Ex Parte Imaino et al

Board of Patent Appeals and Interferences

Apr 15, 2003

08841214 (B.P.A.I. Apr. 15, 2003)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WAYNE ISAMI IMAINO, ANTHONY JULIANA,
MILTON RUSSELL LATTA, CHARLES H. LEE,
WAI CHEUNG LEUNG, HAL J. ROSEN,
STEVEN MEEKS, and RICHARD SONNENFELD
____________
Appeal No. 2001-0864
Application No. 08/841,214
____________
ON BRIEF
____________
Before KRASS, JERRY SMITH, and DIXON, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-8, 10-
18 and 20. Claims 9 and 19 have been indicated by the examiner to be allowable if
rewritten in independent form.
We REVERSE.
Appeal No. 2001-0864
Application No. 08/841,214
2
BACKGROUND
Appellants’ invention relates to a surface inspection tool. An understanding of
the invention can be derived from a reading of exemplary claim 1, which is reproduced
below.
1. An apparatus for inspecting a planar surface of a disk for use in a
disk drive comprising:
means for scanning a laser beam (the incident beam) over at least
a portion of a first planar surface of the disk to generate a reflected beam;
a detector for converting an intensity of the reflected beam from the
planar surface into an analog signal;
means for sampling and digitizing the analog signal to generate
pixel data stored in a buffer;
means for calculating a rate of change in the intensity of the
reflected beam from the pixel data; and
means for applying a selected threshold to the rate of change in the
intensity of the reflected beam to identify defects or features.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Cuthbert et al. (Cuthbert) 3,790,287 Feb. 5, 1974
Boehnlein et al. (Boehnlein) 5,307,152 Apr. 26, 1994
Bou-Ghannam et al. (Bou-Ghannam) 5,710,631 Jan. 20, 1998
(filed Jan. 27, 1997)
Womack et al. (Womack) 5,818,592 Oct. 6, 1998
(filed Feb. 7, 1997)
Appeal No. 2001-0864
Application No. 08/841,214
1 We note that claims 6 and 16 are rejected under both grounds.
3
Claims 1-6, 8, 10-16, 18, and 20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Womack in view of Boehnlein further in view of Bou-Ghannam.
Claims 6, 7, 16, and 17 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Womack, Boehnlein, and Bou-Ghannam further in view of Cuthbert.1
Rather than reiterate the conflicting viewpoints advanced by the examiner and
appellants regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 15, mailed Aug. 23, 2000) for the examiner's reasoning in support of
the rejections, and to appellants’ brief (Paper No. 14, filed Jun. 13, 2000) for appellants’
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
At the outset, we note that appellants indicate that there are related appeals in
Serial No. 08/841,037 and Serial No. 08/840,351. We have reviewed the records of
these applications and find that Serial No. 08/841,037 was allowed after filing of the
appeal brief and is now US Patent No. 6,100,971. Serial No. 08/840,351 was appealed
to the Board as Appeal No. 2000-1414 and was affirmed-in-part.
Appeal No. 2001-0864
Application No. 08/841,214
4
Appellants argue that claim 1 clearly establishes that appellants are using the
intensity of the reflected beam and appellants are using a rate of change in intensity to
detect stains on the surface of a disk which are only evidenced by changes in the
reflectivity of the disk surface. (See brief at page 6.) We agree with appellants that
Womack does not teach or fairly suggest the use of the rate of change of intensity.
Appellants argue that Womack teaches away from the use of the rate of change of
intensity. (See brief at page 6.) We disagree that Womack teaches away from the use
of the rate of change of intensity to detect defects. Rather, we find that Womack
teaches a different way of detecting defects.
Appellants argue that Boehnlein does not teach the use of the rate of change of
intensity to detect defects and teaches away from the use of the rate of change of
intensity to detect defects. As above, we agree with appellants that Boehnlein does not
teach or fairly suggest the use of the rate of change of intensity. We disagree that
Boehnlein teaches away from the use of the rate of change of intensity to detect
defects. Rather, we find that Boehnlein teaches a different way of detecting defects.
Appellants argue that the combination of Womack and Boehnlein would not teach of
fairly suggest the use of the rate of change of intensity to detect defects. (See brief at
page 7.) We agree with appellants.
Appellants argue that Bou-Ghannam is applied for its teaching of storing defect
information and teaches the use of interferometry instead of intensity of the reflected
Appeal No. 2001-0864
Application No. 08/841,214
5
beam. Appellants argue that Bou-Ghannam does not teach or fairly suggest the use of
the rate of change of intensity to detect defects and would not teach or fairly suggest
the use of the rate of change of intensity to detect defects in combination with Womack
and Boehnlein.
With respect to the intensity of the reflected beam, the examiner cites the
teachings of Boehnlein concerning identifying defects by taking the derivative of a pixel
intensity image and applying a threshold to identify defects. (See answer at pages 7-8.)
The examiner maintains that the pixel value in Boehnlein corresponds to the intensity
values and cites to column 6, lines 1-15. (See answer at page 8.) We disagree with
the examiner. Appellants argue that Boehnlein teaches the use of interferometry to
produce a phase map of the surface being inspected and the use of derivatives of the
phase map and thresholds to the greatest change in contour. (See brief at page 7.)
We agree with appellants and find that the pixel data is in the discussion of the prior art
systems and that Boehnlein teaches the use of data from phase shifted moire image
information rather than the intensity of the reflected light. (Boehnlein at columns 9 and
10.) These moire images are used to detect defects on the panel. Appellants argue
that even if combined, none of the references teach (or fairly suggest) “a detector for
converting an intensity of the reflected beam from the planar surface into an analog
signal” and “means for calculating a rate of change in the intensity of the reflected beam
from the pixel data.” (See brief at page 7.) We agree with appellants as discussed
Appeal No. 2001-0864
Application No. 08/841,214
6
above, and we will not sustain the rejection of independent claim 1 and its dependent
claims 2-5, 8, and 10. Independent claim 11 contains similar limitations which are not
taught or suggested by the combination of Womack, Boehnlein and Bou-Ghannam.
Therefore, we will not sustain the rejection of independent claim 11 and its dependent
claims 12-15, 18, and 20. With respect to dependent claims 6, 7, 16, and 17, the
examiner does not rely upon the teaching of Cuthbert for the limitations that we found
lacking in the combination above. Therefore, Cuthbert does not remedy the basic
deficiency in the combination of Womack, Boehnlein and Bou-Ghannam as presented
by the examiner, and we will not sustain the rejection of claims 6, 7, 16, and 17.
Additionally, we note that appellants argue the teachings of the three references
are not properly combinable. (See brief at page 7.) We agree with appellants. From
our review of the teachings of Womack with respect to wafer analysis, we find no
teaching, suggestion or convincing line of reasoning by the examiner to look to the
teachings of Boehnlein with respect to defects in panels of sheet material and then look
to the teachings of Bou-Ghannam with respect to inspection of substrates for printed
circuit boards. Therefore, we do not find the teachings of the three references to be
properly combined to teach or suggest the invention as claimed. This is similarly
extended to the teachings of Cuthbert.
CONCLUSION
Appeal No. 2001-0864
Application No. 08/841,214
7
To summarize, the decision of the examiner to reject claims 1-8 and 10-18 and
20 under 35 U.S.C. § 103 is reversed.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
JD/RWK
Appeal No. 2001-0864
Application No. 08/841,214
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G. MARLIN KNIGHT
IBM CORPORATION
INTELLECTUAL PROPERTY LAW
5600 COTTLE ROAD L2PA 0142
SAN JOSE, CA 95193