Ex Parte Madsen et al

Patent Trial and Appeal Board

Dec 15, 2016

12775392 (P.T.A.B. Dec. 15, 2016)

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.
12/775,392 05/06/2010 Jonathan Michael Madsen 8536.P006 1035
81088 7590 12/16/2016
FIJI/BSTZ
Blakely Sokoloff Taylor & Zafman LLP
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
DAY, HERNG DER
ART UNIT PAPER NUMBER
2128
MAIL DATE DELIVERY MODE
12/16/2016 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
____________________

Ex parte JONATHAN MICHAEL MADSEN and WEIDONG YANG
____________________

Appeal 2015-001758
Application 12/775,392
Technology Center 2100
____________________

Before ERIC S. FRAHM, NATHAN A. ENGELS, and
MATTHEW J. McNEILL, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2015-001758
Application 12/775,392

2
STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–26. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
Exemplary Claim
Exemplary independent claim 1 under appeal, with emphasis added,
reads as follows:
1. A method comprising:
providing a grating structure in a metrology system;
simulating a set of diffraction orders for the grating
structure based on two or more azimuth angles and on one or
more angles of incidence;
providing a simulated spectrum based on the set of
diffraction orders; and
determining, from the simulated spectrum, index of
refractivity and coefficient of extinction material optical
properties of the grating structure.

The Examiner’s Rejection
The Examiner rejected claims 1–26 as being unpatentable under
35 U.S.C. § 103(a) over the combination of Bischoff (US 2010/0042388 A1;
published Feb. 18, 2010), Walsh (US 7,990,549 B2; issued Aug. 2, 2011),
and Willis (US 7,763,404 B2; issued July 27, 2010). Final Act. 5–28.
Appeal 2015-001758
Application 12/775,392

3
Principal Issues on Appeal1
Based on Appellants’ arguments in the Appeal Brief (App. Br. 6–10)
and the Reply Brief (Reply Br. 4–10), the following principal issue is
presented on appeal:
Did the Examiner err in rejecting claims 1–26 under
35 U.S.C. § 103(a) over the combination of Bischoff, Walsh, and Willis
because Willis, and thus the combination, fails to teach or suggest the
limitation at issue in representative independent claim 1, namely
“determining, from the simulated spectrum, index of refractivity and
coefficient of extinction material optical properties of the grating structure,”
as recited in representative independent claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections (Final Act. 5–28) in light
of Appellants’ arguments in the Appeal Brief (App. Br. 6–10) and the Reply
Brief (Reply Br. 4–10) that the Examiner has erred in view of the
Examiner’s Answer including the Examiner’s response to Appellants’
arguments (Ans. 4–6). We disagree with Appellants’ arguments.

1 Independent claims 1, 9, 17, and 22, and claims 2–8, 10–16, 18–21, and
23–26 which depend respectively therefrom, contain the same disputed
limitations pertaining to a method for determining an index of refractivity
and coefficient of extinction material optical properties from a simulated
spectrum of diffraction order sets which are simulated for a grating structure
in a metrology system, and are argued together as a group by Appellants in
the briefs on the basis of claim 1 (App. Br. 6–10; Reply Br. 3–10). We
select independent claim 1 as representative of claims 1–26 which all stand
rejected for obviousness over the combination of Bischoff, Walsh, and
Willis.
Appeal 2015-001758
Application 12/775,392

4
With respect to representative claim 1, we adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Final Act. 5–8), and (2) the reasons set forth by the
Examiner in the Examiner’s Answer (Ans. 4–6) in response to Appellants’
Appeal Brief. We concur with the conclusions reached by the Examiner.
We note that each reference cited by the Examiner must be read, not
in isolation, but for what it fairly teaches in combination with the prior art as
a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one
cannot show non-obviousness by attacking references individually where the
rejections are based on combinations of references). In this light,
Appellants’ arguments as to representative independent claim 1 (App. Br. 9–
10; Reply Br. 8–9) concerning the individual shortcomings in the teachings
of Willis are not persuasive of the non-obviousness of the claimed invention
set forth in representative independent claim 1. The Examiner has relied
upon the combination of Bischoff, Walsh, and Willis as teaching or
suggesting a method for determining an index of refractivity and coefficient
of extinction material optical properties from a simulated spectrum of
diffraction order sets which are simulated for a grating structure in a
metrology system, as recited in claim 1.
We agree with the Examiner (Final Act. 5–8; Ans. 4–6) that Willis
teaches determining index of refractivity and coefficient of extinction
material optical metrological properties of a grating structure (see at least
col. 28, ll. 20–22; col. 35, ll. 50–58), which are also known as n and k values
(see col. 47, ll. 3–9), and suggests using simulations (see Ans. 7 citing col.
28, ll. 7–26). We also agree with the Examiner that Bischoff and Walsh
both teach performing analyses on simulations of physical grating structures
Appeal 2015-001758
Application 12/775,392

5
(Final Act. 5–6). And, we agree with the Examiner’s motivational statement
for the combination, namely,
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to modify the combined
teachings of Bischoff et al. and Walsh to incorporate
the teachings of Willis et al. for determining, from a simulated
enhanced signal (e.g., a simulated spectrum), index of
refractivity and coefficient of extinction material optical
properties of the grating structure because, as suggested by
Willis et al., optically tunable soft mask (OTSM) technology
includes tunable resist compositions that are capable of high
resolution lithographic performance, especially in bilayer or
multilayer lithographic applications.

Final Act. 8 (emphasis in original).
Appellants have not adequately shown otherwise. Based on the
foregoing, Appellants’ contentions are not persuasive of Examiner error.
Although Appellants’ Reply Brief presents an additional argument
regarding whether Bischoff, Walsh, and Willis, alone or in combination, fail
to disclose the “determining . . .” step (Reply Br. 6), this argument was not
raised in front of the Board in the initial brief and is therefore waived.2 In
any event, this argument is conclusory and unsupported by record evidence.
In view of the foregoing, we sustain the rejection of claim 1, as well
as the respective claims 2–26 grouped therewith, under § 103(a) over the

2 “Any bases for asserting error, whether factual or legal, that are not raised
in the principal brief are waived.” Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (internal citation omitted) (informative). See also Optivus
Tech., Inc. v. Ion Beam Appl’ns. S.A., 469 F.3d 978, 989 (Fed. Cir. 2006)
(“[A]n issue not raised by an appellant in its opening brief . . . is waived.”)
(citations and quotation marks omitted); Advanced Magnetic Closures, Inc.
v. Rome Fastener Corp., 607 F.3d 817, 833 (Fed. Cir. 2010).
Appeal 2015-001758
Application 12/775,392

6
combination of Bischoff, Walsh, and Willis for the reasons provided by the
Examiner (see, e.g., Final Act. 5–8; Ans. 4–6)(discussing claim 1).

CONCLUSION OF LAW
The Examiner did not err in rejecting claims 1–26 under
35 U.S.C. § 103(a) over the combination of Bischoff, Walsh, and Willis
because Appellants’ arguments are not persuasive of Examiner error in
reaching the conclusion of obviousness as to representative independent
claim 1.

DECISION
We affirm the Examiner’s rejection of claims 1–26.
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). See 37 C.F.R.
§§ 41.50(f), 41.52(b).

AFFIRMED