Ex Parte Butler et al

Patent Trial and Appeal Board

Dec 28, 2016

12964459 (P.T.A.B. Dec. 28, 2016)

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.
12/964,459 12/09/2010 Hans Butler 081468-0391177 4807
909 7590 12/30/2016
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
EXAMINER
LE, NINH V
ART UNIT PAPER NUMBER
1744
NOTIFICATION DATE DELIVERY MODE
12/30/2016 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS BUTLER,
JOHANNES PETRUS MARTINUS BERNARDUS VERMEULEN,
MARC WILHELMUS MARIA VAN DER WIJST,
JEROEN PIETER STARREVELD,
CORNELIUS ADRIANUS LAMBERTUS DE HOON,
and FRANCOIS XAVIER DEBIESME
Appeal 2016-000923
Application 12/964,459
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-000923
Application 12/964,459
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision finally rejecting claims 1—8 and 10-16 under 35 U.S.C.
§ 103(a).2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claim 14 is illustrative of the claimed subject matter (emphasis added
to highlight key limitations):
14. An imprint lithography apparatus comprising:
an imprint template holder configured to hold an imprint
template;
a substrate holder configured to hold a substrate;
an actuator configured to displace the imprint template
holder towards the substrate holder to perform an imprint
process;
a support structure configured to support the substrate
holder;
a base configured to support the imprint template holder
and the substrate holder;
wherein the support structure is mounted to a vibration
isolation system that is mounted to and supported by the base so
that the vibration isolation system is arranged between the
support structure and the base, the vibration isolation system
configured to provide a vibration isolation of the support
structure relative to the base, said imprint template holder being
1 According to the Appellants, the real party in interest is ASML
Netherlands B.V. (Appeal Br. 2).
2 The Examiner has withdrawn the final rejection to claim 17 under 35
U.S.C. § 112(a), first paragraph, for failing to comply with the written
description requirement. Adv. Act. 3.
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supported by the base without using the vibration isolation
system, and
a control unit configured to control the actuator during the
imprint process, the control unit being arranged to control an
adjustable member of the vibration isolation system using a
control signal that is derived from a signal controlling the
actuator to adjust a dynamical characteristic of the vibration
isolation system during at least part of the imprint process so as
to reduce a displacement of the support structure relative to the
base due to a force exerted on the support structure during the
imprint process.
(Appeal Br. 35—36; App. A; Pending Claims)
REFERENCES AND REJECTIONS ON APPEAL
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a):
(a) claims 1—5 and 10—16 as unpatentable over Nishi (JP 2001-
023896, published Jan. 26, 2001, relying on an English machine translation
dated Mar. 13, 2014) (hereinafter “Nishi”) in view of Hazelton (US
2006/0060791 Al, published Mar. 23, 2006) (hereinafter “Hazelton”),
Okushima et al., (WO 2008/099795 A2, published Aug. 21, 2008)
(hereinafter “Okushima”), and further in view of E. del Puerto (US
2008/0013097 Al, published Jan. 17, 2008) (hereinafter “del Puerto”); and
(b) claims 6—8 as unpatentable over Nishi in view of Hazelton,
Okushima, del Puerto, and further in view of Henderson et al., (US
7,445,094 Bl, published Nov. 4, 2008) (hereinafter “Henderson”).
With the exception of claims 2—6 and 10—13, Appellants do not make
separate substantive arguments in support of patentability of any of the
claims {see generally Appeal Br. 5—30; Reply Br. 1—11). Accordingly, our
discussion will focus on the obviousness rejections of independent claims 1
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and 14. Claim 2—6 and 10-13 will be addressed separately.
We note that for many of the claims on appeal, Appellants’ Briefs do
not include any particularized argument based on that claim’s limitations.
Rather, for several claims, Appellants merely note that the particular claim
depends from a parent claim and recites additional limitations. See, e.g.,
Appeal Br. 29—30 (discussion of claims 7 and 8). Appellants then state that
the rejection of the claim should be reversed for the reasons discussed in
connection with the parent claim because the claim sets forth additional
limitations. Id. Mere recitation of what a claim states is not a separate
argument for the claim’s patentability. 37 C.F.R. § 41.37(c)(l)(vii).
Accordingly, claims 7 and 8 stand or fall with claim 6; and claims 15
and 16 stand or fall with claim 14. Id.
ANALYSIS
Upon consideration of the appeal record including the Appellants’
position in this appeal as set forth on pages 5—30 of the Appeal Brief and
pages 1—11 of the Reply Brief,3 we affirm the Examiner’s rejections for the
reasons stated by the Examiner (Examiner’s Answer mailed Sept. 11, 2015,
2—26). We add the following for emphasis.
3 The Reply Brief discusses for the first time that transforming Nishi’s
optical lithography system into an imprint lithography system would render
it unsatisfactory for its intended purpose. Any new arguments and new facts
relied upon in the Reply Brief which were not raised or relied upon in the
Appeal Brief will not be considered by the Board unless good cause is
shown. 37 C.F.R. § 41.37(c) (1) (iv) (“Except as provided for in §§ 41.41,
41.47 and 41.52, any arguments or authorities not included in the appeal
brief will be refused consideration by the Board for purposes of the present
appeal.”).
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Rejection (a) under 35 U.S.C. § 103(a)
It has been established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398,418 (2007).
With respect to claims 1 and 14, Appellants’ main arguments focus on
an alleged lack motivation for one of ordinary skill in the art to have
changed Nishi’s optical lithography apparatus into “an imprint lithography
apparatus” as recited in each claim. Appeal Br. 9—13. Specifically,
Appellants argue that the Examiner’s “rejection is predicated on the Office’s
contention that [Nishi’s optical] lithography apparatus . . . can be
‘retrofitted’ into an imprint lithography apparatus.” Reply Br. 7. Appellants
argue that there are substantial structural differences between an imprint
lithography apparatus and an optical lithography apparatus, and that “the
extensive amount of modification needed is suggested nowhere in the cited
art... .” Id. at 7. We disagree for reasons well stated by the Examiner.
Ans. 3—26.
As aptly pointed out by the Examiner, “it is clear that [del] Puerto
suggests] that an optical lithography system can be retrofitted to an imprint
lithography system by pressing a patterning device (template) into a resin to
form a pattern rather than a mask or reticle as discussed in Nishi. . . .” Ans.
11 (citing del Puerto 1130).
Furthermore, Appellants’ focus on the Examiner’s use of the term
“retrofitted” to attack the technical feasibility of the proposed modification,
Appeal Br. 7, is misplaced. The secondary reference clearly suggests that
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“use of embodiments of the invention . . . can be used in other applications,
for example imprint lithography” without requiring any literal retrofitting of
an existing optical lithography apparatus. See del Puerto 130. Under the
flexible inquiry set forth by the Supreme Court, the PTO must take account
of the inferences that a person of ordinary skill in the art would make, such
as the inference that an optical lithography apparatus with Nishi’s vibration
limiting features could be redesigned to incorporate means for imprint
lithography without physically altering Nishi’s apparatus itself. Ball Aerosol
& Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed.
Cir. 2009). It is well settled that a reference stands for all of the specific
teachings thereof as well as the inferences one of ordinary skill in this art
would have reasonably been expected to draw therefrom. See In re Fritch,
972 F.2d 1260, 126^U65 (Fed. Cir. 1992).
Appellants’ Briefs further present statements attributed to named
inventor Hans Butler that “the Office’s position is completely unreasonable
and that it would make no sense whatsoever, technologically and
economically, for one skilled in the art to retrofit/transform an optical
lithography system into an imprint lithography system given their
completely different modes of operation and the parts that constitute those
systems.” Reply Br. 5. Appellants’ unsupported conclusion falls short of
showing error. While the assertions of Hans Butler are referenced
throughout the briefs, Appellants have not included a Rule 132 Declaration,
with facts supporting the opinion of Hans Butler, as evidence in the record.
As explained in Ex parte Gray, 10 USPQ2d 1922, 1928 (BPAI 1989):
The reason for requiring evidence in declaration or affidavit
form is to obtain the assurance that any statements or
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representations made are correct, as provided by 35 U.S.C. § 25
and 18 U.S.C. § 1001.
Appellants’ mere arguments in the Brief cannot take the place of objective
evidence. See, e.g., In re De Blauwe, 736 F.2d at 705; In re Lindner, 457
F.2d 506, 508 (CCPA 1972). In any event, Hans Butler’s opinion, even in
the form of a Rule 132 Declaration, unsupported by any factual evidence
would not outweigh the evidence in this record. In re Am. Acad, of Sci. Tech
Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to
weigh the declarations and conclude that the lack of factual corroboration
warrants discounting the opinions expressed in the declarations.”). See also
Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more
weight to prior publications than to subsequent conclusory statements by
experts, the Board acted well within [its] discretion.”); Yorkey v. Diab, 601
F.3d 1279, 1284 (Fed. Cir. 2010) (The Board has discretion to give more
weight to one item of evidence over another “unless no reasonable trier of
fact could have done so”).
Furthermore, if the only facts of record pertaining to the level of skill
in the art are found within the prior art of record, an invention may be held
to have been obvious without a specific finding of a particular level of skill
where the prior art itself reflects an appropriate level. Chore-Time
Equipment, Inc. v. Cumberland Corp., 713 F.2d 774 (Fed. Cir. 1983). In
this instance, Appellants’ argue that the Examiner’s proposed modification
would be technically infeasible without defining the level of ordinary skill in
the optical and imprint lithography arts.4 Without such a definition,
4 Appellants’ statement that “[lithography systems ... are very complex
systems as they are intended to pattern features at the sub-micron nano scale
level”, Reply Br. 5, is not a definition of the level of ordinary skill in these
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Appellants have not identified reversible error in the Examiner’s
determination that “one having ordinary skill in the art would have the
technical skill to modify the optical lithography apparatus of [del] Puerto to
be an imprinting lithography apparatus.” Ans. 13.
Thus, Appellants have not shown reversible error in the Examiner’s
determination that one of ordinary skill in the art, using no more than
ordinary creativity, would have modified the design of Nishi’s lithography
apparatus into an imprint lithography apparatus by excluding Nishi’s
mask/reticle for a mold/template/actuation system, while including Nishi’s
vibration control features, for the purpose of forming an imprint lithography
apparatus with vibration control for minimizing or eliminating vibration
during the imprinting process, thereby maximizing the accuracy of the
imprinted substrate. We have no doubt that such a skilled artisan would
have: 1) identified the need for controlling vibration regardless of the
lithographic application; and 2) recognized that a pneumatic isolation system
useful in an optical lithography apparatus would likely have benefits in an
imprint lithography apparatus. In re Keller, 642 F.2d 413, 425—26 (CCPA
1981) (“The test for obviousness ... is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”); In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references.”).
fields. Rather, Appellants’ statement was proffered to rebut the technical
infeasibility of a literal physical transformation of Nishi’s optical
lithography apparatus into an imprint lithography apparatus. Thus,
Appellants’ characterization of lithographic systems is inapposite to our
disposition of this case.
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Thus, we affirm rejection (a) with respect to claim 1.
With respect to claims 2—5, Appellants argue that it is improper for
the Examiner to rely “upon the same feature of Hazelton (paragraph 47) as
allegedly disclosing completely separate features that are recited in claims 2,
3, 4 and 5.” Appeal Br. 20. Appellants’ argument, however, is not
supported by any legal authority nor any particularized argument based on
the limitations recited in these claims. Appellants, therefore, have not
identified reversible error in the Examiner’s determination that it would have
been obvious to the ordinary skilled artisan to utilize Hazelton’s vibration
isolation system in place of or in combination with Nishi’s system for the
benefit of allowing the system to be adaptable to different uses and
applications which would require differing degrees of stiffness or damping.
Thus, we affirm rejection (a) with respect to claims 2—5.
Appellants separately argue for the reversal of the rejection to claims
10, 11, and 13 by asserting that “[i]n the modified optical lithographic
apparatus of Nishi, the reticle stage RST and its support have ‘disappeared’
and it is unclear how the imprint template holder would be used and
supported in the proposed modification.” See e.g., Appeal Br. 22; see
generally id. at 21—23; 24—25.
The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. Rather, the test focuses on what the combined teachings of the
references would have suggested to those of ordinary skill in the art. In re
Keller, 642 F.2d at 425—26. Appellants’ arguments are unpersuasive
because they suggest that the Examiner’s rejection is an attempt to bodily
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incorporate the features of an imprint template holder in the absence of
Nishi’s mask/reticle holder (RST).5
Appellants further argue for the reversal of the rejection to claims 10
and 11 because Nishi’s vibration isolation component 18A is not configured
to provide a vibration isolation of the support structure 20. Reply Br. 10-11.
According to Appellants, Nishi’s “element 20 is not a supporting structure
for supporting a substrate holder and element[] 18A does not provide a
vibration isolation of the support structure . . . .” Id. at 10.
Even assuming the Examiner’s finding is inaccurate, Appellants’
argument has not shown that the Examiner erred in finding that other
components in Nishi’s vibration isolation system, namely 18A, 125A, and
125B, are configured to provide vibration isolation to the support structure’s
other components, namely 28 and 138. See Ans. 21 (citing Nishi H 43, 122;
Figure 1).
Accordingly, we affirm rejection (a) with respect to claims 10, 11,
and 13.
With respect to claims 12 and 14, Appellants separately argue that the
applied prior art fails to teach the limitation “wherein the control unit is
arranged to control the adjustable member of the vibration isolation system
using a control signal that is derived from a signal controlling the actuator
during the imprint process” as recited in each claim. Appeal Br. 24, 26.
Appellants further argue that “Hazelton does not control its bellows based
upon a signal of an actuator of a mask holder, much less based upon an
actuator of an imprint holder.” Reply Br. 11.
5 Likewise, Appellants’ bodily incorporation arguments urging reversal of
the rejection to claim 1 are similarly not persuasive. See Appeal Br. 13—17.
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Appellants’ arguments are not persuasive. As the Examiner found,
Nishi discloses an inherent signal for controlling the actuator that moves the
reticle/mask holder (RST) toward the substrate holder (WST) in the z-axis.
Ans. 23 (citing Nishi || 52, 55; Abstract; Figs. 1, 3). Hazelton discloses that
pressure sensor 138 is configured to measure the internal fluid pressure of
bellows 132. Hazelton | 61. Hazelton further discloses that “controller 140
controls the internal pressure of bellows 132 in response to the pressure
measurements (pressure data) obtained by the pressure sensor 138 such that
the internal pressure of the bellows is maintained at a desired value.” Id. at
| 62. Therefore, we discern no reversible error in the Examiner’s finding
that Hazelton’s control unit 140 is arranged to control adjustable member
132 of vibration isolation system 130 using a control signal that is derived
from a signal controlling the actuator (Ans. 23 (citing Hazelton || 60-63;
Figure 8)).
Furthermore, for the reasons set forth above, Appellants’ arguments
fail to show that it was unreasonable for the Examiner to determine that an
ordinary skilled artisan would have inferred from the applied prior art that an
optical lithography apparatus, with Nishi’s vibration limiting features and
inherent signal for controlling the actuator, could be redesigned to
incorporate means for imprint lithography, including an imprint holder,
without physically altering Nishi’s apparatus itself.
Thus, we affirm the rejection (a) with respect to claims 12, 14, 15,
and 16.
Rejection (b) under 35 U.S.C. § 103(a)
With respect to claim 6, Appellants argue the Examiner “has not
explained how the additional features of claim 6—‘the magnetorheological
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damper comprises a coil configured to generate a magnetic field in a
magneto-rheological fluid of the magneto-rheological damper’—could be
used in the modified apparatus of Nishi.” Appeal Br. 28—29. Appellant’s
argument, however, is not persuasive because claim 6 merely recites the
additional feature wherein the adjustable damper is a magneto-rheological
damper. See, e.g.. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (explaining
that limitations not appearing in the claims cannot be relied upon for
patentability).
Thus, we affirm rejection (b) with respect to claims 6, 7, and 8.
DECISION
All of the appealed rejections are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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