Ex Parte Preikszas et al

Patent Trial and Appeal Board

Nov 28, 2017

12804507 (P.T.A.B. Nov. 28, 2017)

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.
12/804,507 07/22/2010 Dirk Preikszas FRM-092US 2457
54004 7590 11/28/2017
MUIRHEAD AND SATURNELLI, LLC
200 FRIBERG PARKWAY
SUITE 1001
WESTBOROUGH, MA 01581
EXAMINER
OSENBAUGH-STEWART, ELIZA W
ART UNIT PAPER NUMBER
2881
MAIL DATE DELIVERY MODE
11/28/2017 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 DIRK PREIKSZAS and MICHAEL ALBIEZ
Appeal 2016-006866
Application 12/804,507
Technology Center 2800
Before BEVERLY A. FRANKLIN, KAREN M. HASTINGS,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—20, 36, and 38-42 of
Application 12/804,507 under 35 U.S.C. § 103(a) as obvious. Final Act.
(May 12, 2015) 2—17. Appellant1 seeks reversal of these rejections pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 Appellant is the Applicant, Carl Zeiss Microscopy GmbH, which is
additionally identified as the real party in interest. Appeal Br. 2.
Appeal 2016-006866
Application 12/804,507
BACKGROUND
The present application generally relates to a particle beam apparatus
such as an electron-beam device, in particular a scanning electron
microscope (SEM), a transmission electron microscope (TEM), or an ion-
beam device. Spec. 1. The particle beam apparatus of the present
application is stated to have two advantageous characteristics. Id. at 6.
First, the beam current of the particle beam is continuously variable over a
wide range. Id. This is achieved by varying the excitation of the first
condenser lens. Id. Second, the second aperture unit is designed as a
pressure stage for separating a first area in which there is an ultra-high
vacuum from a second area having a high (but not ultra-high) vacuum. Id.
The Specification further indicates that the pressure-tight installation
of the second aperture unit makes it difficult to adjust mechanically. Id. As
a consequence, the first pole shoe and second pole shoe are both made
adjustable relative to the second aperture unit. Id.
Claims 1 and 38 are representative of the pending claims and are
reproduced below with certain limitations bolded for emphasis:
1. A particle beam apparatus, comprising:
a particle beam generator that generates particles forming
a particle beam;
an objective lens that focuses the particle beam onto a
sample;
a first condenser lens having a first pole shoe situated
first and then a second pole shoe as viewed from the particle
beam generator toward the objective lens, the first pole shoe
and the second pole shoe being adjustable independently of
each other, wherein excitement of the first condenser lens is
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Application 12/804,507
variable for realizing different beam currents in different
operating modes of the particle beam apparatus while
independently adjusting the pole shoes in response thereto;
a second condenser lens, the first condenser lens being
situated first, and then the second condenser lens being situated,
as viewed from the particle beam generator toward the
objective lens;
a first aperture unit situated between the particle beam
generator and the first condenser lens; and
a second aperture unit situated between the first
condenser lens and the second condenser lens, wherein the
second aperture unit receives a beam modified by adjustment of
the pole shoes of the first condenser lens, wherein the second
aperture unit is a pressure stage aperture separating a first area
having a first pressure from a second area having a second
pressure.
38. A particle beam apparatus, comprising:
a particle beam generator that generates particles forming
a particle beam;
an objective lens that focuses the particle beam onto a
sample;
a first condenser lens having a first pole shoe situated
first, and then a second pole shoe, as viewed from the particle
beam generator toward the objective lens, the first pole shoe
and the second pole shoe being adjustable independently of
each other;
a second condenser lens, the first condenser lens being
situated first, and then the second condenser lens being situated,
as viewed from the particle beam generator toward the
objective lens;
a first aperture unit situated between the particle beam
generator and the first condenser lens; and
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Application 12/804,507
a second aperture unit situated between the first
condenser lens and the second condenser lens, wherein the
second aperture unit is a pressure stage aperture separating a
first area having a first pressure from a second area having a
second pressure,
wherein the particle beam apparatus has two operational
modes, the two operational modes being a high resolution mode
and a high current mode, wherein, by excitement of the first
condenser lens, the high resolution mode or the high current
mode is set, wherein the first pole shoe and the second pole
shoe of the first condenser lens are adjustable relative to the
second aperture unit independently of each other in such a
way that, in the high resolution mode and the high current
mode, the particle beam passes through the second aperture
unit.
Appeal Br. 21, 28 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1—3, 36, and 38—42 are rejected under 35 U.S.C. §
103(a) as obvious over Ichimura et al. (US 7,550,724 B2, iss. June 23, 2009)
(hereinafter “Ichimura”) in view of Le Poole (US 2,749,464, iss. June 5,
1956). Final Act. 2—9.
2. Claims 4, 5, 9—11, and 19 are rejected under 35 U.S.C. § 103(a)
as obvious over Ichimura in view of Le Poole and further in view of Cubric
et al. (US 2007/0138403 Al, pub. June 21, 2007). Id. at 9-11.
3. Claims 6—8, and 6—18 are rejected under 35 U.S.C. § 103(a) as
obvious over Ichimura in view of Le Poole and further in view of Cubric and
Teensma et al. (US 2007/0042144 Al, Feb. 22, 2007) (hereinafter
“Teensma”). Id. at 11—14.
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Application 12/804,507
4. Claim 12 is rejected under 35 U.S.C. § 103(a) as obvious over
Ichimura in view of Le Poole and further in view of Cubric and Godel et al.
(US 6,448,667 B2, iss. Sept. 10, 2002) (hereinafter “Godel”). Id. at 14.
5. Claim 13 is rejected under 35 U.S.C. § 103(a) as obvious over
Ichimura in view of Le Poole and further in view of Cubric, Godel, and
Hauser et al. (US 5,582,590, iss. Dec. 10, 1996) (hereinafter Hauser”). Id. at
15.
6. Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as
obvious over Ichimura in view of Le Poole and further in view of Cubric and
Verclyte (US 2002/0166600 Al, pub. Nov. 14, 2002) (hereinafter
“Verclyte”). Id. at 15—16.
7. Claim 20 is rejected under 35 U.S.C. § 103(a) as obvious over
Ichimura in view of Le Poole and further in view of Nishiyama et al. (US
2008/0308731 Al, pub. Dec. 18, 2008) (hereinafter “Nishiyama”). Id. at lb-
17.
DISCUSSION
Rejection 1. The Examiner rejected claims 1—3, 36, and 38—42 as
obvious over Ichimura in view of Le Poole. Final Act. 2—9. Appellant
asserts that the rejection is in error on several bases.
First, Appellant argues that certain elements of claims 38 and 39 are
not taught by the combination of Ichimura and Fe Poole. Appeal Br. 16.
Claims 38 and 39 each require that the pole shoes are adjustable such that in
both “the high resolution mode and the high current mode, the particle beam
passes through the second aperture unit.” Appeal Br. 28 (Claims App.).
That is, the claims require that there is limited “straying” of the primary
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Application 12/804,507
electron beam. See Spec. 3^4. Appellant asserts that the combination of
Ichimura and Le Poole fails to teach such feature.
In the Final Rejection the Examiner finds that Ichimura teaches that
the particle beam passes through the second aperture unit in both high
resolution and high current mode. Final Act. 7. The Examiner further finds
that “when the moveable pole pieces of Le Poole are incorporated into the
apparatus of Ichimura, they will move along the axis and towards and away
from the second aperture unit.” Answer 3.
There is no dispute that it was known in the art to operate in both a
high resolution (low current) mode and a high current mode. Spec. 2;
Cubric 16 (“[i]n a Scanning Electron Microscope (SEM) system it may be
desired to operate in a high resolution mode for imaging and to operate in a
high current mode for analysis.”). Nor does Appellant specifically refute the
Examiner’s findings regarding Ichimura. Nor is there any stated contention
that electron beam straying is caused by the pole shoes. Accordingly,
Appellant has failed to rebut the Examiner’s finding that it would have been
obvious to one of skill in the art to combine the teachings of Ichimura and
Le Poole so as to achieve a particle beam apparatus having adjustable pole
shoes such that in both the high resolution mode and the high current mode,
the particle beam passes through the second aperture unit.
Second, Appellant argues that there would be no motivation for a
person of ordinary skill in the art to combine the teachings of Ichimura and
Le Poole. Appeal Br. 16. The Examiner determined that a person of
ordinary skill in the art would have been motivated to use the adjustable pole
pieces of Le Poole with the first condenser lens of Ichimura to reduce
chromatic aberration. Final Act. 3^4. Appellant asserts that Ichimura
includes “computer controlled circuit 22 which would be more than
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Application 12/804,507
adequate to reduce or eliminate chromatic aberration in the first condenser
lens.” Appeal Br. 16. Appellant further asserts (without citation to record
evidence) that “[reducing or eliminating chromatic aberration of an electron
beam is provided by controlling convergence of the electron beam,” and that
Ichimura teaches that condenser lens 6 converges the electron beam under
control of the control circuit. Reply 6—7. Appellant concludes that
“Ichimura already discloses a sufficient mechanism to reduce chromatic
aberration and so there is no motivation to one of ordinary skill to modify
Ichimura by adding the teachings of LePoole.” Id. at 7.
The Examiner determines that there is insufficient support for
Appellant’s position that the condenser lens 6 of Ichimura would be capable
of reducing or eliminating chromatic aberration without the need for
moveable pole pieces. Answer 4.
We concur. Ichimura teaches that at least the first condenser lens 6,
second condenser lens 8, and objective lens 11 converge the primary
electron beam. Ichimura 7:1—10. The record poorly indicates which of
these structures, if any, may mitigate chromatic aberration and to what
extent. Moreover, the prior art need not "teach that a particular combination
is preferred or 'optimal,' for the combination to be obvious." In re Fulton,
391F.3dl 195 (Fed. Cir. 2004). Accordingly, Appellant has not adequately
supported its proposal that a person of ordinary skill in the art would not
have employed adjustable pole shoes (pole pieces) to mitigate chromatic
aberration.
Third, Appellant argues that combination of the teachings of Ichimura
and Fe Poole is not obvious because it “would require the skilled artisan to
engage in experimentation and invention to achieve the proposed result.
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Appellant submits that such a combination would not be readily
predictable.” Appeal Br. 17.
The “case law is clear that obviousness cannot be avoided simply by a
showing of some degree of unpredictability in the art so long as there was a
reasonable probability of success. ... the expectation of success need only
be reasonable, not absolute.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1364 (Fed. Cir. 2007).
Here, the hypothetical combination is derived from two known
electron beam apparatuses. It is essentially a mechanical combination.
While there may be some degree of complexity in combining the teachings
of the references, Appellant has not produced factual evidence indicating
that there would have been something less than a reasonable expectation of
success.
Fourth, Appellant argues that the proposed combination would not
function. Appeal Br. 17—18. Ichimura includes a diaphragm mechanism 34
that has a plurality of different aperture diameters. Ichimura teaches to
avoid contamination of the diaphragm mechanism as it is difficult to service
if contaminated. Id. at 17 (citing Ichimura 3:13—17, 5:19-55). Appellant
argues that “if the pole pieces of Le Poole were to be incorporated into the
first condenser lens 6 of Ichimura, the relationships between diaphragm
mechanism 34, first condenser lens 6 and differential exhaust diaphragm 33
would no longer hold. The proposed modification would thus cause the
device [to] not work properly.” Appeal Br. 18.
The thrust of Appellant’s argument is that the two devices are not
physically combinable. “[I]t is not necessary that inventions of the
references be physically combinable to render obvious the invention under
review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983); see also In re
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Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (“Etter's assertions that
Azure cannot be incorporated in Ambrosio are basically irrelevant, the
criterion being not whether the references could be physically combined but
whether the claimed inventions are rendered obvious by the teachings of the
prior art as a whole.”). “The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference,” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also
In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (citing In re Keller, 642
F.2d at 425), but rather whether “a skilled artisan would have been
motivated to combine the teachings of the prior art references to achieve the
claimed invention,” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed.
Cir. 2007).
Here, the Examiner has made a prima facie showing that a skilled
artisan would have been motivated to combine the teachings of the prior art
references to achieve the claimed invention. Appellant has not presented
persuasive factual evidence in rebuttal.
Appellant similarly argues that Ichimura and Le Poole teach different
structures to maintain a vacuum in the path of the particle beam. Appeal Br.
18—19. Appellant argues that “when the references are considered for all
their teachings, a person of ordinary skill would still be at a loss as to how to
arrive at the subject matter of claim 1 of the subject application.” Id. at 19.
Again, claims may be obvious in view of a combination of references, even
if the features of one reference cannot be substituted physically into the
structure of the other reference. Appellant has not offered factual evidence
why a person of skill in the art would be unable to incorporate certain
features of Le Poole into the structure of Ichimura as described by the
Examiner. Merely pointing out a difference in the disclosures does not
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demonstrate incompatibility. Attorney argument is not evidence. See, e.g.,
Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009)
(“[UJnsworn attorney argument... is not evidence and cannot rebut. . .
other admitted evidence . . . .”); In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997) (“An assertion of what seems to follow from common experience
is just attorney argument and not the kind of factual evidence that is required
to rebut a prima facie case of obviousness.”).
In view of the foregoing, Appellant has failed to show error in the
rejection of claims 1—3, 36, and 38-42.
Rejections 2—7. The Examiner rejected claims 2 and 4—19 as obvious
over Ichimura, Le Poole, and other references as described above. Final
Act. 9—17. Appellant alleges error in these rejections on the same bases as
with regard to claims 1—3, 36, and 38-42. As we have not found such
arguments persuasive, we affirm the rejections of claims 2 and 4—19 for the
reasons set forth above.
CONCLUSION
The rejections of claims 1—20, 36, and 38-42 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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