Ex Parte Smith

Patent Trial and Appeal Board

Nov 29, 2017

13766598 (P.T.A.B. Nov. 29, 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.
13/766,598 02/13/2013 Nigel P. Smith NAN281 US 1094
34036 7590 11/29/2017
Silicon Valley Patent Group LLP
4010 Moorpark Avenue
Suite 210
San Jose, CA 95117
EXAMINER
AKANBI, ISIAKA O
ART UNIT PAPER NUMBER
2886
MAIL DATE DELIVERY MODE
11/29/2017 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 NIGEL P. SMITH
(Applicant: NANOMETRICS INCORPORATED)1
____________

Appeal 2016-007720
Application 13/766,598
Technology Center 2800
____________

Before PETER F. KRATZ, ROMULO H. DELMENDO, and
SHELDON M. McGEE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s decision to reject claims 1–39.2 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

1 The Assignee, Nanometrics Incorporated, is identified as the applicant
(hereinafter “Appellant”) and the real party in interest (Application Data
Sheet filed February 13, 2013; Appeal Brief filed November 24, 2015,
hereinafter “Appeal Br.,” 3).
2 Appeal Br. 8–13; Reply Brief filed August 4, 2016, hereinafter “Reply
Br.,” 3–15; Non-Final Office Action entered June 4, 2015, hereinafter “Non-
Final Act.,” 3–18; Examiner’s Answer entered June 7, 2016, hereinafter
“Ans.,” 2–11.
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Application 13/766,598

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I. BACKGROUND
The subject matter on appeal relates generally to image-based overlay
measurement, which is used in semiconductor processing for forming
integrated circuits (Specification filed February 13, 2013, hereinafter
“Spec.,” ¶¶ 2–3). According to the inventor, an image-based overlay
measurement is performed using an overlay target that includes shifted
overlying grating patterns, wherein each grating consists of two or more
lines (id. ¶ 6).
Representative claim 1 is reproduced from page 14 of the Claims
Appendix to the Appeal Brief, with key limitations emphasized, as follows:
1. A method of measuring an overlay error in a
structure having an overlay target, the method comprising:
imaging the overlay target with an image based metrology
device, the overlay target having a first top grating and a first
bottom grating with lines of a same length, wherein a nominal
position of the first top grating with respect to the first bottom
grating is the first top grating overlies the first bottom grating and
is shifted with respect to the first bottom grating, wherein lines
in the first top grating and the first bottom grating are resolved
in an image of the overlay target produced by the image based
metrology device;
measuring an asymmetry in an image of the overlay target;
and
using the asymmetry to determine the overlay error in the
structure.

II. REJECTION ON APPEAL
Claims 1–39 stand rejected under pre-AIA 35 U.S.C. § 102(b) as
anticipated by Sezginer et al. (hereinafter “Sezginer,” US 2005/0012928 A1,
published January 20, 2005) (Ans. 2–11; Non-Final Act. 3–18).

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III. DISCUSSION
The Appellant relies on the same arguments for all claims on appeal
(Appeal Br. 8–13). Therefore, we confine our discussion to claim 1, which
we select as representative pursuant to 37 C.F.R. § 41.37(c)(1)(iv). As
provided by this rule, claims 2–39 stand or fall with claim 1. In addition,
arguments in the Reply Brief that should have been made in the Appeal
Brief will not be considered absent a showing of good cause. See 37 C.F.R.
§ 41.41(b)(2).
The Examiner finds that Sezginer describes every limitation recited in
claim 1, including the disputed limitations highlighted in reproduced claim 1
above (Non-Final Act. 3–4). Regarding the limitation that the “lines in the
first top grating and the first bottom grating are resolved” (claim 1), the
Examiner explains that Sezginer’s figures (e.g., Figs. 1B, 2B, and 5B) show
these limitations (Non-Final Act. 3–4; Ans. 7). Moreover, the Examiner
finds that Sezginer explicitly describes the grating stacks as being resolved
(id.) (citing Sezginer, ¶ 36 and Figs. 8–13).
The Appellant contends that Sezginer describes an “imaging
spectrometer” (citing Sezginer ¶ 75)—not an “image based metrology
device,” as recited in claim 1 (Appeal Br. 9). In addition, the Appellant
argues that “Sezginer is explicitly clear that the ‘imaging spectrometer’ does
not resolve the lines, i.e., ‘unit cells,’ of the grating” (id.). According to the
Appellant, Sezginer distinguishes the described method over previous
image-based methods by touting certain advantages—i.e., “mak[ing] the
measurement immune to lens aberrations, vibration, and focus dependency
that complicates imaging-based prior art” (id.) (quoting Sezginer ¶ 36). The
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Appellant argues that the Examiner’s findings to the contrary are based on
factual errors and a misreading of the disputed claim limitations (id. at 10).
The Appellant’s arguments fail to identify any reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
During examination, “the PTO must give claims their broadest
reasonable construction consistent with the specification.” In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s
applicants may amend claims to narrow their scope, a broad construction
during prosecution creates no unfairness to the applicant or patentee.” Id.
Applying the broadest reasonable interpretation rule to the disputed
claim limitations, in particular “lines in the first top grating and the first
bottom grating are resolved” (claim 1), we are in complete agreement with
the Examiner’s analysis (see, e.g., Ans. 7–8). Specifically, the inventor
defines a “grating” as consisting of two or more “lines” (Spec. ¶ 6).
Although the Appellant is correct that Sezginer states “resolving the grating
lines is to be avoided” (¶ 83), the reference explicitly discloses that the
grating stacks are, in fact, resolved (id.; see also ¶ 36). Given the explicit
disclosure in Sezginer that the grating stacks are resolved, a person having
ordinary skill in the art would have drawn a reasonable inference that the
lines constituting the gratings are also resolved to some extent.3 In this
regard, claim 1 does not specify a particular degree of resolution and,
therefore, resolving to any degree meets the disputed claim limitation. A

3 In re Preda, 401 F.2d 825, 826 (CCPA 1968) (In determining whether a
reference anticipates the subject matter recited in a claim, “it is proper to
take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.”).
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mere desire or goal expressed as “resolving the grating lines is to be
avoided” does not necessarily mean that some resolution does not occur.
Moreover, it appears that Sezginer avoids resolving the lines to provide
certain advantages over other disclosed imaging-based prior art (¶¶ 29–36),
and, therefore, a person having ordinary skill in the art would have also
drawn a reasonable inference that the image-based prior art discussed in
Sezginer would resolve the grating lines as required by claim 1. Cf. In re
Boe, 355 F.2d 961, 965 (CCPA 1966) (all of the disclosures in a reference,
including non-preferred embodiments, “must be evaluated for what they
fairly teach one of ordinary skill in the art”).
We discern no merit in the Appellant’s naked assertion that Sezginer
does not describe an image based metrology device. As the Examiner finds,
(Ans. 4), Sezginer discloses image-based methods. Mere lawyer’s
arguments or conclusory statements, which are unsupported by concrete
factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997).
For these reasons, and those given by the Examiner, we uphold the
Examiner’s rejection.

IV. SUMMARY
The Examiner’s rejection of claims 1–39 under 35 U.S.C. § 102(b) as
anticipated by Sezginer is sustained. Therefore, the Examiner’s decision to
reject claims 1–39 is 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)(1).

AFFIRMED