Ex Parte Winkler et al

Patent Trial and Appeal Board

Dec 30, 2015

12169041 (P.T.A.B. Dec. 30, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/169,041 07/08/2008
26290 7590 01/04/2016
PATTERSON & SHERIDAN, LLP,
24 Greenway Plaza, Suite 1600
Houston, TX 77046
FIRST NAMED INVENTOR
Dieter WINKLER
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.
ZIMR/0105 8559
EXAMINER
WIECZOREK, MICHAEL P
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
01/04/2016 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):
PSDocketing@pattersonsheridan.com
pair_eofficeaction@pattersonsheridan.com
jcardenas@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIETER WINKLER, UDO WEIGEL, and STEP AN GRIMM
Appeal2013-008859
Application 12/169,041
Technology Center 1700
Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
ROMULO H. DELMENDO, Administrative Patent Judges.
WARREN, Administrative Patent Judge.
DECISION ON APPEAL
Applicants appeal to the Board under 35 U.S.C. § 134(a) from the
decision of the Primary Examiner finally rejecting claims 1, 4, 5, 8, 10-12,
15-18, and 24--30. Final Act. 1 l; App. Br. 5. We have jurisdiction.
35 U.S.C. § 6(b).
We affirm the Primary Examiner's decision.
Representative claim 1, reproduced below, illustrates Appellants'
invention of a method of preparing an ultra sharp tip that can be used in,
among other things, ion beam emitters of field ion microscopes (PIM).
Spec. ifif 1, 25, 30, 57-59, Fig. lB.
1. A method of preparing an ultra sharp tip, comprising:
providing a tip having a shank, an apex, and a coating covering the
shank and the apex;
1 Final Action mailed August 21, 2012. Ans. 1.
Appeal2013-008859
Application 12/169,041
exposing the apex by locally removing the coating from the apex by
field evaporation; and
partially or fully restoring the coating at the apex,
wherein during the locally removing the coating, the apex is shaped
by spatially controlled field-assisted etching, and
wherein the steps of locally removing and restoring are performed
while the tip is provided in an ion source within a vacuum chamber of a
charged particle column configured to inspect a specimen outside of the
vacuum chamber.
App. Br. 17 (Claims App.) (formatting modified).
Appellants request review of the following grounds of rejection under
35 U.S.C. § 103(a) advanced on appeal by the Examiner (App. Br. 8): 2
claims 1, 4, 8, 10-12, 15-18, and 24--30 over Kuo, 3 Rezeq (US
2007/0025907 Al), and Ward (US 2007/0138388 Al) (Final Act. 4); and
claims 1, 4, 5, 8, 10-12, 15-18, and 24--30 over Fu,4 Rezeq, and Ward (Final
Act. 7).
We decide the appeal on claim 1, with the remaining claims standing
or falling therewith, because Appellants argue the grounds of rejection on
independent claims 1 and 25, reiying on the same arguments advanced for
claim 1 with respect to claim 25. App. Br. 13, 15. 37 C.F.R.
§ 41.37(c)(l)(iv) (2012).
OPINION
We are of the opinion Appellants' arguments do not establish that the
preponderance of the evidence in the totality of the record weighs in favor of
2 The Examiner has withdrawn the ground of rejection under 35 U.S.C.
§ 112, first paragraph, written description requirement. Final Act. 2; Ans. 2.
3 Kong-Shi Kuo et al., Nobel metal/W(l l l) single-atom Tips and their field
electron and ion emission characteristics, 45 Jpn. J. Appl. Phys. 8972-83
(2006)
4 Tsu-Yi Fu, et al., Study of two types of Ir or Rh covered single atom
pyramidal W tips, 601 Surface Science 3992-95 (2007).
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Application 12/169,041
the nonobviousness of the method of preparing an ultra sharp tip
encompassed by representative claim 1. In this respect, we essentially agree
with the Examiner's analysis of the evidence in Kuo, Rezeq, and Ward, and
in Fu, Rezeq, and Ward, findings of fact and conclusions of law, and
response to Appellants' arguments in the Answer to which we add the
following for emphasis with respect to Appellants' arguments. Final Act.
4---6, 7-9, 10; Ans. 2-5; App. Br. 11-15.
The plain language of claim 1 specifies a method of preparing any
manner of ultra sharp tip comprising at least the steps of providing any tip
having any coating on the apex and shank thereof; removing the coating
from the apex by any manner of field evaporation while shaping the apex by
spatially controlled field-assisted etching; and partially or fully restoring the
coating on the apex; wherein the steps of locally removing and restoring of
the coating on the apex are performed in any ion source within any manner
of vacuum chamber of any charged particle column that is configured in any
manner to inspect to any extent any specimen that is outside of to any extent
the vacuum chamber. Spec. i-fi-125, 30-35, 40, 57-59, Figs. IA, IB, 2A.
The Examiner submits that the combinations of Kuo, Rezeq, and
Ward, and Fu, Rezeq, and Ward would have led one of ordinary skill in the
art to modify the methods of preparing an ultra sharp tip disclosed by each
of Kuo and Fu by applying Rezeq's spatially controlled field-assisted
etching step to the apex of sharp tip in the ion source within the vacuum
chamber of a charged particle column of a field ion microscopes (PIM), and
using Ward's system 200 as the PIM that is capable of reshaping and/or
sharpening a tip for such an apparatus, in the reasonable expectation of
predictably arriving at a method of preparing an ultra sharp tip, which
method falls within claim 1. Final Act. 4---6, 7-9 (citing Kuo Abstract, Secs.
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Application 12/169,041
2.2-3.1.1, Fig. 3; Fu Abstract, Sec. 2; Rezeq abstract, i-fi-flO, 11, 23, 33, 34;
Ward abstract, i-fi-f 175, 201, 236-239, 242, 244, Fig. 5). 5
Appellants submit the Examiner erred in two respects. Appellants
first contend the Examiner improperly characterized Ward's system 200 as
comprising two separate vacuum housings 202, 204, the latter containing
sample 180 for inspection purposes. App. Br. 12, 14. According to
Appellants, Ward's Figure 5 and description thereof does not show that
vacuum housings 202, 204 "are 'separate' from each other" because as
shown in Figure 5, "walls ... couple both housings 202 and 204," and "there
is no element that could be used to separate the volumes of housings 202,
204, as well as the housing of optics 130." App. Br. 12; see also App. Br.
14. Appellants further contend that while vacuum pumps 236, 237 are
coupled to housings 202, 204, respectively, "there is no distinction between
pressures in these volumes to indicate an element or elements" that separate
the housings. Id. The Examiner responds that Ward's PIM system 200
depicted in Figure 5 meets the limitations of the last clause of claim l
because tip 186 is provided in vacuum chamber 202 and specimen 180 is
inspected in vacuum chamber 204, each vacuum chamber having its own
vacuum pump 236, 237, which establishes that Ward discloses vacuum
chambers 202, 204 as separate vacuum units. Ans. 3--4.
5 Appellants' submit new arguments for the first time in the Reply Brief
directed to the Examiner's characterization of Ward's system 200 as an PIM
in the Final Action at 5---6 and 9 and not to the Examiner's response in the
Answer to Appellants' arguments in the Appeal Brief. Ans. 2-5; Reply Br.
2-3. We will not consider these new arguments because Appellants have
not made a showing of good cause explaining why the arguments could not
have been presented in the Appeal Brief. 37 C.F .R. § 41.41 (b )(2) (2012).
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Application 12/169,041
On this record, we agree with the Examiner's finding that, contrary to
Appellants' position, Ward would have reasonably disclosed to one of
ordinary skill in the art that vacuum housings 202, 204, separated by a
common wall and having separate vacuum pumps, are simply separate
vacuum chambers wherein vacuum housing 202 contains an ion source
including tip 186 to generate an ion column into ion optics 130, and vacuum
housing 204, which is outside of vacuum housing 202, contains specimen
180 for inspection in the ion column, regardless of the relative vacuums
maintained in the respective housings. Ward i-f 201, Fig. 5. Indeed, we, like
the Examiner, determine that the configuration of Ward's system 200 meets
the plain language of the last clause of claim 1 because the steps of locally
removing and restoring of the coating on the apex of tip 186 can be
performed in the ion source within vacuum housing 202, and the inspection
of specimen 180 can be performed in vacuum housing 204 which is outside
of vacuum housing 202, and there is/are no apparatus and/or functional
claim limitation(s) excluding any element of Ward's system 200. Ans. 3.
See above p. 3.
Appellants next contend one of ordinary skill in the art would not
have combined Rezeq with Kuo and Ward in view of the teachings of Rezeq
with Kuo, and Ward, and with Fu and Ward because the differences in the
tip apex radius disclosed in the references would have taught away from the
combinations. App. Br. 12-13, 14--15. With respect to the combination
Kuo, Rezeq, and Ward, Appellants assert Ward discloses a radius of from
about 40-200 nm, and "teaches that a smaller tip radius is strongly
discouraged, because it might lead to discharges and the ionization of He
used in the embodiment of Fig. 5." App. Br. 12 (citing Ward 13, i-f 209).
Appellants further assert Kuo "discloses a tip radius of about 50 nm ...
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Application 12/169,041
[that] is close to the lower limit that is taught in Ward." App. Br. 13 (citing
Kuo sec. 2.1 ). Appellants assert Rezeq, cited with respect to field assisted
etching, "discloses a much smaller radii, such as 1 nm," and "discloses that a
13 nm radius is regarded as 'a relatively large radius."' App. Br. 15 (citing
Rezeq iii! 39, 43). Appellants thus argue that based on the differences in tip
radii, Rezeq would not have been combined with Ward or Kuo as Ward
teaches away from the teachings of Rezeq. App. Br. 15. With respect to the
combination Fu, Rezeq, and Ward, Appellants assert that Ward teaches away
from small radii tips and thus would not have been combined with Rezeq.
Appellants further assert that Fu' s method includes steps "of forming a tip
having a single tungsten atom at the apex," which is similar in diameter to
that of Rezeq, that is "193 picometers radius, which is the equivalent of
0.193 nm)." App. Br. 14--15.
The Examiner responds, with respect to the combination of Kuo,
Rezeq, and Ward, that '[t]he fact that the average radius of curvature [of 50
nm of the tip] of Kuo was at the 'low' end of the preferred range [of average
radius of curvature 40 to 200 nm of the tip] of Ward is not relevant to the
combination of references." Ans. 3. The Examiner contends that Rezeq is
relied on to establish that spatially controlled field-assisted etching was
known in the art for shaping the apex of an ultra sharp tip. Ans. 3. The
Examiner thus concludes that Rezeq's disclosure of tip embodiments outside
of Ward's preferred range "is not relevant because it was the tip of Kuo that
was being installed in the apparatus of Ward and not a tip formed by the
method ofRezeq." Ans. 3--4 (citing In re Keller, 642 F.2d 413 (CCPA
1981)).
With respect to the combination of Fu, Rezeq, and Ward, the
Examiner finds
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Application 12/169,041
[ t ]he range of 40 nm to 200 nm required by Ward was for the
average radius of curvature which was determined by
measuring the radius of curvature for eight different side views
of the tip (each corresponding to a successive rotation of the tip
about an orthogonal axis of the tip by 45Q with respect to the
previous side view) and then calculating the average of the
eight radii of curvature (Page 13 Paragraph 0209 and Figure 9).
Ans. 4. The Examiner submits that "[i]t does not appear as if applicant has
done the required calculation in determining the tip radius of Fu," and
"[i]nstead it appears as if applicant has used the radius of a single atom of
tungsten as the basis for numerical evidence that Fu teaches away from
Ward which is not the same as the average radius of curvature required by
Ward." Ans. 4. The Examiner further finds that, contrary to Appellants'
position, Fu's method "was for growing a single-atom sharp pyramid tip on
a tungsten substrate wherein the single atom/apex of the formed tip was
either rhodium or iridium" and not tungsten. Ans. 4-5.
We agree with the Examiner's finding that the "average radius of
curvature" range of 40-200 nm is disclosed by \Vard based on a preferred tip
embodiment. Indeed, we find the range is based on Ward's "exemplary tip
300" which can be used as apex 187 of tip 186 in system 200, and that Ward
further would have disclosed to one of ordinary skill in the art other
embodiments of apex 187 of tip 186 which can contain "three atoms or
less," in other words, a single atom tip. Ward i-fi-1201, 202, 205-209, Figs.
6-9. We further agree with the Examiner's finding that there is little, if any,
correlation between Ward's methodology of determining the "average radius
of curvature" range of exemplary tip 300, and the determination of the radius
of the one or more atoms which can form the apex of a tip as disclosed by
Kuo, Fu, Rezeq, and Ward.
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Application 12/169,041
We are of the opinion that, as the Examiner contends, Appellants have
not established that any of Kuo, Rezeq, and Ward, and any of Fu, Rezeq, and
Ward would have led one of ordinary skill in the art away from the
combination of the respective sets of references. Indeed, on this record,
Appellants have not supported the position that Ward's disclosed average
radius of curvature range based on a preferred tip embodiment is comparable
to the radius of the one or more atoms forming the apex of a tip disclosed as
unpreferred embodiments by Ward and as embodiments by Kuo, Fu, and
Rezeq, and have not established that the radius of the apex of the tip affects
the application of Rezeq's spatially controlled field-assisted etchings thereto.
See, e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (explaining that
" [ t ]he prior art's mere disclosure of more than one altemati ve does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed"); In re Keller, 642 F.2d 413, 425 (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.").
Accordingly, we affirm the grounds of rejection of claims 1, 4, 5, 8,
10-12, 15-18, and 24--30 under 35 U.S.C. § 103(a) over Kuo, Rezeq, and
Ward, and over Fu, Rezeq, and Ward.
The Primary Examiner's decision 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)(l)(iv).
AFFIRMED
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