Frank Laske et al.

Patent Trials and Appeals Board

Apr 2, 2020

14795576 - (D) (P.T.A.B. Apr. 2, 2020)

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.
14/795,576 07/09/2015 Frank LASKE KLAP180US/P4404US1 1044
112811 7590 04/02/2020
KLA-Tencor Corporation and Simpson & Simpson PLLC
5555 Main Street
Williamsville, NY 14221
EXAMINER
SIEK, VUTHE
ART UNIT PAPER NUMBER
2851
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
patentEFS@idealawyers.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK LASKE, MOHAMMAD M. DANESHPANAH,
PRADEEP SUBRAHMANYAN, and YALIN XIONG
Appeal 2018-007953
Application 14/795,576
Technology Center 2800

Before BEVERLY A. FRANKLIN, GRACE OBERMANN KARAFFA, and
LILAN REN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1––22. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as KLA-Tencor
Corporation. Appeal Br. 2.
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Application 14/795,576

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CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
1. A method for generating a high density registration map
for a mask comprising:
a) generating in a data preparation module from a design
database of the mask and from a noise model of a registration
tool a plurality of anchor points and a recipe for the registration
tool;
b) generating in the data preparation module from the
design database of the mask and from a noise model of an
inspection tool a plurality of sample points and a recipe for the
inspection tool;
c) generating weights in the data preparation module, the
weights to be used in an influence function;
d) measuring positions of the anchor points in a mask
coordinate system with the registration tool according to the
recipe;
e) measuring positions of the sample points in the mask
coordinate system with respect to sample points on a same or
adjacent swaths with the inspection tool according to the
recipe; and
f) passing the positions of the anchor points and the
positions of the sample points to a data fusion module, to
determine a corrected set of registration points under the
influence of the weights of an anchor point on adjacent sample
points;
g) generating a high density registration map of at least a
portion of a photomask having improved accuracy with the
corrected set of registration points having improved accuracy
for registration metrology.

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THE REJECTION
Claims 1––22 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more.
OPINION
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217––18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75––77 (2012)). In accordance with that
framework, we first determine what concept the claim is “directed to.” See
Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219––20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
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eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requiring generic computer implementation fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether
the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.

Our Analysis
Appellant makes arguments for claims 1, 13, and 19 together (Appeal
Br. 11––18) and then makes arguments for claims 13––18 (Appeal Br. 19––
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27). We thus consider claims 1 and 13 in this appeal. See 37 C.F.R.
§ 41.37(c)(iv).
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner’s findings and conclusion that the subject matter of
Appellant’s claims is patent ineligible. Accordingly, we sustain the
Examiner’s rejection on appeal essentially for the reasons set forth in the
Final Office Action and in the Answer, and below, and affirm.

1. Guidance Step 1
Under Step 1 of the Guidance, we consider whether the claimed
subject matter falls within the four statutory categories set forth in
§ 101, namely a “[p]rocess, machine, manufacture, or composition of
matter.” Guidance, 84 Fed. Reg. at 53—54; see 35 U.S.C. § 101. Claim 1
recites a “method” and, thus, falls within the “process” category.
Consequently, we proceed to the next step of the analysis.

2. Guidance Step 2A Prong 1
Under Step 2A Prong 1 of the Guidance, we evaluate “whether the
claim recites a judicial exception, i.e., an abstract idea, a law of nature, or
a natural phenomenon.” Guidance, 84 Fed. Reg. at 54; see Alice, 573 U.S.
at 216. Claim 1 recites a method for generating a high density registration
map for a mask comprising (1) generating in a data preparation module
from a design database of the mask and from a noise model of a
registration tool a plurality of anchor points and a recipe for the
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registration tool; (2) generating in the data preparation module from the
design database of the mask and from a noise model of an inspection tool
a plurality of sample points and a recipe for the inspection tool; (3)
generating weights in the data preparation module, the weights to be used
in an influence function; (4) measuring positions of the anchor points in a
mask coordinate system with the registration tool according to the recipe;
(5) measuring positions of the sample points in the mask coordinate
system with respect to sample points on a same or adjacent swaths with
the inspection tool according to the recipe; and (6) passing the positions of
the anchor points and the positions of the sample points to a data fusion
module, to determine a corrected set of registration points under the
influence of the weights of an anchor point on adjacent sample points; and
(7) generating a high density registration map of at least a portion of a
photomask having improved accuracy with the corrected set of
registration points having improved accuracy for registration metrology.
See Appeal Br. 29––30 (Claims Appendix).
Consistent with the Examiner’s analysis (Final Act. 2––3), we
determine that claim 1 recites a judicial exception, i.e., an abstract idea, in
the form of mathematical concepts because the step involving determining a
corrected set of registration points involves “mathematical relationships,
mathematical formulas or equations, mathematical calculations”. Also, the
step of generating a high density registration map involves a mathematical
model as shown in Appellant’s Figure 10 or Figure 5 (the output from fusion
module 40).
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The mere fact, however, that claim 1 recites an abstract idea in the
form of mathematical concepts does not automatically render the
claim patent-ineligible. Diehr, 450 U.S. at 187 (“A claim drawn to subject
matter otherwise statutory does not become nonstatutory simply because it
uses a mathematical formula.”). Thus, we proceed to the Step 2A Prong 2 of
the Guidance.

3. Guidance Step 2A Prong 2
Under Step 2A Prong 2 of the Guidance, we must “(a) [i]dentify
whether there are any additional elements recited in the claim beyond
the judicial exception(s); and (b) evaluate those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” Guidance, 84 Fed. Reg.
at 54–55. Additional elements that merely add insignificant extra-solution
activity to an abstract idea fail to integrate the abstract idea into a patent-
eligible practical application. See id. at 55.
On the record before us, we determine that claim 1, as a whole, does
not integrate the judicial exception into a practical application. As recited
in the claim, in addition to the steps of determining a corrected set of
registration points and of generating a high density registration map,
the method also includes generating anchor points and sample points and
weights, and measuring positions of the anchor points and position of the
sample points. As stated by the Examiner on page 3 of the Final Office
Action, these steps are merely data gathering and do not amount to
significantly more than the abstract idea identified. Consistent with the
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Examiner’s findings and analysis (Final Act. 3), we determine that these
steps are merely data gathering steps necessary to conduct the recited
abstract idea, which constitute extra-solution activity insufficient to confer
patent-eligibility to the claim. Guidance, 84 Fed. Reg. at 55, 55 n.31; MPEP
§ 2106.05(g). See also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015) (holding that mere data gathering is insufficient to
confer patent eligibility).
With regard to the recitation found in step (g) of generating a high
density registration map having improved accuracy for the registration
metrology, we are unpersuaded by Appellant’s argument availing
improvements that lie in the mathematical concepts themselves (Appeal Br.
15), and note that the Supreme Court has held that “the novelty of the
mathematical algorithm is not a determining factor at all.” See Flook, 437
U.S. at 591—92; see also id. at 594—95 (“Respondent’s application simply
provides a new and presumably better method for calculating alarm limit
values.”); cf. In re Gitlin, No. 2018-1461 (Fed. Cir. June 13, 2019), slip op.
at 5 (“But merely calling for a mathematical concept to be performed more
efficiently or with a particular input does not amount to an application of the
mathematical concept that is patent-eligible.”).
Having determined that claim 1 recites a judicial exception, but the
additional elements recited in the claim do not integrate the
judicial exception into a practical application, i.e., the claim is directed to an
abstract idea, we proceed to Step 2B of the Guidance.

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4. Guidance Step 2B
Under Step 2B of the Guidance, we determine whether the claim
provides an “inventive concept,” i.e., whether the additional
elements beyond the judicial exception, individually and in combination,
amount to “significantly more” than the judicial exception itself. Guidance,
84 Fed. Reg. at 56. According to the Guidance, “simply appending well-
understood, routine, conventional activities previously known to
the industry, specified at a high level of generality,” is indicative that
an inventive concept is absent. Id. at 56.
Consistent with the Examiner’s findings and analysis (Final Act. 3),
we determine that claim 1 is directed to an abstract idea, and simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, and thus, fails to provide an
inventive concept sufficient to transform the abstract idea into patent-eligible
subject matter.
Specifically, regarding use of the “registration tool” and the
“inspection tool” in generating the high density registration map, as pointed
out by the Examiner on pages 8––9 of the Answer, these elements are
known, whereby the registration tool can be the “IPROS-series of KLA
Tencor”, and the inspection tool can be the “TERON series of KLA Tencor”
(Spec. ¶¶ 0038––0039). As such, we agree with the Examiner that the
Specification indicates that the use of these tools was well-understood,
routine, conventional and known in the art. On pages 2––3 of the Reply
Brief, Appellant submits that the registration tool and the inspection tools
are not general purpose, well-known computers. Appellant also argues that
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the existence of tangible machines should weigh heavily in favor of patent-
eligibility. Reply Br. 5. However, as the Examiner pointed out on page 9 of
the Answer, Appellant admits on page 17 of the Appeal Brief that these tools
are well-known in the art. We are thus unpersuaded by such argument.
Furthermore, as stated supra, according to the Guidance, “simply appending
well-understood, routine, conventional activities previously known to
the industry, specified at a high level of generality,” is indicative that
an inventive concept is absent. Id. at 56.
Thus, we determine the additional elements recited in claim 1 beyond
the abstract idea, individually and in combination, do not amount
to “significantly more” than the abstract idea itself. Alice, 573 U.S. 217—
218.
Appellant provides separate argument regarding whether independent
claim 13 is directed to patent eligible subject matter. Appeal Br. 20––27.
Claim 13 is directed to a system (rather than a method claim as is claim 1)
but is substantively similar to claim 1. We find Appellant’s arguments
regarding claim 13 to be unavailing for the same reasons set forth with
regard to claim 1.
Accordingly, we affirm the Examiner’s rejection of the pending
claims under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter.

CONCLUSION
We affirm the Examiner’s decision.

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Application 14/795,576

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–22 101 Patent Eligibility 1–22

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED