Ex parte Masao

Board of Patent Appeals and Interferences

Sep 18, 1997

07978223 (B.P.A.I. Sep. 18, 1997)

Application for patent filed November 19, 1992.1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KATSUYA MASAO
____________
Appeal No. 95-3781
Application 07/978,2231
____________
ON BRIEF
____________
Before BARRETT, LEE and CRAWFORD, Administrative Patent
Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner's
final rejection of claims 1, 6 and 9-17. Claims 18 and 19
The examiner indicates in the answer that claim 92
contains allowable subject matter if the rejection under 35
U.S.C. § 112 is overcome.
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were found allowable prior to the final rejection. The
examiner indicates in the examiner's answer that claims 2-5, 7
and 8 are
objected to as being dependent from a rejected claim but
appear to contain allowable subject matter. Therefore, we
will consider the rejections of claims 1, 6 and 9-17 in this
appeal.
THE REFERENCES
The following references were relied on by the
examiner:
Korth 4,516,855 May 14,
1985
Cohn et al. (Cohn) 5,076,696 Dec. 31,
1991
THE REJECTIONS
Claims 6 and 9 stand rejected under 35 U.S.C. § 112,
second paragraph as being indefinite. Claims 1 stands
rejected under 35 U.S.C. § 103 as being unpatentable over
Korth. Claims 10-17 stand rejected under 35 U.S.C. § 103 as2
being unpatentable over Korth in view of Cohn.
Rather than reiterate the entire arguments of the
appellant and the examiner in support of their respective
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Application 07/978,223
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positions, reference is made to appellant's brief (Paper No.
13) and the examiner's answer (Paper No. 15) for the full
exposition thereof.
OPINION
In reaching our conclusions on the issues raised in
this appeal, we have carefully considered appellant's
specification and claims, the applied references and the
respective viewpoints advanced by the appellant and the
examiner. These considerations lead us to make the
determinations which follow.
With regard to the examiner's rejection of claims 6
and 9 under 35 U.S.C. § 112, second paragraph, we initially
note that the purpose of the requirement stated in the second
paragraph of 35 U.S.C. § 112 is to provide those who would
endeavor, in future enterprise, to approach the area as
circumscribed by the claims of a patent, with the adequate
notice demanded by due process of law, so that they may more
readily and adequately determine the boundaries of protection
involved and evaluate the possibility of infringement and
dominance. In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204,
Appeal No. 95-3781
Application 07/978,223
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208 (CCPA 1970). The inquiry as stated in In re Moore, 439
F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971) is:
... whether the claims do, in fact,
set out and circumscribe a particular
area with a reasonable degree of
precision and particu-larity ...
[t]he definiteness of the language
employed must be analyzed--not in a
vacuum, but always in light of the
teachings of the prior art and of the
particular application disclosure as
it would be interpreted by one
possessing the ordinary level of skill
in the pertinent art.
In the instant case, the examiner is of the opinion
that it is unclear how (1) a polarizer can be "fixedly
arranged to provide three different azimuthal angles of
polarized light" as recited in claim 6, and (2) an analyzer
can be "fixed at three different azimuthal angles" as recited
in claim 9. The examiner reasons that a polarizer or analyzer
cannot be fixed and still provide three different angles of
polarized light. However, in our view, the language of claims
6 and 9 broadly indicates that the polarizer or analyzer is
fixed, by a certain arrangement, so that three azimuthal
angles are provided. This conclusion is supported by the film
on the specification which states at page 4 that the thickness
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Application 07/978,223
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of sample II can be determined by "orientating the polarizer 3
or the analyzer 6 to provide three or more azimuthal angles."
Although the language in these claims is broad in that the
details of the arrangement are not recited, as pointed out by
the examiner, the claims are not indefinite. See In re
Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970)
(breadth is not indefiniteness).
If the examiner is of the position that one with
ordinary skill in the art would not know how to orient a
polarizer or analyzer to provide three different azimuthal
angles of polarized light, that view has not been expressed
and it would concern enablement 35 U.S.C. § 112, first
paragraph, not indefiniteness. We do not express any opinion
in that regard since lack of an enabling disclosure has not
been raised as an issue by the examiner and is not the basis
of the rejection on appeal.
In view of the foregoing, we will not sustain the
rejection of claims 6 and 9 under 35 U.S.C. § 112.
Turning next to the rejection of claim 1 as
unpatentable under 35 U.S.C. § 103 over Korth, we find that
Korth discloses an ellipsometer for measuring the
Appeal No. 95-3781
Application 07/978,223
6 McGraw Hill Encyclopedia of Science and Technology3
356 (7th ed 1997).
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characteristics of a sample (Fig. 1, Col. 1, lines 38-41, Col.
3, line 17). The ellipsometer includes a polarizer 3 for
converting a light beam into a polarized light beam (Fig. 1,
Col. 3, lines 20-24) and a beam expander 2 for expanding the
polarized light (Col. 3, line 18). The light beam which has
been polarized by polarizer 3 and expanded by beam expander 2
is reflected from a sample 5 (Fig. 1). Optics 8 condenses the
light beam reflected from the sample so as to have a cross
section smaller than the size of analyzers 12a, 12b and 12c
(Fig. 1). We note that analyzers in an ellipsometer are
typically linear polarizers.3
Korth also disclosed that analyzers 12a, 12b and 12c
whose transmission direction differs by 60E, direct the light
beam to image converters 11a, 11b and 11c (Col. 3, lines 29-
30). Korth does not disclose that the polarizer is ahead of
the beam expander on the optical path as recited in claim 1.
As such Korth discloses the invention as recited in claim 1
except that in Korth the beam is expanded before it is
polarized. The examiner stated:
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Application 07/978,223
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It would have been obvious to
those of ordinary skill at the time
the invention was made to place the
polarizer before rather than after the
beam expander because this is a simple
variation of the system of Korth which
would obviously maintain the signifi-
cant features of the device, namely
the creation of an expanded polarized
light beam to be directed onto the
sample. That those of ordinary skill
[k]new that polarized beams could be
expanded is illustrated in figure 5 of
Korth, in which a polarized beam,
polarized by polarized 51, is expanded
by lens systems (500, 503) to create
expanded polarized light beam with
diameters larger than the size of the
polarizer. [Examiner's Answer at page
5]
We agree with the reasoning of the examiner and thus we will
sustain the examiner's rejection of claim 1 as unpatentable
under 35 U.S.C. § 103 over Korth.
This decision is based solely on the arguments
raised by the appellants. We offer no opinion on arguments
which could have been raised but which were not set forth in
the appeal brief.
The appellant's argument regarding this rejection is
directed to Figure 5A of Korth. Appellant argues that Figure
5A is directed to a holographic interferometer and that
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Application 07/978,223
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therefore the technical background and field of invention are
different from the appellant's invention. This argument is
not persuasive because the rejection is primarily based on
Figure 1 of Korth which is clearly an ellipsometer (Col. 2,
line 61). The examiner referred to Figure 5A of Korth to show
an alternative way for providing expanded polarized light. In
that regard, Figure 5A of Korth shows that a polarizer could
precede a beam expander. Figure 5A is a part of the
disclosure of Korth and is reasonably pertinent to the
generation of an expanded polarized light beam as claimed.
The examiner had ample basis to look to Figure 5A for its
pertinent teachings.
Turning next to the rejection of claims 10-17 as
unpatentable under 35 U.S.C. § 103 over Korth in view of Cohn,
we find that Cohn discloses an microellipsometer in which a
monochromatic light beam from a laser source 10 travels
successively through a coherence scrambler 12, a collimator
14, a polarizer 16 and a compensator 18 (Figure 1, Col. 6,
line 47). The light beam travels from the compensator 18 and
impinges on and is reflected by a sample 20 (Figure 1). The
reflected light beam passes through iris 22 and imaging lens
Appeal No. 95-3781
Application 07/978,223
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24 and is polarized by polarizer or analyzer 26. In Figure 1,
analyzer 26 rotates on a rotation stage. In another
embodiment depicted in Figure 2, the polarizer 50 rotates on a
rotation stage. The polarizer and analyzer are preferably
birefringent polarizing prisms. Cohn also discloses that
three equations representing three analyzer angles are
necessary to determine the properties of the reflecting
surface (Col 1, lines 15-29, Col. 4, lines 29-34). The
examiner stated:
It would have been obvious rotate the
polarizer or analyzer of Korth... to
generate the three different signals
at the three different angles as
taught by Korth. Cohn et al teaches
measuring at a minimum of three angles
(column 4, lines 33-34), which agrees
with Korth, which measures at three
angles. [Examiner's Answer at page
8].
With respect to the recitation in claim 11 that the
photo sensor is an area sensor, the examiner points out that
Cohn teaches that after the reflected light beam passes
through the polarizer 26, it is directed to a CCD camera 30
which senses an area of reflected light (See Col. 7, lines 11-
15).
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In regard to the recitation in claim 12 that the
photsensor is a line photo sensor, the examiner stated:
It would have been obvious to use
other known detector arrangements,
such as a line sensor because these
are known sensors which operate in a
recognized analogous manner.
[Examiner's Answer at page 8].
In regard to the recitation in claims 13-17 that the
polarizer or analizer is alternately rotated to fixed
positions or rotated continously, the examiner is of the
opinion that:
"It would have been obvious to either
fix the polarizer to each desired
position and make a measurement o[r]
to rotate the polarizer continuously
and "grab" the measurement as the
polarizer passes the desired position.
Cohn et al appears to at least suggest
both these techniques in column 7,
lines 7-9, Cohn et al mentions
"[p]rior to each measurement, the
analyzer 26 can be positioned", which
at least suggests moving the polarizer
or analyzer to a position and holding
it there until the measurement is
finished. The discussion in Cohn et
al, column 8.[,] line 55 appears to
disclose, or at least suggest,
continuously rotating the polarization
(by means of a rotating half-wave
plate); as the reference does teach
rotating the polarizer, the suggestion
of continuous rotation of the
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Application 07/978,223
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polarization suggests the continuous
rotation of the polarizer."
The appellant argues that the combination recited in
claims 10-17 distinguishes over the combined teachings of the
Korth and Cohn. However, appellant has not specifically
contested any of the findings or the reasoning of the examiner
with respect to the rejection of these claims. We are of the
opinion that the findings and reasoning of the examiner in
regard to the rejection of these claims is reasonable and in
the absence of any argument by the appellant controverting the
findings and reasoning of the examiner, we will sustain the
rejection of claims 10-17 as unpatentable under 35 U.S.C. §
103.
In summary, the examiner's rejection of claims 6 and
9 under 35 U.S.C. § 112, second paragraph is reversed. The
examiner's rejections of claims 1 and 10-17 under 35 U.S.C. §
103 is affirmed.
Appeal No. 95-3781
Application 07/978,223
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
1.136(a).
AFFIRMED-IN-PART
LEE E. BARRETT )
Administrative Patent Judge )
)
)
)
JAMESON LEE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 95-3781
Application 07/978,223
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Armstrong & Kubovcik
1725 K Street N.W., Suite 1000
Washington, DC 20006
Appeal No. 95-3781
Application 07/978,223
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