Ex Parte Saphier et al

Patent Trial and Appeal Board

Jul 28, 2017

12809299 (P.T.A.B. Jul. 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.
12/809,299 06/18/2010 Ofer Saphier Q119335 8025
23373 7590 08/01/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
ITSKOVICH, MIKHAIL
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OFER SAPHIER, ISRAEL SHAPPIRA, and YAAKOV DAVIDI
Appeal 2015-006977
Application 12/809,299 1
Technology Center 2400
Before ROBERT E. NAPPI, CARL W. WHITEHEAD JR., and
SHARON FENICK, Administrative Patent Judges.
FENICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) of the Examiner’s
Final Rejection of claims 1—30. (Appeal Br. 7.) An oral hearing was held
on June 8, 2017. We have jurisdiction under 35 U.S.C. § 6(b)(1).
We affirm the rejection of claims 1—29, reverse the rejection of claim
30, and enter a NEW GROUND OF REJECTION for obviousness of claim
30 pursuant to our authority under 37 C.F.R. § 41.50(b).
Invention
Appellants’ invention relates to an apparatus for inspection, with an
imaging assembly including a plurality of cameras mounted in different
1 Appellants identify Orbotech Ltd. as the real party in interest. (Appeal Br.
2.)
Appeal 2015-006977
Application 12/809,299
locations configured to capture images of a sample. A motion assembly
moves the imaging assembly relative to the sample, with the motion
assembly accurate to a certain position tolerance, and an image processor
receives and processes the images captured by the cameras and locates the
defect in the sample with a position accuracy higher than the position
tolerance. (Spec. 3:4—18, Abstract.)
Illustrative Claims
Claims 1 and 30, reproduced below with italicization added for
emphasis, are illustrative:
1. Apparatus for inspection, comprising:
an imaging assembly, comprising a plurality of cameras,
which are mounted in different, respective locations in the
imaging assembly and are configured to capture respective
images of a sample;
a motion assembly, which is configured to move at least
one of the imaging assembly and the sample so as to cause the
imaging assembly to scan the sample with a scan accuracy that
is limited by a predetermined mechanical position tolerance;
and
an image processor, which is coupled to receive and
process the images captured by the cameras, and which locates
a defect in the sample with a position accuracy that is finer
than the mechanical position tolerance.
30. An apparatus for inspection, comprising:
an imaging assembly, comprising a plurality of cameras,
wherein each of the plurality of cameras is fixedly mounted in a
different, respective location in the imaging assembly and is
configured to capture a respective image of a sample during a
scan;
a motion assembly, which is configured to move at least
one of the imaging assembly and the sample so as to cause the
2
Appeal 2015-006977
Application 12/809,299
imaging assembly to scan the sample with a scan accuracy that
is limited by a predetermined mechanical position tolerance;
and
an image processor, which is coupled to receive and
process the images captured by the cameras during the scan,
which estimates relative positions among the images by
computing an estimated shift and an angular skew with respect
to each of the plurality of cameras and sums the relative
positions to obtain a global position estimate; and which locates
a defect in the sample with a position accuracy that is finer than
the mechanical position tolerance.
Rejections
The Examiner rejects claims 1—3, 5, 7, 8, 11, 12, 15—17, 19, 21, 22,
24, 25, and 30 under 35 U.S.C. § 102 as anticipated by the Admitted Prior
Art (APA) in the Specification at 1:15—23, 25, 28—31; 2:3—12, 17—19; 3:4—
15. (Final Action 6—12.)
The Examiner rejects claims 4, 6, 18, 20, 28, and 29 under 35 U.S.C.
§ 103 as unpatentable over the Admitted Prior Art (APA) and Lu (US
6,898,306 Bl; iss. May 24, 2005). (Final Action 14—15.)
The Examiner rejects claims 9, 10 and 23 under 35 U.S.C. § 103 as
unpatentable over the Admitted Prior Art (APA) and Gruber (US
2002/0163582 Al; pub. Nov. 7, 2002). (Final Action 15—16.)
The Examiner rejects claims 13, 14, 26 and 27 under 35 U.S.C. § 103
as unpatentable over the Admitted Prior Art (APA) and Seidel (US
2004/0117055 Al; pub. June 17, 2004). (Final Action 16—18.)
3
Appeal 2015-006977
Application 12/809,299
Issues
Did the Examiner err in finding the Admitted Prior Art discloses the
subject matter of claim 1, including the claimed image processor?
Did the Examiner err in finding the Admitted Prior Art discloses an
image processor “which estimates relative positions among the images
[captured by a plurality of cameras during a scan] by computing an
estimated shift and an angular skew with respect to each of the plurality of
cameras,” as recited in claim 30?
ANALYSIS
Claim 1
The Examiner finds the Admitted Prior Art discloses the subject
matter of claim 1, with the exception of the limitation that the image
processor “locates a defect in the sample with a position accuracy that is
finer than the mechanical position tolerance,” which the Examiner finds is
non-limiting claim language suggesting a use but not limiting the claim to a
particular structure. (Final Action 2—3, 7—8). Appellants argue that, in the
APA, no image processor is disclosed which can locate a defect in the
sample with an accuracy that is finer than the mechanical position tolerance.
(Appeal Br. 7—8; Reply Br. 5—8.)
As an initial matter of claim construction, we give the claim its
broadest reasonable interpretation consistent with the Specification. See In
re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). “In the patentability
context, claims are to be given their broadest reasonable interpretations . . .
limitations are not to be read into the claims from the specification.” In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).
Appellants appear to argue that the image processor is claimed using
4
Appeal 2015-006977
Application 12/809,299
structural language, not claimed using functional language. (Appeal Br. 9
(“even if the above-noted language were functional language”)). Our
reviewing court has held that:
[cjonstruing a non-functional term in an apparatus claim in a way
that makes direct infringement turn on the use to which an
accused apparatus is later put confuses rather than clarifies,
frustrates the ability of both the patentee and potential infringers
to ascertain the propriety of particular activities, and is
inconsistent with the notice function central to the patent system.
Paragon Solutions, LLC. V. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir.
2009). Apparatus claim 1 recites an image processor as a structural element,
while reciting the image processor’s functions of receiving and processing
images and locating a defect in the sample. We agree with the Examiner
that, if the claim is viewed as not including functional language, the
statement of intended use would not distinguish the claimed invention from
the prior art. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
We are, however, mindful that “[a] patent applicant is free to recite
the features of an apparatus either structurally or functionally” (In re
Schreiber, 128 F.3d at 1478) and that “in rare instances” statements
regarding asserted benefits in apparatus claims may be limiting “if the
applicant clearly and unmistakably relied on those . . . benefits to distinguish
prior art” (Catalina Mktg. Inti Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
809 (Fed. Cir. 2002) (specifically discussing statements of benefit or
features found in the preamble of a claim). However, in such cases:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic
of the prior art, it possesses the authority to require the applicant
to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied upon.
5
Appeal 2015-006977
Application 12/809,299
In re Schreiber, 128 F.3d at 1478 (quotingIn re Swinehart, 439 F.2d 210,
213 (CCPA 1971)).
Appellants argue in a conclusory manner that each prior art reference
described in the APA discloses only position accuracy which is limited to
the mechanical accuracy of the hardware. (Appeal Br. 8—9.) Appellants
discuss the description in the Specification of the prior art references and
assert that in each case, the determined position of a location in the sample is
based on the location and movement of the camera assembly. (Reply Br. 7—
8.) However, Appellants do not prove that any of the prior art image
processors in the references, which are each incorporated by reference,
possess the characteristic relied upon with respect to the position accuracy
relative to the mechanical position tolerance.
We additionally note that Raymond (US 7,075,565 Bl; iss. July 11,
2006, incorporated by reference into the Specification at 1:32—2:12)
discloses that each single point on the sample will be imaged at least two
times by each of four cameras in a single pass over the board. (Raymond
9:41—61, Fig. 5.) Appellants have not convincingly, in the face of the
Examiner’s findings otherwise (Final Action 7—8; Answer 3), proven that the
combination of information in multiple images does not result in a position
accuracy which is finer than the mechanical position tolerance of the
imaging assembly. Thus, we are not convinced that the functional limitation
is not an inherent characteristic of the prior art.
We are not persuaded by Appellants’ arguments of error in the
Examiner’s rejection of claim 1. Therefore, we sustain the anticipation
rejection of claim 1, the rejections of claims 7—14 and 28, argued with claim
6
Appeal 2015-006977
Application 12/809,299
1 (Appeal Br. 9), and the rejections of claims 2—6, 15—27, and 29, argued on
the same basis {id. at 10.)
Claim 30
Appellants argue the Examiner is mistaken in finding the claim 30
limitation of “computing an estimated shift and an angular skew with respect
to each of the plurality of cameras” to be taught or suggested by the edges or
comers of individual images. (Appeal Br. 11—12.)
The Examiner finds the Admitted Prior Art discloses the subject
matter of claim 30, and that the limitation of an “image processor . . . which
estimates relative positions among the images [captured by the cameras] by
computing an estimated shift and an angular skew with respect to each of the
plurality of cameras” is taught by the APA’s disclosure that the position of a
defect in the sample is found in a combined image “composed of images that
overlap by edges [shifts] and comers [angles].” (Final Action 11.) The
Examiner finds that the broadest reasonable interpretation of the claim
requires aligning multiple images based on camera positions, where the
images may overlap due to shifts in camera position and angular skew of
cameras. (Answer 6.) The Examiner finds this to be taught the APA. (Final
Actin 11; Answer 6.)
We agree with the Examiner that the APA does disclose that
estimated shift of a camera between images would be calculated by an image
processor in order to detect defects or features of a sample being scanned in
a combined image of the sample. (Answer 6.) With respect to calculation of
angular skew, we agree with Appellants that the overlap of individual
images by comers does not necessarily disclose the computation of an
7
Appeal 2015-006977
Application 12/809,299
angular skew with respect to each of a plurality of cameras. (Final Action
11.)
However, we find that the APA teaches or suggests the capture of
images by cameras situated at various angles with respect to the sample, and
that this teaches or suggests the estimation of relative positions among the
images by the computation of an angular skew with respect to each of the
plurality of cameras, in order to detect the location of a feature from the
combined information from multiple images obtained from the plurality of
cameras. The APA teaches an inspection system may include a plurality of
cameras for providing image data of an object, as in the Raymond reference,
incorporated by reference in the Specification. (Spec. 1:32—2:12.) In
Raymond, one or more of cameras 102a, 102b, 102c, 102d, and 102e
disposed at an angle to an object are used to optically inspect an object.
(Raymond 4:66—5:3, 5:19—35; 5:50—55; 6:20-25, Fig. 1.) A “similar sort of
approach” (Spec. 2:13) is provided in Guetta (US 2006/0066843 Al, pub.
Mar. 30, 2006), also incorporated by reference into the Specification (Spec.
2:13—15). In Guetta, multiple cameras 30 are arranged to all image the same
area on the wafer surface by capturing the radiation scattered into different
angular ranges. (Guetta 44, 46, Fig. 1.)
We conclude that the person of ordinary skill in the art would have
found it obvious to compute an angular skew for a plurality of cameras as
taught or suggested by the combination of APA, Raymond, and Guetta in
order to “combine the information in these images” (Spec. 1:15—19) and thus
estimate relative positions among the images captured by the plurality of
cameras
8
Appeal 2015-006977
Application 12/809,299
Therefore, we reject claim 30 as unpatentable over APA, Raymond,
and Guetta.
DECISION
We affirm the Examiner’s decision rejecting claims 1—3, 5, 7, 8, 11,
12, 15—17, 19, 21, 22, 24, and 25 under 35 U.S.C. § 102(a) as anticipated by
APA. We affirm the Examiner’s decision rejecting claims 4, 6, 9, 10, 13, 14,
18,20, 23, and 26-29 under 35 U.S.C. § 103.
We reverse the Examiner’s rejection of claim 30 under 35 U.S.C.
§102.
We reject claim 30 as obvious under 35 U.S.C. § 103(a) as
unpatentable over APA, Raymond, and Guetta.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the 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.
AFFIRMED-IN-PART; 37 C.F.R, § 41.50(b)
9