Ex Parte Kollmer et al

Patent Trial and Appeal Board

Sep 19, 2014

10568832 (P.T.A.B. Sep. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/568,832 02/17/2006 Felix Kollmer HH 307-KFM 4888
10037 7590 09/22/2014
ECKERT SEAMANS CHERIN & MELLOTT, LLC
U.S. STEEL TOWER
600 GRANT STREET
PITTSBURGH, PA 15219-2788
EXAMINER
JOHNSTON, PHILLIP A
ART UNIT PAPER NUMBER
2881
MAIL DATE DELIVERY MODE
09/22/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte FELIX KOLLMER and PETER HOERSTER
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Appeal 2012–008744
Application 10/568,8321
Technology Center 2800
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Heard: September 11, 20142
____________

Before JEFFREY T. SMITH, JAMES C. HOUSEL, and
GEORGE C. BEST, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
decision finally rejecting as unpatentable, under 35 U.S.C. § 103(a), claims
1–7 over Schultz3 in view of Andersen4 and Orloff.5 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).

1 According to Appellants, the Real Party in Interest is ION-TOF Gmbh
(Appeal Br. 2).
2 At the time of this decision, a transcript of the oral hearing was not
available. When available, the transcript will be placed in the record.
3 J. Albert Schultz, et al., US 6,989,528 B2, issued January 24, 2006.
Appeal 2012–008744
Application 10/568,832
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We REVERSE.6
STATEMENT OF THE CASE
The invention is directed to a secondary ion mass spectrometer
(SIMS) having an ion source for creating a primary ion beam to irradiate a
sample for analysis of secondary ions and post-ionized neutral secondary
particles. Spec. 1:1–4. The Specification discloses the ion source includes a
heatable ion emitter coated with a liquid metal layer that contains an
ionizable metal to be ionized “with various stages of ionization and cluster
statuses” forming the primary ion beam. Id. at 1:5–10. According to
Appellants, use of primary ion clusters such as gold to form the primary ion
beam significantly increases the efficiency of the SIMS measurement, over
use of mono-atomic primary ions. Id. at 2:9–16.
Appellants further disclose use of bismuth as a substitute for gold in
the liquid metal layer, wherein mono-atomic bismuth ions are filtered out to
produce a mass-pure ion beam that consists exclusively of ions of the type
Binp+ for which n ≥ 2 and p ≥ 1, and n and p are natural numbers. Id. at 4:5–
17.
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. In a mass spectrometer for analysis of secondary ions and post-
ionized neutral secondary particles comprising (a) an ion source
to create a primary ion beam to irradiate a sample and create

4 Christian A. Andersen, et al., US 3,508,045, issued April 21, 1970 (the
Examiner and Appellants refer to this reference by the second named
inventor, Helmut J. Liebl).
5 Jonathan H. Orloff, US 4,426,582, issued January 17, 1984.
6 Our decision refers to Appellants’ Appeal Brief (Appeal Br.) filed January
10, 2012, and the Examiner’s Answer (Ans.) mailed March 14, 2012.
Appeal 2012–008744
Application 10/568,832
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secondary particles, said source possessing a heatable ion
emitter that is coated in the area exposed to the field with a
liquid-metal layer that contains an ionizable metal that is
emitted and ionized as the primary ion beam, wherein the
primary ion beam contains metal ions with various stages of
ionization and cluster statuses, and (b) a spectrometer unit for
mass analysis of the secondary particles, the improvement
wherein the liquid metal layer is essentially comprised of pure
metallic Bismuth or of a low-melting-point alloy containing, in
essence, Bismuth; wherein the ion emitter is wettable by such
pure metallic Bismuth or such Bismuth alloy; wherein a
Bismuth ion mixed beam can be emitted by the ion emitter
under the influence of an electric field and from which Bismuth
ion mixed beam, one of a number of Bismuth ion types whose
mass is a multiple of monatomic singly or multiply charged
Bismuth ions Bi1P+, is to be filtered out, using a filtering device,
as a mass-pure ion beam that is solely comprised of ions of a
type BinP+, in which n ≥ 2 and p ≥ 1, and n and p are each a
natural number.
Claims App’x, Appeal Br. 30–31.
Claim 6, the only remaining independent claim on appeal, similarly
recites an ion source using bismuth as the liquid-metal layer coated on the
heatable ion emitter to produce a mass-pure ion beam solely comprised of
ions of the type BinP+, in which n ≥ 2 and p ≥ 1, and n and p are each a natural
number.
The Issue Presented
The dispositive issue before us is: Did the Examiner err in finding
Andersen suggests use of bismuth in place of gold for use as the ion cluster
source in a SIMS and, therefore, fail to establish the claimed invention
would have been prima facie obvious over the proposed combination of
Schultz, Andersen, and Orloff?
Appeal 2012–008744
Application 10/568,832
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We answer this question in the affirmative and therefore do not
sustain the Examiner’s rejection.
ANALYSIS
The Examiner finds Schultz teaches a SIMS apparatus including a
liquid metal ion source for irradiating a sample with a primary ion beam and
creating secondary ion particles for analysis by a time of flight (TOF) mass
spectrometer. Ans. 4–5. In addition, the Examiner finds the mixed ion
beam created from the ion source is filtered to provide a mass pure primary
ion beam having only a specific cluster size and charge. Id. at 5. The
Examiner finds Schultz’s liquid metal ion source is gold, and that increasing
the size and energy of the cluster gold ions in the primary ion beam results in
increases secondary ion generation efficiency or yield. Id. The Examiner
acknowledges Schultz fails to disclose use of a bismuth liquid metal ion
source. Id. at 6.
Turning to Andersen, the Examiner finds Andersen discloses that the
mass of primary ions should be as large as possible to generate the
maximum number of secondary ions. Id. The Examiner further finds that
because bismuth has a higher atomic mass than any of Andersen’s primary
ions, the ordinary artisan would expect a bismuth primary ion beam to
produce a higher secondary ion yield from bombardment of a sample than
from a lower atomic number primary ion beam. Id. Accordingly, the
Examiner concludes it would have been obvious to use a bismuth primary
ion beam in Schultz, given bismuth’s higher atomic mass than gold, to
increase the efficiency of secondary ion production, relative to gold. Id.
However, the Examiner concedes the combination of Schultz and Andersen
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Application 10/568,832
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fails to explicitly teach using a liquid-metal emitter coated with bismuth.
Id. at 7.
As such, the Examiner finds Orloff teaches a liquid metal ion source
having a heatable emitter coated with a liquid metal, such as bismuth. Id.
The Examiner concludes it would have been obvious to use a liquid metal
emitter coated with bismuth in Schultz to provide a high current, medium
energy bismuth ion beam as taught by Orloff. Id.
Appellants argue that the Examiner has failed to establish a prima
facie case of obviousness over the combination of Schultz, Andersen, and
Orloff because none of these references teach that bismuth clusters are
particularly suited as primary ions in SIMS. Appeal Br. 28. In particular,
Appellants contend, inter alia, that contrary to the Examiner’s finding,
Andersen does not teach or suggest the use of bismuth as a substitute for
gold as the primary ion source. Id. at 15–18. Appellants argue that
Andersen in fact teaches the use of highly reactive, electronegative sources
as primary ions, and fails to mention bismuth or any other metals as the
primary ion source. Id. Appellants also argue that Orloff is not directed to
a SIMS apparatus, and fails to teach the use of a mass pure primary ion
beam of bismuth clusters. Id. at 20.
Having weighed the respective positions clearly articulated by the
Examiner and Appellants, we find that a preponderance of the evidence
favors Appellants. We are persuaded that the Examiner erred in finding
that Andersen teaches or suggests use of bismuth in place of gold in
Schultz. Indeed, Andersen only mentions bismuth once, as a possible
secondary target for primary beams of reactive ions. See Andersen, 5:69–
75 (not cited by the Examiner). Moreover, although Andersen does teach
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Application 10/568,832
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that the mass of the primary ions should be as large as possible to generate
the maximum number of secondary ions (id., 7:44–46), this teaching is in
the context of a primary beam of reactive ions in which ionic reactivity
(electronegativity) appears to have a greater influence on the secondary ion
yield. As Appellants argue, Andersen’s Figure 7, while evidencing the
influence of primary ion mass on secondary ion yield, demonstrates a
logarithmic increase in yield due to primary ion reactivity. Accordingly, we
do not find sufficient support in Andersen for the Examiner’s conclusion
that Schultz and Andersen.
We are also persuaded that the combination of Schultz, Andersen, and
Orloff fails to teach or suggest that liquid bismuth would be an obvious
substitute for gold in a SIMS apparatus to provide a mass-pure primary ion
beam source of bismuth ion clusters. The Examiner fails to direct our
attention to any teaching or suggestion in the applied prior art that bismuth
would be a possible, let alone desirable, source of ion clusters for a primary
ion beam source. We note the Examiner merely relies on Orloff as a
suggestion to use an emitter coated with liquid bismuth, having relied on
Andersen for the suggestion to use bismuth in Schultz. Although Orloff
mentions that liquid bismuth worked similarly to gallium in Orloff’s
electrostatic optical system to provide an ion beam focused into a narrow
spot, as Appellants note, Orloff fails to teach or suggest that liquid bismuth
may be used to generate ion clusters useful in a SIMS apparatus.
Accordingly, we do not find sufficient support in Orloff for a conclusion
that Schultz, Andersen, and Orloff suggest the use of bismuth clusters in a
SIMS apparatus.
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The Examiner has the initial duty of supplying the requisite factual
basis and may not resort to speculation, unfounded assumptions, or
hindsight reconstruction to supply deficiencies in the factual basis. See
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“To facilitate
review, [the obviousness] analysis should be made explicit.”); see also, In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections 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.” (quoted with approval, KSR,
550 U.S. at 418.)) We find the Examiner has not supplied the requisite
rational underpinning to support the obviousness conclusion for the reasons
set forth above. Accordingly, on this record, we cannot sustain the
Examiner’s obviousness rejections based upon the combination of Schultz,
Andersen, and Orloff.
ORDER
Upon consideration of the record, and for the reasons given above and
in the Answer, it is
ORDERED that the decision of the Examiner rejecting claims 1–7
under 35 U.S.C. § 103(a) as unpatentable over Schultz, Andersen, and Orloff
is reversed; and
FURTHER ORDERED that 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).
REVERSED

Appeal 2012–008744
Application 10/568,832
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