Ex Parte Yaguchi et al

Patent Trial and Appeal Board

Aug 25, 2016

11976240 (P.T.A.B. Aug. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111976,240 10/23/2007
20277 7590 08/29/2016
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
FIRST NAMED INVENTOR
Toshie Yaguchi
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.
062807-0477 9166
EXAMINER
PURINTON, BROOKE J
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
08/29/2016 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):
ipdocketmwe@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHIE Y AGUCHI, TAKEO KAMINO, and
TAKAHITO HASHIMOT0 1
Appeal2013-004088
Application 11/97 6,240
Technology Center 2800
Before CHUNG K. PAK, TERRY J. OWENS, and JENNIFER R. GUPTA,
Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision2 finally rejecting claims 1-23, which are all of the claims
pending in the above-identified application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 The real party in interest is said to be Hitachi High-Technologies Corporation.
Appeal Brief filed September 10, 2012 ("App. Br.") at 1.
2 Final Action entered February 8, 2012 ("Final Act.") at 3-13 and the Examiner's
Answer entered October 24, 2012 ("Ans.") at 3-6.
Appeal2013-004088
Application 11/97 6,240
STATEMENT OF THE CASE
The subject matter on appeal is directed to "a charged particle beam system
usable for observing a reaction process of the specimen surrounded by an
environmental gas or very small volume, and the specimen holder for such
system." Spec. 1, 11. 2-9. Figures 1 and 2B, which are illustrative of such charged
particle beam system and such specimen holder, are reproduced below:
FIG. 1
FIG.2B
Figures 1 and 2B show "a partially cross sectional view of a basic structure of a
charge particle beam [system]" and "an enlarged oblique projection view showing
a specimen holder for the charged particle beam [system,]" respectively as
embodiments of the invention. Spec. 7, 1. 24-8, 1. 5. In Figure 1, the charge
particle beam system includes electron gun 2, condenser lens 3, objective lens 4,
projective lens 5, specimen holder 6 for specimen 11 arranged between condenser
lens 3 and objective lens 4, fluorescent screen 7 arranged below projective lens 5,
TV camera 8 arranged under fluorescent screen 7 and connected to image display
10 through signal amplifier 9, and gas supply pipe 12 for delivering gas to
specimen 11 connected to gas container 15 through valves 13a and 13b and flow
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Application 11/97 6,240
meters 14a and 14b. Spec. 9, I. 24-10, I. 22. In Figure 2B, gas supply pipe 12 has
two gas spout openings 1 7 a and 1 7b arranged to oppose to each other through
specimen 11, with the rates of gas flow being adjusted by valves 13a and 13b and
flowmeters 14a and 14b. Spec. 11, 11. 14-26.
Details of the appealed subject matter are recited in illustrative claims 1, 2,
and 17, which are reproduced below from the Claims Appendix of the Appeal
Brief:
1. A charged particle beam system for observing a specimen in
a gas, compnsmg:
an electron beam source for generating a primary electron
beam;
an electron beam controller for converging the primary electron
beam to be applied to the specimen;
a chassis for keeping a vacuun condition in a region through
which the primary electron beam passes;
a specimen holder at least partially supported by the chassis to
hold the specimen thereon so that the primary electron beam passes
through a front surface area of the specimen and a back surface area
of the specimen opposite to the front surface area in a direction of the
primary electron beam;
a gas supplier at least partially supported by the chassis to
supply the gas to the specimen;
a gas supply pipe attached to the gas supplier;
a first gas spout opening attached to the gas supply pipe for
discharging a gas of low flow rate toward the specimen in a first
direction perpendicular to the direction of the primary electron beam;
and
a second gas spout opening attached to the gas supply pipe for
discharging the gas of low flow rate toward the specimen in a second
direction perpendicular to the direction of the primary electron beam
and opposite to the first direction,
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Appeal2013-004088
Application 11/97 6,240
wherein the specimen holder is capable of holding the specimen
in between the first and second gas spout openings in the first and
second directions to supply the gas supplied from the gas supplier to
both of the front surface area and the back surface area of the
specimen from each of the first and second gas spout openings.
2. A charged particle beam system for observing a specimen in
a gas, compnsmg:
an electron beam source for generating a primary electron
beam;
an electron beam controller for converging the primary electron
beam to be applied to the specimen;
a chassis for keeping a predetermined vacuum condition in a
region through which the primary electron beam passes;
a specimen holder at least partially supported by the chassis to
hold the specimen thereon so that the primary electron beam passes
through a front surface area of the specimen and a back surface area
of the specimen opposite to the front surface area in a direction of the
primary electron beam;
a gas supplier at least partially supported by the chassis to
supply the gas to the specimen;
a gas supply pipe attached to the gas supplier;
a first gas spout opening attached to the gas supply pipe for
discharging the gas toward the specimen along a first direction
perpendicular to the direction of the primary electron beam while a
flow rate of the gas discharged from the first gas spout opening is
sufficiently low for satisfj;ing the predetermined vacuum condition;
and
a second gas spout opening attached to the gas supply pipe for
discharging the gas toward the specimen in a second direction
perpendicular to the direction of the primary electron beam and
opposite to the first direction while a flow rate of the gas discharged
from the second gas spout opening is sufficiently low for satisfying the
predetermined vacuum condition, wherein:
the specimen holder is capable of holding the specimen in
between the first and second gas spout openings in the first and
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Application 11/97 6,240
second directions so that the gas supplied from the gas supplier is
supplied to both of the front and back surface areas from each of the
first and second gas spout openings.
17. A specimen holder for a charged particle beam device
compnsmg:
an electron beam source for generating a primary electron
beam;
an electron beam controller for converging the primary electron
beam to be applied to the specimen;
a chassis for keeping a predetermined vacuum condition in a
region through which the primary electron beam passes; and
a gas supplier at least partially supported by the chassis to
supply the gas to the specimen, the gas supplier further comprising:
a gas supply pipe attached to the gas supplier;
a first gas spout opening attached to the gas supply pipe for
discharging the gas supplied from the gas supplier along a first
direction perpendicular to a direction of the primary electron beam
while a flow rate of the gas discharged from the first gas spout
opening is sufficiently low for satisfj;ing the predetermined vacuum
condition; and
a second gas spout opening attached to the gas supply pipe for
discharging the gas in a second direction perpendicular to the
direction of the primary electron beam and opposite to the first
direction while a flow rate of the gas discharged from the second gas
spout opening is sufficiently low for satisfj;ing the predetemined
vacuum condition,
wherein the specimen holder is arranged to hold the specimen
thereon so that the primary electron beam passes through a front
surface area of the specimen and a back surface area of the specimen
opposite to the front surface area in the direction of the primary
electron beam, and to hold the specimen in between the first and
second gas spout openings in the first and second directions so that the
gas supplied from the gas supplier is supplied to both of the front and
back surface areas from each of the first and second gas spout
opemngs.
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Appeal2013-004088
Application 11/97 6,240
App. Br. 17 (disputed limitations in italicized form).
The Examiner has maintained the following grounds of rejection:
1. Claims 1-11, 13, 14, 17-19,and20under35U.S.C. § 103(a)as
unpatentable over the combined teachings ofYaguchi3 (JP 2005-190864 A
published July 14, 2005), Izumi (US 2004/0040177 Al published March 4, 2004),
and Winkler (US 2002/0053638 Al published May 9, 2002); 4
2. Claims 12 and 21under35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Y aguchi, Izumi, Winkler, and the admitted prior art
(Appellants' admission at page 2, lines 20-24, of the Specification);
3. Claim 15 under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings ofYaguchi, Izumi, Winkler, and Chao (US 7,476,871 B2 issued
January 13, 2009);
4. Claims 16 and 22 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Yaguchi, Izumi, Winkler, and Okura (US 2003/0155525 Al
published August 21, 2003); and
5. Claim 23 under 35 U.S.C. § 103(a) as unpatentable over the combined
teachings of Yaguchi, Izumi, Winkler, and Shaapur ( 6, 188,068 B 1 issued
February 13, 2001). Final Act. 3-12 and Ans. 2-5.
DISCUSSION
Upon consideration of the evidence on this appeal record in light of the
3 Our reference to Yaguchi (JP 2005-190864 A) is to the English machine
translation of record relied upon by the Examiner. Final Act. 3.
4 Although the Examiner provided this rejection under the heading "Claim
Rejections-35 U.S.C. §103" and rejected claim 19 in the body of the rejection, the
Examiner inadvertently used a wrong statute (35 U.S.C. §102(b)) relating to
anticipation and did not include claim 19 in his or her statement of rejection for
obviousness. Final Act. 3, 10. Appellants recognize that the Examiner's rejection
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Application 11/97 6,240
respective positions advanced by the Examiner and Appellants, we affirm the
Examiner's§ 103(a) rejections of claims 1-23 for the reasons set forth in the Final
Action and the Answer. 5 We add the following primarily for emphasis and
completeness.
I. Rejection 1
Y aguchi discloses an electron (charged particle) beam system for observing
"the process of the gas reaction in the high temperature of the sample which was
difficult to observe with an atom level, and the sample holder for [such] electron
beam [system.]" Yaguchi i-f 4. Figures 1 and 2 of Yaguchi, which illustrate such
electron beam system, are reproduced below:
In Yaguchi's Figures 1 and 2, like Appellants' Figure 1, the electron beam system
has electron gun 2 for generating electron beam 18, condensing lens 3, object
is based on obviousness and includes claim 19 and argue accordingly. App. Br. 1,
6-8 and Reply Br. 1. Therefore, for purposes of this appeal, we have included the
corrected statute and claim 19 in the statement of rejection as indicated supra.
5 Appellants argue common limitations in claims 1, 2, and 17 and rely upon such
arguments to impart patentability to the subject matter recited in claims 3-16 and
18-23. App. Br. 6-15. Therefore, for purposes of this appeal, we limit our
discussion to claims 1, 2, and 17. 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Application 11/97 6,240
lens 4, projection lens 5, sample holder 6 having heater 11 for sample 13 (not
shown) arranged between condensing lens 3 and object lens 4, fluorescent screen 7
below projection lens 5, TV camera 8 under fluorescent screen 7 and connected to
picture display part 10 via signal amplifier 9, gas introducing pipe 14 "on both
sides of the sample [13 (not shown)]" and connected to gas cylinder 17 via gas
pressure control valves 15a and 15b and rheometers 16a and 16b, and exhaust port
19 connected to vacuum pump 21. Yaguchi i1i17 and 8.
There is no dispute that Y aguchi discloses a charged particle beam system
for observing a specimen (sample) in a gas, comprising an electron beam source,
an electron beam controller (lenses), a chassis for keeping a predetermined vacuum
condition in a region through which an electron beam passes, gas supply pipes
connected to gas suppliers at least partially supported by the chassis to provide first
and second gas supply openings for discharging gas toward a sample (specimen),
and a sample holder, at least partially supported by the chassis, capable of holding
the sample (specimen) in between the first and second gas supplying openings in
the first and second directions to supply the gas on both the front surface and the
back surface areas of the sample from each of the first and second gas supplying
openings, as recited in claims 1, 2, and 17. Compare Final Act. 3-8 with App. Br.
6-15 and Reply Br. 1-4. Nor is there any dispute that one of ordinary skill in the
art would have been led to employ a gas supply pipe attached to two gas spout
openings for discharging gas toward the sample (specimen) from a single gas
source, as taught by Izumi, as the gas supplying means for the charged particle
beam system taught by Yaguchi, with a reasonable expectation of successfully
optimizing the available space through using one gas supply or a limited number of
gas supplies. Compare Final Act. 4, 6, and 8 with App. Br. 6-15 and Reply Br. 1-
4.
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Application 11/97 6,240
Appellants contend that none of the prior art reference teaches or would
have suggested arranging first and second gas spout openings to discharge gas
streams in low flow rates in directions opposite to one another towards a specimen
and perpendicular to the direction of an electron beam, as recited in claims 1, 2,
and 17. App. Br. 6-15. However, this contention is not well taken.
As found by the Examiner and not disputed by Appellants, Y aguchi, in one
embodiment, teaches arranging a gas opening to direct gas toward a sample in a
direction perpendicular to an electron beam. Compare Final Act. 4 with App. Br.
6-15 and Reply Br. 1-4; see, e.g., Yaguchi, Figs. 4 and 5. Although such
embodiment is limited to using a single gas opening to discharge a gas stream
perpendicular to an electron beam and arranging an exhaust port opposite to such
gas opening to remove the discharged gas, Y aguchi also teaches using more than
one gas opening, at least two gas openings opposite to one another, to discharge
gas on both sides of the sample and arranging an exhaust port below the gas
openings to remove such discharged gas. Yaguchi i-f 7 and Fig. 2. Winkler also
teaches using a single gas opening or multiple gas openings on opposite sides in a
charged particle beam system for observing a specimen (sample) in a gas. See
Winkler Figs. 2, 4a, and 4b. These gas openings, according to Yaguchi, can be
used together with gas pressure control valves and rheometers to produce desired
gas flow rates, inclusive of the low flow rates recited in claims 1, 2, and 17.
Compare Yaguchi i-fi-1 7-9 with Spec. 11, 11. 14-26.
Consequently, we find no reversible error in the Examiner's determination
that the collective teachings of Y aguchi, Izumi, and Winkler would have suggested
to one of ordinary skill in the art to arrange either a single gas spout opening or two
gas spout openings capable of discharging gas streams in low flow rates in various
configurations, including a two gas spout opening arrangement that allows gas
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Application 11/97 6,240
streams to flow in directions directly opposite to one another toward a specimen
and perpendicular to the direction of an electron beam, as recited in claims 1, 2,
and 17, with a reasonable expectation of successfully observing the behavior of a
sample in gas. On this record, Appellants do not demonstrate, much less assert,
that the gas opening arrangement recited in claims 1, 2, and 17 imparts unexpected
results relative to the gas opening arrangement (the Figure 4 or 5 gas opening
arrangement) specifically described by Y aguchi, the closest prior art.
Accordingly, based on the reasons set forth above and in the Final Action
and the Answer, we determine that the preponderance of the evidence weighs most
heavily in favor of obviousness of the subject matter recited in claims 1-11, 13, 14,
17-19, and 20 within the meaning of 35 U.S.C. § 103(a).
II. Rejections 2, 3, 4, and 5
Appellants also appear to rely on the same argument raised in connection
with claims 1, 2, and 1 7 to identify reversible error in the Examiner's remaining
§ 103(a) rejections based on either the admitted prior art, Chao, Okura, or Shaapur,
in addition to Yaguchi, Izumi, and Winkler. App. Br. 15.
Accordingly, based on the reasons set forth above and in the Final Action
and the Answer, we also determine that the preponderance of the evidence weighs
most heavily in favor of obviousness of the subject matter recited in claims 12, 15,
16, and 21-23 within the meaning of 35 U.S.C. § 103(a)
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Application 11/97 6,240
ORDER
In view of the foregoing, the decision of the Examiner to reject claims 1-23
under 35 U.S.C. § 103(a) 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)(l)(iv).
AFFIRMED
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