Ex Parte Kociak et al

Patent Trial and Appeal Board

May 17, 2018

13699975 (P.T.A.B. May. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/699,975 11/26/2012 Mathieu Kociak
24978 7590 05/21/2018
GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
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.
1606.113547 9205
EXAMINER
MCCORMACK, JASON L
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
05/21/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATHIEU KOCIAK,
LUIZ FERNANDO ZAGONEL, MARCEL TENCE,
and STEFANO MAZZUCCO
Appeal2017-005525
Application 13/699,975
Technology Center 2800
Before ADRIENE LEPIANE HANLON, A VEL YN M. ROSS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134(a) from an
Examiner's decision finally rejecting claims 1-15, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Representative claim 1 is reproduced below from the Claims
Appendix of the Appeal Brief dated September 8, 2015 ("App. Br."). The
limitations dispositive of the issues on appeal are italicized.
1. A cathodoluminescence detection system comprising:
Appeal2017-005525
Application 13/699,975
a collection optic collecting light radiation coming from a
sample illuminated by a charged particle beam and sending said
radiation to an analysis device, said collection optic being
arranged in a vacuum chamber in which a pressure in the
vacuum chamber is below atmospheric pressure,
an adjustment device configured to adjust the light
radiation arranged downstream of the collection optic and said
light radiation at the input of the analysis device, at least part of
the adjustment device being arranged in an environment in
which a pressure is greater than the pressure in said vacuum
chamber, and
a first tube in the form of an outer cylinder aligned
relative to the axis of the collection optic and integral with said
collection optic, said outer cylinder comprising a window seal
ensuring that the pressure is maintained in the vacuum
chamber in which said collection optic is arranged; and
a second tube in the form of an inner cylinder enclosed
by and centered in the outer cylinder and configured to receive
the adjustment device with a view to injecting said light
radiation into an optical fiber or into a detector,
said inner cylinder being arranged downstream from
said window seal in a direction of a path of the light radiation
so that said inner cylinder is at a pressure greater than the
pressure in said vacuum chamber.
App. Br. 15-16.
The Examiner maintains the following grounds of rejection on appeal:
(1) claims 1-3, 5, and 10-15 under 35 U.S.C. § 103(a) as
unpatentable over Swann 1 in view of Krivanek et al.; 2
(2) claim 4 under 35 U.S.C. § 103(a) as unpatentable over Swann
in view of Krivanek, further in view of Bennett et al.; 3
1 US 5,536,941, issued July 16, 1996 ("Swann").
2 US 5,517,033, issued May 14, 1996 ("Krivanek").
3 US 2003/0053048 Al, published March 20, 2003 ("Bennett").
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Application 13/699,975
(3) claim 6 under 35 U.S.C. § 103(a) as unpatentable over Swann
in view of Krivanek, further in view of Kido et al.; 4
(4) claim 7 under 35 U.S.C. § 103(a) as unpatentable over Swann
in view of Krivanek, further in view of Saaski; 5
(5) claim 8 under 35 U.S.C. § 103(a) as unpatentable over Swann
in view of Krivanek, further in view of Mueller et al.; 6 and
(6) claim 9 under 35 U.S.C. § 103(a) as unpatentable over Swann
in view of Krivanek, further in view of Schafer et al. 7
B. DISCUSSION
Swann discloses a rotatable wide angle camera and prism assembly
for electron microscopes. Swann Figure 3, reproduced below, illustrates a
side view of the assembly.
Swann Figure 3 depicts a side view of a camera
and prism assembly according to the invention.
4 US 2006/0077282 Al, published April 13, 2006 ("Kido").
5 US 2007 /0259441 Al, published November 8, 2007 ("Saaski").
6 US 7 ,202,953 B 1, issued April 10, 2007 ("Mueller").
7 US 4,900,932, issued February 13, 1990 ("Schafer").
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Application 13/699,975
The Examiner finds the assembly comprises, inter alia, first tube 22 in
the form of an outer cylinder aligned relative to the axis of collection optic
16 and second tube 20 in the form of an inner cylinder enclosed by and
centered in first tube or outer cylinder 22. Final Act. 6; 8 see also Ans. 5
(finding that "a portion of inner cylinder 20 [is] enclosed within outer
cylinder 22"). 9 The Examiner illustrates the relationship between outer
cylinder 22 and inner cylinder 20 via an unlabeled arrow in a portion of
Swann Figure 3, reproduced below. Final Act. 4, Ans. 6.
A portion of annotated Swann Figure 3 illustrates
outer cylinder 22 partially overlapping inner cylinder 20.
The Examiner finds that Swann's assembly also includes camera 10
mounted externally to the vacuum chamber of the electron microscope (i.e.,
projection chamber 12 (Swann Fig. 1)). Final Act. 6; see also Swann, col. 3,
8 Final Office Action dated February 13, 2015.
9 Examiner's Answer dated December 22, 2015.
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Application 13/699,975
11. 3 8--40 (disclosing that camera 10 is mounted externally onto a side of
electron microscope protection chamber 12). The Examiner finds:
Swann discloses the claimed invention except that while Swann
clearly indicates that the camera (10) is maintained at a higher
pressure than the vacuum pressure inside of the electron
microscope chamber ... , and thus implies that the camera (10)
is separated from the electron microscope chamber by some
window which is transparent to the light being emitted from the
sample ... , and appears to indicate in [F]igure 3 that such a
window is located at the end of the lens barrel of the camera,
there is no explicit recitation that the camera includes a window
seal to maintain the pressure within the vacuum chamber, as
claimed.
Final Act. 7.
Thus, the Examiner turns to Krivanek. Krivanek discloses a camera
for use in combination with the projection chamber of an electron
microscope. The Examiner finds Krivanek's camera 20 includes lens barrel
24 positioned outside of projection chamber 10 wherein the vacuum pressure
of chamber 10 is maintained relative to the pressure of camera 20 because
"' [ q]uartz window 30 is sealed to maintain the high vacuum in projection
chamber 10."' Final Act. 7 (quoting Krivanek, col. 5, 11. 30-31). The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art to integrate a window seal at the end of the lens barrel of Swann's
camera, as taught by Krivanek, to ensure that a desired pressure is
maintained within the electron microscope projection chamber. Final Act.
7-8.
The Appellants argue that Swann's second tube or inner cylinder 20 is
not enclosed by outer cylinder 22, as recited in claim 1 but rather "the outer
cylinder 22 partially overlaps an end of the inner cylinder 20." App. Br. 11.
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Application 13/699,975
For support, the Appellants direct our attention to "Dictionary.com" which is
said to define "enclose" as "to surround" "or "close in on all sides." App.
Br. 11.
The definition of "enclose" relied on by the Appellants is consistent
with the usage of that term in the Appellants' Specification. See Appellants'
Fig. 4 (depicting inner cylinder 314 entirely surrounded by outer cylinder
306). Therefore, we interpret the phrase "enclosed by" in claim 1 to mean
that the inner cylinder is entirely surrounded by the outer cylinder.
The Appellants also argue:
FIG. 3 of Swann clearly shows that the inner cylinder 20 is
positioned upstream relative to the outer cylinder 22 .... Thus,
it is impossible to integrate a window seal of Krivanek in the
outer cylinder 22 of Swann so that the inner cylinder 20 is
positioned downstream of the window seal [in a direction of a
path of the light radiation as recited in claim 1].
App. Br. 12.
In response, the Examiner finds that "[t]he outer cylinder 22 of Swann
must 'comprise'[lOJ an interface (which Krivanek discloses may be a window
seal) in order to separate the camera (including the outer cylinder 22) from
the vacuum environment as is the stated purpose of Swann." Ans. 7-8. In
the alternative, the Examiner concludes that it would have been obvious to
one of ordinary skill in the art to modify outer cylinder 22 of Swann's
camera with a window seal as disclosed in Krivanek to isolate Swann's
camera body from the vacuum in chamber 12. Ans. 8.
10 See In re Bertsch, 132 F.2d 1014, 1019 (CCPA 1942) ("the word
'comprising' is usually in patent law held to be synonymous with the word
'including"').
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Application 13/699,975
The Appellants argue:
Since the bearing 20 (inner cylinder) in Swann is clearly not
enclosed by the knob 22 (outer cylinder), and that the bearing
20 projects outwardly from the end of the knob 22, then the
knob 22 (outer cylinder) cannot include a window seal where
the bearing 20 (inner cylinder) is enclosed by the knob [outer
cylinder] and downstream of a window seal at the end of the
knob.
Reply Br. 8 (emphasis added). 11
The Appellants' argument is persuasive of reversible error. Claim 1
recites that (1) the outer cylinder comprises a window seal, (2) an inner
cylinder is enclosed by the outer cylinder, and (3) the inner cylinder is
arranged downstream from the window seal in a direction of a path of the
light radiation. App. Br. 15-16. In the modification proposed by the
Examiner, all three limitations are not met. That is, in the words of the
Appellants, "if the window seal is placed in the knob/outer cylinder 22 [as
proposed by the Examiner], then the bearing/inner cylinder 20 will
necessarily be positioned upstream of the window seal," not downstream
from the window seal in a direction of a path of the light radiation as recited
in claim 1. Reply Br. 8-9. In the alternative, "if the window seal is placed
upstream of the bearing/inner cylinder 20, then the window seal will be
positioned outside of the knob/outer cylinder 22" and outer cylinder 22 will
not comprise a window seal as recited in claim 1. Reply Br. 9.
The Examiner does not rely on the remaining prior art of record to
cure the deficiencies in the rejection of claim 1. Therefore, rejections (1 }-
( 6) are not sustained.
11 Reply Brief dated February 11, 2016.
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Application 13/699,975
C. DECISION
The Examiner's decision is reversed.
REVERSED
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