Ex Parte Kraehmer et al

Patent Trial and Appeal Board

Apr 18, 2017

12723456 (P.T.A.B. Apr. 18, 2017)

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.
12/723,456 03/12/2010 Daniel Kraehmer 23523-0018001/ 5288
6409P349U
26161 7590 04/20/2017
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
LIU, CHIA HOW MICHAEL
ART UNIT PAPER NUMBER
2882
NOTIFICATION DATE DELIVERY MODE
04/20/2017 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 DANIEL KRAEHMER, AURELIAN DODOC,
HANS-JUERGEN MANN, and TORALF GRUNER
Appeal 2016-003103
Application 12/723,456
Technology Center 2800
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
WESLEY B. DERRICK, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1—10, and 14—21 under 35 U.S.C. § 103(a) as
unpatentable over the combined prior art of Omura (6,750,948 B2, issued
June 15, 2004) and Oshino (JP2005086148 (A), published March 31, 2005;
as translated). We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
Claims 1 is illustrative:
An objective configured so that, during use, useful light can propagate
through the objective along a light propagation direction, the objective
comprising:
1 The real party in interest is stated to be “Carl Zeiss SMT GmbH” (Br. 1).
Appeal 2016-003103
Application 12/723,456
a first optical surface having a first region that interacts with the
useful light during use of the objective;
a second optical surface having a second region for application
of the useful light that interacts with the useful light during use of the
objective;
a third optical surface comprising a reflective surface and a
through hole; and
a tube between the first and second optical surfaces along the
light propagation direction, wherein:
during use of the objective, a beam envelope of the useful
light extends between the first and second regions;
the tube is open on an input side in the light
propagation direction;
the tube is open on an output side in the light
propagation direction;
the tube screens scattered light during use of the
objective;
the tube has a wall that is opaque in a wavelength
range of the useful light;
the tube extends in the propagation direction of the
useful light over at least a partial length of the beam
envelope;
the tube extends circumferentially surrounding the
beam envelope;
the tube is in the through hole through which the
useful light passes during use of the objective;
the reflective surface comprises first and second
portions;
the through hole is between the first and second
portions of the reflective surface;
during use of the objective, the useful light is
reflected from the first and second portions of the
reflective surface; and
the objective is configured to be used in
microlithography.
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Appeal 2016-003103
Application 12/723,456
ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions, we determine that the preponderance of
evidence supports the Examiner’s conclusion that the subject matter of
Appellants’ independent claim 1 is unpatentable over the applied prior art.2
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418.
Appellants’ do not dispute the Examiner’s factual findings with
respect to the applied references in this rejection (generally Br.). Rather,
Appellants’ only arguments with respect to independent claim 1 de facto
focus on a lack of a reason to modify (and no reasonable expectation of
success in modifying) Omura’s optical system by adding a stray light
diaphragm (tube) as exemplified in Oshino’s optical system (Br. 4) and that
the Examiner gave “absolutely no consideration to, for example, the
technical difficulties, costs, potential negative performance issues that could
result” (Br. 5). These arguments fail to adequately consider the prior art as a
whole, and do not adequately address the Examiner’s factual findings and
2 Appellants only present arguments directed to the features of claim 1
(Br. 3—5) and to dependent claims 5—7 (Br. 5, 6).
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Application 12/723,456
obviousness position (generally Final Action; Ans.). See In re Keller, 642
F.2d 413, 425—26 (CCPA 1981) (“The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference .... Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”); see also e.g.,In reFritch, 972 F.2d 1260, 1264—65 (Fed. Cir.
1992) (it is well established that in evaluating references it is proper to take
into account not only the specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom).
Furthermore, Appellants have not adequately addressed the
Examiner’s detailed response to Appellants’ arguments (Ans. 2—5; no
responsive brief has been filed). Appellants have not asserted that the
proposed modification of Omura’s optical objective system to include a tube
(stray light diaphragm) as exemplified in Oshini’s optical objective system
would have been beyond the capabilities of a person of ordinary skill in the
art. Absent such assertion or adequate evidence, we “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ,” and find a person of ordinary skill in the art would have overcome
those difficulties within their level of skill. KSR, 550 U.S. at 418; see also
id. at 421 (“A person of ordinary skill is also a person of ordinary creativity,
not an automaton.”); Ball Aerosol & Specialty Container, Inc. v. Limited
Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible inquiry
set forth by the Supreme Court, the PTO must take account of the
“inferences and creative steps,” as well as routine steps, that an ordinary
artisan would employ (emphasis omitted)); In re Sovish, 769 F.2d 738, 743
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Application 12/723,456
(Fed. Cir. 1985) (one of ordinary skill is presumed to be skillful). See also,
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (An attorney’s arguments
in a brief cannot take the place of evidence).
Accordingly, Appellants have not provided persuasive technical
rationale or any credible evidence to refute the Examiner’s determination it
would have been obvious to use a tube/stray light diaphragm (as required by
independent claim 1), as exemplified to be a known practice in Oshino’s
objective optical system, in the objective optical system of Omura (Final
Action 2-A\ generally Ans.; Br.). KSR, 550 U.S. at 416 (the predictable use
of prior art elements according to known methods for their established
functions is likely to be obvious when it does no more than yield predictable
results). “A person of ordinary skill is also a person of ordinary creativity,
not an automaton.” Id. at 421.
Further, in response to Appellants’ assertion that the Examiner has not
considered the costs of the modification, in assessing whether a claim to a
combination of prior art elements would have been obvious, the fact that a
combination may increase costs does not necessarily mean that a person of
ordinary skill in the art would not have made the combination for the known
benefits of additional stray light diaphragms (e.g., Ans. 3). See Orthopedic
Equipment Co. et al. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983)
(“the fact that the two disclosed apparatus would not be combined by
businessmen for economic reasons is not the same as saying that it could not
be done because skilled persons in the art felt that there was some
technological incompatibility that prevented their combination. Only the
latter fact is telling on the issue of nonobviousness.”). See also In re
Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983) (“additional expense
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Application 12/723,456
associated with the addition of inhibitors would not discourage one of
ordinary skill in the art”).
To the extent that claims 5—7 are argued separately (Br. 5), a
preponderance of the evidence supports the Examiner’s position the one of
ordinary skill would have appreciated that the recited distance between the
tube and the beam envelope of the useful light should be as small as possible
(Ans. 4, 5). Thus, absent a showing of criticality or unexpected results,
optimizing the distance to within the claimed ranges which all include zero
would have been within the level of ordinary skill in the art (id.).
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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