Ex Parte Berman

Board of Patent Appeals and Interferences

Oct 31, 2007

09553140 (B.P.A.I. Oct. 31, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte MICHAEL J. BERMAN
___________

Appeal 2007-1661
Application 09/553,140
Technology Center 2600
___________

Decided: October 31, 2007
___________

Before JOHN C. MARTIN, JOSEPH L. DIXON, and
JOHN A. JEFFERY, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's
Final Rejection of claims 1-28. We have jurisdiction under 35 U.S.C.
§ 6(b).

We REVERSE and enter a New Ground of Rejection.

Appeal 2007-1661
Application 09/553,140

BACKGROUND
Appellant’s invention relates to determination of film thickness during
chemical mechanical polishing. An understanding of the invention can be
derived from a reading of exemplary claim 1, which is reproduced below.
1. A method of determining layer thickness of a particular area of
a substrate during CMP of the substrate, the method comprising the
steps of:

acquiring an image of a particular area of the substrate using
high speed imaging;

comparing the acquired high speed image to each one of a
plurality of stored image patterns; and

converting the acquired high speed image into a layer
thickness measurement when the acquired high speed image
corresponds to one of said plurality of stored image patterns.

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
O'Boyle US 5,640,242 Jun. 17, 1997
Bibby, Jr. US 6,361,646 B1 Mar. 26, 2002

REJECTIONS
Claims 1, 2, 8-9, and 12 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over O'Boyle.
Claims 3-7, 10-11, and 13-28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over O'Boyle in view of Bibby, Jr.
2
Appeal 2007-1661
Application 09/553,140

Rather than reiterate the conflicting viewpoints advanced by the
Examiner and the Appellant regarding the above-noted rejection, we make
reference to the Examiner's Answer (mailed Jun. 16, 2004) and the
Supplemental Examiner's Answer (mailed Jan. 19, 2005) for the reasoning in
support of the rejections, and to Appellant’s Brief (filed Mar. 16, 2004) and
Reply Brief (filed Aug. 20, 2004) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful
consideration to Appellant’s Specification and claims, to the applied prior art
references, and to the respective positions articulated by Appellant and the
Examiner. As a consequence of our review, we make the determinations
that follow.
35 U.S.C. § 103
For reasons stated infra in our new rejection under the second
paragraph of Section 112, entered under the provisions of 37 C.F.R.
§ 41.50(b), no reasonably definite meaning can be ascribed to the term “high
speed” in the claims. As the court in In re Wilson, 424 F.2d 1382, 1385,
165, 496 USPQ 494 (CCPA 1970) stated:
All words in a claim must be considered in judging the patentability of
that claim against the prior art. If no reasonably definite meaning can
be ascribed to certain terms in the claim, the subject matter does not
become obvious --the claim becomes indefinite.
Since a rejection based on prior art cannot be based on speculations and
assumptions regarding the meaning of a claim, see In re Steele, 305 F.2d
859, 862, 134 USPQ 292, 295 (CCPA 1962), we are constrained to reverse,
pro forma, the Examiner's rejections of claims 1-28 under 35 U.S.C.
3
Appeal 2007-1661
Application 09/553,140

§ 103(a). We hasten to add that our reversal is solely procedural and thus is
not based upon the merits of the Section 103 rejections.
However, we offer the following observations regarding whether
O’Boyle discloses “high speed” image-taking. We cannot agree with the
Examiner that O’Boyle’s CCD necessarily is a “high speed imaging device”
(Answer 3). O'Boyle is silent as to the speed of the CCD device. That a
CCD is not necessarily a “high speed” device (whatever that is) is evident
from Appellant’s Specification, which describes using a CCD as either a
“high speed” camera (id. at 10:6-7) or a “conventional speed” camera (id. at
10, last three lines). We therefore find that a CCD (camera) may be used as
a high speed imaging device, but it is not necessarily a high speed imaging
device as maintained by the Examiner. On the other hand, we note that
neither the Examiner nor Appellant has addressed whether the “high speed”
limitation (whatever it means) reads on O’Boyle’s use of a “video frame
grabber” during the image acquisition process (e.g., col. 3, ll. 22-23).
In addition to denying that O’Boyle’s image-taking is done at “high
speed,” Appellant questions whether that image-taking satisfies another
limitation of the claims. Specifically, Appellant notes that O’Boyle’s
measurements are taken during a “CMP process” (Reply Br. 4) that includes,
inter alia, polishing the wafer and rinsing the wafer (id.), and argues that
claim 1 clearly recites that the image is acquired during the
chemical-mechanical polishing of a substrate in a CMP
[chemical mechanical polishing] Process. Taking an image of a
wafer during the activity of rinsing the wafer in the clear water
of a rinse tank during a CMP process is not the same as taking
an image of a substrate during the activity of polishing the
substrate with a polishing pad during a CMP process.
4
Appeal 2007-1661
Application 09/553,140

Reply Br. 5. Inasmuch as Appellant’s Specification explains that the image
acquisition (imager) unit 26 can be employed “to obtain images of the
substrate during CMP operation” (Specification 9:14-15) and that
“[a]lternatively, CMP operation may be periodically halted for obtaining
images using the acquisition device 26” (id. at 9:17-19), it is not clear
whether Appellant’s position is (a) that image-taking must occur while the
wafer is actively being polished or (b) that image-taking must occur while
the wafer is in -- or in proximity to1 -- the polishing position. In any event,
we do not agree with either position.
The claim language must be given its broadest reasonable
interpretation consistent with the specification and in light of any definitions
given in the specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997). Claim 1 and the other independent claims
specify that image-taking occurs “during CMP of the substrate.” While the
term “CMP” is defined in the Specification at page 7, lines 10-11 to mean
“chemical-mechanical polishing,” it is not further defined to specifically
refer to the act of polishing a wafer (or to the act of holding in or proximate
a position in which polishing can occur). The claim language is therefore
broad enough to read on O’Boyle’s overall CMP process, including the acts
of polishing and rinsing (during which image-taking occurs).2 That is, the
requirement of the claims that image-taking occur “during CMP of the
substrate” is broad enough to read on O’Boyle’s disclosed CMP process,
1 In one embodiment, “the wafer would be moved over the inside or the
outside of the polishing pad 22 for a reading (image acquisition) by the
image acquisition unit 26.” Specification 9-10.
2 We do not reach the Examiner’s argument that O’Boyle alternatively
discloses in situ image-taking at column 4, lines 47-50. Answer 5, para. 4.
5
Appeal 2007-1661
Application 09/553,140

because the thickness measurements, including image-taking, are made
“during and independent of CMP process operations” (col. 2, ll. 57-60),

35 U.S.C. § 112, SECOND PARAGRAPH
Claims 1-28 are rejected under 35 U.S.C. 112, second paragraph, for
failing to particularly point out and distinctly claim the invention that
Appellant regards as the invention. In claim 1, the language "using high
speed imaging" in lines 3 and 4, “high speed image” in line 6, and “the
acquired high speed image” in line 7 do not particularly point out and
distinctly claim the invention because it is unclear what the metes and
bounds of a “high speed image” is from Appellant’s Specification. Seattle
Box Co. v. Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221
USPQ 568, 574 (Fed. Cir. 1984) ("When a word of degree is used the
district court must determine whether the patent’s specification provides
some standard for measuring said degree. The trial court must decide, that
is, whether one of ordinary skill in the art would understand what is claimed
when the claim is read in light of the specification."). Here, we find no
express definitions of “high speed imaging” or of an “acquired high speed
image” to differentiate those claim limitations from the prior art. Therefore,
we are unable to determine the metes and bounds of each of independent
claims 1, 9, 15, and 23 and their respective dependent claims. As a result,
we cannot effectively apply prior art thereto.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides that “[a] new
ground of rejection . . . shall not be considered final for judicial review.”
6
Appeal 2007-1661
Application 09/553,140

37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims
so rejected or new evidence relating
to the claims so rejected, or both, and
have the matter reconsidered by the
examiner, in which event the
proceeding will be remanded to the
examiner. . . .

(2) Request rehearing. Request that
the proceeding be reheard under
§ 41.52 by the Board upon the same
record. . . .

CONCLUSION
To summarize, we have not sustained the rejection of claims 1-28
under 35 U.S.C. § 103(a), and we have entered a new grounds of rejection of
claims 1-28 under 35 U.S.C. § 112, Second Paragraph.
REVERSED
37 C.F.R. § 41.50(b)

7
Appeal 2007-1661
Application 09/553,140

JEFFERY, Administrative Patent Judge, Dissenting:
I respectfully dissent from the majority’s view that the claims fail to
particularly point and distinctly claim the subject matter that Appellant
regards as the invention under second paragraph of 35 U.S.C. § 112. For the
reasons that follow, I find the scope of the claims reasonably ascertainable
and the claims sufficiently definite under § 112.
The majority indicates that it is unable to determine the metes and
bounds of the claims due to certain limitations that pertain to high speed
imaging, namely the limitations calling for “using high speed imaging” and
an “acquired high speed image.” In reaching this conclusion, the majority
notes that the terms “high speed imaging” and “acquired high speed image”
were not expressly defined to differentiate these limitations from the prior
art. Consequently, the majority concludes, prior art cannot be effectively
applied to the claims (Majority Op. 6).
“Claims are considered indefinite when they are not amenable to
construction or are insoluably ambiguous…. Thus, the definiteness of claim
terms depends on whether those terms can be given any reasonable
meaning.” Young v. Lumenis, Inc., 492 F.3d 1336, 1346 (Fed. Cir. 2007)
(internal quotation marks and citations omitted). Indefiniteness requires a
determination whether those skilled in the art would understand what is
claimed. Id. This determination requires considering primarily the intrinsic
evidence: the claim language, specification, and the prosecution history. Id.
As the majority indicates, the Specification does not define “high
speed imaging.” The Specification does, however, describe several
embodiments of an in situ image acquisition unit 26 which are relevant to
the claim limitations in question. One embodiment uses a “high speed”
8
Appeal 2007-1661
Application 09/553,140

camera 30 and a conventional light source (Specification 10:3-18; Claim 2),
while other embodiments use a “conventional speed” camera with coherent
or broad band light sources that produce either pulsed light or light of short
duration (Specification 10:19 – 11:6; Claims 3-6).
The specification, however, is hardly a model of clarity regarding
exactly what constitutes “high speed imaging” or what distinguishes a “high
speed” camera from a “conventional speed” camera. The Specification
merely states that the “high speed” camera may be any type of high speed
digital or analog camera, “such as ones made by EG&G and Kodak”
(Specification 10:6-8). The Specification further notes that “[t]he high speed
camera is thus able to acquire or capture high resolution images of areas or
portions of the substrate 14 by virtue of its high speed nature” (Specification
10:16-18).
Apart from these general statements, however, the specification
provides no further details of these cameras (e.g., specific speeds, model
numbers, or types). In contrast, the Specification does not refer to
manufacturers in connection with the embodiments using “conventional
speed” cameras, but merely states that any type of “conventional speed”
camera can be used (Specification 10:21-23).
Despite the Specification’s clear -- but unspecific -- distinction
between “high speed” and “conventional speed” cameras, this scant
description falls well short of specifically defining “high speed imaging.”3
3 If anything, the Specification’s lack of detail in this regard raises a possible
enablement issue under the first paragraph of § 112.
9
Appeal 2007-1661
Application 09/553,140

Accordingly, the term “high speed imaging” must be construed with the
ordinary and customary meaning attributed to the term by those of ordinary
skill in the art.4
The fundamental question, therefore, is whether such an interpretation
can reasonably be done. For the reasons that follow, I find that it can.
Although one could argue that absent any further limitation in the
claims or clarification in the Specification, the term “high speed” used in
connection with imaging is merely a relative term that, without more, is
simply broad (but definite).5 Under this broad interpretation, virtually any
image acquisition system could conceivably be considered a “high speed”
system.
However, I find the term “high speed” used in connection with
imaging has a specific meaning to skilled artisans and is therefore amenable
to construction and not “insoluably ambiguous” so as to render the claims
indefinite. In my view, skilled artisans would understand that the limitation
is a term of art referring to a particular type of imaging system with elevated
frame rates –frame rates that substantially exceed those of standard,
consumer-grade devices.6
4 See Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298,
67 USPQ2d 1132, 1136 (Fed. Cir. 2003) (“In the absence of an express
intent to impart a novel meaning to the claim terms, the words are presumed
to take on the ordinary and customary meanings attributed to them by those
of ordinary skill in the art.”); see also Phillips v. AWH Corp., 415 F.3d 1303,
1312, 75 USPQ2d 1321, 1326 (Fed. Cir. 2005) (en banc).
5 See, e.g., In re Miller, 441 F.2d 689, 693 (CCPA 1971) (noting that claim
breadth is not to be equated with indefiniteness).
6 However, such consumer grade devices have been adapted for high-speed
imaging applications. See Andrew Davidhazy, High Speed Imaging with an
AGFA Consumer Grade Digital Camera, School of Photo. Arts & Sci.,
10
Appeal 2007-1661
Application 09/553,140

In this regard, the published literature is replete with descriptions of
high speed imaging systems. For example, high speed imaging is described
as “the technique of recording an event at a high frame rate and playing the
acquired images back at a much slower rate."7 As this description indicates,
the frame rate is a key factor in a high speed imaging system.8
In the 1970s, high speed imaging systems recorded at frame rates of
120 and 300 frames per second (fps). In the early 1980s, however, Kodak --
the same manufacturer referred to in Appellant’s specification -- introduced
a system capable of recording 2,000 fps. Around 1991, a Kodak high speed

Rochester Inst. of Tech., June 15, 1998, at http://www.rit.edu/~andpph/text-
agfa-1280-hs.html (last visited Oct. 23, 2007).
7 Motion Engineering Co., MEC University, 102: What is High Speed
Imaging?, at http://www.highspeedimaging.com/university_102-
what_is_high-speed_imaging.cfm (last visited Oct. 22, 2007).
8 See, e.g., Motion Engineering Co., MEC University, Frequently Asked
Questions for High-Speed Cameras, Digital High-Speed Video and High-
Speed Imaging Applications, at http://www.highspeedimaging.com/faq.cfm
(last visited Oct. 22, 2007) (“As an example, at a rate of 500 frames per
second, high-speed imaging allows you to capture nearly 17 images for
every one that would be captured by standard video (30 frames per
second).”); see also Motion Engineering Co., MEC University, 103 Why
High-Speed Imaging?, at
http://www.highspeedimaging.com/university_103-why_high-
speed_imaging.cfm (last visited Oct. 22, 2007) (“Standard camcorders can
only record at 30 frames per second and, as a result, usually miss most of the
action in fast-moving events. However, if we use high-speed cameras to
record these events at hundreds or even thousands of frames per second, it is
a different story.”) (emphasis added).
11
Appeal 2007-1661
Application 09/553,140

camera could record up to 4,500 fps at full resolution and up to 40,500 fps at
reduced resolution.9
Despite the wide range of elevated frame rates that characterize “high
speed” imaging systems as noted above, I nevertheless conclude that the
skilled artisan could reasonably ascertain the scope of the term in light of its
standard usage in the art (i.e., systems with an elevated frame rate of at least
120 fps).
In my view, the term “high speed imaging” has a recognized meaning
in the art and is therefore reasonably amenable to construction and not
insoluably ambiguous. I therefore respectfully dissent from the majority’s
view that the claims are indefinite under the second paragraph of 35 U.S.C.
§ 112.

rwk

LSI CORPORATION
1621 BARBER LANE
MS: D-106
MILPITAS, CA 95035

9 See Motion Engineering Co., MEC University, 101: History of High-Speed
Imaging, at http://www.highspeedimaging.com/university_101-high-
speed_imaging_history.cfm (last visited Oct. 22, 2007).
12