Ex Parte Utlaut et al

Patent Trial and Appeal Board

Jul 21, 2017

12812221 (P.T.A.B. Jul. 21, 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.
12/812,221 11/18/2010 Mark Utlaut F623US 5196
121028 7590 07/25/2017
SrTieinhera Rr Asisinoiates; PP
EXAMINER
PO BOX 164140
Austin, TX 78716-4140
CHEN, KEATH T
ART UNIT PAPER NUMBER
1716
NOTIFICATION DATE DELIVERY MODE
07/25/2017 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):
patents @ scheinbergip.com
eofficeaction @ appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK W. UTLAUT, NOEL SMITH,
PAUL P. TESCH, TOM MILLER, DAVID H. NARUM,
DAVID TUGGLE, and LAWRENCE SCIPIONI1
Appeal 2017-000186
Application 12/812,221
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1,7, 10, and 12—16.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants identify FEI Company as the real party in interest (Appeal
Br. 4).
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Application 12/812,221
Independent claim 1 is illustrative of the subject matter on appeal
(emphasis added):
1. A charged-particle beam system, comprising:
a vacuum chamber;
a workpiece support for supporting a workpiece within
the vacuum chamber;
a first beam system comprising a liquid metal ion source
column that is capable of generating a sub-one tenth micron
beam for performing precise processing of the workpiece;
a second beam system including a source for generating
electrons and a focusing column for forming the electrons into
a beam having a sub-micron diameter at the workpiece; and
a third beam system comprising an ultra-fast pulsed
femtosecond laser that can remove material on the workpiece
more quickly than the first beam;
and the second beam system is capable of forming a high
resolution image of the workpiece while producing little or no
change in the workpiece.
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a):
(a) claims 1 and 7 as unpatentable over Sasaki et al. (JP 09-257670,
published Oct. 3, 1997) (“Sasaki”) in view of Lin (US 2006/0119743 Al,
published June 8, 2006) (“Lin”) or over Lin in view of Sasaki;2
(b) claims 1 and 7 as unpatentable over Sasaki and Lin and further in
view of Khosropour (US 6,162,651, issued Dec. 19, 2000) (“Khosropour”);
2 Whether the Examiner listed Sasaki as the primary reference or Lin as the
primary reference is irrelevant. See In re Bush, 296 L.2d 491, 496 (CCPA
1961) (“In a case of this type where a rejection is predicated on two
references each containing pertinent disclosure which has been pointed out
to the applicant, we deem it to be of no significance, but merely a matter of
exposition, that the rejection is stated to be on A in view of B instead of on
B in view of A, or to term one reference primary and the other secondary.”)
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Application 12/812,221
(c) claims 10, 12, 13, 15, and 16 as unpatentable over Sasaki in view
of Shichi et al. (US 2008/0135779 Al, published June 12, 2008) (“Shield”),
Gale (US 3,434,894, issued Mar. 25, 1969) (“Gale”), and Slodzian et al. (US
4,694,170, issued Sept. 15, 1987) (“Slodzian”) with Fuji et al. (US
5,574,280 A, issued Nov. 12, 1996) (“Fuji”) and Parker et al. (US 5,035,787,
issued July 30, 1991) (“Parker”) cited as evidentiary references; and
(d) claim 14 as unpatentable over Sasaki in view of Shichi, Gale, and
Slodzian and further in view of Platzgummer et al. (US 7,276,714 B2, issued
Oct. 2, 2007) (“Platzgummer”);
(e) claims 10, 12, 13, 15, and 16 as unpatentable over Fuji in view of
Gale and Slodzian with Parker being cited as an evidentiary reference; and
(f) claim 14 as unpatentable over Fuji, Gale, and Slodzian and further
in view of Platzgummer.
ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellants’
claims 1,7, 10, and 12—16 are unpatentable over the applied prior art. We
sustain ah of the Examiner’s § 103 rejections essentially for the reasons set
out by the Examiner in the Answer.
We add the following, primarily for emphasis of some of the
Examiner’s § 103 rejections.
The §103 rejection based on Lin and Sasaki
Appellants’ principal argument in the Appeal Brief regarding the
§103 rejection of claim 1 over Lin and Sasaki is that Lin teaches away from
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combining Sasaki and Lin because Lin discloses the replacement of focused
ion beam (FIB) systems with femtosecond laser systems. (Appeal Br. 11—
14). Specifically, Appellants argue that because Lin discloses advantages
for femtosecond laser systems with regard to FIB systems, Lin’s disclosure
would have led one away from the system of claim 1 {id. at 11—12 (citing
Lin 190); Reply Br. 5—6). Further, Appellants assert Lin’s disclosure in
paragraph 5 of supplementing FIB technology with lasers “is not an
endorsement by the ‘743 authors of a combined femtosecond laser and FIB
system” because Lin describes these systems as older technology with
deficiencies and Lin’s inventive embodiments do not combine FIB
technology with femtosecond laser technology (Appeal Br. 12—13).
Appellants’ arguments are not persuasive. The Examiner finds that
Lin discloses supplementing FIB technology with laser technology (Ans. 3).
The disclosure of Lin supports this finding by stating “[ljaser is increasingly
substituting or supplementing focused ion beam (FIB) milling, and replacing
diamond saws in applications such as TEM sample preparation for
semiconductor devices” (Lin | 5). Thus, Lin discloses it is known to use a
laser with a focused ion beam (i.e., the laser supplements a focused ion
beam).
Although Lin discloses that laser systems present advantages over FIB
systems and discloses embodiments with only laser technology, this does not
make the combination of FIB and laser technology patentable when Lin
already discloses this combination (Lin 15 (FIB supplemented by a laser)).
Although teaching away is a significant factor to be considered in the
context of obviousness, the nature of prior art teachings is highly relevant.
{In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Something that is known
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or obvious does not become patentable simply because it has been described
as somewhat inferior to some other product for the same use (id.).
Therefore, Lin’s disclosure of disadvantages for FIB technology does not
demonstrate nonobviousness for the claimed charged-particle beam system.
Moreover, Lin’s disclosure of advantages3 for femtosecond lasers (e.g.,
superior performance, ease of application, and elimination of thermal
damage) provides a reason for one of ordinary skill in the art to supplement
FIB technology with a laser using femtosecond laser technology, as
suggested by Lin.4
Appellants also argue that Lin does not disclose supplementing an FIB
system with ultrafast femtosecond laser ablation and that Lin’s femtosecond
laser is nondestructive in nature (Appeal Br. 13). This argument is also
unpersuasive because Lin discloses the use of femtosecond lasers using
“ultrashort laser pulses” for ablation of material in paragraph 6.
Appellants do not argue dependent claim 7 separately from claim 1
(Appeal Br. 14).
For the reasons discussed above and those set forth in the Examiner’s
Answer, Appellants’ arguments do not identify a reversible error and we
sustain5 the Examiner’s rejection of claims 1 and 7 over the combination of
Lin and Sasaki.
3 Lin 1 6.
4 Lin 15.
5 As noted above, the Examiner also rejects claims 1 and 7 under § 103 over
Sasaki in view of Lin and Khosropour. In this rejection, the Examiner relies
upon Khosropour for a disclosure of using an ablation laser and a focused
ion beam in the same processing system (Ans. 4—5). We sustain this
rejection for the same reasons set out by the Examiner in the Answer and
those set forth herein for the rejection of claims 1 and 7 over Lin and Sasaki.
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The §103 rejection based on Sasaki in view of Shichi, Gale, and Slodzian
Appellants’ principal argument in the Appeal Brief regarding the
§ 103 rejection of claim 10 over Sasaki in view of Shichi, Gale, and
Slodzian is that it would not have been obvious to modify the argon ion
beam of Sasaki to include the argon ion beam lens of Shichi (Appeal Br. 15—
19). Specifically, Appellants contend the beam disclosed by Sasaki is a
broad ion beam that is different from the third beam system of claim 10
because a focused ion beam uses specific elements not used by a broad beam
ion source, as stated in the Declaration of N. William Parker submitted
under 37 C.F.R. § 1.132 (Appeal Br. 16—17; Reply Br. 7—86).
Appellants’ arguments are unpersuasive. In the rejection of claim 10,
the Examiner finds Sasaki discloses an ion gun that produces a beam of
argon ions (Ans. 5). The disclosure of Sasaki supports the Examiner’s
findings because Sasaki discloses its beam of argon ions 3 is produced by an
ion gun (Sasaki Abstract, 17, Figure 1). In light of this disclosure by
Sasaki, Appellants’ arguments and the Declaration do not adequately explain
why the beam of argon ions 3 would indeed be a broad beam instead of a
focused ion beam produced by an ion gun 1.
Appellants further assert adding Shichi’s lens to the ion beam of
Sasaki does not provide a beam that is equivalent to a focused ion beam or is
6 Appellants assert the Examiner’s rejection did not resolve the level of
ordinary skill in the art (Reply Br. 8). This argument was not raised in the
Appeal Brief, nor have Appellants shown good cause for introducing it for
the first time in the Reply Brief. Therefore, this argument will not be
considered (37 C.F.R. § 41.41(b)(2) (2016)). Moreover, the prior art applied
by the Examiner provides evidence of the ordinary skill level in the art, and
Appellants provide no reason to establish that further evidence is required.
In re GPACInc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).
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a useful focused ion probe (Appeal Br. 16—17). Appellants argue one of
ordinary skill in the art would not have had a reasonable expectation that
modifying Sasaki in view of Shichi would have successfully provided a
focused ion beam, as stated in the Declaration {id. at 17—18).
The Examiner finds Sasaki does not explicitly disclose a focusing
column for the ions produced the argon ion gun (Ans. 5). The Examiner
finds Shichi discloses an ion beam lens for an argon ion beam system and
concludes it would have been obvious to modify Sasaki in view of Shichi to
control the focus area of the ion gun {id. at 6).
The disclosure of Shichi supports the Examiner’s finding by
disclosing a duoplasmatron that produces gaseous ions, such as argon ions,
and includes an “ion beam lens 52” (Shichi 171). Therefore, Shichi
demonstrates the obviousness of using a lens to focus a beam of argon ions,
such as Sasaki’s argon ions 3. Shichi’s use of a lens to focus an argon ion
beam would have provided a reasonable expectation that such a lens could
have been successfully used to focus Sasaki’s beam of argon ions 3.
Moreover, the Examiner cites Fuji as an evidentiary reference that
demonstrates an argon ion beam 3 may use focusing elements that are the
same as those used for a focused ion beam 2 (Ans. 15; citing Fuji Figure 1).
In addition, Appellants contend Sasaki teaches away from a
modification in view of Shichi because Sasaki discloses removal of an
amorphous layer via ion milling with a beam other than an FIB system and
attempting to remove the amorphous layer with a focused ion beam would
have rendered the system of Sasaki unsuitable for its intended purpose
(Appeal Br. 18—19). These arguments do not identify a reversible error
because Sasaki discloses the amorphous layer is produced during FIB
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exposure and one should use a milling system other than FIB to remove the
amorphous layer (Sasaki || 3, 7). To address this issue, Sasaki discloses
removal of the amorphous layer via an argon ion beam,7 which the Examiner
determined a person skilled in the art would have modified in view of Shichi
to further include an ion beam lens. Therefore, the combination of Sasaki
and Shichi would not have resulted in a focused ion beam to remove an
amorphous layer produced by focused ion beam exposure but an argon ion
beam to perform this task. The argon ion beam is further modified to
include the ion beam lens disclosed by Shichi.
Appellants do not argue dependent claim 12, 13, 15, and 16 separately
from claim 10 (Appeal Br. 15—19).
In view of the above, Appellants’ arguments do not identify a
reversible error in the Examiner’s rejection and we sustain the rejection of
claims 10, 12, 13, 15, and 16 under § 103 over Sasaki in view of Shichi,
Gale, and Slodzian.
The Examiner adds Platzgummer to this rejection for dependent claim
14. Appellants merely reiterate the arguments set forth in support of the
patentability of claim 10 and contend Platzgummer does not remedy the
deficiencies of the references applied in the rejection of claim 10 (Appeal
Br. 20). For the reasons set forth above, there are no deficiencies in the
rejection of claim 10 that require curing by Platzgummer.
SUMMARY
We affirm all of the Examiner’s § 103 rejections (a) to (f) for reasons
set forth in the Answer and above.
7 Sasaki 17.
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DECISION
The Examiner’s § 103 rejections of claims 1, 7, 10, and 12—16 are
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)(1).
AFFIRMED
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