Ex Parte Lin et al

Patent Trials and Appeals Board

May 28, 2019

14607352 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/607,352 01/28/2015
33804 7590
Lin & Associates
Intellectual Property, Inc.
PO Box 2339
Saratoga, CA 95070-0339
05/30/2019
FIRST NAMED INVENTOR
Jason Zse-Cherng Lin
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.
15701URS 1015
EXAMINER
GAN, CHUEN-MEEI
ART UNIT PAPER NUMBER
2129
NOTIFICATION DATE DELIVERY MODE
05/30/2019 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):
j ason. lin @linassociatesip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON ZSE-CHERNG LIN and SHAUH-TEH JUANG
Appeal2018-005962
Application 14/607,352
Technology Center 2100
Before ST. JOHN COURTENAY III, LINZYT. McCARTNEY, and
JASON J. CHUNG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 23-37, which are all the claims pending in this application. 1 Claims
1-22 are cancelled. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is DMO Systems Ltd. App. Br. 2.
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Application 14/607,352
STATEMENT OF THE CASE2
Introduction
Appellants' claimed invention relates "to semiconductor device
fabrication, and more specifically to a method for improving lithographic
process in manufacturing semiconductor device." Spec. ,r 1.
Exemplary Claim
1. A method of incorporating wafer physical
measurement with digital simulation to improve hot spot
prediction and identify critical hot spots for monitoring defects
and improving yield in manufacturing a semiconductor device,
compnsmg:
using a semiconductor manufacturing or inspecting
station to collect a plurality of physical data from a plurality of
targets on a processed wafer of a semiconductor device;
using a chip design modeling and verification system to
generate a plurality of simulation data of a plurality of hot spot
candidates based on digital simulation according to chip design
data of the semiconductor device; and
using a data analytics computing platform to identify a
plurality of critical hot spots by performing data analytics using
the plurality of physical data and the plurality of simulation
data with reference to the chip design data to select a subset of
the plurality of hot spot candidates as the plurality of critical hot
spots for inspecting wafers and monitoring wafer defects in
semiconductor manufacturing or inspecting stations to improve
yield in manufacturing the semiconductor device;
2 We herein refer to the Final Office Action, mailed June 22, 2017 ("Final
Act."); Appeal Brief, filed Nov. 22, 2017 ("App. Br."), and the Examiner's
Answer, mailed Feb. 8, 2018 ("Ans.").
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wherein the plurality of hot spot candidates is
distributed denser than the plurality of targets on the wafer, and
the data analytics includes identifying a closest target from the
plurality of targets for each hot spot candidate, performing data
correction on the simulation data by calibrating the simulation
data of each hot spot candidate according to the physical data of
the closet target, and selecting the subset of the plurality of hot
spot candidates based on the simulation data after data
correction.
App. Br. 16, "Claims Appendix." (Emphasis added regarding the dispositive
"wherein" clause limitation under 35 U.S.C. § 103).
Rejections
A. Independent claims 23 and 26 are rejected under 35 U.S.C.
§ 112(b ), as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor or a joint inventor
regards as the invention. Final Act. 2.
B. Claims 23----37 are rejected under 35 U.S.C. § 101, as being
directed to a judicial exception, without significantly more. Final Act. 3.
C. Claims 23-37 are rejected under 35 U.S.C. § 103 as being obvious
over the combined teachings and suggestions of Orbon et al. (US
2007/0052963 Al; filed Oct. 27, 2006, pub. Mar. 8, 2007) (hereinafter
"Orbon"), and Rathsack et al. (US 2009/0144691 Al; filed Nov. 29, 2007,
pub. June 4, 2009) (hereinafter "Rathsack"). Final Act. 6- 9.
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Issues on Appeal
1. Did the Examiner err in concluding that independent claims 23 and 26
are indefinite under 35 U.S.C. § 112(b)?
2. Did the Examiner err in concluding that claims 23-37 are directed to a
judicial exception, without significantly more, under 35 U.S.C. § 101?
3. Did the Examiner err in concluding that claims 23----3 7 are obvious
over the cited combination of Orbon and Rathsack, under
35 U.S.C. § 103?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's responses to Appellants'
arguments. We reverse Rejection A under 35 U.S.C. § 112(b) for the
reasons discussed infra. However, we affirm the Examiner's Rejection B
under 35 U.S.C. § 101. Regarding Rejection C under 35 U.S.C. § 103,
Appellants have proffered sufficient arguments and evidence to persuade us
of error regarding the Examiner's underlying factual findings and ultimate
legal conclusion of obviousness for all claims 23-37 on appeal.
In our analysis below, we highlight and address specific findings and
arguments for emphasis.
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Application 14/607,352
Rejection A of Independent Claims 23 and 26
under 3 5 U.S. C. § 112 (b)
Issue: Under 35 U.S.C. § 112(b ), did the Examiner err by concluding
the claim language "distributed denser" is indefinite?
The Examiner concludes the claim language "wherein the plurality of
hot spot candidates is distributed denser than the plurality of targets on the
wafer" is indefinite because of the relative terms "distributed" and "denser."
Final Act. 2-3. Independent claims 23 and 26 ( emphasis added). The
Examiner concludes that one of ordinary skill in the art would not have been
reasonably apprised of the scope of the invention. Id.
However, Appellants point to paragraphs 25, 26, and 30 of the
Specification, and contend: "One of ordinary skill in the art should readily
appreciate that the term 'denser' in claims 23 or 26 refers to comparing the
number of hot spots or targets distributed on a wafer by reading the present
specification." App. Br. 5.
We agree that paragraphs 25, 26, and 30 of the Specification
sufficiently describe the term "dense" as referring to the number of hot spot
candidates, or the number of Critical Dimension (CD) targets in a given
space or area. See also App. Br. 4---6. 3 Therefore, we conclude the claim
3 Cf When a claim term "depend[ s] solely on the unrestrained, subjective
opinion of a particular individual purportedly practicing the invention,"
without sufficient guidance in the specification to provide objective direction
to one of skill in the art, the term is indefinite. Datamize, LLC v. Plumtree
Software, Inc., 417 F.3d 1342, 1350 (Fed.Cir.2005) (finding "aesthetically
pleasing" to be indefinite because the specification lacked any objective
definition of the term). Here, we find the Specification, at paragraphs 25,
26, and 30, provides sufficient objective direction to one of ordinary skill in
the art, regarding the intended meaning of the claim term "distributed
denser." Independent claims 23 and 26.
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term "dense" is not indefinite under a broad but reasonable interpretation
consistent with the Specification. Furthermore, "distributed denser" has a
plain meaning that we interpret as points or elements packed closer together
(or in higher numbers) in a given space or area (e.g., "hot spot candidates"
are distributed more densely when compared to the plurality of "targets"
contained within a specific area of the chip).
Accordingly, we reverse the Examiner's Rejection A under 35 U.S.C.
§ 112 (b).
Rejection B of Claim 23-37
Issue: Under 35 U.S.C. § 101, did the Examiner err by rejecting
claims 23-37, as being directed to a judicial exception, without significantly
more.
Principles of Law- 35 U.S. C. § 1 OJ
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[L Jaws of nature, natural phenomena, and abstract
ideas" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185
(1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 573 U.S.
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at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk." (emphasis omitted)); see also Bilski v. Kappas, 561 U.S. 593, 611
(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding of rubber products" (Diehr, 450 U.S. at 193); "tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores"
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267---68
(1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
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environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
Subject Matter Eligibility- 2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). This
new guidance is applied in this opinion. Under the 2019 Revised Guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a fundamental
economic practice or managing personal behavior or relationships or
interactions between people); and
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(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining Procedure
("MPEP") §§ 2106.05(a}-(c), (e}-(h)). 4
See 2019 Revised Guidance, 84 Fed. Reg. at 51-52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under § 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance at 56; Alice, 573 U.S. at 217-18.
For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
4 All references to the MPEP are to the Ninth Edition, Revision 08-201 7
(rev. Jan. 2018).
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abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
1. Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes- concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
According to the 2019 Revised Guidance, "[ c ]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas," except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not "directed to" a judicial exception
(abstract idea), and thus are patent eligible, if "the claim as a whole
integrates the recited judicial exception into a practical application of that
exception." See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of "integration into a
practical application" include:
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1. Improvements to the functioning of a computer, or to any
other technology or technical field - see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine - see MPEP § 2106.05(b );
3. Effecting a transformation or reduction of a particular
article to a different state or thing - see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological
environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception -
see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of "integration into a
practical application" include:
1. Adding the words "apply it" ( or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses
a computer as a tool to perform an abstract idea - see
MPEP § 2106.05(±);
2. Adding insignificant extra-solution activity to the judicial
exception-see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54--55 ("Prong Two").
2019 Revised Guidance, Step 2A, Prong One
The Judicial Exception
We review the Examiner's § 101 rejection de nova under the 2019
Revised Guidance. 5 We begin our analysis by considering whether the
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claims recite any judicial exceptions, including certain groupings of abstract
ideas, in particular: (a) mathematical concepts, (b) mental steps, and ( c)
certain methods of organizing human activities.
Mental Steps
Under the 2019 Revised Guidance, we conclude at least the following
steps of claim 23 could be performed as mental steps, with the aid of pen
and paper:
1. "generat[ing]a plurality of simulation data"
2. "identify[ing] a plurality of critical hot spots"
3. "identifying a closest target from the plurality of targets for each
hot spot candidate," and
4. "select[ing]a subset of the plurality of hot spot candidates"
Claim 23.
Thus, we conclude the generating, identifying, and selecting steps
recite abstract ideas that fall into the category of mental processes-
concepts performed in the human mind (including an observation,
evaluation, judgment, opinion). 6
See claim 23:
using a chip design modeling and verification system to
generate a plurality of simulation data of a plurality of hot spot
5 Throughout this opinion, we give the contested claim limitations the
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
6 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under§ 101. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372-73 (Fed. Cir. 2011); see also Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1146-47 (Fed. Cir. 2016) ("While the Supreme Court has
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candidates based on digital simulation according to chip design
data of the semiconductor device; and
using a data analytics computing platform to identify a
plurality of critical hot spots by performing data analytics
using the plurality of physical data and the plurality of
simulation data with reference to the chip design data to
select a subset of the plurality of hot spot candidates as
the plurality of critical hot spots for inspecting wafers and
monitoring wafer defects in semiconductor manufacturing or
inspecting stations to improve yield in manufacturing the
semiconductor device;
wherein the plurality of hot spot candidates is distributed
denser than the plurality of targets on the wafer, and the data
analytics includes identifying a closest target from the plurality
of targets for each hot spot candidate, performing data
correction on the simulation data by calibrating the simulation
data of each hot spot candidate according to the physical data
of the closet target, and selecting the subset of the plurality of
hot spot candidates based on the simulation data after data
correction.
( emphases added in italics and bold).
altered the § 101 analysis since CyberSource in cases like Mayo and Alice,
we continue to 'treat[] analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category.'" (brackets in original)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed.
Cir. 2016)); CyberSource, 654 F.3d at 1375 ("That purely mental processes
can be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.").
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Mathematical Steps
Further, we conclude the step of "performing data analytics using
the plurality of physical data and the plurality of simulation data with
reference to the chip design data" recites an abstract idea that falls into the
2019 Revised Guidance category of mathematical concepts, including
mathematical relationships, mathematical formulas or equations,
mathematical calculations. Claim 23 ( emphasis added).
Similarly, we conclude the step of "performing data correction on
the simulation data by calibrating the simulation data of each hot spot
candidate according to the physical data of the closet target" also recites an
abstract idea that falls into the same category of mathematical concepts, i.e.,
including mathematical calculations. Claim 23 ( emphasis added).
We conclude the first recited step of "using a semiconductor
manufacturing or inspecting station to collect a plurality of physical data
from a plurality of targets on a processed wafer of a semiconductor device"
is insignificant extra-solution activity. Claim 23 ( emphasis added). Courts
have found data gathering steps to be insignificant extra-solution activity.
See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), ajf'd sub
nom Bilski v. Kappas, 561 U.S. 593 (2010).
2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Regarding MPEP § 2106.05(a) "Improvements to the Functioning of a
Computer or to Any Other Technology or Technical Field," Appellants
contend:
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the function of wafer inspection and defect monitoring in the
advanced semiconductor device fabrication is not only made
possible but also significantly improved because the simulation
data have been calibrated with the physical measurement to
effectively discover the unknown critical hot spots. Therefore,
appellant respectfully argues that the methods in claims 23 and
26 achieve unexpected results and are significantly more than a
judicial exception.
App. Br. 7-8 ( emphasis omitted and added in italics).
However, Appellants have not shown that any specific claim
limitations improve the "semiconductor manufacturing or inspecting station"
recited in independent claim 23. We concur with the Examiner that, without
more, the "claim[ s] recite the abstract idea being performed by [a]
'semiconductor manufacturing or inspecting station' or [a] 'chip design
modeling and verification system' or [a] 'data analytics computing
platform"' which the Examiner finds are generic computer components.
Final Act. 5.
The present claims are directed to an abstract idea as discussed
supra-not a technological improvement. The Specification indicates the
additional elements (i.e., wafer of a semiconductor device) recited in the
present claims are merely tools used to implement the abstract idea. Spec.
,r,r 3, 13, 14.
On this record, Appellants have not established that any specific claim
limitations improve the functioning of any "semiconductor manufacturing or
inspecting station" ( claim 23), computer, database, or network. Moreover,
Appellants provide no evidence of unexpected (i.e., unconventional) results.
See App. Br. 8.
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MPEP § 2106.05(b) Particular Machine, and
MPEP § 2106.05(c) Particular Transformation
Appellants advance no arguments in the Briefs that are directed to the
Bilski machine-or-transformation test. Arguments not made are waived. See
37 C.F.R. § 4I.37(c)(l)(iv).
MPEP § 2106.05(e) Other Meaningful Limitations
The Examiner concludes: "Claim 23 [recites] generic steps of
collecting information, analyzing them base[ d] on known parameter[ s] such
as [a] hot spot, and displaying [the] results of the collection and do not add a
meaningful limitation to practicing the abstract [idea]." Final Act. 5.
Appellants do not argue that any of the steps of claim 23 provide a
meaningful limitation beyond generally linking the use of the judicial
exception to a particular technological environment. Arguments not made
are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
We have noted above the step of "collect[ing] a plurality of physical
data" ( claim 23) that performs insignificant extra-solution data gathering
activity. See MPEP § 2106.05(g) "Insignificant Extra-Solution Activity."
Thus, we determine under Step 2A, Prong Two (MPEP §§ 2106.05(a}-(c)
and (e}-(h)), that Appellants' claims 23-37 do not integrate the judicial
exception into a practical application, which requires us to proceed to Step
2B.
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The Inventive Concept - Step 2B
Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Under the 2019 Revised Guidance, only if a claim: ( 1) recites a
judicial exception, and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not "well-understood, routine,
conventional" in the field (see MPEP § 2106.05( d)); or, simply appends
well-understood, routine, and conventional activities previously known to
the industry, specified at a high level of generality, to the judicial exception.
Here, the Examiner finds: "The generic semiconductor manufacturing
or inspecting station are well-known in the art and do not add any meaning
to the abstract idea." Final Act. 5 ( emphasis added).
We note Berkheimer was decided by the Federal Circuit on February
8, 2018. Appellants' Appeal Brief was filed almost three months earlier, on
November 11, 2017. On April 19, 2018, the PTO issued the Memorandum
titled: Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)" (hereinafter "Berkheimer Memorandum"). 7
However, the Examiner's Answer was mailed on the same day
Berkheimer was decided by the Federal Circuit (February 8, 2018). Under
37 C.F.R. § 41.41(a), Appellants had two months thereafter to file a Reply
Brief to respond to any additional factual findings and/or explanations
provided by the Examiner in the Answer. Appellants did not file a Reply
7 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419 .PDF.
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Brief, despite having constructive notice of Berkheimer as an intervening
authority on the same day the Answer was mailed (February 8, 2018).
The Berkheimer Memorandum provided specific requirements for an
Examiner to support with evidence any finding that claim elements ( or a
combination of elements) are well-understood, routine, or conventional.
argue:
However, in the pre-Berkheimer Appeal Brief, Appellants presciently
the [E]xaminer's comments that "semiconductor manufacturing
or inspection station" and "chip design modeling and
verification system" as generic computer components recited as
performing generic computer functions that are well
understood, routine and conventional activities amount to no
more than implementing the abstract idea with a computerized
system[,] are groundless.
App. Br. 7 ( emphasis added and omitted).
Id.
In support, Appellants contend:
First of all, semiconductor manufacturing instruments are
highly specialized ultra-high precision opto-mechanical
equipment rather than generic computer components.
Using a semiconductor manufacturing or inspecting station to
collect a plurality of physical data from a plurality of targets on
a processed wafer of a semiconductor device is a highly
specialized technology involving "a physical wafer" and "a
sophisticated instrument" that are absolutely not "implementing
an abstract idea with a computerized system". In making the
baseless statements, the examiner totally ignores the presence
of the physical instrument and physical wafer recited and
required in the steps of the claimed method.
However, Appellants do not support their arguments with any
objective evidence of record. Id. We afford such conclusory attorney
arguments little weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
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1997). "Attorney argument is no substitute for evidence." Enzo Biochem,
Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005).
Moreover, Appellants' Specification describes the claimed
"inspection station" as a generic component used as a tool to monitor defects
(and thus improve yield) in manufacturing a semiconductor device. For
example, see Spec. paragraph 6:
OPC and LPC verification also predicts potential yield limiting
hot spots caused by specific layout and patterns. As shown in
block 104, wafers manufactured by the lithography process
using the OPC photomask are examined by either optical or e-
beam inspection and metrology tool to detect defects and
measure critical dimensions in the hot spots. Inspection and
metro logy data of the predicted hot spots are fed back to block
103 to tune the models and recipes of OPC and DFM.
Spec. ,r 6. 8 ( emphasis omitted).
See also Spec. ,r 9: "One approach commonly used in process
monitoring is to collect scanning electron microscopic (SEM) images from a
significant number of hot spots by sampling dies and wafers in the
manufacturing flow." ( emphasis added).
In light of the foregoing evidence (Spec. ,r,r 6, 9), we conclude, under
the 2019 Revised Guidance, that each of Appellants' claims 23-37,
considered as a whole, is directed to a patent-ineligible abstract idea that is
not integrated into a practical application, and does not include an inventive
concept. Therefore, on this record, and for the aforementioned reasons, we
sustain the Examiner's Rejection B under 35 U.S.C. § 101 of claims 23-37.
8 "OPC" is an acronym for "Optical Proximity Correction." Spec. ,r 5.
"LPC" is an acronym for "Lithographic Process Check" (verification). Id.
See also Appellants' Figure 1.
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Rejection C of Independent Claims 23 and 26 under 35 U.S.C. § 103
Regarding Rejection C, the Examiner finds the combination of Orbon
and Rathsack teaches or suggests all limitations of independent claims 23
and 26, and associated dependent claims 24, 25 and 27-37. (Final Act. 7-
27).
Appellants contend Orbon does not teach or suggest "wherein the
plurality of hot spot candidates is distributed denser than the plurality of
targets on the wafer," as identically recited in independent claims 23 and 26.
App. Br. 9.
Issue: Under 35 U.S.C. § 103, did the Examiner err by finding Orbon
and Rathsack collectively teach or suggest the contested "wherein" clause
limitation: "wherein the plurality of hot spot candidates is distributed
denser than the plurality of targets on the wafer," within the meaning of
independent claims 23 and 26? 9 (Emphasis added).
Appellants contend:
In the rejection of claim 23, the [E]xaminer cites the
teaching of Fig[s.] 13A-13B and paragraph [0078] in Orbon as
corresponding to "wherein the plurality of hot spot candidates is
distributed denser than the plurality of targets on the wafer" in
the claim. With reference to Orbon[], the true teaching is "for
each element, a defect density for each sub-element based on the
number of defects and total number of repetitions of the sub-
element may also be calculated". However, how the plurality
of hot spot candidates and the plurality of targets are
distributed on the wafer in the present invention have
nothing to do with the total number of repetitions of the sub-
9 See supra n.5: We give the contested claim limitations the broadest
reasonable interpretation (BRI) consistent with the Specification. Morris,
127 F.3d at 1054.
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element. The term "dense" used and described in the
specification is also completely different from the "density"
defined in Orbon. [The] Examiner's consideration of Orbon's
"defect density" as corresponding to "the distribution of the hot
spot candidates or targets on the wafer" has distorted Orbon' s
teaching. Appellant[ s] respectfully argue[] that Orbon fails to
teach the limitation that "the plurality of hot spot candidates is
distributed denser than the plurality of targets on the wafer".
App. Br. 9. (Emphases added and omitted).
In the Answer, the Examiner disagrees, and provides further
explanation in support of the rejection:
In the final office action ( claim 23: the plurality of hot spot
candidates is distributed denser than the plurality of targets on
the wafer), [The E]xaminer [finds] that Orbon: Fig 13A and 13B
[0078] disclose for each element, a defect density for each sub-
element based on the number of defects and [the] total number
of repetitions of the sub-element may also be calculated. As
illustrated in Fig. 13A, a map of defect locations for sub-element
E4 may be displayed ( e.g., via some type of GUI) and a density
may be calculated. In this case, the density is 3/3 indicating three
defects (e.g. hot spot) in three occurrences of the sub-element.
[The] Examiner consider[s] this defect density [as]
corresponding to the distribution of the hot spot candidate or
targets on the wafer. The distribution density of hot-spot can be
either more or less than target.
Ans. 5 ( emphasis added and omitted).
We begin our analysis with claim construction. 10 We tum to the
Specification for context. Applying a broad but reasonable interpretation to
1 ° Claim construction is an important step in a patentability determination.
A legal conclusion that a claim is obvious involves two analytical steps,
assuming the references have been properly combined under § 103. See
Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) ("Both
anticipation under § 102 and obviousness under § 103 are two-step inquiries.
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independent claim 23, we construe the claim language "distributed denser"
as a combination of recognized plain meaning terms ( distributed + denser),
consistent with the supporting description found in the Specification at
paragraphs 25, 26, and 30 (emphasis added).
As discussed above regarding Rejection A under§ 112(b), we
conclude the claim term "distributed denser" has a plain meaning that we
interpret as points or elements packed closer together ( or in higher numbers)
in a given space or area ( e.g., "hot spot candidates" are distributed more
densely when compared to the plurality of "targets" contained within a
specific area of the chip).
Given this construction (id.), we tum to the evidence relied upon by
the Examiner in support of the rejection. (Final Act. 8-9; Ans. 5---6). The
Examiner finds the disputed "wherein" clause limitation that is identically
recited in independent claims 23 and 26 is taught or suggested principally by
Orbon, at paragraph 78, which describes Orbon's Figures 13A and 13B.
Final Act. 8.
We reproduce the cited portion of Orbon's paragraph 78 in context
below:
For example, as illustrated in FIGS. 13A-13B, for each
element, a defect map may be generated that illustrates the
location of each defect relative to a sub-structure. Further, for
The first step in both analyses is a proper construction of the claims .... The
second step in the analyses requires a comparison of the properly construed
claim to the prior art." (internal citations omitted)). Under the second step,
the Board must compare the construed claim to one or more prior art
references and make factual findings regarding the limitations contested by
Appellants. See In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).
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each element, a defect density for each sub-element based on
the number of defects and total number of repetitions of the
sub-element may also be calculated. As illustrated in FIG.
13A, a map of defect locations for sub-element E4 may be
displayed ( e.g., via some type of GUI) and a density may be
calculated. In this case, the density is 3/3 indicating three
defects in three occurrences of the sub-element. In contrast, as
illustrated in FIG. 13B, no defects were detected in Element E7,
hence a zero defect density for each sub-element E4 and E3.
Orbon ,r 78 ( emphasis added).
Regarding the evidence relied upon by the Examiner, we find
paragraph 78 of Orbon, and Figures 13A and 13B, do not teach or suggest:
"wherein the plurality of hot spot candidates is distributed denser than the
plurality of targets on the wafer." Independent claims 23 and 26 ( emphasis
added).
First, the Examiner's claim construction is blurred, because the
Examiner appears to have conflated two separate claim terms, i.e., "hot spot
candidates" with "targets" on the wafer. See Ans. 5: "[The] Examiner
consider[ s] this defect density [as] corresponding to the distribution of the
hot spot candidate or targets on the wafer." ( emphasis added). The claim
requires more: "wherein the plurality of hot spot candidates is distributed
denser than the plurality of targets on the wafer." Independent claims 23
and 26 ( emphasis added).
Second, we find the Examiner's mapping of the claim term "plurality
of targets" to the corresponding "targets" on the wafer in Orbon is unclear. 11
11 See 37 C.F.R. § 1.I04(c)(2) ("When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence of
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Third, there is no mention of "hot spots" being related to defect
density in Orbon's paragraph 78. At best, Orbon's paragraph 51 teaches
comparing simulated hot spot data to measured hot spot data.
Fourth, even if Orbon' s paragraphs 11 and 41 teach "hot spot
candidates" ( as found by the Examiner, Answer 5), the Examiner has not
shown a teaching or suggestion in Orbon or Rathsack ( considered alone or in
combination), of the specific disputed claim language: "wherein the plurality
of hot spot candidates is distributed denser than the plurality of targets
on the wafer." Independent claims 23 and 26 ( emphasis added).
Therefore, based upon a preponderance of the evidence, Appellants
have persuaded us that the cited combination of Orbon and Rathsack does
not teach or suggest at least the disputed "wherein" clause: "wherein the
plurality of hot spot candidates is distributed denser than the plurality of
targets on the wafer." Independent claims 23 and 26. Because remaining
independent claim 26 recites the same "wherein" clause using identical
language, we are constrained on this record to reverse the Examiner's § 103
Rejection C of independent claims 23 and 26.
Remaining Dependent Claims rejected under Rejection C under §103
In light of our reversal of rejection C of independent claims 23 and 26,
for the same reasons, we also reverse rejection C of all remaining dependent
claims, which variously and ultimately depend from either claim 23 or claim
26
each reference, if not apparent, must be clearly explained and each rejected
claim specified.") ( emphasis added).
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For essentially the same reasons argued by Appellants, as discussed
above, on this record we find a preponderance of the evidence does not
support the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness regarding Rejection C of claims 23-37.
Accordingly, we reverse the Examiner's Rejection C of claims 23----37.
CONCLUSIONS
The Examiner erred in rejecting claims 23 and 26 under 35 U.S.C.
§ 112(b ), as being indefinite.
The Examiner did not err in rejecting claims 23----37 under 35 U.S.C.
§ 101, as being directed to a judicial exception, without significantly more.
The Examiner erred in rejecting claims 23-37 under 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and suggestions of
Orbon and Rathsack.
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DECISION
We reverse the Examiner's decision rejecting claims 23 and 26 under
35 U.S.C. § 112(b).
We affirm the Examiner's decision rejecting claims 23-37 under
35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 23----37 under
35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
26