Ex Parte Smart

Board of Patent Appeals and Interferences

Dec 29, 2010

10818920 (B.P.A.I. Dec. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DONALD V. SMART
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Appeal 2009-015036
Application 10/818,920
Technology Center 2800
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Before ELENI MANTIS MERCADER, CARL W. WHITEHEAD, JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
[Appellant’s] invention relates to energy-efficient, laser-
based methods and systems for processing target material. In
particular, this invention relates to the use of a pulsed laser
beam to ablate or otherwise alter a portion of a circuit element
on a semiconductor substrate, and is particularly applicable to
vaporizing metal, polysilicide and polysilicon links for memory
repair. Further application can be found in laser-based
micromachining and other repair operations, particularly when
it is desired to ablate or modify a microscopic structure without
damaging surrounding areas and structures, which often have
non-homogeneous optical and thermal properties. Similarly,
the material processing operations can be applied to other
microscopic semiconductor devices, for instance
microelectromechanical machines. Medical applications may
also exist, such as microscopic tissue or cell ablation with
miniature fiber optic probes.
(Spec. 1).
Appellant filed a preliminary amendment to draft “claims 100-169 . . .
in view of three published application [sic]” filed by Sun2 and asserted that
these “new claims are directed to the same or substantially the same subject
matter as at least some of the published claims of the published application
[sic]” (Preliminary Amendment 16, filed Dec. 9, 2004). Appellant asserts
that his assignee is entitled to an interference with the assignee of Sun’s
three applications (Second Preliminary Amendment 17, filed Jan. 6, 2006).

2 The three published applications of Sun are (1) 10/322,347 (filed Dec. 17,
2002, published Aug. 14, 2004 as 2003/0151053) [Sun ‘053]; (2) 10/361,206
(filed Feb. 7, 2003, published Dec. 4, 2003 as 2003/0222330); and (3)
10/423,498 (filed Apr. 24, 2003, published Dec. 4, 2003 as 2003/0222324).
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Over the course of prosecution, claims 100-169, as well as later added
claims 170-173, were canceled and replaced by claims 174-325 (App. Br.
69-105).3 Subsequent to the filing of the initial Appeal Brief, “[c]aims 295,
298, 301, 303, 315, and 320 were canceled by examiner’s amendment”
(Supp. Reply Br. 1 (referencing the Office communication mailed Dec. 23,
2008)) and various rejections were withdrawn.4
The following rejections remain: Claims 174-294, 296, 297, 299,
300, 302, 304-314, 316-319, and 321-325 stand rejected under 35 U.S.C.
112, first paragraph, as failing to comply with the written description
requirement (Ans. 5; Supp. Reply Br. 2). Claims 272, 273, 281-284, 287,
288, 290-294, 296, 300, 302, 304-308, 318, 319, and 321-325 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by James C. North & Walter
W. Weick, Laser Coding of Bipolar Read-Only Memories, SC-11 IEEE J.
Solid-State Circuits 500 (Aug. 1976) (hereinafter “North”) (Ans. 12; Supp.
Reply Br. 2). Claims 272-274, 287, 288, 307, 308, and 325 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Batdorf (US 5,374,590
(issued Dec. 20, 1994) (Ans. 18, Supp. Reply Br. 2). Accordingly,
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection

3 We refer to the following documents: the Revised Appeal Brief (App. Br.)
filed April 3, 2008; the Examiner’s Answer (Ans.) mailed Dec. 23, 2008; the
Reply Brief (Reply Br.) filed Feb. 23, 2009; the Supplemental Examiner’s
Answer (Supp. Ans.) mailed Apr. 13, 2009; and the Supplemental Reply
Brief (Supp. Reply Br.) filed June 12, 2009.
4 A provisional nonstatutory double patenting rejection of the appealed
claims was withdrawn (Ans. 4). The appealed obviousness rejections under
35 U.S.C. § 103(a) (Supp. Reply Br. 2-3) have been withdrawn (Office
communication, mailed Sep. 1, 2009).
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of claims 174-294, 296, 297, 299, 300, 302, 304-314, 316-319, and 321-325
(Supp. Reply Br. 2).
We reverse.

PRINCIPLES OF LAW
“Adequate written description means that the applicant, in the
specification, must ‘convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the [claimed]
invention.’” Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1379
(Fed. Cir. 2009) (reh’g. en banc denied Sep. 18, 2009) (citation omitted).
“[W]hen a party challenges written description support for an
interference count or the copied claim in an interference, the originating
disclosure provides the meaning of the pertinent claim language.”
Robertson v. Timmermans, 603 F.3d 1309, 1312 (Fed. Cir. 2010) (citations
omitted). “[In] an interference in which claims copied from one party’s
patent into the other party’s application [are] the subject of a motion for
invalidity based on prior art[,] . . . the claims should be interpreted in light of
their host disclosure, just as they would during ex parte prosecution.” Id.

THE 112, ¶ 1 REJECTION
All of the appealed claims are directed to either a method or an
apparatus for selectively severing, or removing target material from,
electrically conductive links in an integrated circuit such as those disposed
on a semiconductor substrate. Each of the claims requires, inter alia, that
this severing or material removal be carried out by applying at least two
laser pulses to an individual link.
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The Examiner finds that Appellant’s Specification does not provide
adequate written description of the claimed subject matter because the
Specification does not support sequentially striking a link with “a set of two
or more time-displaced laser output pulses” as recited in the claims (e.g.,
Supp. Ans. 2). Further, the Examiner finds that the Specification does “not
explicitly or implicitly convey the idea of using multiple pulses to process a
link on the fly” (Ans. 35). The Examiner instead finds that the Specification
discloses the concept of directing a chain of laser pulses to a semiconductor
chip that contains a plurality of links, such “that each pulse hits a different
link while to [sic] chip scans across the path of the beam” (Ans. 36). The
Examiner further finds that the Specification’s disclosed double pulses, as
depicted in Appellant’s Figures 3a, are not separate pulses that are applied to
a link, but are instead pulses emitted from Appellant’s seed laser (see Fig. 5)
for the purpose of producing a specially shaping single laser pulse (Fig. 3b)
within the laser amplifier (see Fig. 5), and that it is the latter, single flat-top
shaped laser pulse that is applied to a given link (e.g., Ans. 34-35).
In short, the Examiner’s 112, 1st paragraph rejection of the claims is
based, at least in part, upon the position that the copied claims must be
interpreted as requiring that two or more separate and distinct pulses arrive
at the link sequentially, and that it is not sufficient if two pulses from the
seed laser (see Fig. 3a) are combined (such as depicted by Fig. 3b) and
directed to the link as a single shaped pulse (Supp. Ans. 2-6). We disagree
with this interpretation of the claims.
For the purpose of determining whether Appellant’s Specification
provides adequate written description, we look to the meaning of the
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pertinent claim language as set forth in Sun’s originating disclosures. See
Robertson, 603 F.3d at 1312. Sun ‘053 discloses, for example:
A set (50) of laser pulses (52) is employed to sever a
conductive link (22) in a memory or other IC chip. The
duration of the set (50) is preferably shorter than 1,000 ns; and
the pulse width of each laser pulse (52) within the set (50) is
preferably within a range of about 0.1 ps to 30 ns. The set (50)
can be treated as a single “pulse” by conventional laser
positioning systems (62) to perform on-the-fly link removal
without stopping whenever the laser system (60) fires a set (50)
of laser pulses (52) at each link (22).
(Abst.). In the embodiment of Sun’s Figure 3, “each laser pulse 52a can be
generated with the same energy density to provide a pulse set 50a with a
consistent ‘flat-top’ energy density profile” ([0042]). Further, Sun’s “FIG. 8
shows a schematic diagram of another simplified alternative configuration of
a laser system 110 for [sic] that employs an amplifier 112” ([0051]).
Interpreting the copied claim language of the present application in
accordance with Sun’s disclosure thus indicates that the individual laser
pulses emitted by Appellant’s seed laser may read on “a set of two or more5
time-displaced laser output pulses” (e.g., claim 174). This is so even if these
pulses are subsequently amplified and combined so as to form a specially-

5 Figures 3a and 3b of the present application depict only two short pulses
that are combined to produce a desired pulse shape. However, Appellant’s
Specification is not limited to two-component pulses. Rather, the written
portion of the Specification states “it is possible to generate a series of
closely-spaced, short pulses which, when combined, produce a desired pulse
shape as illustrated in Figures 3a and 3b” (Spec. 20) (emphasis added). The
Examiner has not alleged that “a series” must be interpreted narrowly as
being limited to only two-component pulses. As such, we understand the
Specification as disclosing two or more time displaced laser pulses.
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shaped flat-top pulse that strikes a link in the form of a single pulse (see
FIGs. 5 and 3b).
To summarize, the Examiner’s finding that the appealed claims lack
adequate written description is based upon an improper interpretation of the
claim language. Furthermore, a review of Sun ‘053 indicates that the
improper interpretation was unduly narrow. Because the Examiner has not
analyzed the claims according to an appropriate interpretation of the claims’
various terms, the Examiner has not established that Appellant’s
Specification lacks adequate written description. Accordingly, we will not
sustain the 112, 1st paragraph rejection of claims 174-294, 296, 297, 299,
300, 302, 304-314, 316-319, and 321-325.

THE 102 REJECTIONS
Each of the pending claims further sets forth either a method or
apparatus with one of the two following steps or functionalities: (1)
continuous movement of the laser beam relative to the link structure,6 or (2)
sequentially directing the at least two laser pulses to the conductive link “on-
the-fly.”7 We understand Appellant to be interpreting these two alternative
claim requirements of continuous relative movement and on-the-fly
processing as being synonymous. See, e.g., Reply Br. 5-28 (using the two

6 See, e.g., claim 174 (reciting “coordinating laser output pulse generation
and the relative movement imparted by the beam positioner such that the
relative movement is continuous while the laser output pulses in the set
sequentially strike the selected link structure so that the [laser pulse] . . . in
the set severs the electrically conductive link”).
7 See, e.g., claim 273 (reciting “sequentially directing on-the-fly, based on
the position data, the first and second laser pulses to a selected conductive
link to sever the selected conductive link”).
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terms synonymously in arguing why Appellant’s Specification contains
adequate written description of the claimed subject matter). More
specifically, Appellant cites paragraph (32) of the Declaration Under 37
C.F.R. § 1.132 of Donald Smart (filed December 28, 2006) as evidence that
one of ordinary skill in the art at the time of the invention would have
understood that “on-the-fly” in the present context “refers to moving with
continuous motion across links to be processed” (App. Br. 60). Appellant
distinguishes “on-the-fly” processing from “step-and-repeat processing”
wherein “a link structure [is subjected] to laser exposure under a stationary
condition” (id.).
On-The-Fly Processing
The Examiner does not dispute that North and Batdorf [the cited prior
art references] fail to disclose moving a laser across links to be processed
with continuous relative motion (Ans. 13, 18). The Examiner instead
reasons, with respect to claims 272, 273, 287, 288, 305-308, 324, and 325,
that since “Appellant has not specifically defined the phrase ‘on-the-fly[,]’ it
can be considered that the laser pulses of North are directed to the link ‘on-
the-fly’ since they are directed to the link one after the other, without
making any adjustments in between the pulses” (id.). The Examiner takes
the same position with respect to the rejection of claims 272-274, 287, 288,
307, 308, and 325 based upon Batdorf (Ans. 18-19).
To decide whether the anticipation rejections are proper, we apply a
different standard for interpreting the meaning of the claim language than
the standard we employed for the 112, 1st paragraph rejection, supra.
Instead of looking to the originating disclosure of Sun, we now interpret the
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claims in light of Appellant’s disclosure as we would with any ex parte
examination. See Robertson, 603 F.3d at 1312.
The first issue with respect to the anticipation rejections is whether the
Examiner’s broader definition of “on-the-fly processing” is reasonable. We
find that it is not.
The Examiner is correct that the Specification does not expressly
define “on-the-fly processing.” Nonetheless, Appellant’s Specification does
state, for example, that “timing . . . the laser pulse to correlate with the
relative positions of the target and optical system is important because of the
continuous motion required in order to obtain high processing speeds”
(Spec. 22); “overcoming [a specified prior art limitation] would presently
require the ultrafast laser system to produce multiple pulses for processing
each target site which would slow the laser processing rate to an
unacceptable level” (Spec. 6); and “it can also be advantageous to operate
the laser at pulse repetition rates exceeding the material processing rate and
utilize a computer controlled optical switch to select processing pulses, the
computer being operatively connected to a beam position system used to
position a focused laser beam for material processing” (Spec. 20). Read as a
whole, Appellant’s Specification supports Appellant’s narrower definition –
not the Examiner’s broader one.
Extrinsic evidence also supports Appellant’s contention that one of
ordinary skill in the art would understand “on-the-fly processing” to be
limited to Appellant’s narrower interpretation requiring continuous relative
motion, as opposed to also reading on a process where the laser position is
stopped at each link so long as no calibration is carried out during the
processing. Specifically, the Declaration of Donald Smart, supra, supports
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Appellant’s interpretation. So does Sun ‘053 (Abst. (“[t]he set (50) [of laser
pulses] can be treated as a single ‘pulse’ by conventional laser position
systems (62) to perform on-the-fly link removal without stopping whenever
the laser system (60) fires a set (50) of laser pulses (52) at each link (22)”)).
In contrast, the Examiner has not cited any authority supporting the
conclusion that the broader interpretation is a reasonable one.
With respect to the laser system, or apparatus, which are disclosed in
claims 305, 306, and 322-324, the Examiner additionally concludes that “the
limitation ‘directing on-the-fly laser pulses to a selected conductive link’ is
merely a recitation of intended use that does not structurally distinguish the
claimed invention over the prior art” (Ans. 13, 17). Claim 305 is illustrative
of such a laser system claim:
305. A laser system for severing a conductive link in an
integrated circuit (IC), comprising:
a laser source operable to generate at least two laser
pulses, the laser pulses including a first laser pulse and a second
laser pulse; and
a beam positioning system operable to utilize position
data representative of locations of one or more conductive links
and to coordinate directing on-the-fly the laser pulses to a
selected conductive link, wherein the first and second laser
pulses are sequentially directed to the selected conductive link,
at least one of the first and second laser pulses removes a
portion of link material, and the laser pulses sever the selected
conductive link.
(emphasis added).
We disagree with the Examiner that the wherein clause of the claim
305’s last limitation is merely an intended use. We instead understand the
wherein clause to be describing further conditions under which the beam
positioning system is operable to perform the recited functions of utilizing
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the position data and coordinating directing on-the-fly laser pulses to a
selected link.
For these reasons, then, we do not sustain the anticipation rejection of
claims 272, 273, 287, 288, 305-308, 322-325 over North. We likewise do
not sustain the anticipation rejection of claims 272-274, 287, 288, 307, 308,
and 325 based upon Batdorf.
Continuous relative movement
With respect to claims 281, 284, 290, 293, 294, 300, 302, 304, 318,
319, and 321, the Examiner finds that “[t]he limitation ‘wherein the selected
conductive link and the beam are in relative movement while the laser pulses
are directed to the selected conductive link’ is merely a recitation of
intended use that does not structurally distinguish the claimed invention over
the prior art” (Ans. 14). The Examiner more specifically reasons that “[t]he
beam positioning system of North is capable of causing relative movement
between the beam and the link while the pulses are applied. An extremely
slow movement would still allow both pulses to be applied to the link” (id.).
The Examiner also adopts this position with respect to claims 282 and 291
(Ans. 15); claims 283 and 292 (Ans. 16); and claim 296 (Ans. 17).
However, the Examiner has not pointed to any factual basis to support
either (1) the conclusion that North is capable of relative movement while
the pulses are applied, or (2) the conclusion that the components of the beam
positioning system are capable of achieving the alleged “extremely slow”
relative movement. Because a factual basis to support these assumptions is
absent, we do not sustain the anticipation rejection of claims 281-284, 290-
294, 296, 300, 302, 304, 318, 319, and 321 that is based upon North.
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DECISION
We do not sustain the Examiner’s rejections with respect to all
pending claims on appeal. Therefore, the Examiner’s decision rejecting
claims 174-294, 296, 297, 299, 300, 302, 304-314, 316-319, and 321-325 is
reversed.
REVERSED

nlk

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