13197065 (P.T.A.B. Jul. 27, 2018)

Ex Parte Mann et al

Patent Trial and Appeal BoardJul 27, 2018

13197065 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/197,065 08/03/2011 26161 7590 07/31/2018 FISH & RICHARDSON P.C. (BO) P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 FIRST NAMED INVENTOR Hans-Juergen Mann 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 ATTORNEY DOCKET NO. 21070-0066001 I Pl01584US CONFIRMATION NO. 5027 EXAMINER ASFAW,MESFINT ART UNIT PAPER NUMBER 2882 NOTIFICATION DATE DELIVERY MODE 07/31/2018 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): P ATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HANS-JUERGEN MANN, WILHELM ULRICH, ERIK LOOPSTRA, and DAVID R. SHAFER Appeal2016-007420 1 Application 13/197,0652 Technology Center 2800 Before JUSTIN BUSCH, JOHN D. HAMANN, and JOYCE CRAIG, Administrative Patent Judges. HAMANN, Administrative Patent Judge. DECISION ON APPEAL Appellants file this appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-23, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). 1 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Nov. 6, 2015), Reply Brief ("Reply Br.," July 26, 2016), and Specification ("Spec.," filed Aug. 3, 2011), as well as the Examiner's Answer ("Ans.," mailed July 15, 2016), the Final Office Action ("Final Act.," mailed June 1, 2015), and the Advisory Action ("Adv. Act.," mailed Aug. 21, 2015). 2 Appellants identified the real party in interest as Carl Zeiss SMT GmbH. App. Br. 1. Appeal2016-007420 Application 13/197,065 We heard oral arguments on April 17, 2018. A transcript of the hearing was added to the record. We affirm-in-part. THE CLAIMED INVENTION Appellants' claimed invention relates to imaging optical systems which have a plurality of mirrors. Spec. 1, 11. 13-14. Claims 1, 12, and 23 are illustrative of the subject matter on appeal and are reproduced below. 1. An imaging optical system, comprising: a plurality of mirrors configured to image an object field in an object plane into an image field in an image plane along a beam path of imaging light, wherein: the last mirror in the beam path of the imaging light between the object field and the image field has a through-opening to pass the imaging light; the penultimate mirror in the beam path of the imaging light between the object field and the image field is outside an imaging light bundle in front of the imaging field; and a reflective face of the penultimate mirror within an optically used region of the penultimate mirror has no through-opening to pass the imaging light. 12. An imaging optical system, comprising: a plurality of mirrors configured to image an object field in an object plane into an image field in an image plane along a beam path of imaging light, wherein the imaging optical system has a pupil obscuration, and the pupil obscuration is 4.4% or less. 23. An imaging optical system, comprising: a plurality of mirrors configured to image an object field in an object plane into an image field in an image plane along a beam path of imaging light, wherein: 2 Appeal2016-007420 Application 13/197,065 only the last mirror in the beam path of the imaging light between the object field and the image field has a reflective surface that surrounds a through-opening to pass the imaging light; and the reflective face surface of the last mirror is an optically used surface. REJECTIONS ON APPEAL (1) The Examiner rejected claims 1-11, 19, and 21 under 35 U.S.C. Â§ I03(a) as being unpatentable over the combination of Omura (US 2002/0176063 Al; published Nov. 28, 2002) and Mann et al. (US 2007/0058269 Al; published Mar. 15, 2007) (hereinafter "Mann '269"). (2) The Examiner rejected claims 12-18, 20, and 22 under 35 U.S.C. Â§ I03(a) over Mann et al. (US 2006/0232867 Al; published Oct. 19, 2006) (hereinafter "Mann '867"). (3) The Examiner rejected claim 23 under 35 U.S.C. Â§ I02(b) as being anticipated by Mann '867. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' contentions that the Examiner erred. We address specific findings and arguments below. (1) Claim 1 and related claims 2-11. 19. and 21 Appellants argue that the Examiner does not demonstrate that a person of ordinary skill in the art would have modified Omura to include the relevant teachings of Mann '269 to provide the subject matter covered by independent claim 1. See App. Br. 7-8; Reply Br. 1-2. Claim 1 requires, inter alia, that (i) the last mirror has a through-opening; and (ii) the 3 Appeal2016-007420 Application 13/197,065 penultimate mirror has a reflective face and has no through-opening to pass the imaging light. App. Br. 10. Appellants argue that Omura discloses that both the last mirror and penultimate mirror have throughholes, while for Mann '269, neither of these mirrors has throughholes. App. Br. 7-8 (citing Omura Figs. 1, 4, 6; Mann '269 Fig. 3). Appellants argue, in effect, that the Examiner picks and chooses certain features of Omura and Mann '269 to show the claim limitations. See id. at 8. More specifically, Appellants argue that "the Examiner has not properly explained why [ a person of ordinary skill in the art] ... would have modified only one mirror -- specifically, the penultimate mirror -- of Omura's system without also modifying the last mirror in Omura's system such that it would not have such a through- opening." Reply Br. 2 (citing Mann '269 ,r 24). The Examiner finds that Omura and Mann '269 are properly combined. Ans. 5; Final Act. 7. More specifically, the Examiner finds that one of ordinary skill in the art would have been motivated to incorporate Mann '269's penultimate mirror in the projection objective of Omura, "to avoid undesired obscuration (the combined teaching would also avoid having an aperture on the penultimate mirror and the need to have for example a shading area, as a result improving imaging performance[)]." Ans. 5. We agree with Appellants that the Examiner does not provide a sufficient factual basis demonstrating that one of ordinary skill in the art would have chosen the particular claimed arrangement (i.e., the last mirror having a through-opening and the penultimate mirror not having a through- opening). It is improper to base a conclusion of obviousness upon facts gleaned only through hindsight. To draw on hindsight knowledge of the 4 Appeal2016-007420 Application 13/197,065 patented invention, when the prior art does not contain or suggest that knowledge, is to use the invention as a template for its own reconstruction- an illogical and inappropriate process by which to determine patentability. Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore &Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)). Accordingly, we do not sustain the Examiner's rejection of claim 1. We also do not sustain the Examiner's rejection of claims 2-11, 19, and 21, which relate to claim 1, for the same reasons as the Examiner does not provide additional information with respect to these claims that cures the above noted deficiency. (2) Claims 12-18. 20. and 22 Appellants argue that Mann '867 fails to teach or suggest a pupil obscuration that is 4.4% or less in accordance with claim 12. App. Br. 5-7. More specifically, Appellants argue that the Examiner assumes, without an appropriate foundation, that Mann '867's Robs "mean[s] the same thing as 'pupil obscuration' as it appears in independent claim 12." Id. at 6. According to Appellants, Mann '867 teaches: Partial objectives that use mirrors that have an opening result in part of a pupil of the partial objective being obscured .... The extent to which the exit pupil of projection objective 101 is obscured can be characterized by a value, Robs, referred to as the obscuration radius, which is the minimum percentage of the aperture radius of projection objective 101 that can be obscured at a pupil plane where the obscuration is substantially independent of the field position . . . . In other words, the obscuration radius corresponds to the minimum obscuration at a pupil plane that appears substantially the same at all positions in the field .... For example, Robs can be about 5 Appeal2016-007420 Application 13/197,065 30% or less ( e.g., . . . about 10% or less). In certain embodiments, R[obs] is more than about 2% .... App. Br. 6 (quoting Mann '867 i-f 148). Appellants contend that Mann '867's definition for Robs "is not identical" to how Appellants define pupil obscuration (i.e., "[t]he numerical value for the pupil obscuration is produced by the ratio of the area within the exit pupil masked because of the pupil obscuration relative to a total area of an exit pupil of the imaging optical system"). Id. at 6-7 (citing Spec. 2, 11. 9--11). The Examiner finds that Mann '867 teaches or suggests the disputed limitation. See Final Act. 4; Ans. 3--4. For example, the Examiner finds that Mann '867 teaches or suggests "objectives can include mirrors having openings for the passage of radiation, but with relatively low obscuration of the pupil. Low obscuration can provide better image quality." Id. (citing Mann '867 ,r 49). The Examiner also finds that embodiments that include a mirror with an opening can have relatively little pupil obscuration. Id. at 4 (citing Mann '867 ,r 148). "For example, Robs can be about 30% or less (e.g., about 25% or less, about 22% or less, about 20% or less, about 18% or less, about 15% or less, about 12% or less, about 10%, or less). In certain embodiments, Robs is more than about 2%,." Id. (quoting Mann '867 ,r 148). We are not persuaded of Examiner error. The plain claim language simply requires that the imaging optical system has a pupil obscuration that is 4.4% or less. App. Br. 11 (showing claim 12). The Specification further explains pupil obscuration is "the ratio of the area within the exit pupil masked because of the pupil obscuration relative to a total area of an exit pupil." Spec. 2, 11. 9--11. In other words, claim 12 simply requires that 4.4% or less of the imaging system's exit pupil is obscured. App. Br. 11; Spec. 2, 6 Appeal2016-007420 Application 13/197,065 11. 9--11. Claim 12 does not require that a particular formula is used to determine the degree of obfuscation. Mann '867 similarly focuses on the extent to which the exit pupil is obscured, which Mann '867 characterizes by the value "RobsÂ·" Mann '867 ,r 148. Although the definition for Robs - "the minimum percentage of the aperture radius of projection objective 101 that can be obscured at a pupil plane where the obscuration is substantially independent of the field position, as determined for a meridional section of projection objective 101" - differs from the formula used in the Specification, Robs, nonetheless, relates to "the extent to which the exit pupil of projection objective 101 is obscured." Id. Mann '867 also discloses that Robs can be 10% or less or more than 2%. Id. Thus, regardless of how Robs is evaluated, it can be unbounded (i.e., more or less), and thus, discloses "pupil obscuration is 4.4% or less," as recited in claim 12. See App. Br. 11 ( emphasis added). Accordingly, we sustain the Examiner's rejection of claim 12, as well as claims 13-18, 20, and 22, which were not separately argued. (3) Claim 23 Appellants argue that the Examiner improperly rejects claim 23 under Â§ 102 because the Examiner combines features from different embodiments of Mann '867. App. Br. 2. For example, Appellants argue that the Examiner "combine[ s] features from the partial objective depicted in Figure 5a of Mann '867 with features of the partial objective depicted in Figure 6a," which are different embodiments. Id. (citing Mann '867 Figs. 5A, 6A, ,r,r 144, 146). For example, according to Appellants the "partial objective shown in Figure 6A uses a collimated input beam shown at 505 [, while] ... 7 Appeal2016-007420 Application 13/197,065 such a collimated input beam is not used in the objectives shown in Figures 5A and 5B." Id. at 5 (citing Mann '867 Figs. 5A, 5B, 6A). The Examiner disagrees that the rejection relies on different embodiments in Mann '867. Adv. Act. 2. More specifically, the Examiner finds that the cited "disclosure is not a suggestion of combining two embodiments, instead the disclosure suggested objectives 400 and 450 can also be formed from mirrors that include[] an opening." Adv. Act. 2 (citing Mann '867 ,r 146); see also id. (quoting Mann '867 ,r 146) ("While partial objectives 400 and 450 are formed from mirrors that do not include openings, partial objectives can also be formed from mirrors that do include an opening. For example, referring to FIG. 6A, a partial objective 500 is formed from mirrors 510 and 520, where mirror 510 includes an opening 511."). We agree with Appellants that the Examiner errs. Mann '867's paragraph 146 distinguishes between two different embodiments, with (i) Figures 5A and 5B referring to an objective embodiment having no holes in the mirrors, and (ii) Figure 6A referring to an objective embodiment having a mirror with a hole. See Mann '867 ,r 146; see also id. ,r 130 ( disclosing that "mirrors in projection objective 101 can be categorized as being in one of two groups: mirrors in the first group include an opening for the passage of radiation and mirrors in the second group do not"). We find that the Examiner incorrectly relies on different disclosures in making the Â§ 102 rejection. See In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (finding for a claimed invention to be anticipated, the reference must "direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other"); see 8 Appeal2016-007420 Application 13/197,065 also Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (finding in an anticipation rejection, "it is not enough that the prior art reference ... includes multiple, distinct teachings that [ an ordinary] artisan might somehow combine to achieve the claimed invention"). Accordingly, we do not sustain the Examiner'sÂ§ 102 rejection of claim 23. DECISION We reverse the Examiner's decision rejecting claims 1-11, 19, and 21 underÂ§ 103. We affirm the Examiner's decision rejecting claims 12-18, 20, and 22 underÂ§ 103. We reverse the Examiner's decision rejecting claim 23 underÂ§ 102. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 9