Ex Parte Moon

Patent Trial and Appeal Board

Jun 28, 2016

13117238 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/117,238 05/27/2011 Christopher Ryan MOON
126149 7590 06/30/2016
Keysight Technologies, Inc,
C/O CPA Global
P.O. Box 52050
Minneapolis, MN 55402
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.
20104183-01 7226
EXAMINER
MCCORMACK, JASON L
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
keysightdocketing@cpaglobal.com
notice.legal@keysight.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER RYAN MOON
Appeal2014-001595
Application 13/117,238
Technology Center 2800
Before LARRY J. HUME, JEFFREY A. STEPHENS, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-19. No other claims are pending. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm-in-part.
Appeal2014-001595
Application 13/117,238
STATEMENT OF THE CASE
Claims 1, 7, and 17, reproduced below with bolding added by
Appellant (App. Br. 7, 9), is illustrative of the claimed subject matter:
1. A method for optimizing loop gain of an atomic force
microscope (AFM) apparatus comprising a controller and a
physical system, the method comprising:
determining a change in gain of the physical system; and
adjusting a controller frequency response of the controller
in an AFM loop to compensate for the determined change in gain,
the AFM loop having a corresponding loop response
comprising the product of the controller frequency response
and a physical system response of the physical system.
7. A method tor optimizing loop gain of an atomic force
microscope (AFM) loop in an AFM apparatus, the AFM
apparatus including a controller and a physical system, the
method comprising:
(a) initializing a frequency of a signal input to the
controller;
(b) measuring a loop response of the AFM loop at the
frequency;
( c) determining whether a phase of the loop response is
approximately the same as a target phase;
( d) when the phase of the loop response is not
approximately the same as the target phase, adjusting the
frequency of the input signal and repeating steps (b) and (c),
and when the phase of the loop response is approximately the
same as the target phase, determining whether a magnitude
of the loop response is approximately the same as a target
magnitude; and
( e) when the magnitude of the loop response is not
approximately the same as the target magnitude, adjusting a gain
of the controller and repeating steps (b ), ( c) and ( d), and when
the magnitude of the loop response is approximately the same as
the target magnitude, setting the gain as the loop gain of the AFM
loop.
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Application 13/117,238
APPELLANT'S CONTENTIONS
Appellant contends the Examiner erred in rejecting, under 35 U.S.C.
§ 102(b ), claims 1, 7, and 14--19 as being anticipated by Adderton
(US 6,530,266 Bl; Mar. 11, 2003), and claims 1, 7, and 17 as being
anticipated by Linker (US 5,376,790; Dec. 27, 1994).
Appellant also contends the Examiner erred in rejecting, under 3 5
U.S.C. § 102(e), claims 1, 4, 5-9, and 17 as being anticipated by Hu
(US 2011/0167524 Al; July 7, 2011).
Appellant also contends the Examiner erred in rejecting under 35
U.S.C. § 103(a) claims 2 and 3 as being obvious in view of Hu or Linker and
Raman (US 2011/0041224 Al; Feb. 17, 2011); claim 10 as being obvious in
view of Hu and D. Surdilovic & J. Kirchhof, A New Position Based
Force/Impedance Control for Industrial Robots, Int'l Conf. on Robotics
Automation, Minneapolis, MN, IEEE 0-7803-2988-4/96 (1996)
("Surdilovic"); claim 11 as obvious in view of Hu and A. Sebastian et al.,
System Tools Applied to Micro-cantilever Based Devices, (L. Gairre B.
Bamieh, eds., Springer-Verlag Berlin Heidelberg, at 83-99, 2003)
("Sebastian"); and claims 12 and 13 as obvious in view of Adderton and
Tamayo de Miguel (US 2003/0137216 Al; July 24, 2003).
ANALYSIS
Claim 1
Appellant contends the Examiner erred by failing to consider that "the
loop response of claim 1 comprises the product of the controller frequency
response and a physical system response." App. Br. 7; Reply Br. 4--6.
Specifically, Appellant argues the Examiner improperly treated the language
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Application 13/117,238
as a mere physical property or correlation that does not limit the claim.
Reply Br. 5.
The Examiner states that because claim 1 "does not specify that the
AFM loop is measured, or utilized in any particular way, it is understood
that the 'corresponding loop response' claimed in claim 1 is merely a
physical property and is not a limitation on the method of claim 1." Ans.
13-14. Further, the Examiner states "[Appellant's S]pecification does not
appear to disclose that the loop response is utilized in either the step of
determining a change in gain, or in the step of adjusting a controller
frequency response, and instead, the definition of loop response, in claim 1
appears to be a mere correlation." Ans. 14.
We agree with the Examiner. Claim 1 is a method claim that
positively recites two steps-a determining step and an adjusting step.
Appellant cites no evidence from the Specification or otherwise to suggest
that the disputed claim language is required for or affects performance of
either of the claimed steps. See Leesona Corp. v. U.S., 530 F.2d 896, 908
(Ct. Cl. 1976) ("patentability of a method claim must rest on the method
steps recited, not on the structure used, unless that structure affects the
method steps"); see also App. Br. 21 (claim 2); cf Eaton Corp. v. Rockwell
Intern. Corp., 323 F.3d 1332, 1339--41 (Fed. Cir. 2003) (structures can limit
a method claim where "[t]he presence of [specific] structures [in a method
claim] permits the performance of the first step of the claimed method" and
that the "plain language of the claim requires the operation of this structure
[in] the claimed method"). Further, Appellant does not contest the
Examiner's findings that Adderton and Linker each disclose both the
determining step and the adjusting step, including "adjusting a controller
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Application 13/117,238
frequency response of the controller in an AFM loop to compensate for the
determined change in gain." See Final Act. 3 (citing Adderton Abstract, col.
10, 1. 63---col. 11, 1. 19, col. 14, 1. 64); Final Act. 9-10 (citing Linker
Abstract, col. 1, 1. 60, col. 4, 1. 66, col. 5, 1. 1, col. 23, 1. 31 ). While
Appellant argues that Hu does not disclose the adjusting step "in paragraph
[0190]" (App. Br. 13), the Examiner does not rely exclusively on paragraph
190 and Appellant's arguments do not substantively address the Examiner's
findings regarding the disclosures in Hu. See, e.g., Final Act. 7 (finding Hu
i-fi-19-12, 190 disclose a controller adjusting frequency to maintain a constant
target value); Ans. 16 (citing Hu i-f 189); see also Spec. i126 (defining
"controller frequency response" as "a designated frequency response of the
controller that produces a voltage applied to an actuator, for example, in
response to the deflection of the cantilever in a contact-mode AFM"). We
also agree with the Examiner that the disputed claim language defines a
property of an AFM loop, and Appellants have not presented persuasive
argument or evidence that Adderton, Hu, or Linker's AFM loop with a
controller frequency response and physical system response would not also
have the corresponding "loop response" defined in the claim. Accordingly,
we sustain the Examiner's rejections of independent claim 1under35 U.S.C.
§ 102(b) as anticipated by Adderton, under 35 U.S.C. § 102(b) as anticipated
by Linker, and under 35 U.S.C. § 102(e) as anticipated by Hu.
Appellant does not present additional argument as to dependent
claims 2---6. Thus, for the same reasons as claim 1, we sustain the rejection
of claims 4---6 under 35 U.S.C. § 102(e) as anticipated by Hu and the
obviousness rejections of claims 2 and 3 under § 103.
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Application 13/117,238
Claims 7 and 17
Appellant argues the Examiner failed to clearly articulate the basis for
the rejections of claims 7 and 17 and that the cited references fail to disclose,
for example, "the action taken when the phase of the loop response is not
approximately the same as the target phase." App. Br. 10-11.
The Examiner interprets claims 7 and 1 7 to require that the action
taken when the phase of the loop response is not approximately the same as
the target phase is to adjust frequency and gain. Ans. 15 (citing Adderton
col. 9, 1. 60, col. 12, 1. 65). The Examiner finds that Adderton discloses
modifying the frequency of an input signal based on the measured system
response with its description of how the bandwidth of a loop is measured
and then optimized by altering the mechanical resonance of the cantilever
(the physical system frequency response). Ans. 14 (citing Adderton col. 4, 1.
40, col. 2, 1. 63---col. 3, 1. 17).
We agree with Appellant that the Examiner has not adequately
explained how Adderton, Hu, or Linker discloses each limitation of claims 7
and 17 as is required to support an anticipation rejection. The Examiner's
rejections identify concepts and principles in each reference that relate to
claims 7 and 17, but "'[c]oncepts' do not anticipate." Panduit Corp. v.
Dennison Mfg. Co., 774 F.2d 1082, 1101 (Fed. Cir. 1985); see also Net
Moneyin, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (2008) ("[i]t is not
enough that the prior art reference discloses part of the claimed invention,
which an ordinary artisan might supplement to make the whole, or that it
includes multiple, distinct teachings that the artisan might somehow
combine to achieve the claimed invention.") An anticipation rejection
requires an element-by-element analysis of each claim. See Bristol-Myers
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Application 13/117,238
Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1374 (Fed. Cir. 2001).
Further, an anticipation rejection must establish that a reference not only
discloses all elements of the claim within the four comers of the document,
but that the reference also discloses those elements arranged as in the claim.
Net Moneyln, 545 F.3d at 1369.
Because we find the Examiner has not provided an element-by-
element analysis sufficient to establish anticipation, we are constrained by
the record before us to reverse the Examiner's rejections of independent
claims 7 and 17, as well as dependent claims 8-16, 18, and 19.
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 1---6. We reverse the Examiner's rejections of claims 7-19.
No time period for taking any subsequent action in connection with
this appeal may be extended. 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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