Ex Parte Chen et alDownload PDFPatent Trial and Appeal BoardJul 14, 201713900465 (P.T.A.B. Jul. 14, 2017) Copy Citation 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. 13/900,465 05/22/2013 Lu Chen 5222-20402/P2720D2 3784 61507 7590 07/14/2017 Entropy Matters LLC P.O. Box 2250 NEW YORK, NY 10021 EXAMINER TON, TRI T ART UNIT PAPER NUMBER 2877 MAIL DATE DELIVERY MODE 07/14/2017 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 KLA-TENCOR CORPORATION (Inventors: LU CHEN, JASON KIRKWOOD, MOHAN MAHADEVAN, JAMES A. SMITH, LISHENG GAO, JUNQING (JENNY) HUANG, TAO LUO, and RICHARD WALLINGFORD) ____________ Appeal 2016-005664 Application 13/900,4651 Technology Center 2800 ____________ Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and JEFFREY R. SNAY, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicant (hereinafter “Appellant”) appeals under 35 U.S.C. § 134(a) from the Primary Examiner’s final decision to reject claims 1–22 and 25–46.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The real party in interest is identified as “KLA-Tencor Corp.” (Appeal Brief filed on October 31, 2015, hereinafter “Appeal Br.,” 1). 2 Appeal Br. 1, 4–10; Reply Brief filed on May 3, 2016, hereinafter “Reply Br.,” 2–6; Final Office Action entered on August 4, 2015, hereinafter “Final Act.,” 2–4; Examiner’s Answer entered on March 10, 2016, hereinafter “Ans.,” 3–8. Appeal 2016-005664 Application 13/900,465 2 BACKGROUND The subject matter on appeal relates to methods and systems for detecting defects on a wafer (Specification, hereinafter “Spec.,” 1, ll. 8–9). Representative claim 1 is reproduced from page 12 of the Appeal Brief (Claims Appendix), with key limitations highlighted in bolded italics, as follows: 1. A method for detecting defects on a wafer, comprising: generating output for a wafer by scanning the wafer with first and second inspection systems; generating first image data for the wafer using the output generated using the first inspection system and second image data for the wafer using the output generated using the second inspection system, wherein the first inspection system comprises a first light source configured to generate first light, a first stage configured to move the wafer, and a first detector configured to detect light from the wafer and to generate a first portion of the output, wherein the second inspection system comprises a second light source configured to generate second light, a second stage configured to move the wafer, and a second detector configured to detect light from the wafer and to generate a second portion of the output, wherein the first and second light sources are not the same light source, and wherein the first and second stages are not the same stage; combining the first image data and the second image data corresponding to substantially the same locations on the wafer thereby creating additional image data for the wafer; and detecting defects on the wafer using the additional image data. Appeal 2016-005664 Application 13/900,465 3 REJECTION ON APPEAL On appeal, the Examiner states that claims 1–22 and 25–46 are rejected under pre-AIA 35 U.S.C. § 112, ¶ 1, as failing to comply with the enablement and written description requirements (Ans. 3). Although the Examiner entered two separate rejections—namely, a lack of enablement rejection against claims 1–22 and 25–46 and a lack of written description rejection against claims 1 and 25 (Final Act. 3–4), no factual findings or reasons are provided in support of a separate lack of enablement rejection (Final Act. 2–4; Ans. 3–7). Therefore, we consider claims 1–22 and 25-46 to be rejected only under the written description requirement of 35 U.S.C. § 112, ¶ 1. DISCUSSION The Examiner finds that independent claims 1 and 25, which were amended or added post-filing (Amendments filed June 20, 2014 and March 23, 2015), contain limitations (i.e., “wherein the first and second light sources are not the same light source, and wherein the first and second stages are not the same stage”) that introduce new matter (Final Act. 4). The Appellant, on the other hand, contends that these limitations are supported in the Specification as originally filed (Appeal Br. 5) (citing, e.g., Spec. 13, l. 14–14, l. 11; 37, l. 10–39, l. 20; 42, l. 5–47, l. 2). It is well-settled that “the test for sufficiency [of written description] is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). To show possession, “the specification must describe an invention understandable to [the] skilled Appeal 2016-005664 Application 13/900,465 4 artisan and show that the inventor actually invented the invention claimed.” Id. at 1351. Nevertheless, “the description requirement does not demand any particular form of disclosure . . . or that the specification recite the claimed invention in haec verba . . . .” Id. at 1352 (internal citations omitted). Applying this test, we agree with the Appellant that the Examiner’s rejection is not well-founded. The Specification, as originally filed, plainly states that the wafer may be scanned using different inspection systems (Spec. 38, ll. 8–9) (“The first and second inspection systems may include any of the different inspection systems described herein”). In addition, the Specification describes an embodiment in which the wafer is scanned with inspection systems using different optical states (id. at 38, ll. 11–12) (“Alternatively, scanning the wafer with the first and second inspection systems may be performed using different optical states.”). Furthermore, the Specification discloses that each inspection system includes a wafer stage (id. at 12, ll. 21–26). These disclosures, as well as others highlighted in the Appeal Brief, reasonably convey to a person skilled in the relevant art that the inventors had possession of the inventions recited in claim 1 and claim 25. Therefore, we cannot sustain the Examiner’s rejection. SUMMARY The Examiner’s rejection under 35 U.S.C. § 112, ¶ 1, of claims 1–22 and 25–46 is reversed. REVERSED Copy with citationCopy as parenthetical citation