Ex Parte Adler et al

Patent Trial and Appeal Board

May 23, 2016

11542785 (P.T.A.B. May. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111542,785 10/04/2006
61506 7590 05/23/2016
OKAMOTO & BENEDICTO LLP
P.O. BOX 641330
SAN JOSE, CA 95164
FIRST NAMED INVENTOR
David Adler
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.
10011.000810 (P989/l) 6000
EXAMINER
V ANCHY JR, MICHAEL J
ART UNIT PAPER NUMBER
2666
MAILDATE DELIVERY MODE
05/23/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ADLER, KIRK BERTSCHE, MARK McCORD,
and STUART FRIEDMAN
Appeal2014-004013 1
Application 11/542,785
Technology Center 2600
Before JOHN A. EV ANS, CATHERINE SHIANG, and WILLIAM M.
FINK, Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of Claims 3, 4, 9, 10, 49, and 50. Claims 1, 2, 5-
8, 11--48, and 51-53 were canceled. App. Br. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.3
1 The oral hearing scheduled April 14, 2016 was waived by Appellants on
March 16, 2016.
2 The Appeal Brief identifies KLA-Tencor Corporation, as the real party in
interest. App. Br. 2.
3 Rather than reiterate the arguments of Appellants and the Examiner, we
Appeal2014-004013
Application 11/542,785
STATEMENT OF THE CASE
The claims relate to a method and apparatus for inspecting defects.
See Abstract.
Claims 3, 4, and 9 are independent. The claims have not been argued
separately and therefore stand or fall together. 37 C.F.R. § 41.37(c)(l)(iv).
An understanding of the invention can be derived from a reading of
exemplary Claim 3, which is reproduced below with some formatting added:
3. A method of inspecting and/ or characterizing a substrate,
wherein said substrate includes a plurality of substantially
identical features, the method comprising:
obtaining a first dataset wherein said first dataset includes
data derived from an image collected by a first detector of a first
region of said substrate, and wherein said region includes an
array of substantially identical repeating features;
obtaining a second dataset, wherein said second dataset
includes data derived from an image collected by a second
detector of at least a portion of said first region of said substrate;
and
processing information derived from at least said first dataset to
determine whether differences exist between a first portion of
said repeating features and a second portion of said repeating
features.
refer to the Appeal Brief (filed August 12, 2011, "App. Br."), the Reply
Brief (filed October 21, 2013, Reply Br."), the Examiner's Answer (mailed
August 22, 2013, "Ans."), the Final Action (mailed March 16, 2011, "Final
Act."), and the Specification (filed October 4, 2006, "Spec.") for their
respective details.
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Appeal2014-004013
Application 11/542,785
References and Rejections
The Examiner relies upon the prior art as follows:
Evans
Goishi
us 5,537,669
us 5,640,539
The claims stand rejected as follows:
July 16, 1996
June 17 1997
(filed Sept. 21, 1994)
1. Claims 3, 4, 9, 10, 49, and 50 stand rejected under 35 U.S.C. § 103(a)
as obvious over Evans. Final Act. 3-5.
2. Claims 51-534 stand rejected under 35 U.S.C. § 103(a) as obvious
over Evans and Goishi. Final Act. 5---6.
ANALYSIS
We have reviewed the rejections of Claims 3, 4, 9, 10, 49, 50, and
51-53 in light of Appellants' arguments that the Examiner has erred. We
agree with Appellants' conclusions. We consider Appellants' arguments
seriatim, as they are presented in the Appeal Brief, pages 5-7.
ISSUE
Based upon our review of the administrative record, Appellants'
contentions, and the Examiner's findings and conclusions, the pivotal issue
4 Claims 51-53 were cancelled. App. Br. 2. We, therefore, do not reach the
merits of these claims.
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Appeal2014-004013
Application 11/542,785
before us is whether the Examiner errs in finding that Evans would have
taught or suggested obtaining a first dataset from a first detector and a
second dataset from a second detector within the meaning of Appellants'
Claim 3 and the commensurate limitations of Claims 4 and 9?
CLAIMS 3, 4, 9, 10, 49, AND 50: OBVIOUSNESS OVER EVANS
Appellants contend that independent Claims 3, 4, and 9 each recites
"obtaining a first dataset ... derived from an image collected by a first
detector of a first region of said substrate" and "obtaining a second dataset
... derived from an image collected by a second detector of at least a portion
of said first region of said substrate." App. Br. 5. Appellants argue their
claims expressly recite first and second detectors, but that Evans teaches a
method using only a single detector. Id.
The Examiner finds that it would have been a mere design choice to
use two detectors in view of Evans' disclosure that "both images might be
two difference [sic] corresponding views from the same device or two
devices that should be identical." Final Act. 4 (quoting Evans, col. 9, 1. 63-
col. 10, 1. 4).
Appellants contend the Examiner's finding is factually incorrect.
Appellants argue the "two devices," cited by the Examiner, are two target
devices, but not two imaging devices, as claimed. App. Br. 6.
The Examiner's Answer agrees with Appellants' reading of Evans.
The Examiner finds "it would be obvious to one of ordinary skill in the art
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Appeal2014-004013
Application 11/542,785
that the one detector of Evans performs equally to the two detector system of
the Appellant[s] since Evans teaches the same functions as Appellant[s']
first and second detectors." Ans. 10. The Examiner finds Appellants'
argument regarding the identity of the "two devices" is moot in view of the
Examiner's new argument. Id. The Examiner finds Evans teaches the
claimed functions performed by the claimed first and second detectors by
moving a single detector. Id.
Appellants contend that a method that claims specific steps is not
rendered obvious by an unrelated method that achieves a similar result using
other steps. Reply Br. 5.
We agree with Appellants. Appellants claim a method having defined
steps. The Examiner finds that Evans may achieve a similar result, but by
employing steps other than those claimed.
Appellants contend, and we agree, Claim 10 is patentable in view of
its dependence from Claim 9, and Claims 49 and 50 are patentable in view
of their dependence from Claim 4.
DECISION
The rejection of Claims 3, 4, 9, 10, 49, and 50 under 35 U.S.C. § 103
is REVERSED.
REVERSED
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