Ex Parte Haller et al

Board of Patent Appeals and Interferences

Nov 15, 2010

10678883 (B.P.A.I. Nov. 15, 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.
10/678,883 10/03/2003 Kurt Haller 5222-04901/P1068 2324
61507 7590 11/15/2010
Entropy Matters LLC
P.O. Box 2250
NEW YORK, NY 10021
EXAMINER
LEE, HSIEN MING
ART UNIT PAPER NUMBER
2823
MAIL DATE DELIVERY MODE
11/15/2010 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 KURT HALLER and SUSAN S. LOPEZ
________________

Appeal 2009-002640
Application 10/678,883
Technology Center 2800
__________________

Before KENNETH W. HAIRSTON, CARLA M. KRIVAK, and
THOMAS S. HAHN, Administrative Patent Judges.

HAHN, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants invoke our review under 35 U.S.C. § 134(a) from the final
rejection of claims 1-3, 8, 10-16, and 19.2 We have jurisdiction under 35
U.S.C. § 6(b). We affirm-in-part.

1 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”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
2 Pending claims 20 and 21 are reported allowed (Final Action, mailed Jan.
4, 2007, (hereinafter Final Action), ¶ 4). Whereas, also pending claims 4-7,
9, 17, and 18 are reported objected to, but would be allowable if rewritten in
independent forms to include all limitations of their base and any intervening
claims (Final Action, ¶ 5).
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Application 10/678,883

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STATEMENT OF THE CASE3
Exemplary Claim
Appellants claim a method for determining if different defects
detected on the front side and the backside of a specimen, e.g., a
semiconductor wafer, are opposite from each other (see generally Abstract).
Claim 1 is illustrative:
1. A computer-implemented method, comprising:

determining if a portion of a backside defect detected on a backside of
a specimen is opposite to a portion of the frontside defect detected on
a frontside of the specimen; and

correlating the backside defect with the frontside defect if the portion
of the backside defect is determined to be opposite to the portion of
the frontside defect.
Rejection
The Examiner rejected claims 1-3, 8, 10-16, and 19 as being
unpatentable under 35 U.S.C. § 103(a) over Wooten, US Patent 6,156,580
(Ans. 3-6).

3 We refer for respective details to Appellants’ Appeal Brief, filed Oct. 31,
2007, (hereinafter App. Br.), the Examiner’s Answer, mailed Feb. 12, 2008,
(hereinafter Ans.), and the Reply Brief, filed, Mar. 24, 2008, (hereinafter
Reply Br.). Further, we note that arguments not made by Appellants have
not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

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Appellants’ Contentions
Appellants group claims 1, 2, 16, and 19 (App. Br. 4-22; Reply Br. 2-
14), but only separately argue independent claim 1 with the acknowledgment
that the other “[i]ndependent claim 16 recites similar limitations” (App. Br.
4). Appellants’ pivotal arguments are that: (i) “Wooten does not teach,
suggest, or provide motivation for correlating a backside defect with a
frontside defect if a portion of the backside defect is determined to be
opposite to a portion of the frontside defect” (App. Br. 4-9); (ii) “One of
ordinary skill in the art would not have been motivated by Wooten to
attempt to find a mutual relation between front side and back side defects”
(App. Br. 10-12); and (iii) “There is no teaching, suggestion, or motivation
for a reasonable expectation of success that the systems and methods of
Wooten can be used as suggested by the Examiner” (App. Br. 16-17).
Appellants separately argue dependent claim 3 (App. Br. 22-24; Reply
Br. 14) with the assertion Wooten discloses generating two different
reflected images, but fails to teach or suggest generating a single visual
representation of front and back side defects as recited in claim 3 (id.).
Appellants separately argue dependent claim 8 (App. Br. 24-25) with
the assertion Wooten discloses using coordinates to determine positions of
front and back side defects, but fails to teach or suggest comparing
coordinates to determine if portions of defects are on opposite sides of a
specimen as recited in claim 8 (id.).
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Appellants separately argue dependent claim 10 (App. Br. 26-27) with
the assertion Wooten discloses performing defect reviews to determine if the
defects render a wafer unusable, but fails to teach or suggest classifying a
defect as recited in claim 10 (id.).
Appellants separately argue dependent claim 11 (App. Br. 27-29) with
the assertion Wooten discloses that wafer defects may be caused by tool
malfunctions or process problems, but fails to teach or suggest determining a
root cause of defects from data representing processing history as recited in
claim 11 (id.).
Appellants separately argue dependent claim 12 (App. Br. 29-31;
Reply Br. 14-15) with the assertion Wooten discloses performing defect
reviews to determine if the defects render a wafer unusable, but fails to teach
or suggest classifying front and back side defects as recited in claim 12 (id.).
Appellants separately argue dependent claim 13 (App. Br. 31-33;
Reply Br. 15) with the assertion Wooten discloses that wafer defects may be
caused by tool malfunctions or process problems, but fails to teach or
suggest determining a root cause of a front side defect from a classification
of a backside defect as recited in claim 13 (id.)
Appellants separately argue dependent claim 14 (App. Br. 33-35) with
the assertion Wooten discloses altering the position of a wafer inverter if
front side defects are acceptable and if it is desirable to review backside
defects, but fails to teach or suggest classifying backside defects as recited in
claim 14 (id.).
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Appellants separately argue dependent claim 15 (App. Br. 35-36;
Reply Br. 15-16) with the assertion that there is no evidence that an
ordinarily skilled artisan would be motivated to alter a process tool
parameter in response to a backside defect to reduce occurrence of front side
defects as recited in claim 15 (Reply Br. 16).
ISSUES
Appellants’ contentions present us with the following issues:
1. Does Wooten, under § 103(a), teach or suggest determining if portions
of front and backside defects are opposite each other, and correlating
the opposite defects as recited in claim 1?
2. Does Wooten, under § 103(a), teach or suggest generating a single
visual representation of front and back side defects as recited in claim
3?
3. Does Wooten, under § 103(a), teach or suggest comparing
coordinates to determine if portions of defects are on opposite sides of
a specimen as recited in claim 8?
4. Does Wooten, under § 103(a), teach or suggest classifying a defect as
recited in claim 10?
5. Does Wooten, under § 103(a), teach or suggest determining a root
cause of defects from datum representing processing history as recited
in claim 11?
6. Does Wooten, under § 103(a), teach or suggest classifying front and
back side defects as recited in claim 12?
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7. Does Wooten, under § 103(a), teach or suggest determining a root
cause of a front side defect from a classification of a backside defect
as recited in claim 13?
8. Does Wooten, under § 103(a), teach or suggest classifying backside
defects as recited in claim 14?
9. Does Wooten, under § 103(a), teach or suggest altering a process tool
parameter in response to a backside defect to reduce occurrence of
front side defects as recited in claim 15?
FINDINGS OF FACT
The following findings of fact (FF) are supported by a preponderance
of evidence:
1. Wooten discloses performing computer controlled analyses of front
and backside inspections of semiconductor wafer surfaces to provide
defect detected inspection datum, which datum includes coordinates
for detected defects (Abstract; Spec., col. 1, ll. 47-48; col. 1, l. 55 –
col. 2, l. 22; col. 3, l. 51 – col. 4, l. 11).
2. Wooten teaches using determined defect coordinates to position a
wafer for microscope inspection as to “whether the defect makes the
wafer unusable” (col. 4, ll. 14-18), and further teaches the “reviewing
[of] the front sides of wafers, and reviewing the back sides of wafers”
(col. 5, ll. 48-51) at the defect coordinate positions (see col. 8, ll. 20-
52), which coordinates provide information usable for determining
whether defects are opposite each other.

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PRINCIPLES OF LAW
Examined claims are interpreted as broadly as is reasonable using
ordinary and accustomed term meanings so as to be consistent with the
specification, In re Thrift, 298 F.3d 1357, 1364 (Fed. Cir. 2002), while
“taking into account whatever enlightment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant’s specification,” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997), and without reading limitations from examples given in the
specification into the claims, In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir.
1989).
To establish prima facie obviousness of a claimed invention, all of the
claim limitations must be taught or suggested by the prior art. See In re
Royka, 490 F.2d 981, 985 (CCPA 1974).
The Examiner’s articulated reasoning for rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The Supreme Court has stated
that “‘rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting Kahn, 441 F.3d at 988).

ANALYSIS
Claims 1, 2, 16, and 19
Appellants separately argue independent claim 1, and assert that
claims 2, 16, and 19 are patentable for the same reasons (App. Br. 4-22;
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Reply Br. 2-14). We, accordingly, select claim 1 as representative of this
group, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
We concur with the Examiner that:
[A]ll of Appellants’ assertions are drawn to the major issue that
Wooten's teachings do not teach, suggest or provide motivation for
correlating a backside defect with a frontside defect if a portion of the
backside defect is determined to be opposite to a portion of the
frontside defect; or Wooten do[es] not teach or suggest determining
any relationship between frontside defects and backside defects.
(Ans. 7.) Based on the record, we are not persuaded by Appellants’
arguments for claim 1, also summarized supra.
We agree with and adopt the Examiner’s findings that:
Wooten et al. teach a computer-implemented method (col. 1,
lines 47-48), comprising using laser to inspect both front-side defects
and back-side defects of a wafer (col. 1, lines 55-60) and col. 5, lines
48-51); and downloading the front-side and back-side inspection data
to a microscope review station 110 (col. 1, line 63 through col. 2, line
3 and col. 2, lines 14-23) to review the front-side defects and the
back-side defects to determine if these defects present certain
coordination (col. 4, lines 14-17 and col. 8, lines 36-52) and thus to
judge if the wafer is acceptable (col. 4, lines 17-19).
(Ans. 3, see FF 1, 2.) The Examiner admits that Wooten does “not expressly
teach correlating a back-side defect with a front-side defect detected [on] a
specimen” (Ans. 3), but the Examiner finds and reasons:
[O]ne of the ordinary skill in the art would have been motivated [to]
review the front-side and back-side defects at certain coordinates (col.
4, lines 14-17) to determine a qualitative and/or quantitative mutual
relation between the front-side defect and the back-side defect. This
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is because correlating the back-side defect with the front-side defect
can be reasonably interpreted as finding a mutual relation between
the front-side defects and the backside defects via reviewing the front-
side and backside defects at a certain coordinate (col. 4, lines 14-17).
Finding the mutual relation would involve determining if a portion of
the backside defect has correlation with a portion of the front-side
defect or if a portion of the backside defect matches a portion of the
front-side defect.
(Id.)
The disputed limitations are recited as: “determining if a portion of a
backside defect . . . is opposite to a portion of the frontside defect . . . ; and
correlating the backside defect with the frontside defect if the portion of the
backside defect is determined to be opposite to the portion of the frontside
defect.” Appellants do not argue any specialized or narrowed definition for
“correlating” or any other recited term, nor do we find that Appellants’
Specification provides any definitions other than ordinary and accustomed
definitions for recited terms. We, accordingly, find as a reasonably broad
interpretation that representative claim 1 recites determining and correlating
a geometric relationship between front and backside detected defects.
The Examiner, we agree, adequately reasons from Wooten, under
§ 103(a), for a modification to determine a geometric relationship “because
correlating the back-side defect with the front-side defect can be reasonably
interpreted as finding a mutual relation between the front-side defects and
the backside defects via reviewing the front-side and backside defects at a
certain coordinate” (Ans. 3, italicized emphasis added (citation omitted)).
See KSR, 550 US at 417 (“When work is available in one field of endeavor,
design incentives and other market forces can prompt variations . . . . If a
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person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.”). We find the Examiner’s modification of Wooten is
reasonable and has a rational underpinning, which is not rebutted by
conflicting evidence or persuasive argument in the record. The modification
provides a predictable result that an ordinarily skilled artisan would be
capable of implementing.
For the foregoing reasons, we are not persuaded that the Examiner
erred in rejecting representative claim 1. We will sustain the rejection of
claim 1 and will also sustain the rejection of independent claim 16 along
with the rejection of the respective dependent claims 2 and 19.
Claim 3
Claim 3 depends from claim 1 and, inter alia, recites “generating a
single visual representation . . . that illustrates the backside defect and the
frontside defect . . . .” Despite the Examiner’s contentions (Ans. 4, 15), we
agree with Appellants that Wooten discloses separate front and backside
views and “not . . . a single visual representation” as recited (App. Br. 22-24;
Reply Br. 14). Accordingly, we find the Examiner erred in rejecting claim
3.
Claim 8
Claim 8 depends from claim 1 and, inter alia, recites “comparing
coordinates defining a location of the backside defect with coordinates
defining a location of the frontside defect . . . .” We, for at least the reasons
addressed supra for claim 1, are not persuaded by Appellants’ arguments
that Wooten discloses using coordinates to determine positions of front and
back side defects, but Wooten fails to teach or suggest comparing
coordinates to determine if portions of defects are on opposite sides of a
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specimen (App. Br. 24-25). We find the Examiner did not err in rejecting
claim 8.
Claim 10
Claim 10 depends from claim 1 and, inter alia, recites “classifying the
backside defect.” Appellants do not argue any specialized or narrowed
definition for “classifying” or any other recited term, nor do we find that
Appellants’ Specification provides any definitions other than ordinary and
accustomed definitions for the recited terms. Despite Appellants’ arguments
(App. Br. 26-27), summarized supra, we agree with the Examiner’s
reasoning that the limitation does not narrow how to “classify the backside
defect,” and, therefore, Wooten’s disclosed inspection to determine if a
defect makes a wafer acceptable or unusable is a defect classification as
recited in claim 10 (Ans. 16; see FF 2). We, accordingly, find that the
Examiner did not err in rejecting claim 10.
Claim 11
Claim 11 depends from claim 1 and, inter alia, recites “determining a
root cause of the backside defect from data representing processing history
of the specimen.” Appellant asserts that Wooten merely discloses that wafer
defects may be caused by tool malfunctions or process problems (App. Br.
28-29). The Examiner responds, and we agree, that an ordinarily skilled
artisan would have been motivated “to determine a root cause of the back-
side defect (e.g. unwanted debris or contaminants) from data representing
process history of the specimen because the laser scan inspection tool along
with the microscope view station as taught by Wooten et al. are capable of
classifying and analyzing the defect data and providing information for
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determining the root cause of the defect” (Ans. 17; see FF 1, 2). We,
accordingly, find that the Examiner did not err in rejecting claim 11.
Claim 12
Claim 12 depends from claim 1 and, inter alia, recites “determining
parameters for classifying the frontside defect from the classification of the
backside defect.” Appellants assert that Wooten merely discloses
performing defect reviews to determine if the defects render a wafer
unusable (App. Br. 29-31; Reply Br. 14-15). The Examiner admits and
relies on Wooten’s taught “method and system for acceptance test[ing] (col.
4, lines 28-30)” (Ans. 17) as rending claim 12 obvious (Ans. 5, 17).
Appellants respond “even if Wooten teaches or suggests setting parameters
to classify if a wafer is acceptable or not, Wooten still does not teach or
suggest setting parameters to classify a frontside defect” (Reply Br. 15). We
are persuaded by Appellants’ argument because we have not found that the
Examiner has identified Wooten taught or suggested parameters for
classifying front side defects from the classification of back side defects as is
recited. We, accordingly, find that the Examiner erred in rejecting claim 12.
Claim 13
Claim 13 depends from claim 1 and, inter alia, recites “determining a
root cause of the frontside defect from the classification of the backside
defect.” Appellants assert Wooten is deficient with only general disclosures
that wafer defects are caused by tool malfunctions or process problems
(App. Br. 31-33; Reply Br. 15). The Examiner reasons that Wooten
provides adequate teachings for determining if front and back side defects
are opposite each other, and that an ordinarily skilled artisan “would be able
to determine if the root cause of the frontside defect is related to the
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backside defect, which may be contributed from processing-related
mistakes, based on the classification of the backside defect” (Ans. 18). We
are unable to find underpinning rational for the Examiner’s conclusion, and
we agree with Appellants that the Examiner’s position is without supporting
evidence or rational (Reply Br. 15). Accordingly, we find that the Examiner
erred in rejecting claim 13.
Claim 14
Claim 14 depends from claim 1 and, inter alia, recites “determining a
root cause of the frontside defect from the classification of the backside
defect.” Appellants assert Wooten is deficient with only general disclosures
for altering the position of a wafer inverter if front side defects are
acceptable and if it is desirable to review back side defects (App. Br. 33-35).
The Examiner, we find, correctly reasons that since Wooten teaches wafer
“acceptance test[ing] (col. 4, lines 28-30)” (Ans. 19; FF 2), an ordinarily
skilled artisan “would be able to analyze and categorize the defect pattern
and alter the parameter of a process tool” (Ans. 19). We find no evidence or
persuasive argument in the record that rebuts the Examiner’s findings and
reasoning. Accordingly, we find that the Examiner did not err.
Claim 15
Claim 15 depends from claim 1 and, inter alia, recites “altering a
parameter of a process tool in response to the backside defect to reduce
occurrence of the frontside defect on additional specimen processed in the
process tool.” The Examiner finds that an ordinarily skilled artisan “would
have been motivated to use Wooten's teachings to classify the back-side
defect and to alter a parameter of a process tool in response to the
classification or in response to the back-side defect to reduce occurrence of
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the front-side defect on additional specimen since Wooten teaches analyzing
and categorizing the defect pattern and altering the parameter of a process
tool” (Ans. 5). Appellants assert that there is no evidence that an ordinarily
skilled artisan would be motivated to alter a process tool parameter in
response to a backside defect to reduce the occurrence of front side defects
(App. Br. 35-36; Reply Br. 16). We are unable to find underpinning rational
for the Examiner’s conclusion, and we agree with Appellants that the
Examiner’s position is without supporting evidence or rational (Reply Br.
16). Accordingly, we find that the Examiner erred in rejecting claim 15.

ORDER
The Examiner’s decision rejecting claims 1, 2, 8, 10, 11, 14, 16, and
19 is affirmed. The Examiner’s decision rejecting claims 3, 12, 13, and 15 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED-IN-PART

KIS

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