DETAILED ACTION
Acknowledgements
The replies filed Oct. 31, 2024, and Nov. 21, 2024, have been received and entered. Claims 1-7 and 9-11 are pending.
II. Response to Amendment
Claims
The amendment to the claims filed Oct. 31, 2024, is objected to for failing to comply with the requirements of 37 C.F.R. §§ 1.173(b)(2) and 1.173(d) because deletions have been improperly indicated by strikethrough.
Any changes relative to the patent being reissued that are made to the specification, including the claims . . . must include the following markings:
(1) The matter to be omitted by reissue must be enclosed in brackets; and
(2) The matter to be added by reissue must be underlined.
37 C.F.R. § 1.173(d); see MPEP § 1453.
The amendment to the claims is further objected to for failing to comply with the requirements of 37 C.F.R. § 1.173(c), because there must also be supplied . . . an explanation of the support in the disclosure of the patent for the changes made to the claims. The Patent Owner has provided an explanation of support for only some of the amendments.
Specification
The amendment to the specification filed Oct. 31, 2024, is objected to for failing to comply with 37 C.F.R. §§ 1.173(b)(1) and 1.173(d) because, as above, deletions have been improperly indicated by strikethrough.
The specification has been amended to add “with layout based defect composite pattern group contains more than one defect cluster pattern” to the paragraph starting at col. 1, line 39, (Response (Oct. 31, 2024) at 2). This phrase appears to be grammatically incorrect, and its meaning is unclear.
Drawings
The amendment to the drawings filed Oct. 31, 2024, is objected to for failing to comply with the requirements of 37 C.F.R. § 1.173(b)(3), which requires that amended figures be identified as “Amended.” Particularly, each figure that is amended must be identified by placing the word “Amended” at the bottom of that figure. See MPEP § 1413.
The drawings have been amended to add “with layout based defect composite pattern group contains more than one defect cluster pattern” to FIG. 1B. This phrase appears to be grammatically incorrect, and its meaning is unclear.
III. Reissue Declaration
The reissue declaration filed Nov. 21, 2024, appropriately addresses the objection and corresponding rejection under 35 U.S.C. § 251 set forth in the previous Office action. Accordingly, the objection and rejection are withdrawn.
IV. Response to Arguments
The Patent Owner’s arguments appear to merely contend that amendments to the specification, claims, and drawings overcome the rejections set forth in the previous Office action, (see Remarks (Oct. 31, 2024), pp. 10-11). These arguments are unpersuasive, as addressed by the findings below.
V. New Matter
Specification
The amendment filed Oct. 31, 2024, is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The specification has been amended to add “wherein each layout based defect composite pattern group has different layout pattern and different composited defect pattern” to the paragraph starting at col. 1, line 39, (Response (Oct. 31, 2024) at 2). It is not clear how these elements are supported by the original patent.
Claims
Similarly, the amendment filed Oct. 31, 2024, amends the claims to add “wherein each layout based defect composite pattern group has different layout pattern and different composited defect pattern.” Again, it is not clear how these elements are supported by the original patent.
VI. Claim Rejections – 35 U.S.C. § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim1-7 and 9-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventors, at the time the application was filed, had possession of the claimed invention.
As noted above, the amendment filed Oct. 31, 2024, adds “wherein each layout based defect composite pattern group has different layout pattern and different composited defect pattern” to the claims. It is not clear how these elements are supported by the original patent.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 and 9-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites, “executing . . . layout pattern match with layout based defect composite pattern group contains more than one defect cluster layout pattern to obtain each individual layout based defect composite pattern group of the plurality of layout based defect composite pattern groups.” The phrase “defect cluster layout pattern” is unclear in this context. Aside from the text of claim 1, the ’401 patent mentions “defect cluster layout pattern” in two places: col. 1, lines 56-57, and col. 3, line 67. Each of the cited portions of the specification describe nothing more than what is recited in the claim. There is no definition or example of a “defect cluster layout pattern,” and “defect cluster layout pattern” does not appear to be a recognized term of art. Without additional information illustrative or limiting information as to what does or does not constitute a “defect cluster layout pattern,” the metes and bounds of claims 1-7 and 9-11 cannot be determined.
The term “total good die delivery quality prediction” in claim 11 is a relative term which renders the claim indefinite. The term “total good die delivery quality prediction” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 1 has been amended to add “with layout based defect composite pattern group contains more than one defect cluster pattern.” This phrase appears to be grammatically incorrect, and its meaning is unclear.
VII. Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes at least one claim limitation that does not use the word “means,” but is nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation is: “defect sample selection rules” in claim 1.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Regarding the claimed “defect sample selection rule,” the term “rule” is considered a generic placeholder for performing the claimed function of “judging a potential systematic defect priority.” “Rule,” by itself, or as modified by the adjective phrase “defect sample selection” does not connote sufficient structure to perform the claimed function of “judging a potential systematic defect priority.”
The structure in the ’401 patent disclosure corresponding to the claimed function of “judging a potential systematic defect priority” appears to be software described by the algorithm disclosed in col. 4, line 46, through col. 5, line 24.
The examiner notes that the prior art of record does not appear to disclose or suggest this corresponding structure in the context of the limitations of claim 1.
VIII. Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to ERIC B KISS whose telephone number is (571)272-3699. The Examiner can normally be reached Mon - Fri 7:30-5:00.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer can be reached on 571-272-6779.
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/Eric B. Kiss/Patent Reexam Specialist, Art Unit 3992
Conferees:
/CAMERON SAADAT/Patent Reexam Specialist, Art Unit 3992
/ANDREW J. FISCHER/Supervisory Patent Examiner, Art Unit 3992