Ex Parte Gilbert

Board of Patent Appeals and Interferences

Apr 30, 2008

10694690 (B.P.A.I. Apr. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MANFRED GILBERT
_____________

Appeal 2007-4010
Application 10/694,690
Technology Center 2800
____________

Decided: April 30, 2008
____________

Before KENNETH W. HAIRSTON, CARLA M. KRIVAK,
and KARL D. EASTHOM, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
Appellant’s claimed invention is to a comparison optical system (Figure 1)
comprising several image-acquiring optical subsystems (2a, 2b) and a bridge (3)
mechanically and optically connecting the optical subsystems to one another (Spec.
5: ¶33). Each of the image-acquiring optical subsystems possesses an XYZ stage
(8a, 8b), movable in a motorized fashion, wherein a specimen to be compared is
placed on each of the stages (Spec. 5: ¶33). A control unit (14) moves the XYZ
stages (8a, 8b), in a motorized fashion, synchronously in all three spatial directions
(Spec. 5: ¶39).
Claim 1 reproduced below is representative of the subject matter on appeal:
1. A comparison optical system comprising:
several image-acquiring optical subsystems, each image-acquiring system
associated with its respective motorized XYZ stage;
a bridge coupling the several image-acquiring optical subsystems
mechanically and optically to one another; and
a control unit for synchronously moving all motorized XYZ stages in in [sic]
all three spatial directions.

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THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Uchiyama US 4,123,170 Oct. 31, 1978

Reichel US 4,403,839 Sep. 13, 1983

Garner US 5,557,456 Sep. 17, 1996

The following rejections are before us for review:
1. Claims 1, 3-5, and 13-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uchiyama in view of Garner.
2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Uchiyama in view of Garner as applied to claim 1 above, and further in view
of Reichel.
3. Claims 6-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Uchiyama in view of Garner and Reichel.

OBVIOUSNESS
There are multiple obviousness issues before us regarding whether Appellant
has shown that the Examiner erred in rejecting claims 1-20 under 35 U.S.C.
§ 103(a). Claims 1, 3-5, and 13-20 were argued as a group with claim 1 as
representative (Br. 2-7).1 Further, Appellant has presented no further arguments as

1 Only arguments made by Appellant have been considered in this decision.
Arguments, which Appellant could have made but did not make in the Brief, have
not been considered and are deemed waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(2004).
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to the additional reference of Reichel used in rejecting claims 2 and 6-12, but
instead relies on the arguments provided for claim 1 (Br. 7-8). Accordingly,
claims 2 and 6-12 will likewise stand or fall with claim 1. Appellant presents
additional arguments with respect to claims 9-10 and 15-16 (Br. 8).
We present these issues as they correspond to, and in the order of,
Appellant’s presented arguments.
A. The first issue, regarding claims 1-20, is whether Uchiyama teaches
“several image acquiring optical subsystems, each subsystem being associated with
its respective motorized XYZ stage.”
B. The second issue, regarding claims 1-20, is whether Uchiyama in view of
Garner teaches “synchronously moving all motorized XYZ stages in all three
spatial directions.”
C. The third issue, regarding claims 9 and 15, is whether Uchiyama in view
of Garner teaches one X actuation element to displace synchronously both the first
and second stages in the X direction, one Y actuation element to displace
synchronously both the first and second stages in the Y direction, and one Z
actuation element to displace synchronously both the first and second stages in the
Z direction.
D. The fourth issue, regarding claims 10 and 16, is whether Uchiyama in
view of Garner teaches an on/off switch for the synchronous displacement of the
two motorized XYZ stages.

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FINDINGS OF FACT
The relevant facts include the following:
1. Appellant’s claim 1 does not require “separate” or “distinct” motorized XYZ
stages.
2. Figure 5 of Uchiyama shows table 22 that constitutes an XYZ stage having
masks 20 and 21 thereon, wherein each of the masks is associated with an
image acquiring subsystem. Figure 5 of Uchiyama shows that elements 26
and 27 constitute the imaging subsystem associated with mask 21 and that
elements 29 and 30 constitute another imaging subsystem associated with
mask 20 (Figure 5).
3. Uchiyama teaches that masks 20 and 21 are moved in the orthogonal X and
Y directions by the movement of the same table carrier 22 (col. 4, ll. 50-54).
Thus, necessarily both masks 20 and 21 will move synchronously by the
movement of the table carrier 22.
4. Uchiyama further teaches that alignment of the two masks 20 and 21 is
important for accurate scanning and comparison of the mask to be tested 20
with the sample mask 21 to accurately detect any defects (col. 4, ll. 54-59).
5. Uchiyama discloses a stage position detection device which supplies a signal
representing coordinates of stage 22 (col. 8, ll. 50-51).
6. Uchiyama teaches a stage driver 66 as shown in Figure 14 which constitutes
motorized movement based on the control of circuit 40 (Figure 14).
7. Although Uchiyama’s Figure 14 addresses the embodiment of Figure 6
rather than the embodiment of Figure 5, the embodiments do not differ with
respect to the mechanism of movement of table 22 since Figure 6 further
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improves the detection mechanism of defects by placing the compared
samples (i.e., 20A and 20B) closer together and using different detection
optics so that the movement of the table 22 does not introduce as many
errors (col. 4, l. 60-col. 5, l. 10).
8. Garner teaches that motorized movement in the Z direction is used for
focusing (col. 4, ll. 6-9).
9. Garner teaches a motorized controller 10 to control the movement of
motorized stage 3 in all three spatial directions XYZ driven by X axis motor
4, Y axis motor 5, and Z axis motor 6 (col. 3, ll. 39-58).
10. Garner characterizes as “typical” the use of a stage controller for the 3-axis
motorized stage (col. 1, ll. 15-20).
11. Garner teaches a fine control switch (i.e., switch 40) used to toggle between
a number of pre-selected stage movement speed ranges in the X and Y
direction (col. 4, ll. 21-29), and, thus, vary the entries at the X and Y control
knobs (14, 16, 18).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations including
(1) the scope and content of the prior art, (2) any differences between the claimed
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subject matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of
these questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”)
The Examiner’s articulated reasoning in the rejection must possess a rational
underpinning to support the legal conclusion of obviousness. In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006). The Supreme Court, citing In re Kahn, 441 F.3d at 988,
stated that “rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.” KSR
Int'l Co. v. Teleflex Inc., 127 S. Ct. at 1741. However, “the 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.” Id.
One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Keller, 642
F.2d 413, 425 (CCPA 1981). The test of obviousness is what the combined
teachings would have suggested to those of ordinary skill in the art. Id. at 425.
Although claims are interpreted in light of the specification, limitations from
the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181,
1184 (Fed. Cir. 1993).

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ANALYSIS
We address Appellant’s arguments in the order they were presented.

A. Does Uchiyama teach several image acquiring subsystems, each
subsystem being associated with its associated XYZ stage?

Appellant argues that Uchiyama “does not disclose ‘several image acquiring
optical subsystems, each subsystem being associated with its respective motorized
XYZ stage,’ as claimed in independent Claim 1” (Br. 5). Appellant argues that the
“two XY stages - are actually two masks - a sample mask 21 and a tested mask 20,
which are samples, specimens and not motorized stages. Uchiyama explicitly
discloses that both masks 20 and 21 are placed on a single carrier table 22. That
same one single carrier table 22 moves in the X-Y directions, so the two masks that
are placed on that same table move together with the table” (Br. 5). Appellant
concludes that “[s]ince no respective XYZ stages, each of which is associated with
their own respective image-acquiring optical subsystem, is disclosed in Uchiyama,
the first requirement of the non-obviousness test has not been met.” (Br. 5).
The Examiner agrees that elements 20 and 21 of Uchiyama are sample
masks, but they are also indicators of the respective portions of the stage (22) with
which each of the image-acquiring systems is associated (Ans. 9). The Examiner
states that the claim language does not require “separate” or “distinct” motorized
XYZ stages, only that each image acquiring system be associated with its
respective motorized XYZ stage (Ans. 9). The Examiner states that the claim
language allows for the respective XYZ stage to be a single stage that is large
enough to be imaged by each of the image acquiring systems, and, as shown in
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Figure 4 of Uchiyama, the stage 22 spans the entire distance between the two
image acquiring systems to allow both systems to be associated with the stage 22
at locations 20 and 21 (Ans. 9).
We agree with the Examiner’s findings of fact and conclusions as set out in
the Answer and adopt them as our own. We add the following primarily for
emphasis.
At the outset, we note that the disputed limitation of claim 1 requires:
“several image acquiring subsystems, each subsystem being associated with its
associated XYZ stage.” Thus, Appellant’s claim 1 does not require “separate” or
“distinct” motorized XYZ stages (Finding of Fact 1), and, therefore, a single XYZ
stage having two locations (i.e., Figure 5 of Uchiyama with XYZ stage 22 having
separate locations for masks 20 and 21) wherein each of those locations is
associated with an image acquiring subsystem (i.e., in Figure 5 of Uchiyama
elements 26 and 27 that form the imaging subsystem associated with mask 21 as
well as elements 29 and 30 that form another imaging subsystem associated with
location 20) reads on the disputed claim limitation (Finding of Fact 2). As stated
supra, although claims are interpreted in light of the specification, limitations from
the specification are not read into the claims. In re Van Geuns, 988 F.2d at 1184.
Thus, we are not persuaded by Appellant’s argument regarding claims 1-20
because Uchiyama teaches several image acquiring subsystems, each subsystem
being associated with its associated XYZ stage.

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B. Does Uchiyama in view of Garner teach “synchronously moving all
motorized XYZ stages in all three spatial directions?”

Appellant disagrees with the Examiner’s identification of col. 4, ll. 50-53,
which states: “the mask 20 and the sample mask 21 are placed on the same carrier
table 22 and are moved in the orthogonal X and Y directions,” as a teaching of a
control unit for moving the XY stage in a motorized fashion (Br. 5-6). Appellant
argues the following:

There is absolutely nothing in these lines, as well as
anywhere else in Uchiyama, disclosing a control unit for
synchronously moving all motorized XYZ stages in all
three spatial directions. The mention in Uchiyama that
the sample carrier table 22 could move in the orthogonal
X and Y directions provides no disclosure of a control
unit possibly accomplishing such movement. Moreover,
there is no disclosure at all in the whole Uchiyama patent
of what makes the sample carrier table of Uchiyama
move. Col. 8, lines 50-51 if Uchiyama say that there is
stage position detection device, which supplies a signal
representing coordinates of stage 22. This has nothing to
do with a control unit synchronously moving at least two
motorized XYZ stages. Logically, the word
“synchronously” couldn’t even be found anywhere in the
Uchiyama patent (by running the Edit-Find function on
the HTML text of the Uchiyama patent).
The disclosure of Garner does not provide the
missing disclosure of Uchiyama. . . . Nowhere in Garner
could there be found a disclosure of ‘several image
acquiring optical subsystems, each subsystem being
associated with its respective motorized XYZ stage’, as
claimed in independent Claim 1. Similarly, no disclosure
of a control unit for synchronously moving all motorized
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XYZ stages in all three spatial directions could be found
in Garner.
Therefore, neither Uchiyama nor Garner alone, nor in
combination with each other, disclose each and every
element of the invention as claimed in independent Claim
1.

Br. 6.

While the Examiner agrees that the word “synchronously” is not present in the
Uchiyama reference, the Examiner clarifies that the word synchronously does not
have to be present for the reference to provide a teaching of synchronous
movement by the respective stage (Ans. 9). The Examiner explains that as the
stage 22 moves, the locations of masks 20 and 21 will move with the stage along
the same direction and at the same rate of movement, due to the fact that the masks
are directly on the stage (Ans. 9). The Examiner further states that stage 22 is
formed of solid material as shown in Uchiyama’s Figure 4, and therefore, the
movement of any piece of the stage will cause the rest of the stage to move
synchronously and carry along with it the locations shown by 20 and 21 (Ans. 9).
We agree with the Examiner’s findings of fact and conclusions as set out in
the Answer and adopt them as our own. We add the following primarily for
emphasis.
Uchiyama teaches that masks 20 and 21 are moved in the orthogonal X and
Y directions by the movement of the same table carrier 22 (Finding of Fact 3).
Thus, necessarily both masks 20 and 21 will move synchronously by the
movement of the table carrier 22. Uchiyama further teaches that alignment of the
two masks 20 and 21 is important for accurate scanning and comparison of the
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mask to be tested 20 with the sample 21 to accurately detect any defects (Finding
of Fact 4). Thus, it would have been obvious to one skilled in the art that
synchronous movement of the masks 20 and 21 is required to accurately scan and
compare the two samples.
While we agree with Appellant’s argument that the stage position detection
device as described in col. 8, ll. 50-51, which supplies a signal representing
coordinates of stage 22 (Finding of Fact 5), does not synchronously move at least
two motorized XYZ stages, we note that Uchiyama teaches a stage driver 66 as
shown in Figure 14 which constitutes motorized movement based on the control of
circuit 40 (Finding of Fact 6). We further note that while Figure 14 addresses the
embodiment of Figure 6 rather than the embodiment of Figure 5, the embodiments
do not differ with respect to the mechanism of movement of table 22 since Figure 6
further improves the detection mechanism of defects by placing the compared
samples (i.e., 20A and 20B) closer together and using different detection optics so
that the movement of the table 22 does not introduce as many errors (Finding of
Fact 7). Thus, the movement of the table 22 is the same in both embodiments.
Therefore, Uchiyama teaches synchronous movement of the two XY stages (i.e.,
masks 20 and 21 which necessarily have stage locations) by a control unit (i.e., 40)
moving the two motorized stages (i.e., via motor or stage driver 66) in two
orthogonal directions X and Y (Figure 14).
Furthermore, Garner teaches that motorized movement in the Z direction is
used for focusing (Finding of Fact 8). The Examiner articulated for a motivation to
combine the references that the motorized movement in the Z direction as taught
by Garner in combination with the motorized movement in the X and Y directions
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as taught by Uchiyama would allow for focusing of the light on the stages (Ans. 7).
Thus, as stated supra, the Examiner’s articulated reasoning in the rejection
possesses a rational underpinning to support the legal conclusion of obviousness.
In re Kahn, 441 F.3d at 988.
However, even if we assume, without deciding, that Uchiyama does not
teach motorized movement in the X and Y directions, Garner teaches a motorized
controller 10 to control the movement of motorized stage 3 in all three spatial
directions XYZ driven by X axis motor 4, Y axis motor 5, and Z axis motor 6
(Finding of Fact 9). Furthermore, Garner characterizes as “typical” the use of a
stage controller for a 3-axis motorized stage (Finding of Fact 10). Thus, the
combination of Uchiyama and Garner teaches a control unit for the motorized
stage movement in all XYZ directions as claimed in claim 1, and the image
acquiring subsystems (i.e., Figure 5 of Uchiyama, elements 29 and 30 as well as 26
and 27) associated with the respective motorized XYZ stage (i.e., Figure 5 of
Uchiyama, elements 20 and 21) which move synchronously with the movement of
the same table carrier 22.
We are also not persuaded by Appellant’s argument that Garner does not
teach several image acquiring optical subsystems, each subsystem being associated
with its respective motorized XYZ stage as claimed in independent claim 1 (Br. 6).
As stated supra, one cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references. In re
Keller, 642 F.2d at 425. Thus, we are not persuaded by Appellant’s arguments
because Uchiyama teaches several image acquiring optical subsystems, each
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subsystem being associated with its respective motorized XYZ stage (Findings of
Fact 1 and 2).
Thus, we are not persuaded by Appellant’s argument regarding claims 1-20
that Uchiyama does not teach “synchronously moving all motorized XYZ stages in
all three spatial directions” because the combination of Uchiyama and Garner teach
this limitation.

C. Does the combination of Uchiyama and Garner teach one X actuation
element to displace synchronously both the first and second stages in the X
direction, one Y actuation element to displace synchronously both the first
and second stages in the Y direction, and one Z actuation element to
displace synchronously both the first and second stages in the Z direction?

Appellant argues that the combination of Uchiyama and Garner does not
teach one X actuation element to displace synchronously both the first and second
stages in the X direction, one Y actuation element to displace synchronously both
the first and second stages in the Y direction, and one Z actuation element to
displace synchronously both the first and second stages in the Z direction (Br. 8).
As stated previously, Uchiyama teaches that mask locations 20 and 21 (i.e.,
masks 20 and 21 necessarily have stage locations) are moved in the orthogonal X
and Y directions by the movement of the same table carrier 22 (Finding of Fact 3),
and thus, necessarily both mask locations 20 and 21 move synchronously (Finding
of Fact 3). Garner teaches a motorized controller 10 to control the movement of
motorized stage 3 in all three spatial directions XYZ driven by X axis motor 4, Y
axis motor 5, and Z axis motor 6 (Finding of Fact 9). Garner teaches that
motorized movement in the Z direction is used for focusing (Finding of Fact 8).
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The Examiner articulated for a motivation to combine the references that the
motorized movement in the Z direction as taught by Garner in combination with
the motorized movement in the X and Y directions as taught by Uchiyama would
allow for focusing of the light on the stages (Ans. 7). Thus, as stated supra, the
Examiner’s articulated reasoning in the rejection possesses a rational underpinning
to support the legal conclusion of obviousness. In re Kahn, 441 F.3d at 988.
Thus, the combination of Uchiyama and Garner teaches synchronous
movement of two stages (i.e., elements 20 and 21 of Uchiyama) in the X and Y
directions (via use of X axis motor 4 and Y axis motor 5 of Garner) and in the Z
direction (via use of Z axis motor 6 of Garner). Movement of the table 22 having
the two stages (i.e., 20 and 21) in the Z direction would necessarily synchronously
move the two stages since they are on the same table 22.
Thus, we are not persuaded by Appellant’s argument regarding claims 9 and
15, because the combination of Uchiyama and Garner teaches one X actuation
element to displace synchronously both the first and second stages in the X
direction, one Y actuation element to displace synchronously both the first and
second stages in the Y direction, and one Z actuation element to displace
synchronously both the first and second stages in the Z direction.

D. Does Uchiyama in view of Garner teach an on/off switch for the
synchronous displacement of the two motorized XYZ stages?

Appellant argues that “nowhere in the combined disclosure of the cited
patents is there a disclosure of one on/off switch synchronous displacement of the
two motorized XYZ stages, as claimed in claims 10 and 16.” (Br. 8).
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Appellant’s claims 10 and 16 state that “the control and adjustment
apparatus encompasses an on/off switch for a synchronous displacement of the two
XYZ stages which acts in such a way that when the on/off switch for synchronous
displacement is switched on, both XYZ stages are movable synchronously
regardless of the actuation of the X actuation element or X actuation element, the
Y actuation element or Y actuation element, the Z fine displacement control or the
Z fine displacement control.” Thus, Appellant’s on/off switch when turned on
moves the stage independently from the settings at the X, Y and Z actuation
elements, and moves both stages synchronously.
Similarly, Garner teaches a fine control switch (i.e., switch 40) used to
toggle between a number of pre-selected stage movement speed ranges in the X
and Y directions, and, thus, vary the entries at the X and Y control knobs (14, 16,
18) (Finding of Fact 11). Thus, Garner’s on/off fine control switch 40 (note that a
switch is necessarily an on/off switch) when turned on to a pre-selected stage
movement speed range moves the stage independently from the settings at the X,
Y, and Z actuation elements or control knobs (14, 16, 18). Note that Garner’s
switch 40 will be independent of the Z entry and thus will act “regardless of the
actuation . . . the Z fine displacement control” as claimed in claims 10 and 16. As
stated previously, the synchronous movement of the two mask locations (i.e., 20
and 21 as taught by Uchiyama), move synchronously with the movement of table
22. Therefore, Uchiyama in combination with Garner would provide for the
synchronous movement of the locations/masks (i.e., 20 and 21) in the X and Y
directions according to the chosen pre-selected stage movement independent from
the entries at the X, Y, and Z actuation elements or control knobs (14, 16, 18).
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Thus, we are not persuaded by Appellant’s argument regarding claims 10
and 16, because Uchiyama in view of Garner teach an on/off switch for the
synchronous displacement of the two motorized XYZ stages (i.e., 20 and 21).

CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner erred in
rejecting claims 1-20 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 1-20 is 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)(1)(iv).

AFFIRMED

KIS

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