Ex Parte Duerig et al

Patent Trial and Appeal Board

Sep 28, 2016

12940079 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/940,079 11/05/2010
49267 7590 09/30/2016
TUTUNJIAN & BITETTO, P.C.
401 Broadhollow Road, Suite 402
Melville, NY 11747
FIRST NAMED INVENTOR
Urs T. Duerig
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.
CH9200900l7US1
(163-517)
CONFIRMATION NO.
6723
EXAMINER
MCCORMACK, JASON L
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
patents@tb-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte URS T. DUERIG, BERND W. GOTSMANN,
ARMIN W. KNOLL, and MARK ALFRED LANTZ
Appeal2014-001647
Application 12/940,079
Technology Center 2800
Before DEBRA K. STEPHENS, WILLIAM M. FINK, and
SHARON PENICK, Administrative Patent Judges.
FINK, Administrative Patent Judge.
DECISION ON APPEAL
A. "1"1 • 1 "1 • "1 ,..,, ,- TT #'I ~ n "I""" Al/ '- I"" ,"1 Appeuants' seeK our review unaer j) u.~.L. s U4~aJ or me
Examiner's final rejection of claims 1-18. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as International Business Machines
Corporation. Br. 1.
Appeal2014-001647
Application 12/940,079
STATEMENT OF THE CASE
Appellants' invention relates to methods for scanning and imaging the
surface of a material using a physical probe in a scanning probe microscope
(SPM). Spec. ,-i,-i 2-3.2
Claims 1, 15, and 18 are the independent claims on appeal. Claim 1 is
illustrative of Appellants' invention and is reproduced below with the
disputed limitation emphasized:
1. A method for scanning a surface of a material with a
scanning probe microscope (SPM), said SPM having a cantilever
sensor configured to exhibit both a first spring behavior and a
second, stiffer spring behavior, the method comprising:
operating said SPM in contact mode, whereby said sensor
is scanned on said material surface and said first spring behavior
is excited by a deflection of said sensor by said material surface;
and
exciting by excitation means said second, stiffer spring
behavior at a resonance frequency thereof, to modulate an
interaction of said sensor and said material surface.
Br. 25 (emphasis added).
Claims 1--4, 12, 13, and 15-17 stand rejected under
35 U.S.C. § 102(b) as anticipated by Su '388 (US 2006/0260388 Al; Nov.
23, 2006).
Claims 8-11 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Su '388.
2 Our decision refers to Appellants' Appeal Brief filed August 16, 2013
("Br."); the Examiner's Answer mailed September 11, 2013 ("Ans."); the
Final Office Action mailed March 25, 2013 ("Final Act."); and the original
Specification filed November 5, 2010 ("Spec.").
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Application 12/940,079
Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Su '388 and Su '099 (US 6,945,099B1; Sept. 20,
2005).
Claims 7 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of Su '388 and Duerig (US 2008/0316904 Al; Dec. 25,
2008).
Based on Appellants' arguments, the issues on appeal are ( 1) whether
Su '388 discloses "operating said SPM in contact mode, whereby said sensor
is scanned on said material surface and said first spring behavior is excited
by a deflection of said sensor by said material surface," as recited in
independent claim 1, and (2) whether the "Q factor" limitation of dependent
claim 8 would have been obvious over Su '388.
ANALYSIS
Claims 1-7, 12, 13, and 15-17
In disputing the Examiner's rejection of independent claim 1,
Appellants argue that the present invention uses a "contact mode" of
operation of an SPM, which, according to paragraphs 8-9 of the
Specification, requires dragging the probe tip across the surface of a sample
during scanning. Br. 10-11. Appellants contend paragraph 80 of Su '388,
cited by the Examiner, discloses a contact mode cantilever but does not
disclose a contact mode of method of operation. Id. at 11. Rather,
Appellants contend, Su '388 states there are disadvantages to contact mode
and, as such, Su employs a "tapping mode" of operation in which the probe
tip interacts with sample by tapping or oscillating. Id. at 10-11 (citing, e.g.,
Su '388 ,-i,-i 8, 27, 62). Appellants also dispute the Examiner's finding that
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Appeal2014-001647
Application 12/940,079
the present invention is a hybrid between contact mode and tapping mode,
because claim 1 explicitly claims contact mode. Id. at 12.
To Appellants' point that the present invention is not a hybrid
between contact mode and tapping mode, the Examiner responds that the
first limitation of claim 1 indicates the spring is excited by deflecting the
sensor by said material surface, which is a hallmark of contact mode as
defined in the Specification. Ans. 12; see also Spec. iJ 9 ("A constant
flexure, or bend in the cantilever is maintained, which corresponds to a
displacement of the probe tip."). The Examiner finds that the second, final
limitation of claim 1 indicates the cantilever is oscillated near the resonance
frequency to modulate the interaction between the sensor and said material
surface-a hallmark of tapping mode as defined in the Specification. Ans.
11-12; see also Spec. 11 ("[T]he cantilever can be oscillated near its first (or
fundamental) bending mode resonance frequency ... as the probe is raster
scanned above the surface in either non-contact or tapping mode.").
Therefore, according to the Examiner, the method claim 1 relies upon both
contact and tapping modes of operation as further clarified by paragraph 27
of the Specification, which states the object of the present invention is to
combine the "capability of contact mode imaging with the advantages of
wear reduction, using an actuated tip (as in dynamic modes of operation)."
Ans. 12 (citing Spec. iii! 27, 33, 56).
As an initial matter, we agree with the Examiner's interpretation of
independent claim 1 as including limitations of contact mode and tapping
mode, based on the description in the background of the Specification.
More specifically, paragraph 27 of Appellants' Specification states the
object of the present invention is to combine features of contact mode with
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Appeal2014-001647
Application 12/940,079
that of "dynamic modes" of operation, which paragraph 15 defines as
"tapping or non-contact modes." This "hybrid" behavior is further
exemplified by cited paragraph 56, which states that "the tip is levitated
above the surface by short contact force pulses at closest approach of the
oscillation cycle" (emphasis added). See also Spec. ii 33 ("[T]he tip-sample
distance, d, is modulated by the oscillator amplitude, a, at the resonance
frequency, COk."). Consequently, to the extent Appellants contend claim 1
"explicitly claims contact mode" (Br. 12) to require constant contact or as
precluding characteristics of tapping mode (i.e., oscillating or vibrating), we
determine this interpretation is not supported by the claims or the preferred
embodiment, which specifically contemplates combining features of contact
mode and tapping mode. See On-Line Techs., Inc. v. Bodenseewerk Perkin-
Elmer GmbH, 386 F.3d 1133, 1138 (Fed. Cir. 2004) (noting that a claim
construction that excludes a preferred embodiment is "a result that is rarely,
if ever, correct.").
Consistent with this interpretation, we agree with the Examiner's
finding that Su '388 discloses "operating said SPM in contact mode,
whereby said sensor is scanned on said material surface and said first spring
behavior is excited by a deflection of said sensor by said material surface,"
as claim 1 recites. Ans. 12-13. Indeed, similar to claim 1, Su '388
describes a two spring embodiment, which includes control feedback based
on "Contact Mode operation using the displacement of the weaker spring, k2
or ksoft . . . . In this manner, the feedback takes advantage of Contact Mode
dynamics." Su '388 ii 27 (emphasis added); see also id. ii 63 (describing
feedback control "based on the deflection of L2"). Aside from arguing that
this method of operation is not "Contact Mode" based on the background
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Appeal2014-001647
Application 12/940,079
description of the prior art, Appellants fail to explain why this description
does not disclose the disputed limitation of claim 1.
Accordingly, we are persuaded Su '388 discloses the limitations of
independent claim 1, and we therefore sustain the Examiner's 35 U.S.C. §
102(b) rejection of claim 1, as well as claims 2--4, 12, 13, and 15-17, which
are not separately argued. See 37 C.F.R. § 41.37(c)(l)(iv). Regarding the
35 U.S.C. § 103(a) rejection of claims 5 and 6 over Su '388 and Su '099,
and of claims 7 and 18 over Su '3 8 8 and Duerig, Appellants present no
separate patentability arguments aside from its argument that the additional
references do not disclose the contact mode limitation of claim 1 (see Br.
17-23), which is not persuasive given our determination above with respect
to Su '388. Accordingly, we sustain the rejections of claims 5-7 and 18 for
the foregoing reasons.
Claims 8-11 and 14
Claim 8 requires selecting cantilever end section and tip height
resulting in a Q-factor between 5 and 10. Br. 26 (claim 8). The Examiner
finds that a person of ordinary skill in the art at the time of the invention
would have chosen such a Q-factor range "to provide increased accuracy of
measurements made with the sensor by ensuring that the sensor has a proper
quality factor for the type of sample and location on the sample." Ans. 6
(citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)).
In disputing this rejection, Appellants argue that the Examiner
misapplies Aller, since "the claimed ranges are not simply result-effective
variables or an optimization of ranges at least because the Examiner has not
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Application 12/940,079
shown that the cited reference employs a contact mode with the claimed
ranges to reduce wear of an item or improve a scanning speed." Br. 15-16.
We are not persuaded by this argument. We agree the Examiner "has
not shown that the cited reference employs a contact mode with the claimed
ranges" (i.e., Q-factor between 5 and 10), but this is beside the point because
if "the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine
experimentation." Aller, 220 F.2d at 456. Here, the Examiner finds the
optimum or workable Q-factor range to provide increased accuracy involves
only routine skill in the art. Ans. 7. Appellants have not directed us to
evidence that, based on the claimed range, there is anything new or
unexpected which is different in kind and not merely in degree from the
results of the prior art. See Aller, 220 F.2d at 456. Accordingly, we sustain
the Examiner's obviousness rejection of claim 8. As Appellants present no
separate patentability arguments regarding claims 9 and 10, which depend
from claim 8, or claims 11 and 14, also rejected over Su '388, we sustain the
rejection of these claims as well. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner's final rejection of claims 1-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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