Seagate Technology LLC

Patent Trials and Appeals Board

May 11, 2020

14029725 - (D) (P.T.A.B. May. 11, 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.
14/029,725 09/17/2013 Joachim Walter Ahner STL 17551.00 3692
64776 7590 05/11/2020
Holzer Patel Drennan - Seagate Technology LLC
216 16th Street
Suite 1350
Denver, CO 80202
EXAMINER
HANSELL JR., RICHARD A
ART UNIT PAPER NUMBER
2486
NOTIFICATION DATE DELIVERY MODE
05/11/2020 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):
docket@hpdlaw.com
hiplaw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOACHIM WALTER AHNER, TRAVIS WILLIAM GRODT,
FLORIN ZAVALICHE, MAISSARATH NASSIROU, DAVID M. TUNG,
TCHERNIO T. BOYTCHEV, STEPHEN KEITH McLAURIN, and
HENRY LUIS LOTT
Appeal 2019-000979
Application 14/029,725
Technology Center 2400
Before JOHNNY A. KUMAR, JUSTIN BUSCH, and
JOYCE CRAIG, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. 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 Seagate
Technology LLC. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellant’s disclosure generally relates to “a photon detecting array
configured to take images of an article, and a mount configured to mount
and translate the article in a direction by a sub-pixel distance.” Spec. ¶ 3,
Abstract. More specifically, the invention addresses pixel resolution issues
with a mount that translates the article being imaged “in a direction by a sub-
pixel distance . . . based on a pixel size of the photon detecting array.” Spec.
¶ 3. Claims 1, 11, and 16 are independent and reproduced below:
1. An apparatus, comprising:
a single light source for illuminating an article, wherein
the single light source simultaneously emits photons onto an
entire surface of the article;
a photon detecting array comprising a fixed pixel
resolution oriented to collect and detect photons scattered from
surface features of the article; and
a means for producing a composite image of the article, or
a portion thereof, at a greater pixel resolution than the fixed pixel
resolution of the photon detecting array by translating and
imaging the article at sub-pixel distances.

11. An apparatus comprising:
a photon detecting array configured to take images of an
article and further configured to capture reflected light and
scattered light from an entire surface of the article wherein the
entire surface of the article is illuminated at the same time; and
a mount configured to support and translate the article by
a sub-pixel distance, wherein the sub-pixel distance is based on
a pixel size of the photon detecting array.

16. A method, comprising:
emitting photons onto an entire surface of an article at the
same time at an angle of incidence ranging from 10° to 90°;
receiving from a photon detecting array an initial image of
the article at an initial location;
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translating the article a sub-pixel distance to a subsequent
location and generating a subsequent image of the article at the
subsequent location, wherein a mount is configured for the
translating in an x-axis direction, a y-axis direction, and a z-axis
direction; and
combining the initial image and the subsequent image to
generate a composite image at a greater pixel resolution than a
pixel resolution of the photon detecting array.
REJECTIONS
Claims 1–3 and 5–10 stand rejected under 35 U.S.C. § 103 as obvious
in view of Oldham (US 2005/0056768 A1; Mar. 17, 2005), Kinney (US
2004/0012775 A1; Jan. 22, 2004), and Nikoonahad (US 2004/0032581 A1;
Feb. 19, 2004). Final Act. 5–13.
Claims 16–20 stand rejected under 35 U.S.C. § 103 as obvious in
view of Oldham, Kinney, Nikoonahad, Kreh (US 2005/0001900 A1; Jan. 6,
2005), and Hamamatsu (US 2005/0213086 A1; Sept. 29, 2005). Final
Act. 13–15; Advisory Act. 6.
Claims 11–15 stand rejected under 35 U.S.C. § 103 as obvious in
view of Hayashi (US 2010/0053790 A1; Mar. 4, 2010), Kinney, and
Oldham. Final Act. 15–21.
Claim 4 stands rejected under 35 U.S.C. § 103 as obvious in view of
Oldham, Kinney, Nikoonahad, and Handique (US 2013/0190212 A1; July
25, 2013). Final Act. 21–22.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellant made.
Arguments Appellant could have made, but chose not to make in the Briefs,
are deemed waived. See 37 C.F.R. § 41.37(c)(1)(iv).
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Appellant argues the claims in three groups: (1) claims 1–10, Appeal
Br. 10–11; see Appeal Br. 15 (arguing claim 4 is patentable “by virtue of its
dependency, as well as its own patentable features,” without separately
arguing claim 4 with particularity); (2) claims 11–15, Appeal Br. 11–13; and
(3) claims 16–20, Appeal Br. 13. We select independent claim 1 as
representative of claims 1–10, independent claim 11 as representative of
claims 11–15, and independent claim 16 as representative of claims 16–20.
See 37 C.F.R. § 41.37(c)(1)(iv).
CLAIMS 1–10
The Examiner finds the combination of Oldham, Kinney, and
Nikoonahad teaches or suggests every limitation recited in representative
claim 1. Final Act. 5–9; Ans. 3–6. Of particular relevance to this Appeal,
the Examiner finds: (1) Oldham teaches an apparatus that emits photons
onto a surface of an article and a photon detecting array with a fixed pixel
resolution that collects and detects photons emitted from a sample’s surface,
the apparatus including a mount that moves the article by sub-pixel distances
to create a composite image having an effective resolution greater than the
array’s fixed pixel resolution; (2) Kinney teaches a source light emitting
photons onto an entire surface of the article and imaging scattered light from
different points on the article’s surface; and (3) Nikoonahad teaches using
multiple light sources to simultaneously light the entire surface of an article
under inspection in order to collect and detect photons scattered from the
article’s surface features. Final Act. 5–9 (citing Oldham ¶¶ 7, 8, 14, 21, 34,
35, Fig. 4, Abstract; Kinney ¶¶ 46, 53, 68, 69, 103, 106, 132, Fig. 7;
Nikoonahad ¶¶ 71, 79, 90, 124, Figs. 3A–3B, 5, 9); Ans. 3–6 (additionally
citing Oldham ¶¶ 4, 33, 42–44).
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Appellant argues the Examiner “provides no rationale to support any
motivation to modify Oldham to collect and detect scattered photons, as
claimed, instead of emitted photons, as taught by Oldham.” Appeal Br. 11;
see also Reply Br. 2 (asserting “the Examiner has presented no teaching,
suggestion, or motivation”). Appellant argues “Oldham teaches that it is
important to excite biological samples in order to cause them to fluoresce”
and “modifying Oldham to collect and detect scattered photons would render
the teachings of Oldham inoperable for their intended purpose, because light
would not be emitted from excited biological fibers.” Appeal Br. 11; Reply
Br. 2.
The Examiner finds that, although Oldham detects emitted, rather than
scattered, photons, Oldham teaches measuring received light to identify fine
features of an object’s surface. Ans. 4. The Examiner notes that the
rejection relies on Oldham for its teaching of “image enhancement via sub-
pixel imaging which Examiner respectfully submits is clearly analogous to
sub-pixel imaging for enhanced pixel resolution [of other articles, such as a
hard disk for a hard disk drive] as disclosed in the instant application.”
Ans. 5 (citation omitted). The Examiner finds modifying Oldham with
Kinney’s and Nikoonahad’s teachings does not render Oldham inoperable
for its intended purpose because all three references measure light signals
received from a target object, whether scattered or emitted, to optically
characterize the objects. Ans. 5.
We agree with the Examiner. As the Examiner notes, the Examiner
does not rely on Oldham’s described methods with respect to either the
particular type of sample or article being imaged (e.g., Oldham’s biological
sample) or the illumination techniques (i.e., exciting the target biological
samples to induce the samples to emit light) used. Rather, as noted above,
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the Examiner relies on Oldham to teach or suggest a photon detecting array
having a fixed pixel resolution that captures features of an article, and a
means to produce a composite image of the article at a greater effective
resolution than the array’s fixed pixel resolution by moving the article sub-
pixel distances. See Final Act. 5–6.
Appellant has not explained sufficiently why using a different
illumination method to detect features of an article by capturing scattered
photons instead of emitted photons would render Oldham’s cited features
inoperable for their intended purpose. More specifically, Oldham’s
movement mechanism on which the sample is placed using sub-pixel sized
steps so that the multiple sub-pixel shifted images may form a composite
image that “improves the effective resolution of signal detection which may
be better than the dimension of the pixel” would operate in exactly the same
matter regardless of the type of photons the array collects and detects.
Oldham ¶ 7.
Oldham explicitly states that its “teachings may be applied to
numerous different types and classes of photo and signal detection
methodologies and are not necessarily limited to CCD based detectors.”
Oldham ¶ 30. Oldham further discloses that, “although the present teachings
are described in various embodiments in the context of sequence analysis,
these methods may be readily adapted to other devices/instrumentation and
used for purposes other than biological analysis.” Oldham ¶ 30 (emphasis
added). Notably, Oldham’s independent claims are not limited to biological
samples. See Oldham at 7–8 (claims 1–26).
Furthermore, contrary to Appellant’s assertion that the Examiner
provides no rationale for combining the Kinney’s and Oldham’s cited
teachings, the Examiner explicitly cites various disclosures in Kinney that
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provide a rational underpinning supporting the Examiner’s provided reasons,
Final Act. 7 (citing Kinney ¶¶ 2, 4, 5, 174, Fig. 7). See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”). Specifically, the Examiner
explains that adding Kinney’s teachings of an optical arrangement to inspect
object defects and particle contamination by illuminating the entire surface
at the same time to Oldham’s teachings for improving the effective
resolution of a fixed resolution pixel array provides a “simple, cheap and
compact inspection tool” that allows “rapid inspection of substrates under a
variety of different illumination and detection modes.” Final Act. 7 (citing
Kinney ¶¶ 2, 4, 5, 174, Fig. 7).
For these reasons, we are not persuaded the Examiner erred in
rejecting representative claim 1, or claims 2, 3, and 5–10, as obvious in view
of Oldham, Kinney, and Nikoonahad. For the same reasons, we are not
persuaded the Examiner erred in rejecting claim 4 as obvious in view of
Oldham, Kinney, Nikoonahad, and Handique.
CLAIMS 11–15
The Examiner finds the combination of Hayashi, Kinney, and Oldham
teaches or suggests every limitation recited in representative claim 11. Final
Act. 15–18; Ans. 7–8. Of particular relevance to this Appeal, the Examiner
finds: (1) Hayashi teaches an apparatus with a photon detecting array that
captures reflected and scattered light from an article’s entire surface; and
(2) Kinney teaches illuminating an entire surface of the article at the same
time. Final Act. 15–16 (citing Hayashi ¶¶ 95, 96, 125, Fig. 10; Kinney
¶¶ 53, 68, 69, 103, 106, Fig. 7); Ans. 8 (explaining that the rejection is based
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on findings that (1) Hayashi teaches everything recited in representative
claim 11 except (a) capturing light from an entire surface of an article and
(b) the mount and (2) Kinney teaches simultaneously illuminating the entire
surface of an article being imaged).
The Examiner also provides a rationale for combining Kinney’s
teachings with Hayashi’s teachings. Final Act. 16–17. Specifically, the
Examiner explains that adding Kinney’s teachings, which provide an optical
arrangement to illuminate the entire surface of an object to be inspected at
the same time, provides a higher speed and lower cost imaging system.
Final Act. 17 (citing Kinney ¶¶ 2, 4, 5, 12, Fig. 7).
Appellant argues modifying Hayashi according to Kinney’s teachings
would not have been obvious because Hayashi teaches illuminating only a
portion of a disk’s surface and, therefore, “Hayashi teaches away from
illuminating the entire surface of the article.” Appeal Br. 12–13. Appellant
notes Hayashi depicts illuminating only a “fan shaped” portion of the disk
surface and Hayashi describes the importance of limiting illumination to
unnecessary areas outside the inspection range in order to suppress
unwanted reflections. Appeal Br. 12 (citing Hayashi ¶¶ 99–101, Fig. 13A).
Appellant argues these disclosures teach away from illuminating the entire
surface of the article and, further, modifying Hayashi’s system to illuminate
the entire surface would render Hayashi unsatisfactory for its intended
purpose. Appeal Br. 13.
We are not persuaded Hayashi teaches away from illuminating the
entire surface of the article, as recited in representative claim 11. Nor are
we persuaded modifying Hayashi as the Examiner proposes would render
Hayashi unsatisfactory for its intended purpose.
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Appellant is correct that Hayashi teaches shining light only at the
inspection range and avoiding or “suppressing irradiation of light to
unnecessary areas other than the inspection range.” Hayashi ¶ 101.
Notably, however, when combined with Kinney’s teachings as the Examiner
proposes, the entire surface being illuminated is the inspection range
because the Examiner’s proposed combination images the entire surface of
an article at the same time in order to produce a faster and lower cost
imaging system. See Final Act. 17. Moreover, Kinney also addresses
illuminating only the portions of the article being imaged and avoiding
illuminating the portions that are not being imaged, which are analogous to
Hayashi’s “unnecessary areas other than the inspection range,” Hayashi
¶ 101. In particular, Kinney collects scattered and diffracted light from the
article’s surface, Kinney ¶¶ 71, 79, 90. Kinney explicitly discloses that,
“[t]o minimize the deleterious effects of stray light, it is preferred that the
illuminating beam be shaped so that only the substrate surface (and edges if
desired) is illuminated.” Kinney ¶ 54 (emphasis added).
Given Hayashi’s and Kinney’s similar purposes in illuminating only
the portion of the article to be imaged to minimize negative effects of stray
light, we are not persuaded by Appellant’s argument that Hayashi teaches
away from “the entire surface of the article [being] illuminated at the same
time” because the article’s entire surface is the portion being imaged in the
proposed combination. For the same reasons, we disagree that modifying
Hayashi’s cited teachings with Kinney’s cited teachings would render
Hayashi unsatisfactory for their intended purpose.
For these reasons, we are not persuaded the Examiner erred in
rejecting representative claim 11, or claims 12–15, as obvious in view of
Hayashi, Kinney, and Oldham.
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CLAIMS 16–20
The Examiner finds the combination of Oldham, Kinney,
Nikoonahad, Kreh, and Hamamatsu teaches or suggests every limitation
recited in representative claim 16. Final Act. 13–15; Advisory Act. 6;
Ans. 9. Of particular relevance to this Appeal, the Examiner finds:
(1) Oldham at least suggests the ability to move a platform in a third
dimension because it would have been an obvious variation apparent to a
person of ordinary skill in the art; and (2) in the alternative, Hamamatsu
teaches a stage in a carrying system that moves in three dimensions.
Advisory Act. 6 (citing Oldham ¶¶ 7, 8; Hamamatsu ¶¶ 82, 83); Ans. 9.
Appellant notes representative claim 16 was amended, and Appellant
asserts the combination of Oldham, Kinney, Nikoonahad, and Kreh does not
teach “‘wherein a mount is configured for the translating in an x-axis
direction, a y-axis direction, and a z-axis direction,’ as recited in Claim 16.”
Appeal Br. 14. In the Appeal Brief, Appellant provides no further
explanation or argument and fails to address the Examiner’s findings that
Oldham and, alternatively, Hamamatsu teach the disputed limitation. A
naked assertion that a limitation is not taught, without more, does not
constitute a separate substantive argument for patentability. In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011); 37 C.F.R. § 41.37(c)(1)(iv).
Appellant belatedly asserts, for the first time in the Reply Brief, that
the Examiner failed to establish Oldham inherently discloses three
dimensional movement. Reply Br. 5. Appellant also belatedly argues the
Examiner provided no motivation to combine Hamamatsu with the other
references. These arguments could have been, but were not, raised in the
Appeal Brief, and the arguments are not responsive to new evidence or
findings set forth by the Examiner in the Answer. In the absence of a
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showing of good cause, these arguments are untimely and deemed waived.
37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief which was
not raised in the appeal brief, or is not responsive to an argument raised in
the examiner’s answer . . . will not be considered by the Board for purposes
of the present appeal, unless good cause is shown.”); MANUAL OF
PATENT EXAMINING PROCEDURE (“MPEP”) § 1205.02 (“If a ground
of rejection stated by the examiner is not addressed in the appellant’s brief,
appellant has waived any challenge to that ground of rejection and the Board
may summarily sustain it unless the examiner subsequently withdrew the
rejection in the examiner's answer.”)
CONCLUSION
For the above reasons, we affirm the Examiner’s rejections under
35 U.S.C. § 103 of: (1) claims 1–3 and 5–10 as obvious in view of Oldham,
Kinney, and Nikoonahad; (2) claims 16–20 as obvious in view of Oldham,
Kinney, Nikoonahad, Kreh, and Hamamatsu; (3) claims 11–15 as obvious in
view of Hayashi, Kinney, and Oldham; and (4) claim 4 as obvious in view of
Oldham, Kinney, Nikoonahad, and Handique.
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DECISION SUMMARY
Claims
Rejected 35 U.S.C. § References Affirmed Reversed
1–3, 5–10 103 Oldham, Kinney, Nikoonahad 1–3, 5–10
16–20 103
Oldham, Kinney,
Nikoonahad, Kreh,
Hamamatsu
16–20
11–15 103 Hayashi, Kinney, Oldham 11–15
4 103
Oldham, Kinney,
Nikoonahad,
Handique
4
Overall
Outcome 1–20

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