Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments and amendment have persuasively overcome the specification objection, the claim objections, the 101 rejection, some of the 112a rejections, most of the 112b rejections, half of the 112d rejections, and all of the prior art rejections.
The remaining issues are addressed below.
112a
Applicant argues:
the reliability of conducting a mark inspection method with such a fake image is improved. Id. ("Thereafter, according to the determination result, the generator model G and the discriminator model D are continuously updated. By updating the models, the discriminator model D may produce a more plausible image, and the generator model G may classify a real image and a fake image more precisely.
Examiner responds:
Improving the generator (as per the quoted section) is different from the claimed mark inspection because the mark inspection is not performed by a generator.
112d
Applicant argues:
claim 4 further specifies that it is the "generator model" that generates the fake image
Examiner responds:
There is not support in the specification for any other part of the GAN generating an image. Thus, if this argument were persuasive (it is not), there would need to be a new rejection under 112(a) for not supporting how else the GAN generates the image.
Claim Rejections - 35 USC § 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.
Claims 1-7, 9, 11, 12, and 17-19 (all claims) 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 claim(s) contains 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 inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-7, 9, 11, 12, and 17-19 (all claims) lack written description support for a few interrelated reasons. Here, claim 1 describes process that does not make sense (i.e., comparing a single fake image to a photographed image is not helpful to inspect a semiconductor package). While the claims have been amended to provide more specifics (e.g., that the comparison is determine if there is a defective mark, and the comparison is by comparing pixels), such a process is only accurate if one has an unlimited number of fake defect images because otherwise you would not know whether the particular image that you have is either correct or one of endless variants of possible incorrect images (which is so impractical as to be useless).
The examiner’s review of the prior art shows that others use generative adversarial networks to create images to train other neural networks that are in turn used for inspecting semiconductors. See, e.g., US20210304397A1. However, the specification does not disclose that the generated fake images are used to train a second neural network and nor does the specification disclose that this second neural network is the one used to do the inspection. Rather, the claims are explicit that the fake image is compared with the measured image but the sort of direct comparison recited in the claims is nearly useless (i.e., while there may be a defect in the actual mark, the likelihood that the specific defect is the one in the fake image is so low that checking individual images is ineffective). Further, claim 11 recites that the discriminator compares images, but this is not what is done by a GAN. This mischaracterization of a GAN shows that the GAN has not been reduced to practice (because if one were to actually implement a GAN they would know that it does not compare images in the manner claimed).
One of ordinary skill in the art would identify that the disclosure of what is done with the fake images does not make sense, the comments about a GAN performing comparisons, and the lack of discussion of creating training data as each demonstrating that this invention has not been reduced to practice. Therefore, claims 1-7, 9, 11, 12, and 17-19 (all claims) are rejected for lack of written description.
Claim 17 recites “performing a semiconductor process on the wafer,” but this is unlimited functional claiming because of the wide variety of techniques that could be used. MPEP 2173.05(g).
Dependent claims are likewise rejected.
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, 9, 11, 12, and 17-19 (all claims) 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.
Claims 1, 8, and 17 recite “corresponding to,” but this is subjective because different people can have different opinions as to correspondence. MPEP 2173.05(b)(IV). One way to overcome this rejection is to specify an objective standard.
Claim 11 recites “the discriminator model compares the measured image with the fake image to determine whether the generated fake image is the same as the measured image," but this is not what a discriminator does. Rather, a discriminator determines whether an image is real. Here, the specification does not redefine a discriminator to include this functionality, so it is unclear what is meant by “discriminator.” MPEP 2173.05(a)(III).
Dependent claims are likewise rejected.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 4 fails to further limit their parent claims.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID ORANGE whose telephone number is (571)270-1799. The examiner can normally be reached Mon-Fri, 9-5.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/DAVID ORANGE/ Primary Examiner, Art Unit 2663
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