Ex Parte Abramovitch et al

Patent Trial and Appeal Board

Sep 19, 2016

13283756 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/283,756 10/28/2011
126149 7590
Keysight Technologies, Inc.
C/O CPA Global
P.O. Box 52050
Minneapolis, MN 55402
09/21/2016
FIRST NAMED INVENTOR
Daniel Y. ABRAMOVITCH
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.
20110200-01 3632
EXAMINER
PAN, YUHUIR
ART UNIT PAPER NUMBER
2127
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
keysightdocketing@cpaglobal.com
notice.legal@keysight.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIELY. ABRAMOVITCH and
CHRISTOPHER RYAN MOON
Appeal2015-005455
Application 13/283,756
Technology Center 2100
Before JOSEPH L. DIXON, JAMES R. HUGHES, and ERIC S. FRAHM,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-005455
Application 13/283,756
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The invention relates to tuning an atomic force microscope (Spec. ,-i
25). Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method of tuning an atomic force microscope (AFM)
comprising a physical system and a controller configured to
control the physical system, the method comprising:
determining a loop response of the AFM based on a
frequency response of the physical system and a frequency
response of the controller;
determining a cost function indicating a difference
between the loop response and a target response characteristic;
and
adjusting the frequency response of the controller to
reduce off-surface resonance of a cantilever arm of the AF~v1.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Quinn
Card et al.
Ding et al.
Abramovitch et al.
us 5,406,496
US 6,810,291 B2
US 2005/0069050 A 1
US 2009/0062935 Al
Apr. 11, 1995
Oct. 26, 2004
Mar. 31, 2005
Mar. 5, 2009
Sunder S. Kidambi, Weighted Least-Squares Design of Recursive Allpass
Filters, 44 IEEE TRANSACTIONS ON SIGNAL PROCESSING 1553, 1553-58
(1996) ("Kidambi").
M.A. LAUGHTON & D.J. WARNE, ELECTRICAL ENGINEER'S REFERENCE
BOOK 1/3, 13/52 (16th ed. 2003) ("Laughton").
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Application 13/283,756
REJECTIONS
The Examiner made the following rejections:
Claims 15-17 and 19 stand rejected under 35 U.S.C § 102(b) as being
anticipated by Quinn.
Claims 1--4 and 7 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Abramovitch and Quinn.
Claim 5 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Abramovitch, Quinn, and Ding.
Claim 6 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Abramovitch, Quinn, Ding, and Card.
Claims 8, 12, and 14 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Abramovitch and Ding.
Claim 9 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Abramovitch, Ding, Quinn, and Kidambi.
Claims 10, 11, and 13 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over Abramovitch, Ding, and Quinn.
Claim 18 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Quinn and Laughton.
Claim 20 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Quinn and Ding.
ANALYSIS
The Anticipation Rejection
Regarding claim 15, Appellants argue Quinn is not "within the
purview of AFM technology" and that Quinn "does no loop shaping, and
especially performs no automatic loop shaping on a loop response defined
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Application 13/283,756
by a frequency response of the physical system and a frequency response of
the controller" (App. Br. 7, 9). Rather, Appellants argue, "at best, the
autotuning controller 14 of Quinn makes adjustments to minimize the
difference between the system frequency response and the desired frequency
response. There is plainly nothing described regarding shaping of anything,
and especially not the description of shaping of a loop response." (App. Br.
9). We disagree with Appellants.
We begin by construing the argued features of claim 15.
First, we note that the term "atomic force microscope (AFM)" is only
recited in the preamble, and the body of the claim makes no reference to an
AFM. Rather, the body of claim 15 generically recites "a loop shaping
component" and "a gain adjustment component" which are not limited to use
in an AFM. Accordingly, we find the claim 15 language "for tuning an
atomic force microscope (AFM)" indicates an intended use of the system,
and therefore we give little patentable weight to this language. See
Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d
1339, 1345 (Fed. Cir. 2003) ("An intended use or purpose usually will not
limit the scope of the claim because such statements usually do no more than
define a context in which the invention operates."). We are not persuaded
by Appellants' argument that "the controller, which is recited in the body of
the claim, is a component of the AFM, which clearly and unequivocally
comprises the controller. The controller is clearly and irrevocably linked to
the AFM." (Reply Br. 5). Although the body of claim 15 does refer to the
controller of the system that is positively recited in the preamble, the system
controller is not necessarily part of an AFM. Rather, as stated above, the
preamble merely recites tuning an AFM as an intended use for the system.
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Second, claim 15 recites performing "automatic loop shaping on a
loop response" without defining the "loop shaping" function. Accordingly,
we look to Appellants' Specification, which provides "the loop shaping is
performed by adjusting the filter coefficients to minimize a target response
characteristic such as a magnitude difference between L( co) [the magnitude
of a loop response] and Lo( co) [the magnitude of a desired loop shape]"
(Spec. iJ 49). Thus, we agree with the Examiner that the broadest reasonable
interpretation, in light of Appellants' Specification, of the claimed "loop
shaping" is minimizing the difference between a system frequency response
and a desired frequency response (see Ans. 3--4).
Based on the above constructions, we agree with the Examiner that
Quinn discloses the claimed "loop shaping" (see Ans. 4). Quinn discloses
an autotuning system with a compensator "having coefficients characterized
in that when combined with the digital filter and the plant [ (the element to be
controlled) (Quinn, col. 1, 11. 11-15)] the combination provides a frequency
response consistent with the predetermined system response" (Quinn, col. 3,
11. 21-25). In other words, "compensator 52 introduces a necessary phase
and gain into the system 10 so that the actual or measured system response
approaches the desired system response" (Quinn, col. 11, 11. 25-28). Thus,
we find Quinn's autotuning system minimizes the difference between a
system frequency response and a desired frequency response and, therefore,
meets the definition of the claimed "loop shaping." The fact that Quinn does
not disclose performing such loop shaping to tune an AFM does not change
our finding, because we do not give this feature patentable weight, as
discussed above.
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Application 13/283,756
We are, therefore, not persuaded the Examiner erred in rejecting claim
15, and claims 16, 17, and 19 not specifically argued separately.
The Obviousness Rejections
Claims 1-7
Appellants contend Abramovitch does not teach "adjusting the
frequency response of the controller to reduce off-surface resonance of a
cantilever arm of the AFM" as recited in claim 1 (App. Br. 11-12).
Specifically, Appellants argue in Abramovitch "there is clearly no link
between the filtering and the PID controller 22" (App. Br. 11 ). Further,
Appellants argue in Abramovitch "there is no disclosure or description of
any off-surface resonance of the cantilever arm as specifically recited in
claim l" (App. Br. 12). Appellants also contend the Examiner erred in
combining Quinn with Abramovitch because Quinn is not "within the
purview of AFM technology" and "there is no articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness"
(,,L\ .. pp. Br. 13). \Ve are not persuaded by Appellants' arguments for at least
the following reasons.
Abramovitch teaches generating parameters for an atomic force
microscope, including the following:
The PID controller 22 further receives an input from the
controller design block 14. Filtering may be added to mitigate
the effects of system dynamics, e.g. higher frequency
resonances of the cantilever.
FIG. 3 illustrates a process flow chart according to the
invention. In step 102, a model for the scanning probe
microscope dynamics is generated. In step 104, filter
parameters that shape selected dynamics of the model are
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chosen. In step 106, a notch filter is generated using the filter
parameters. In step 108, the notch filter is encoded as PID
parameters. In step 110, the PID parameters are implemented
in a PID controller to control the scanning probe microscope.
(Abramovitch iii! 30, 33). As quoted above, Abramovitch's system
determines filter parameters and uses them in a PID controller to control the
microscope. We thus agree with the Examiner's finding (see Ans. 4) that
Abramovitch teaches "adjusting the frequency response of the controller" as
recited in claim 1.
Further, we find the claim 1 language "to reduce off-surface
resonance" should be given little patentable weight, as it indicates a desired
result without tying the result to any specific steps to achieve it. In other
words, the positively recited step of "adjusting the frequency response of the
controller" does not provide the specificity required to ensure a reduction in
"off-surface resonance of a cantilever arm of the AFM" in the method of
claim 1. }J evertheless, even if \'1/e consider the language "to reduce off=
surface resonance," we agree with the Examiner that Abramovitch suggests
this feature (see Final Act. 5-6; Ans. 4-5).
The Specification provides "controller 135 can be configured to
account for resonance conditions that can occur when cantilever arm 115 is
off measurement surface 105 ('off-surface resonance conditions')" (Spec. iJ
38). Accordingly, the broadest reasonable interpretation of "to reduce off-
surface resonance" is to reduce resonance of a cantilever arm when it is off
of a measurement surface. Abramovitch discloses adding filtering to a PID
controller, as mentioned above, "to mitigate the effects of system dynamics,
e.g. higher frequency resonances of the cantilever" (Abramovitch iJ 30). We
find this suggests mitigating cantilever arm resonance when it is off the
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surface of a sample, i.e., a measurement surface, because Abramovitch
discloses the mitigation relates to a cantilever arm that can move along a "Z"
axis that includes a direction away from a sample surface (see Abramovitch
iJiJ 27-30, Fig. 1 ).
We are also not persuaded by Appellants' argument that the Examiner
erred in combining Quinn with Abramovitch (App. Br. 13), for at least the
following reasons.
Quinn is analogous art because it describes an autotuning controller
for achieving a desired frequency response of a system (see Quinn, col. 7, 11.
35-50) which is "reasonably pertinent to the particular problem" of tuning
an AFM by adjusting the frequency response of a controller addressed by the
present invention (see, e.g., Spec. iJ 25). In re Klein, 647 F.3d 1343, 1348
(Fed. Cir. 2011). Further, we find no error in the Examiner identifying a
reason to combine the references in Quinn (Final Act. 6), namely, to reduce
complexity by using an adaptive control system (see Quinn, col. 1, 1. 66-col.
2, 11. 9). Moreover, "if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
Here, both Quinn and Abramovitch relate to adjusting the frequency
response of a PID controller (see Quinn, col. 7, 11. 35-50; Abramovitch iii!
30-33), and it would have been obvious to one of ordinary skill in the art to
employ Quinn's technique of determining the difference between a
measured system response and a desired system response (Quinn, col. 11, 11.
23-28) in Abramovitch to ensure the adjusted frequency response of
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Abramovitch' s controller resulted in a system response that approached a
desired system response.
We are, therefore, not persuaded the Examiner erred in rejecting claim
1, and claims 2--4 and 7 not specifically argued separately. For similar
reasons, and because Appellants rely on the arguments presented for claim 1
as to the patentability of claims 5 and 6, we are not persuaded the Examiner
erred in rejecting claims 5 and 6 over the combinations of (i) Abramovitch,
Quinn, and Ding; or (ii) Abramovitch, Quinn, Ding, and Card.
Claims 8-14
Appellants contend in Abramovitch "[t]here is no disclosure or
description of the types of filters used, and especially no disclosure of either
the existence of filter coefficients or their adjustment in order to reduce
off-surface resonance of a cantilever arm of the AFM," and "[t]here is no
disclosure or description that the higher frequency resonance of the
cantilever of Abramovitch, et al. is off-surface resonance of the cantilever"
(App. Br. 15, 16). Appellants also contend "the proffered motivation to
combine Abramovitch, et al. and Ding, et al. is at best merely conclusory,
and provides no evidence or analysis that demonstrates that it would have
been a recognized need by one or ordinary skill in the art at the time the
invention was made" (App. Br. 17).
Appellants' arguments as to claim 8 regarding Abramovitch (App. Br.
15-16) are similar to those presented with respect to claim 1. We are not
persuaded by these arguments for the same reasons discussed above.
However, we are persuaded by Appellants' argument against the
combination of Abramovitch and Ding (App. Br. 16-17). We find Ding's
disclosure directed to a "transmitter with a baseband predistortion system"
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(Ding iJ 13) to be unrelated to the present invention. Moreover, the
Examiner's reason for combining Ding with Abramovitch-"to reduce the
interference between signals" (Final Act. 10)-does not appear to have any
applicability to Abramovitch's system directed to determining filter
parameters for a PID controller of an AFM (see Abramovitch iii! 29-33).
We are, therefore, constrained by the record to find the Examiner
erred in rejecting independent claim 8, and dependent claims 9-14 for the
same reason.
Claims 18 and 20
Appellants do not present separate arguments explaining why the
Examiner erred in rejecting claims 18 and 20 as obvious. Rather, Appellants
rely on the same arguments presented for claim 15 regarding anticipation
(see App. Br. 10). As discussed above, Appellants' arguments for claim 15
are not persuasive. We are, therefore, not persuaded the Examiner erred in
rejecting claims 18 and 20.
CONCLUSIONS
Under 35 U.S.C. § 102(b ), the Examiner did not err in rejecting claims
15-17 and 19.
Under 35 U.S.C. § 103(a), the Examiner erred in rejecting claims 8-
14, but did not err in rejecting claims 1-7, 18, and 20.
DECISION
For the above reasons, the Examiner's rejections of claims 8-14 are
reversed, and the Examiner's rejections of claims 1-7 and 15-20 are
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED-IN-PART
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