Ex Parte Bode et al

Board of Patent Appeals and Interferences

Mar 18, 2005

09789872 (B.P.A.I. Mar. 18, 2005)

-1-
The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte CHRISTOPHER A. BODE, THOMAS J. SONDERMAN, ALEXANDER J.
PASADYN, ANTHONY J. TOPRAC, JOYCE C. OEY HEWETT
ANASTASIA OSHELSKI PETERSON and MICHAEL L. MILLER
________________
Appeal No. 2005-0166
Application 09/789,872
________________
ON BRIEF
________________
Before KRASS, JERRY SMITH and FLEMING, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 1-48, which constitute
all the claims in the application.
Appeal No. 2005-0166
Application 09/789,872
-2-
The invention pertains to a method and apparatus for
controlling a machine tool adapted to process workpieces in
accordance with an operating recipe based on a process target
value. Manufacturing characteristic data is collected and
correlated with a manufacturing metric to generate a metric
distribution for the workpieces. The process target value is
then adjusted based on the metric distribution.
Representative claim 1 is reproduced as follows:
1. A method for controlling a tool adapted to process
workpieces in accordance with an operating recipe based on a
process target value, comprising;
collecting manufacturing characteristic data associated
with the workpieces;
correlating the manufacturing characteristic data with
a first manufacturing metric to generate a first manufacturing
metric distribution for the workpieces; and
adjusting the process target value based on the first
manufacturing metric distribution.
The examiner relies on the following reference:
Simmons 6,265,232 July 24, 2001
(filed Aug. 21, 1998)
Claims 1-48 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement. Claims 1-48 also stand rejected under 35 U.S.C.
§ 112, second paragraph, for failing to particularly point out
Appeal No. 2005-0166
Application 09/789,872
-3-
and distinctly claim the invention. Finally, claims 1-48 stand
rejected under 35 U.S.C. § 103. As evidence of obviousness the
examiner offers Simmons taken alone.
Rather than repeat the arguments of appellants or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejections advanced by the examiner, the arguments in
support of the rejections and the evidence of obviousness relied
upon by the examiner as support for the obviousness rejection.
We have, likewise, reviewed and taken into consideration, in
reaching our decision, the appellants’ arguments set forth in the
brief along with the examiner’s rationale in support of the
rejections and arguments in rebuttal set forth in the examiner’s
answer.
It is our view, after consideration of the record before
us, that claims 1-48 comply with the written description
requirement of 35 U.S.C. § 112. We are also of the view that
claims 1-48 particularly point out the invention in a manner
which complies with 35 U.S.C. § 112. Finally, we are of the view
that the evidence relied upon and the level of skill in the
Appeal No. 2005-0166
Application 09/789,872
-4-
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 1-48. Accordingly, we reverse.
We consider first the rejection of claims 1-48 under the
first paragraph of 35 U.S.C. § 112. It is the position of the
examiner that the claims contain subject matter which was not
described in the specification in such a way as to reasonably
convey to one skilled in the relevant art that the inventors, at
the time the specification was filed, had possession of the
claimed invention. Specifically, the rejection seems to object
to the fact that the description of the invention is a
generalized philosophy of the concept of computer and
mathematical modeling without providing a clear-cut methodology
of specific input data, output data and the transfer function
prediction. The examiner also asserts that the specification
does not support specifically how manufacturing characteristic
data can generate a manufacturing metric distribution and adjust
target values as claimed [answer, pages 3-5].
Appellants argue that the operation of a manufacturing
system as claimed is well known to those of ordinary skill in the
art. Appellants argue that Figure 2 of the application and its
corresponding description clearly teaches how to generate a
Appeal No. 2005-0166
Application 09/789,872
-5-
manufacturing metric distribution by relating manufacturing
characteristic data to the metric of interest and adjusting the
target value based on the metric distribution [brief, pages 3-5].
The examiner responds that there is no explanation of how
the target monitor evaluates the manufacturing metric
distribution, and what is meant by a predetermined strategy. The
examiner asserts that the specification does not support the
generation of manufacturing metrics using manufacturing data
[answer, pages 14-16].
We will not sustain the examiner’s rejection of the
claims under the first paragraph of 35 U.S.C. § 112. The purpose
of the written description requirement is to ensure that the
applicants convey with reasonable clarity to those skilled in the
art that they were in possession of the invention as of the
filing date of the application. For the purposes of the written
description requirement, the invention is "whatever is now
claimed." Vas-cath, Inc. v. Mahurkar, 935 F.2d 1555, 1564, 19
USPQ2d 1111, 1117 (Fed. Cir. 1991). We agree with appellants
that everything recited in the claimed invention has clear
support in the specification as filed. Although some of the
examiner’s comments may suggest that the examiner is questioning
enablement compliance rather than written description compliance,
Appeal No. 2005-0166
Application 09/789,872
-6-
we see no reason why the artisan would have any difficulty
practicing the claimed invention. The description of Figure 2 in
the specification adequately explains how to make and use the
claimed invention.
We now consider the rejection of claims 1-48 under the
second paragraph of 35 U.S.C. § 112. With respect to each of the
independent claims, the examiner appears to assert that the
claimed correlation step does not generate statistical
distribution data so that it does not generate a first
manufacturing metric distribution as claimed [answer, pages 5-
13].
Appellants argue that the use of the term correlate in
the claimed invention is consistent with its general meaning
[brief, pages 5-7]. The examiner responds that Figure 2 of the
application does not depict correlating the manufacturing
characteristic data with a first manufacturing metric as claimed
[answer, pages 17-18].
We will not sustain the examiner’s rejection of the
claims under the second paragraph of 35 U.S.C. § 112. The
general rule is that a claim must set out and circumscribe a
particular area with a reasonable degree of precision and
particularity when read in light of the disclosure as it would be
Appeal No. 2005-0166
Application 09/789,872
-7-
by the artisan. In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971). Acceptability of the claim language depends on
whether one of ordinary skill in the art would understand what is
claimed in light of the specification. Seattle Box Co., v.
Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ
568, 574 (Fed. Cir. 1984). We essentially agree with all of
appellants’ arguments in the brief. Notwithstanding the
examiner’s assertions to the contrary, we are unable to find any
reason why the artisan would have any difficulty understanding
the scope of the claimed invention in light of the disclosure.
The correlation of manufacturing characteristic data, such as the
critical dimension of a gate electrode, with a manufacturing
metric, such as power consumption, would be clearly understood in
light of the description of appellants’ Figure 2.
We now consider the rejection of claims 1-48 under 35
U.S.C. § 103(a) as unpatentable over the teachings of Simmons
taken alone. Appellants have indicated that the claims on appeal
stand or fall together [brief, page 3]. Consistent with this
indication appellants have made no separate arguments with
respect to any of the claims on appeal. Accordingly, all the
claims before us will stand or fall together. Note In re King,
801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re
Appeal No. 2005-0166
Application 09/789,872
-8-
Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
Therefore, we will consider the rejection against independent
claim 1 as representative of all the claims on appeal. See In re
King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In
re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine, 837
F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so
doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Appeal No. 2005-0166
Application 09/789,872
-9-
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). If that burden is met, the burden then shifts
to the applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis of
the evidence as a whole and the relative persuasiveness of the
arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039, 228 USPQ
685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d
1048, 1052, 189 USPQ 143, 147 (CCPA 1976). Only those arguments
actually made by appellants have been considered in this
decision. Arguments which appellants could have made but chose
not to make in the brief have not been considered and are deemed
to be waived [see 37 CFR § 41.37(c)(1)(vii)(2004)].
The examiner has indicated how he finds the claimed
invention to be obvious over the teachings of Simmons [answer,
pages 13-14]. Appellants argue that Simmons does not generate a
distribution relating a manufacturing characteristic to a
manufacturing metric as claimed. Appellants also argue that
Simmons does not mention process target values at all, much less
Appeal No. 2005-0166
Application 09/789,872
-10-
adjusting a process target value based on a manufacturing metric
distribution [brief, pages 7-8]. The examiner responds that the
manufacturing metric distribution of the claimed invention is not
supported by the specification. The examiner also responds that
the measurements made in Simmons meet the definition of metric as
claimed [answer, page 19].
We will not sustain the examiner’s rejection of the
claims under 35 U.S.C. § 103 for essentially the reasons argued
by appellants in the brief. The claims require a correlation
between manufacturing characteristic data, such as the gate
dimension of a transistor, with a manufacturing metric, such as
the power consumption or speed of the transistor. In other
words, the power consumption or speed of a transistor is measured
for varying values of the gate dimension so as to correlate each
gate dimension with a corresponding power consumption or speed.
The value of the process target value, such as a given gate
dimension, can then be adjusted depending on whether one is
producing transistors to emphasize power consumption or speed.
As noted above, the examiner’s position that this type of claimed
correlation is not supported by the disclosure is without merit.
We agree with appellants that the process described in Simmons
does not relate to the adjustment of a target value based on a
Appeal No. 2005-0166
Application 09/789,872
-11-
manufacturing metric distribution as claimed.
In summary, we have not sustained any of the examiner’s
rejections of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 1-48 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
JERRY SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
JS/dym
Appeal No. 2005-0166
Application 09/789,872
-12-
Williams, Morgan & Amerson, P.C.
10333 Richmond, Suite 1100
Houston, TX 77042