Ex Parte Lu et al

Patent Trial and Appeal Board

Jan 7, 2013

11831880 (P.T.A.B. Jan. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TONGXIN LU and XIAOHAN WANG
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Appeal 2010-006851
Application 11/831,880
Technology Center 2800
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Before MAHSHID D. SAADAT, DEBRA K. STEPHENS, and
HUNG H. BUI, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants
1
seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1-25. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejections for claims 1, 7, 12, and 20.

1
Real Party in Interest is Raintree Scientific Instruments (Shanghai)
Corporation. Appeal Brief filed October 5, 2009 (“App. Br.”).
Appeal 2010-006851
Application 11/831,880

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I. STATEMENT OF THE CASE
Appellants’ Invention
Appellants’ invention relates to an optical inspection and
measurement system for rotational inspection of a device-under-test
(“DUT”) such as a semiconductor device or wafer, where inspection
includes defect inspection, defect review, critical dimension measurement,
optical metrology and other relevant applications with DUT rotation. See
generally Spec. ¶4, ¶22 and Abstract.
Claims on Appeal
Claims 1, 7, 12, and 20 are independent. Claim 1 is representative of
the invention, as reproduced below with disputed limitations emphasized:

1. An optical inspection device, comprising:

a light source;

an image rotator;

a parabolic reflector; and

one or more detectors;

wherein said light source provides a light beam traveling
through said image rotator and reflecting off said parabolic
reflector to a device-under-test and thereby creating diffracted
light beams off said device-under-test, and said diffracted light
beams reflecting off said parabolic reflector and travels
through said image rotator and are received by the detectors.

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Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kaye U.S. 4,429,400 Jan. 31, 1984
Lu U.S. 5,414,623 May 9, 1995
Marxer U.S. 6,271,916 B1 Aug. 7, 2001
Almogy U.S. 6,861,660 B2 Mar. 1, 2005

Examiner’s Rejections
(1) Claims 1, 3-12, 14-16, 20, 22, and 23 stand rejected under 35
U.S.C. §102(b) as being anticipated by Almogy. Ans. 3-4 and 7.
(2) Claims 2 and 13 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Almogy and Lu. Ans. 5.
(3) Claims 17, 18, 21, and 24 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Almogy and Marxer. Ans. 5-6.
(4) Claims 19 and 25 stand rejected under 35 U.S.C. §103(a) as
being unpatentable over Almogy and Kaye. Ans. 6.

II. ISSUE
The dispositive issue on appeal is whether the Examiner has erred in
rejecting claims 1, 3-12, 14-16, 20, 22, and 23 under 35 U.S.C. §102(b) as
being anticipated by Almogy. In particular, the issue turns on whether
Almogy discloses “a parabolic reflector” as recited in independent claims 1,
7, 12, and 20. App. Br. 15-17 (emphasis added).

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III. DISCUSSION
With respect to independent claims 1, 7, 12, and 20, Appellants argue
that Almogy only discloses an ellipsoidal mirror 127, shown in FIG. 8C and
FIG. 8D, and that the ellipsoidal mirror 127 is not and does not correspond
to Appellants’ claimed “parabolic reflector” because it is commonly
understood that (1) a parabolic shape is not the same as an ellipsoidal shape,
(2) a parabolic shape and an ellipsoidal shape are described by different
mathematical equations, and (3) a parabolic surface is not a type of
ellipsoidal surface, as can be seen from mathematical equations for ellipses
and parabolas. App. Br. 15.
In response thereto, the Examiner finds that a “parabolic reflector” is a
broad term and can be broadly construed to encompass an ellipsoidal
reflecting surface an ellipsoidal mirror 127, shown in FIGS. 8C-8D of
Almogy. Ans. 7.
We agree with Appellants. Given the differences between a parabolic
surface and an ellipsoidal surface, Appellants’ claimed “parabolic reflector”
cannot be broadly construed to read on an ellipsoidal mirror 127, shown in
FIG. 8C and FIG. 8D of Almogy.
Absence of a disclosure of a “parabolic reflector” from Almogy, we
cannot sustain the Examiner’s anticipation rejection of independent claims 1,
7, 12, and 20 and their respective dependent claims 3-6, 8-11, 14-16, 22, and
23 under 35 U.S.C. §102(b).

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Application 11/831,880

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IV. NEW GROUND OF REJECTION
New §103 Rejection of Claims 1, 7, 12, and 20 under 37 C.F.R. §41.50(b)
Using our authority under 37 C.F.R. §41.50(b), we reject independent
claims 1, 7, 12, and 20 under 35 U.S.C. § 103(a) as being unpatentable over
Almogy for the following reasons.
First, we adopt as our own the Examiner’s findings relative to
independent claims 1, 7, 12, and 20 as outlined in the Final Office Action
mailed January 9, 2009, and the Examiner’s Answer in response to each of
the arguments raised by Appellants in the Appeal Brief, except for the use of
a “parabolic reflector,” as recited in independent claims 1, 7, 12, and 20.
Second, “when a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result” to
be nonobvious. KSR Int'l v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing
United States v. Adams, 383 U.S. 39, 50-51 (1966)).
[I]f a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill. . . . [A] court must ask whether the improvement is
more than the predictable use of prior-art elements according to
their established functions.
Id. at 417.
As correctly found by the Examiner, Almogy discloses all limitations
of Appellants’ independent claims 1, 7, 12, and 20, except for a “parabolic
reflector.” Ans. 3-4. However, there are different types of reflectors
available to a skilled artisan to reflect light beams onto a device-under-test
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(DUT) for inspection purposes, including, for example, an ellipsoidal mirror
of Almogy.
For purposes of illustration, FIG. 1 of Appellants’ invention and FIG.
8C of Almogy are reproduced below (in parallel).
Appellants’ FIG. 1 FIG. 8C of Almogy

As shown in Appellants’ FIG. 1 (left side), a parabolic reflector 6 is
arranged to reflect light beams from a light source 1 to a central point on a
device-under-test (DUT) and then reflect diffracted light beams from the
device-under-test (DUT) to one or more light detectors 3.
Similarly, in FIG. 8C of Almogy (right side), an “ellipsoidal mirror”
127 is also arranged to perform the same function as Appellants’ claimed
“parabolic reflector” 6, that is, to reflect light beams from a light source to a
central point on a device-under-test (DUT) 135 and then reflect diffracted
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light beams from the device-under-test (DUT) 135 to one or more light
detectors 121.
We find that a skilled artisan would have had the skills and knowledge
to substitute or replace an ellipsoidal mirror 127, shown in FIG. 8C and FIG.
8D of Almogy with other types of reflectors to arrive at Appellants’ claimed
“parabolic reflector” in order to reflect light beams from a light source to a
central point on a device-under-test (DUT) and then reflect diffracted light
beams from the device-under-test (DUT) to one or more light detectors, and
the results of the substitution would have been predictable.
In view of these reasons, we conclude that independent claims 1, 7,
12, and 20 are unpatentable under 35 U.S.C. § 103(a) over Almogy.
The Patent Trial and Appeal Board (PTAB) is a review body rather
than a place of initial examination. We have made the rejection regarding
independent claims 1, 7, 12, and 20 under 37 C.F.R. § 41.50(b). However,
we have not reviewed the remaining claims 3-6, 8-11, 14-16, 22 and 23 for
patentability over Almogy. Our decision not to enter a new ground of
rejection for all claims should not be considered as an indication regarding
the appropriateness of further rejection or allowance of the remaining
claims. Rather, we merely leave the patentability determination with respect
to the remaining claims to the Examiner. See MPEP §1213.02.
With respect to dependent claims 2-6, 8-11, 13-19, and 21-25,
Appellant presents no arguments for patentability of these claims separately
from claims 1, 7, 12, and 20. App. Br. 17-18. However, in view of the new
35 U.S.C. §103(a) rejection of independent claims 1, 7, 12, and 20, we adopt
as our own the Examiner’s findings and conclusions with respect to the
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teachings of Lu, Marxer, and Kaye relative to claims 2-6, 8-11, 13-19, and
21-25. Ans. 5-6. Accordingly, we sustain the Examiner’s rejections of
claims 2-6, 8-11, 13-19, and 21-25 under 35 U.SC §103(a) over various
combination of Almogy, Lu, Marxer and Kaye.

V. CONCLUSION
On the record before us, we conclude that the Examiner has erred in
rejecting claims 1, 3-12, 14-16, 20, 22, and 23 under 35 U.S.C. §102(b) as
being anticipated by Almogy. However, we conclude that the Examiner has
not erred in rejecting: (1) claims 2 and 13 under 35 U.S.C. §103(a) as being
unpatentable over Almogy and Lu; (2) claims 17, 18, 21, and 24 under 35
U.S.C. §103(a) as being unpatentable over Almogy and Marxer; and (3)
claims 19 and 25 under 35 U.S.C. §103(a) as being unpatentable over
Almogy and Kaye.

VI. ORDER
As such, we reverse the Examiner’s final rejection of claims 1, 3-12,
14-16, 20, 22, and 23 under 35 U.S.C. §102(b) as being anticipated by
Almogy.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we newly reject
independent claims 1, 7, 12, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Almogy.
Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Further, § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
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following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
We also affirm the Examiner’s final rejections of: (1) claims 2 and 13
under 35 U.S.C. §103(a) as being unpatentable over Almogy and Lu; (2)
claims 17, 18, 21, and 24 under 35 U.S.C. §103(a) as being unpatentable
over Almogy and Marxer; and (3) claims 19 and 25 under 35 U.S.C. §103(a)
as being unpatentable over Almogy and Kaye.
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) (2011).

AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)

ELD