Ex Parte Teh et al

Board of Patent Appeals and Interferences

May 31, 2012

11249144 (B.P.A.I. May. 31, 2012)

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.
11/249,144 10/12/2005 Cho Huak Teh 5222-08801/P1440 9389
61507 7590 06/01/2012
Entropy Matters LLC
P.O. Box 2250
NEW YORK, NY 10021
EXAMINER
LE, JOHN H
ART UNIT PAPER NUMBER
2857
MAIL DATE DELIVERY MODE
06/01/2012 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 CHO HUAK TEH, TOMMASO TORELLI, DOMINIC DAVID,
CHIUMAN YEUNG, MICHAEL GORDON SCOTT,
LALITA A. BALASUBRAMANIAN, LISHENG GAO,
TONG HUANG, JIANXIN ZHANG, MICHAL KOWALSKI, and
JONATHAN OAKLEY
____________

Appeal 2009-012036
Application 11/249,144
Technology Center 2800
____________

Before MARC S. HOFF, CARLA M. KRIVAK, and
ELENI MANTIS MERCADER , Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-11and 13-25. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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2
STATEMENT OF THE CASE
Appellants’ claimed invention is directed to a computer-implemented
method for classifying defects on a specimen (Spec. 4).
Independent claim 1, reproduced below, is exemplary of the subject
matter on appeal.
1. A computer-implemented method for classifying defects
on a specimen, comprising:

assigning individual defects detected on the specimen to
defect groups based on one or more characteristics of the
individual defects;

displaying information about the defect groups to a user,
wherein the information comprises information about one or
more typical defects included in each of the defect groups; and

allowing the user to assign a classification to each of the
defect groups.

REFERENCES and REJECTIONS
The Examiner rejected claims 1-8, 13-18, 20, 23, and 25 under 35
U.S.C. § 102(e) as anticipated by Stokowski (U.S. Patent No. 7,027,143 B1
(filed Oct. 6, 2003)).
The Examiner rejected claims 1-7, 13-15, 17, 18, 20, 22, and 23 under
35 U.S.C. § 102(e) as anticipated by Honda (U.S. Patent Application
Publication No. 2005/0087686 A1 (filed Oct. 1, 2004)).
The Examiner rejected claims 9 and 10 under 35 U.S.C. § 103(a)
based upon the teachings of Honda and Yoshikawa (U.S. Patent No.
6,968,079 B2 (filed June 25, 2001)).
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The Examiner rejected claim 11 under 35 U.S.C. § 103(a) based upon
the teachings of Honda and Miyamoto (U.S. Patent Application Publication
No. 2004/0218806 A1 (filed Jan. 20, 2004)).
The Examiner rejected claims 16, 19, and 25 under 35 U.S.C. § 103(a)
based upon the teachings of Honda and Okuda (U.S. Patent Application
Publication No. 2004/0028276 A1 (filed Feb. 28, 2003)).
The Examiner rejected claims 21 and 24 under 35 U.S.C. § 103(a)
based upon the teachings of Honda and Chang (U.S. Patent No. 6,757,645
B2 (filed Aug. 7, 1998)).
ISSUE
The pivotal issue is whether the Examiner erred in finding that
Stokowski or Honda teaches explicitly or inherently the limitation of:
“displaying information . . . about one or more typical defects included in
each of the defect groups” as recited in claim 1.

PRINCIPLES OF LAW
“[T]he words of a claim ‘are generally given their ordinary and
customary meaning.’” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.
Cir. 2005).
“[T]he specification ‘is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term.’” Id. at 1315.
To establish inherency, the extrinsic evidence “must
make clear that the missing descriptive matter is necessarily
present in the thing described in the reference, and that it would
be so recognized by persons of ordinary skill.”
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (internal citations
omitted).
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ANALYSIS
Analysis with respect to the rejected claims 1-8, 13-18, 20, 23, and 25
under 35 U.S.C. § 102(e) as anticipated by Stokowski

Appellants argue that Stokowski does not teach displaying
information about one or more typical defect groups (Ans. 9). Appellants
explain (App. Br. 12) that Stokowski teaches different types of defects
which may include bubbles, scratches, pits, and fractures (col. 3, ll. 5-8), and
therefore these defects may be assigned to separate defect groups. However,
Appellants further explain that Stokowski does not teach determining which
of the defects in the bubble, scratch, pit, and fracture type defect groups are
typical defects (Ans. 9). Appellants argue that since any group of defects,
regardless of how the defects are grouped, may include both typical and non-
typical defects and since Stokowski does not teach discriminating between
typical and non-typical defects in any of the defect groups, the systems and
methods of Stokowski are inherently incapable of determining information
about typical defects such that such information can be displayed as claimed
(Ans. 9).
We are persuaded by Appellants’ argument. The Examiner interprets
the claim language of “typical defects” as “different types of defects”
included in each of the defect groups (Ans. 14, citing Stokowski col. 3, ll. 5-
8 and col. 22, ll. 13-22). Stokowski teaches different types of defects that
can be identified, such as bubbles, scratches, pits and fractures (col. 3, ll. 5-
8), and that these defects can be grouped based on the types of regions in
which the defect was found (col. 22, ll. 13-22). We cannot find any teaching
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of “typical defects.” Just because there are different kind of defects
identified in Stokowski, it does not mean that those defects are typical.
The plain meaning of the term “typical” is “usual,” which is consistent
with Appellants’ Specification definition of “non-outlier” (Spec. 5, l. 28).
Thus, the Examiner’s interpretation of “typical” as “different types of
defects” is not reasonable either by relying on the plain meaning or as
defined in Appellants’ Specification. See Phillips, 415 F.3d at 1312, 1315.
The Examiner did not respond to Appellants’ arguments regarding the
distinction between “typical defects” and different defects.
Accordingly, we reverse the Examiner’s rejection of claim 1 and for
the same reasons the rejections of claims 2-8, 13-18, 20, 23, and 25.

Analysis with respect to the rejected claims 1-7, 13-15, 17, 18, 20, 22,
and 23 under 35 U.S.C. § 102(e) as anticipated by Honda

Appellants raise a similar argument with respect to the rejection of
claims 1-7, 13-15, 17, 18, 20, 22, and 23 under 35 U.S.C. § 102(e) as
anticipated by Honda (App. Br. 16). Again, Appellants argue that just
because Honda teaches identification of different kind of defects, it does not
inherently mean that “typical defects” are also identified (App. Br. 16).
We are persuaded by Appellants’ argument. We do not see how
identifying different kinds of defects (Ans. 15; ¶¶ [0045], [0083])
necessarily entails identifying “typical defects.” See Robertson, 169 F.3d at
745.
Thus, we reverse the Examiner’s rejection of claim 1 and for the same
reasons the rejections of claims 2-7, 13-15, 17, 18, 20, 22, and 23.

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Analysis with respect to the rejected claims 9, 10, 11, 16, 19, 21, 24,
and 25under 35 U.S.C. § 103(a)

We also reverse the Examiner’s rejections of claims 9, 10, 11, 16, 19,
21, 24, and 25 under 35 U.S.C. § 103(a) because the additional references of
Yoshikawa, Miyamoto, Okuda and Chang do not cure the above cited
deficiency.

CONCLUSION
The Examiner erred in finding that Stokowski or Honda teaches,
explicitly or inherently, the limitation of: “displaying information . . . about
one or more typical defects included in each of the defect groups” as recited
in claim 1.

DECISION
The Examiner’s decision rejecting claims 1-11and 13-25 is reversed.

REVERSED

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