Ex Parte Straw et alDownload PDFPatent Trials and Appeals BoardMay 31, 201913003513 - (D) (P.T.A.B. May. 31, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/003,513 04/29/2011 Marcus Straw 121028 7590 06/04/2019 Scheinberg & Associates, PC PO BOX 164140 Austin, TX 78716-4140 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. F671AUS 9142 EXAMINER CALVETTI, FREDERICK F ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 06/04/2019 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): patents@scheinbergip.com eofficeaction@appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARCUS STRAW, DAVID H. NARUM, MILOS TOTH, MARK UTLAUT, GUIDO KNIPPELS, and GERARDUS NICOLAAS VAN VEEN Appeal 2018-002140 Application 13/003,513 Technology Center 3700 Before: PHILLIP J. KAUFFMAN, JEREMY M. PLENZLER, and ALYSSA A. FINAMORE, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2018-002140 Application 13/003,513 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner's decision to reject claims 76, 77, 79-82, 84-93, 95, 96, 100, and 101. Final Act. 2-17. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. CLAIMED SUBJECT MATTER Appellants' claimed invention relates to the control of micromachining processes. Spec. ,-Jl O 10. According to the Specification, lasers may be used to remove material from a substrate to form microscopic or nanoscopic structures ( micro machine a substrate) at a rate faster than that obtainable using charged particle beams; but charged particle beams have greater resolution. Spec. ,-Jl 006. Sequential processing, using a laser beam followed by a charged particle beam, offers advantages of both. Spec. ,-Jl 007. "A problem with sequential processing is determining when to stop the faster, less precise laser micromachining and begin the more precise charged particle beam processing." Id. Claims 76 and 89 are independent, and claim 76, reproduced below, is illustrative of the claimed subject matter: 7 6. A method in a charged particle beam system of producing or modifying a structure by laser beam processing and charged particle beam processing, comprising: providing a charged particle beam system including a vacuum chamber, a charged particle beam column, and a laser, in which at least a portion of the charged particle beam column 2 Appeal 2018-002140 Application 13/003,513 is disposed within the vacuum chamber and at least a portion of the laser is disposed within the vacuum chamber; directing, from the laser, a laser beam toward a sample; producing or modifying a structure on the sample by means of laser ablation using the laser beam; detecting emissions from the sample, the emissions being caused by the laser ablation of at least a portion of the sample by the laser beam, in which detecting emissions from the sample comprises detecting electrons, ions, neutral atoms or molecules, particles, or droplets emitted from the sample due to the laser ablation of the sample; determining a property of the emissions, the property being characteristic of the sample; and discontinuing the laser beam processing when the emissions indicate a change in the material upon which the laser beam is incident; in response to discontinuing the laser beam processing, processing the sample with a charged particle beam of the charged particle beam system to expose a feature of interest in the sample; and in which the sample is not removed from the vacuum chamber between the steps of producing or modifying a structure on the sample by means of laser ablation using the laser beam and processing the sample with a charged particle beam of the charged particle beam system to expose a feature of interest in the sample. 3 Appeal 2018-002140 Application 13/003,513 REJECTIONS I. Claims 76, 77, 79, 80, 89-93, 95, 96, 100, and 101 are rejected under 35 U.S.C. § 103(a) over Blumenfeld, Satoshi or Steigerwald, Gupta, and Van W eel den or Williams. 1 Final Act. 2-15. II. Claims 81, 82, 84, 85, 87, and 88 are rejected under 35 U.S.C. § 103(a) over Blumenfeld, Satoshi or Steigerwald, Gupta, Van Weelden or Williams, Alberici, Ward, Kato, and Shachal.2 Final Act. 15-16. II. Claim 86 is rejected under 35 U.S.C. § 103(a) over Blumenfeld, Satoshi or Steigerwald, Gupta, Van Weelden or Williams, and Engelsberg. 3 Final Act. 16-17. 1 Blumenfeld (US 2005/00671779 Al; pub. Mar. 24, 2005), Satoshi (JP 01- 304648; pub. Aug. 12, 1989), Steigerwald (US 3,303,319; iss. Feb. 7, 1967), Gupta (US 2007/0296967 Al; pub. Dec. 27, 2007), Van Weelden (WO 02/29853 A2; pub. Apr. 11, 2002), and Williams (EP O 544 398 Al; pub. June 2, 1993). The Examiner cites an English language abstract, prepared by the European Patent Office, ofKohei (JP 03-38833; pub. Feb. 19, 1991). Ans. 18, 20. The Examiner cannot rely on Kohei in the Answer without identifying its use as a new ground of rejection. Manual of Patent Examining Procedure § 1207.03(III) (rev. 8, 2017). We do not discuss Kohei further in this opinion. Should there be further prosecution of this application, the Examiner is free to consider the effect, if any, of the teachings of Kohei on the patentability of the claims. 2 Alberici (US 2007/0210249 Al; pub. Sept. 13, 2007), Ward (US 4,874,947; iss. Oct. 17, 1989), Kato (US 7,022,981 B2; iss. Apr. 4, 2006), and Shachal (US 6,627,886 B 1; iss. Sept. 30, 2003). 3 Engelsberg (US 5,024,968; iss. June 18, 1991). 4 Appeal 2018-002140 Application 13/003,513 ANALYSIS I. Obviousness of Claims 76, 77, 79---80, 89, 90---93, 95, 96, 100, and 1 OJ over Blumenfeld; Satoshi or Steigerwald; Gupta; and Van Weelden or Williams Independent claim 7 6 recites a method including the step of "providing a charged particle system." In addition, the method recited in claim 7 6 includes the steps of: directing, from the laser, a laser beam toward a sample; producing or modifying a structure on the sample by means of laser ablation using the laser beam; ... discontinuing the laser beam processing when . . . emissions indicate a change in the material upon which the laser beam is incident; [ and,] in response to discontinuing the laser beam processing, processing the sample with a charged particle beam of the charged particle beam system to expose a feature of interest in the sample. The latter steps limit the method to require sequential processing of a sample with a laser beam and a charged particle beam. Appeal Br. 11. Although the term "processing" is not explicitly defined in the Specification, the recitation that the laser beam performs laser ablation, and the recitation that the charged particle beam "expos[es] a feature of interest in the sample," implies that "processing" includes removal of material. Reply Br. 2. Independent claim 89 likewise recites a method including "providing a charged particle system inclufing a vaccum chamber." In addition, claim 89 recites: directing [a] laser beam toward a sample in the vacuum chamber; producing or modifying a structure on the sample by means of laser ablation using the laser beam; ... discontinuing the laser 5 Appeal 2018-002140 Application 13/003,513 beam processing when ... emissions caused by incidence of [a] charged particle beam indicate a change in the material upon which the laser beam is incident; [ and,] in response to discontinuing the laser beam processing, processing the sample with the charged particle beam to expose a feature of interest in the sample. These steps likewise limit the method to require sequential processing of the sample using a laser beam and a charged particle beam. The Examiner finds that Blumfield teaches sequential processing of the sample using a laser beam and a charged particle beam. Final Act. 3-4 (citing Blumenfeld's sampling aperture 23 as described in iJ36 (sixth embodiment), iJ37 (seventh embodiment)). We disagree with this finding, because, as detailed below, Blumenfeld does not disclose processing of a sample with a charged particle beam. Blumenfeld describes a method for "real-time sampling of ablation plasma spectra, extraction of characteristic spectral feature signals, and control of ablation depth by use of these signals as process feedback." Blumenfeld iJl 1. In the sixth embodiment, electromagnet 19 deflects positively charged particles in the ablation plume raised by the laser ablation toward sampling aperture 23 of an instrument such as a photometer, a spectrometer, a densitometer, or a mass analyzer. Blumenfeld iJiJ8, 36; Fig. 8. In the seventh embodiment, electrode ring 8 draws positively charged particles in the ablation plume past sampling aperture 23 of a device for detecting a plasma emission spectrum of the ablated material. Blumenthal iJiJ9, 37. 6 Appeal 2018-002140 Application 13/003,513 Neither embodiment described by Blumenfeld uses a charged particle beam to process the sample or workpiece as required by independent claims 76 and 89. Appeal Br. 12-13. Rather, Blumenfeld discloses that positively charged particles from the laser ablation plume are deflected into sampling aperture 23. Therefore, Blumenfeld fails to teach "providing a charged particle beam system," as recited in claim 76 and claim 89. Furthermore, because Blumenfeld fails to describe the use of a charged particle beam to process a material, it fails to describe sequential processing of the sample using a laser beam and a charged particle beam. The Examiner does not rely on Gupta, Van W eelden, or Williams to remedy this shortcoming in Blumenfeld. See Ans. 4-5 (relying on Gupta for the disclosure that laser and particle beam emissions are unique), 6 (finding that "Williams teaches 'in response to discontinuing the laser beam processing, processing the sample with a charged particle beam of the charged particle beam system to expose a feature of interest in the sample."'), 20 ( explaining that "Van Weelden is not used for teaching a charged particle beam"); see also Appeal Br. 15 ( arguing these references do not remedy the defiecnecy of Blumenfeld). The Examiner turns to Satoshi and Steigerwald to remedy Blumenfeld' s failure to teach charged particle beam processing. Ans. 18 (finding that the "remaining applied references expressly teach the combination with a charged particle beam to be old in the art."). The Examiner concludes that it would have been obvious to "modify the beam 7 Appeal 2018-002140 Application 13/003,513 source of Blumenfeld, if necessary, by substituting the beam source with the ion beam system of Satoshi or Steigerwald." Ans. 7, 20. This conclusion is faulty because, as explained above, Blumenfeld does not disclose a charged particle beam system or processing a sample with a charged particle beam. That is, there is no charged particle beam in Blumfeld that Satoshi's or Steigerwald's beam may be substituted for. In light of this, Appellant has shown that the claims at issue would not have been obvious as asserted by the Examiner. II. Obviousness of Claims 81, 82, 84, 85, 87, and 88 over Blumenfeld; Satoshi or Steigerwald; Gupta; Van Weelden or Williams; Alberici; Ward; Kato; and Shachal Each of claims 81, 82, 84, and 85 ultimately depends from claim 7 6. The stated bases for the rejections of those claims do not cure the underlying deficiency in the rejection of claim 76. III. Obviousness of Claims 86 over Blumenfeld; Satoshi or Steigerwald; Gupta; Van Weelden or Williams; and Engelsberg Claim 86 depends from claim 76, and the stated basis for the rejection of claim 86 does not cure the underlying deficiency in the rejection of claim 76. 8 Appeal 2018-002140 Application 13/003,513 DECISION I. We reverse the Examiner's decision rejecting claims 76, 77, 79, 80, 89-93, 95, 96, 100, and 101 under 35 U.S.C. § 103(a) over Blumenfeld, Satoshi or Steigerwald, Gupta, and Van Weelden or Williams. II. We reverse the Examiner's decision rejecting claims 81, 82, 84, 85, 87, and 88 under 35 U.S.C. § 103(a) over Blumenfeld, Satoshi or Steigerwald, Gupta, Van Weelden or Williams, Alberici, Ward, Kato, and Shachal. III. We reverse the Examiner's decision rejecting claim 86 under 35 U.S.C. § 103(a) over Blumenfeld, Satoshi or Steigerwald, Gupta, Van W eelden or Williams, and Engelsberg. REVERSED 9 Copy with citationCopy as parenthetical citation