Ex Parte Mikami et al

Patent Trial and Appeal Board

Apr 2, 2018

13198032 (P.T.A.B. Apr. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/198,032 08/04/2011
37013 7590 04/04/2018
Rossi, Kimms & McDowell LLP
20609 Gordon Park Square
Suite 150
Ashburn, VA 20147
FIRST NAMED INVENTOR
KojiMIKAMI
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. CONFIRMATION NO.
CAN0-1723 6975
EXAMINER
PERSAUD, DEORAM
ART UNIT PAPER NUMBER
2882
NOTIFICATION DATE DELIVERY MODE
04/04/2018 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):
mail@rkmllp.com
EOfficeAction@rkmllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOJI MIKAMI, YUICHI GYODA,
KOUICHIROU TSUJITA, and HIROYUKI ISHII
Appeal2017-006871
Application 13/198,032 1
Technology Center 2800
Before JAMES C. HOUSEL, BRIAND. RANGE, and
SHELDON M. McGEE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-12. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is CANON
KABUSHIKI KAISHA. Appeal Br. 2.
Appeal2017-006871
Application 13/198,032
STATEMENT OF THE CASE2
Appellants describe the invention as relating to "a decision method
and a storage medium." Spec. i-f 1. In particular, the Specification indicates
that the invention relates to an improved method of transferring a pattern
onto a substrate (for example, a wafer). Id. at i-f 2. The method involves
deciding exposure conditions for the exposure apparatus, and the
Specification states that exposure conditions are "the effective light source
and the like." Id. at i-f 33. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method of determining an exposure condition to be set
in an exposure apparatus including an illumination optical
system that illuminates a pattern including a plurality of pattern
elements, and a projection optical system that projects the pattern
onto a substrate, the method being executable by a processor and
compnsmg:
a first step of setting a first line to be used to evaluate
dimensions of images of the pattern elements on an image plane
of the projection optical system;
a second step of setting a second line to be used to evaluate
whether the images of the pattern elements are resolved on the
image plane of the projection optical system;
a third step of obtaining a distance between intersections
of the first line and contours of the images of the pattern elements
by obtaining the image of the pattern formed on the image plane
of the projection optical system;
a fourth step of determining whether there exist
intersections of the second line and the contours of the images of
the pattern elements to evaluate whether the images of the pattern
elements are resolved;
2 In this opinion, we refer to the Final Office Action dated September 22,
2015 ("Final Act."), the Appeal Brief filed February 22, 2016 ("Appeal
Br."), the Examiner's Answer dated January 25, 2017 ("Ans."), and the
Reply Brief filed March 26, 2017 ("Reply Br.").
2
Appeal2017-006871
Application 13/198,032
a fifth step of evaluating the obtained image of the pattern
by setting a value of the distance obtained in the third step as an
evaluation value upon the fourth step determining that no
intersections exist, and setting an outlier different from the value
of the distance obtained in the third step as the evaluation value
upon the fourth step determining that the intersections exist;
a sixth step of determining the exposure condition based
on an evaluation result obtained in the fifth step so that the image
of the pattern formed on the image plane of the projection optical
system satisfies a criterion for evaluation; and
a seventh step of outputting the exposure condition
determined by the sixth step to a display device.
Appeal Br. 10 (Claims App.).
REJECTION
On Appeal, the Examiner maintains the rejection of claims 1-12 as
unpatentable under 35 U.S.C. § 101. Final Act. 2.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections.")). After considering the
evidence presented in this Appeal and each of Appellants' arguments, we are
not persuaded that Appellants identify reversible error. Thus, we affirm the
3
Appeal2017-006871
Application 13/198,032
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellants argue all claims as a group. We therefore limit our
discussion to claim 1. All other claims stand or fall with that claim. 3 7
C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner rejects all claims on appeal under 35 U.S.C. § 101 as
being directed to an abstract idea. The Examiner states that the claims on
appeal are "directed to an abstract idea of setting, obtaining, determining and
evaluating data and deciding exposure conditions for a lithographic
apparatus based on the data which is then displayed." Final Act. 2. The
Examiner determines that the claims' recited steps do not actually adjust any
lithographic exposure conditions in the real world. Id. at 2-3. Appellants do
not persuasively dispute this determination.
Appellants argue that claim 1 is not abstract because the claimed
subject matter does not fall within examples of abstract ideas provided by
Patent Office guidance (Appeal Br. 5), because the claimed method is
similar to claims held patent eligible in Research Corp. v. Microsoft Corp.,
627 F.3d 859 (Fed. Cir. 2010) (id. at 5---6), and because the claimed method
"contributes to precise formation of a pattern in lithography technology" (id.
at 6) and are thus similar to the patent eligible claims of DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
To assess whether claim 1 is directed to an abstract idea, we apply the
two part Alice framework. Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct.
2347, 2355 (2014). The first step of that framework is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts." Id. (citation omitted). If so, the second step is to consider the
4
Appeal2017-006871
Application 13/198,032
elements of the claims "individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
claim' into a patent-eligible application." Id. In other words, the second
step is to "search for an 'inventive concept'-i.e., an element or combination
of elements that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Id.
(alteration in original) (citation and internal quotes omitted).
The U.S. Supreme Court acknowledged in Mayo, that "all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas." Mayo Collaborative Services v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1293 (2012). We therefore look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea while merely invoking generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, the Examiner correctly applied step one of the Alice analysis in
determining that claim 1 is directed to an abstract idea. Final Act. 2-3. In
particular, claim 1 is directed to the recited abstract method of setting,
obtaining, determining and evaluating data and deciding exposure conditions
for a lithographic apparatus based on the data which is then displayed. Id. at
2. The Examiner explains that nearly all steps of claim 1 (recited steps 1
through 6) relate to a computer processor evaluating stored information.
Ans. 3--4. The final recitation of claim 1 displays the exposure setting
identified through steps 1 to 6. Id. at 3. Appellants do not persuasively
dispute the Examiner's characterization of the claims in this manner.
5
Appeal2017-006871
Application 13/198,032
Notably, claim 1 does not recite any real world use of the recited
identification or verification. Final Act. 2-3. Rather, claim 1 processes
information then displays information on a screen. We thus agree with the
Examiner that this processing of information is an abstract idea under prong
one of the Alice analysis. See Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016) (holding claims directed to "a process of
gathering and analyzing information of a specified content, then displaying
the results, and not any particular assertedly inventive technology for
performing those functions" were not patent eligible); Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017)
(holding that claims at issue were directed to abstract idea of collecting,
displaying, and manipulating data).
Turning to the second step of the Alice framework, we agree with the
Examiner that claim 1 does not recite any elements that are "significantly
more" than the abstract idea itself. Final Act. 2. Rather, claim 1 recites a
generic computer "processor" and "display device." Use of a generic
computer does not make a claim patent eligible. Alice Corp. Pty., 134 S. Ct.
2360 (holding that method is ineligible even if recited in a system claim
reciting generic computer).
Appellants' argument that claim 1 is not analogous to any example
provided by the Patent Office's July 2015 guidelines (Appeal Br. 4--5) is not
persuasive. Rather, claim 1 is similar to the claim of Example 5 of the July
2015 guidelines and is similar to claims our reviewing court determined to
be not patent eligible in Digitech Image Techs., LLC v. Electronics For
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). In Digitech, the court
determined that a method claim that determined information relating to a
6
Appeal2017-006871
Application 13/198,032
color image and combined the data into a device profile was abstract
because "nothing in the claim language expressly tie[ d] the method to an
image processor." Id. Claim 1 is very similar to the not patent eligible
claims of Digitech except that claim 1 here recites display of the finally
computed information (i.e., "outputting ... to a display device"). Output to
a generic display device, however, is not enough under the second step of
Alice to transform an abstract idea into patent eligible subject matter. See,
e.g., Elec. Power Grp. LLC, 830 F.3d at 1354 (holding claims reciting
"displaying" of various information patent ineligible).
Appellants' argument that claim 1 usefully contributes to precision of
lithography technology is also not persuasive. Appeal Br. 6-7. As
explained above, Claim 1 does not recite any lithography step. The abstract
idea of the claim is therefore not applied "to a new and useful end."
Gottschalkv. Benson, 409 U.S. 63, 67 (1972) ("If there is to be invention
from such a discovery, it must come from the application of the law of
nature to a new and useful end."). Moreover, merely providing useful
information to human users (for example, via "display") is not enough to
transform from an otherwise-abstract process into patent eligible subject
matter. Elec. Power Grp. LLC, 830 F.3d at 1355.
Finally, claim 1 is distinguishable from the claims found patent
eligible in the various cases cited by Appellants. For example, in Research
Corp., 627 F.3d at 868, our reviewing court determined that the claims at
issue were directed to a process "for rendering a halftone image"-a tangible
result that improved the computer display functionality. We also note that
Research Corp. predates the Supreme Court's decision in Alice and that
Appellants quote a claim of the Research Corp. patents at issue that is not
7
Appeal2017-006871
Application 13/198,032
used as an example in the Patent Office's July 2015 Update. Each of the
claims of Example 3 of the July 2015 Update explicitly recite "converting
the binary image array to a halftoned image." The Example 3 claims
therefore differ from claim 1 because they provide a technological result.
Likewise, Claim 1 is distinguishable from DDR, Enfzsh, and similar
decisions holding that claims were eligible where the claimed invention
provided a technological improvement. See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (holding that claims
reciting computer processor for serving "composite web page" were patent
eligible because "the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks"); Enfzsh, 822 F.3d at 1338 (Fed. Cir. 2016) (holding
that claims directed to self-referential table for computer database were
patent eligible because claims were directed to an improvement in the
functioning of a computer); Visual Memory LLC v. NVIDIA Corp., 867 F.3d
1253, 1259 (Fed. Cir. 2017) (holding that claims directed to "an improved
computer memory system" having many benefits were patent eligible). In
contrast with the claims of these decisions, claim 1 only provides
information output to a screen rather than providing a tangible technological
improvement. While claim 1 relates to information processing that relates to
later lithography, the future lithography does not improve the computer
performing the information processing. The present fact pattern is thus more
akin to, for example, that of Elec. Power Grp. LLC than it is to Visual
Memory LLC. See Elec. Power Grp. LLC, 830 F.3d at 1354 (determining
claims were abstract where "the focus of the claims is not on such an
8
Appeal2017-006871
Application 13/198,032
improvement in computers in tools, but on certain independently abstract
ideas that use computers as tools").
Claim 1 is also distinguishable from claim 1 of Amdocs (Israel) Ltd.
V. Openet Telecom Inc., 841 F.3d 1288 (Fed. Cir. 2016). While claim 1 at
issue in Amdocs, as quoted by Appellants (Reply Br. 4 ), appears broad on its
face, our reviewing court construed claim 1 's recitation "to enhance the first
network account[] record" narrowly. In particular, the court held that the
term "enhance" required "'in a distributed fashion' and ... 'close to the
source' of network information requirements" that, in tum, provided an
unconventional and tangible improvement to prior network systems.
Amdocs (Israel) Ltd., 841 F.3d at 1300. Appellants have not directed us to
any recitation of Appellants' claim 1 that similarly would limit the scope of
the claim as requiring concrete technological requirements.
In sum, Appellants' arguments do not establish that the Examiner
erred in rejecting claim 1 as patent ineligible because the claimed subject
matter does not provide an output that results in a technological
improvement and does not recite significantly more than an abstract idea.
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 1-12.
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
9