Ex Parte DEN BOEF et al

Patent Trial and Appeal Board

Jun 15, 2018

14281346 (P.T.A.B. Jun. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/281,346 05/19/2014 Arie Jeffrey DEN BOEF
26111 7590 06/19/2018
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
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.
2857.0640003 9497
EXAMINER
GRAY, SUNGHEE Y
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
06/19/2018 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):
e-office@stemekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARIE JEFFREY DEN BOEF,
EARL WILLIAM EBERT JR., HARRY SEWELL,
KEITH WILLIAM ANDRESEN, and
SANJEEV KUMAR SINGH
Appeal2017-009397
Application 14/281,346
Technology Center 2800
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-009397
Application 14/281,346
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection2 of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse and enter a new ground of rejection pursuant to 37 CPR§
4I.50(b).
CLAIMED SUBJECT MATTER
The Specification provides that the claims are directed to "an
illumination system of the type used in lithographic apparatus for
semiconductor wafer manufacture." Spec. ,r 2. 3 Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. An alignment system comprising:
a tunable narrow pass-band filter configured to:
receive broad-band radiation, and
filter the broad-band radiation into narrow-band radiation;
a relay and mechanical interface configured to:
receive the narrow-band radiation, and
adjust a profile of the narrow-band radiation based on a
physical property of a plurality of alignment targets on a
substrate; and
a focusing system configured to focus the adjusted
narrow-band radiation on the plurality of alignment targets.
(Claims Appendix, App. Br. 15, emphasis added).
1 ASML HOLDING N.V and ASML NETHERLANDS B.V.is identified as
the real party in interest. Appeal Brief of December 19, 2016 ("App. Br."),
3.
2 Final Rejection of June 6 2016 ("Final Act."). In this decision, we also
refer to the Examiner's Answer of March 27, 2017 ("Ans."). No Reply
Brief was submitted.
3 U.S. Patent Application No. 14/281,346 ("Spec."), Tunable Wavelength
Illumination System.
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Application 14/281,346
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Bischel et al.
Den Boef
Berghamans
US 7,653,109 B2
US 2008/0239265 Al
WO 2009/030004 Al
REJECTIONS
Jan.26,2010
Oct. 2, 2008
Mar. 12, 2009
Claims 1---6 and 9-20 are rejected under 35 U.S.C. I03(a) as being
unpatentable over Den Boef. Final Act. 2.
Claim 7 is rejected under 35 U.S.C. I03(a) as being unpatentable over
Den Boef in view of Bischel. Final Act. 7.
Claim 8 is rejected under 35 U.S.C. I03(a) as being unpatentable over
Den Boef in view of Berghmans. Final Act. 8.
OPINION
Appellants argue that the Examiner reversibly erred in finding that the
recited "relay and mechanical interface configured to receive ... and adjust .
. . " is taught in the prior art. App. Br. 7-13.
Appellants point to component 53 in Figures 4 and 5 of the
Specification as well as paragraphs 55, 58, 62, and 71 as support for this
claim limitation. App. Br. 4. The figures and texts, however, do not specify
a structure for the "relay and mechanical interface." We find that the scope
of claim 1 is indefinite because it is unclear what structure ( e.g., a circuitry,
a mechanical device, an electrical device, etc.) or structures are performing
one or more of the functions recited in claim 1. "[A] patent must be precise
enough to afford clear notice of what is claimed, thereby 'appris[ing] the
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Application 14/281,346
public of what is still open to them."' Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S. Ct. 2120, 2129 (2014) (citing Markman v. Westview
Instruments, Inc., 517 U.S. 370,373 (1996) (quoting McClain v. Ortmayer,
141 U.S. 419,424 (1891))).
Moreover, Appellants are afforded the opportunity to amend the
claims during prosecution to claim an invention with a reasonable degree of
precision and particularity. 35 U.S.C. § 112, second paragraph (pre-AIA)
"puts the burden of precise claim drafting squarely on the applicant." In re
Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997); see also Halliburton Energy
Servs. v. M-ILLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (noting that "the
patent drafter is in the best position to resolve the ambiguity in the patent
claims, and it is highly desirable that patent examiners demand that
applicants do so in appropriate circumstances so that the patent can be
amended during prosecution rather than attempting to resolve the ambiguity
in litigation."). During patent prosecution an applicant has the opportunity
to amend the claims in order to overcome indefiniteness rejections. Exxon
Research and Eng'g. Co. v. U.S., 265 F.3d 1371, 1380 (Fed. Cir. 2001)
(citing In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989)).
Review of the rejection under 35 U.S.C. § 103(a) would therefore
require considerable speculation as to the scope of the claims. Such
speculation would not be appropriate. In re Steele, 305 F.2d 859, 862
(CCPA 1962) ("[W]e do not think a rejection under 35 U.S.C. § 103 should
be based on such speculations and assumptions."). We, therefore,
procedurally reverse the 35 U.S.C. § 103(a) rejection because we are unable
to reach the merits of those rejections. We emphasize that this is a
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Application 14/281,346
procedural reversal of the rejection under 35 U.S.C. § 103(a), and not a
reversal based upon the merits of the rejection.
We accordingly enter a new ground of rejection that claim 1 is
indefinite under 35 U.S.C. § 112, second paragraph (pre-AIA). Independent
claims 9 and 14, both reciting "a relay and mechanical interface" are rejected
under 35 U.S.C. § 112, second paragraph for the same reason. As a result,
dependent claims 1-8, 10-13, and 15-20 are also rejected for indefiniteness.
DECISION
The Examiner's rejection of claim 1-20 is reversed.
A new ground of rejection of claim 1-20 for indefiniteness under 35
U.S.C. § 112, second paragraph (pre-AIA) has been entered.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, 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
prosecution will be remanded to the examiner. The new ground of rejection
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is binding upon the examiner unless an amendment or new Evidence not
previously of record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the decision. Should
the examiner reject the claims, appellants may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
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).
REVERSED
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