed us to
evidence that establishes that Silva’s scatterometry device would necessarily
measure photoluminescence or that a photoluminescence type metrology
device would necessarily measure scattered, reflected or diffracted light.
Under these circumstances, we cannot conclude that the Examiner has
met the minimum threshold of establishing anticipation under 35 U.S.C.
§ 102(b). Accordingly, the rejection of claims 1-40 under 35 U.S.C.
§ 102(b) as anticipated by Silva is reversed.

ORDER
The rejection of claims 1-40 under 35 U.S.C. § 102(b) is reversed.

REVERSED
bar