Ex Parte Young et al

Board of Patent Appeals and Interferences

Nov 22, 2010

10628614 (B.P.A.I. Nov. 22, 2010)

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.
10/628,614 07/28/2003 Roger Y. B. Young 03-0460 4439
47384 7590 11/23/2010
RYAN, MASON & LEWIS, LLP
90 FOREST AVENUE
LOCUST VALLEY, NY 11560
EXAMINER
LE, QUE TAN
ART UNIT PAPER NUMBER
2878
MAIL DATE DELIVERY MODE
11/23/2010 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 ROGER Y.B. YOUNG, JOHN A. KNOCH,
and JASON W. MCNICHOLS
____________________

Appeal 2010-000761
Application 10/628,6141
Technology Center 2800

____________________

Before JOHN C. MARTIN, JOSEPH F. RUGGIERO, and MARC S. HOFF,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is LSI Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or filing a request for rehearing, as
recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper
delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode)
shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-000761
Application 10/628,614

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 2-7 and 10-20.3 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellants’ invention concerns semiconductor wafer edge defect
inspection. An image capturing device, such as a camera or scanning
electron microscope, sends wafer edge images to a database. A user accesses
the wafer edge images and instructs a computer to perform a variety of
analyses on one or more images at a time to discover the effects of various
process steps in the fabrication system (Spec. 3-4).
Claim 2 is exemplary of the claims on appeal:
2. A method of inspecting a semiconductor wafer for defects using
captured image analysis comprising:
positioning the wafer with an edge thereof relative to a scanning
electron microscope;
rotating the wafer;
scanning the edge of the rotating wafer with the scanning electron
microscope;
recording an image of the scanned wafer from the scanning electron
microscope into a database;
instructing a computer to analyze the recorded images of the scanned
wafer;
identifying any defects in the analyzed recorded images; and
upon identifying any defects, recording defect information related to
each defect.

The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Wagner US 5,659,172 Aug. 19, 1997
Tsuji US 6,906,794 B2 Jun. 14, 2005

3 Claims 1, 8, and 9 have been cancelled.
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Strader US 7,013,222 B2 Mar. 14, 2006
Claims 4 and 16 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Tsuji.
Claims 2, 3, 5-7, 10-15, and 17-20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Tsuji.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed May 11, 2009) and the Examiner’s Answer (“Ans.,”
mailed July 20, 2009) for their respective details. No reply brief has been
filed.

ISSUES
With respect to claim 4, Appellants argue that Tsuji does not teach
positioning an image capturing device at a desired angle relative to the edge
of a wafer (App. Br. 11).
With respect to claim 16, Appellants contend that Tsuji does not teach
the image capturing device automatically generating an image of the edge of
a wafer (App. Br. 13-14).
With respect to claim 2, Appellants assert that Tsuji teaches away
from the use of a scanning electron microscope (SEM) (App. Br. 14-15).
With respect to claim 3, Appellants argue that the Examiner has not
explained why it would have been obvious to set an angle of the image
capturing device, set a brightness of an illumination source, or set an
accelerating voltage of an electron beam (App. Br. 17).
With respect to claim 5, Appellants’ position is that Tsuji does not
teach or suggest selecting any manner for scanning an object or providing a
specific pattern of images to be taken (App. Br. 17-18).
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With respect to claim 6, 7, 11, 12, 15, and 17-19, Appellants assert
that Tsuji fails to teach or suggest comparing defect information to previous
defect information for that wafer (App. Br. 19).
With respect to claims 13 and 14, Appellants argue that Tsuji does not
teach or suggest correlating each recorded image with the wafer from which
it was taken and the process step after which it was taken (App. Br. 23).
Appellants’ contentions present us with the following issues:
1. Does Tsuji teach positioning an image capturing device at a desired
angle relative to the edge of a wafer?
2. Does Tsuji teach automatically generating an image of the edge of a
wafer?
3. Does Tsuji teach or fairly suggest the use of a scanning electron
microscope, given the Examiner’s cited evidence that SEMs were known in
the wafer defect inspection art?
4. Did the Examiner set forth why it would have been obvious to set
an angle of the image capturing device, set a brightness of an illumination
source, or set an accelerating voltage of an electron beam?
5. Does Tsuji teach or suggest selecting a scanning pattern for the
edge of a wafer?
6. Does Tsuji teach or suggest comparing defect information recorded
after the first process step to defect information recorded after the second
process step?
7. Does Tsuji teach or suggest correlating each recorded image with
the process step after which it was taken?
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FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Tsuji
T1. Tsuji teaches that imaging device 74 “is able to capture images at
an arbitrary angle θ2 with respect to the wafer edge portion of the wafer 2”
(Fig. 6, col. 8 ll. 34-36).
T2. Tsuji teaches that “rotatable table 21 keeps rotating until the
operator depresses the rotation stop button. In response to the rotation of the
rotatable table 21, the imaging device 100 captures an image of the edge
portion of the wafer 2 located under the objective lens 60” (col. 5, ll. 39-43;
Fig. 3).
T3. Tsuji teaches comparing image data from a wafer under test to
“the image data on the wafer 2 of good quality” (col. 9, ll. 1-2).
“Alternatively, the wafers 2 of one lot are sequentially inspected, and each
time a wafer 2 of good quality is determined, the image data of that wafer 2
is used as updating data” (col. 9, ll. 10-13).

PRINCIPLES OF LAW
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” See In re Buszard, 504 F.3d 1364, 1366 (Fed. Cir. 2007)
(quoting In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994)).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 405
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)

ANALYSIS
CLAIM 4
Appellants argue that Tsuji does not anticipate claim 4 because Tsuji
teaches movement of the objective lens in an X-Y plane perpendicular to the
semiconductor wafer, and that such movement will not change the angle of
the objective lens relative to the edge of the wafer (App. Br. 11).
We are not persuaded by Appellants’ argument. Tsuji teaches that
imaging device 74 “is able to capture images at an arbitrary angle θ2 with
respect to the wafer edge portion of the wafer 2” (FF T1). Claim 4 does not
limit the positioning of the image capturing device with respect to the edge
of the semiconductor wafer to any particular plane. Further, claim 4 does
not require that the step of “positioning the image capturing device at a
desired angle relative to the edge of the wafer” be performed in the recited
order of steps and therefore is broad enough to read on selecting an arbitrary
angle of θ2 (Fig. 6) prior to performing any of the other steps. See Baldwin
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Graphic Sys. Inc. v Siebert, Inc., 512 F.3d 1338, 1345 (Fed. Cir. 2008)
(“[A]lthough a method claim necessarily recites the steps of the method in a
particular order, as a general rule the claim is not limited to performance of
the steps in the order recited, unless the claim explicitly or implicitly
requires a specific order.”) (citation omitted).
Tsuji thus meets the claim limitation “positioning the image capturing
device at a desired angle relative to the edge of the wafer.”
Appellants’ further argument that the Examiner improperly relied on
inherency (App. Br. 11-12) is not considered germane to the claimed
invention, because the other method steps supposedly inherently performed
– “magnification of the device, focus of the device, brightness of an
illumination source, and the rotational speed of the wafer” (Ans. 4-5) – are
not recited in claim 4.
Appellants have not established that the Examiner erred in rejecting
claim 4 under § 102 as anticipated by Tsuji. Accordingly, we will sustain the
rejection.
CLAIM 16
Appellants argue that Tsuji’s image capturing device does not
automatically generate an image of the edge of the wafer, as required by the
claim, because an operator must stop the rotation of the table by pressing the
rotation stop button before the imaging device will capture an image of the
edge of the wafer (App. Br. 13-14).
We are not persuaded by Appellants’ argument. We agree with the
Examiner that Tsuji does not teach that imaging device is manually operated
by a user (Ans. 9). Tsuji teaches that “rotatable table 21 keeps rotating until
the operator depresses the rotation stop button. In response to the rotation of
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the rotatable table 21, the imaging device 100 captures an image of the edge
portion of the wafer 2 located under the objective lens 60” (FF T2). We
agree with the Examiner’s finding that such operation corresponds to
“automatic” image generation, as the term is understood by those skilled in
the art (Ans. 9).
Because Appellants have not shown that the Examiner erred in
rejecting claim 16 as being anticipated by Tsuji, we will sustain the § 102
rejection of claim 16.
CLAIM 2
Appellants argue that the Examiner erred in rejecting claim 2 as
obvious over Tsuji because the claim calls for a scanning electron
microscope (SEM), in which magnification is not a function of the power of
the objective lens, whereas Tsuji teaches replacing a small magnification
objective lens with a large magnification objective lens to enable a defective
portion of a wafer to be displayed enlarged and examined in detail (App. Br.
14-15). According to Appellants, such disclosure in Tsuji means not only
that Tsuji does not teach a SEM, but actively teaches away from the use of a
SEM (id.).
We are not persuaded by Appellants’ argument. The Examiner
correctly points out that the obviousness rejection proposes modifying Tsuji
to include a scanning electron microscope rather than a conventional camera
or microscope, in order to provide better image information (Ans. 5). The
Examiner’s rejection does not call for an objective lens of any particular size
(Ans. 10-11). Further, we agree with the Examiner’s finding, supported by
the evidence of the Wagner and Strader patents, that SEMs were known to
be used to capture images in a wafer defect inspecting system (Ans. 10).
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Tsuji’s disclosure regarding the size of the optical objective lens would not
have been perceived by person having ordinary skill in the art as
discouraging the replacement of Tsuji’s optical imaging device and objective
lens with an SEM having an objective lens.
Because Appellants have not shown that the Examiner erred in
rejecting claim 2, we will sustain the § 103 rejection.
CLAIM 3
Appellants argue that the Examiner’s rejection is erroneous because
the Examiner did not address the claim limitations of setting an angle of the
image capturing device relative to the edge of the wafer, setting a brightness
of an illumination source that illuminates the edge of the wafer, or setting an
acceleration voltage of an electron beam (App. Br. 16-17). The Examiner
responds that he did not include a discussion of these limitations because
they had been addressed in the Final Rejection (Ans. 11).
We are persuaded by Appellants’ arguments. In reviewing the Final
Rejection, we observe that the Examiner does not explain the obviousness of
setting the brightness of an illumination source that illuminates the edge of
the wafer. Appellants’ further limitation of setting an acceleration voltage of
an electron beam is simply asserted to have been obvious for “similar”
reasons as those set forth for replacing the optical microscope of Tsuji with a
scanning electron microscope. Even if we assume arguendo that the
Examiner is correct that setting an acceleration voltage would have been
obvious when, as recited in parent claim 2, the wafer is scanned by an SEM,
the Examiner has failed to establish the prima facie obviousness of claim 3
because he has not established why it would have been obvious to set the
brightness of an illumination source, as claimed.
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Because Appellants have shown that the Examiner erred in rejecting
claim 3, we will not sustain the § 103 rejection.
CLAIM 5
Appellants argue that Tsuji does not disclose scanning the edge of the
wafer from a region interior of a top of the edge to a region exterior of a
bottom of the edge (App. Br. 17), that the Examiner’s rationale that selecting
a specific pattern would have been obvious “to provide a better image
pattern to be recorded or stored or displayed” is a conclusory statement of
the type “ruled legally insufficient by both Supreme Court [sic] and the
Federal Circuit” (App. Br. 17-18), and that in any case Tsuji teaches that any
scanning pattern is selected manually by an operator, rather than
automatically (App. Br. 17-18).
We do not agree with Appellants. The Examiner finds that Tsuji may
lack “a clear inclusion of any selection of scanning manner” (Ans. 11) but
does disclose an optical inspection system including an identification mark,
and that “if there is a need for recognizing an identification mark, in the
inner side of the edge portion and/or its neighboring portions . . . ,the
imaging device can be moved to the location/position where the mark is
located” (Ans. 11-12). The Examiner then concludes, and Appellants do not
rebut, that it would have been obvious to modify Tsuji to select the specific
scanning manner claimed “if the desired inspection of the edge portion and
its neighboring portions (of the wafer) were needed . . . This would [also]
provide an image pattern of imaged defect information of different types,
areas and sizes to be stored/recorded or displayed to the user of the system”
(Ans. 12).
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Because Appellants have not shown that the Examiner erred in
rejecting claim 5 as being obvious over Tsuji, we will sustain the § 103
rejection.
CLAIM 6
Appellants argue that the Examiner erred in rejecting claim 6 because
Tsuji does not teach comparing defect information recorded after the first
process step to the defect information recorded after the second process step.
The Examiner asserts that the rejection is proper because although Tsuji only
teaches comparing image data of a wafer under inspection with image data
of a “wafer of good quality,” Tsuji also teaches that each time a wafer of
good quality is determined, the image data of that wafer is used to update the
data concerning a wafer of good quality (Ans. 12-13; FF T3).
Appellants’ arguments have persuaded us of Examiner error. Even
assuming that the Examiner is correct that image data concerning a wafer of
good quality is occasionally updated, Tsuji does not teach that, for every
inspection process, defect information recorded after the first process step is
compared to defect information recorded after the second process step, as
claim 6 clearly requires. If the first process step does not reveal a “wafer of
good quality,” Tsuji’s invention teaches that the image recorded after the
second process step would be compared with an image from some other
“wafer of good quality,” rather than an image of the same wafer after the
first process step.
Accordingly, Appellants have shown that the Examiner has failed to
set forth the prima facie obviousness of claim 6. We will thus not sustain the
§ 103 rejection of claim 6.
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CLAIM 7
Appellants argue, just as with claim 6, that Tsuji does not teach or
suggest comparing the defect information recorded after the first process
step to the defect information recorded after the second process step (App.
Br. 20-21). Because we find supra that the Examiner erred in rejecting claim
6 under § 103 as obvious over Tsuji, we will not sustain the § 103 rejection
of claim 7, for the same reasons.
CLAIM 10
Appellants rely on the patentability of claim 4 as the basis for the
patentability of claim 10 (App. Br. 22). Because we find supra that the
Examiner did not err in rejecting claim 4 as anticipated by Tsuji, then, we
will sustain the Examiner’s § 103 rejection of claim 10, for the same
reasons.
CLAIMS 11, 12, 15, AND 17-19
For these claims, Appellants rely on the arguments made for claims 6
and 7. Because we find supra that the Examiner erred in rejecting claims 6
and 7 as obvious over Tsuji, we will not sustain the § 103 rejection of claims
11, 12, 15, and 17-19, for the same reasons.
CLAIM 20
Appellants contend that claim 20 is patentable for the same reasons
claim 16 is believed to be patentable (App. Br. 25). Because we sustain the
§ 102 rejection of claim 16 as anticipated by Tsuji, we will also sustain the
rejection of claim 20 under § 103 over Tsuji, for the same reasons.
CLAIMS 13 AND 14
We select claim 13 as representative of this group of claims, pursuant
to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
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Appellants argue that the Examiner erred in rejecting claims 13 and
14 because Tsuji does not teach or suggest correlating each recorded image
with the process step after which it was taken, as independent claim 13
requires.
We are not persuaded by Appellants’ argument. The Examiner finds,
and Appellants do not contest, that Tsuji discloses
an operation screen which can display which portion of
the wafer is being observed at the present time while a portion
of the wafer with defects detected by the image processing is
also displayed on the wafer map. These performances of the
operation screen are considered similar to the correlating
operations/performances claimed by the present application.

Ans. 15.
Because Appellants have filed no Reply Brief rebutting this finding,
we do not find error in the Examiner’s conclusion of the obviousness of
claims 13 and 14. Therefore, we will sustain the § 103 rejection of these
claims.

CONCLUSIONS
1. Tsuji teaches positioning an image capturing device at a desired
angle relative to the edge of a wafer.
2. Tsuji teaches automatically generating an image of the edge of a
wafer.
3. Tsuji fairly suggests the use of a scanning electron microscope,
given the Examiner’s cited evidence that SEMs were known in the wafer
defect inspection art.
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4. The Examiner failed to set forth why it would have been obvious to
set an angle of the image capturing device, set a brightness of an
illumination source, or set an accelerating voltage of an electron beam.
5. Tsuji suggests selecting a scanning pattern for the edge of a wafer.
6. Tsuji does not teach or suggest comparing defect information
recorded after the first process step to defect information recorded after the
second process step.
7. Tsuji suggests correlating each recorded image with the process
step after which it was taken.

ORDER
The Examiner’s rejection of claims 2-4, 10, 13, 14, 16, and 20 is
affirmed. The Examiner’s rejection of claims 5-7, 11, 12, 15, and 17-19 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

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AFFIRMED-IN-PART

ELD

RYAN, MASON & LEWIS, LLP
90 FOREST AVENUE
LOCUST VALLEY, NY 11560
15