DETAILED ACTION
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 .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 6-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
The claims are directed at methods and apparatus and therefore are directed at one of the four statutory categories
Step 2A prong 1
Prong 1 requires the Examiner to determine whether the claims recite an abstract idea that fall under one of the following four categories: a) mathematical concept, b) certain methods of organizing human activity, c) mental process, or d) other abstract ideas such as an idea of itself.
The claim limitations in the abstract idea have been highlighted in bold below; the remaining limitations are "additional elements."
Specifically representative Claim 6 recites:
An electrical conductivity measuring method of a semiconductor substrate, comprising:
producing a scanning electron microscope (SEM) image of a standard sample using a scanning electron microscope (abstract; routine data gathering and math);
producing a SEM image of a surface of the semiconductor substrate with the scanning electron microscope (abstract; routine data gathering and math);
calculating a degree of image distortion by comparing the produced SEM image of the standard sample and the SEM image of the semiconductor substrate surface (abstract; routine data gathering and math; mental processes performed by computation device); and
evaluating the electrical conductivity of the semiconductor substrate based on the degree of image distortion (abstract; routine data gathering and math; mental processes).
Regarding Claims 7-14, the limitations of this claim are abstract and/or qualify as insignificant extra solution activity for similar reasons given next to bolded portions of Claim 6, above.
The highlighted portion of the claim constitutes an abstract idea because it is analogous to other ideas identified as abstract in court decisions.
See MPEP 2106.04(B) which has distilled some concepts that the courts have deemed ineligible. Each limitation above, where noted, is analogous to subject matter deemed an abstract idea in previous court decisions as mental processes that can be performed in the human mind (MPEP 2104.04(B)(iii).
The claims at issue can be summarized, where noted, as concepts that can be performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions (see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011); Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972); Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965). Notably, in Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1147-49, 120 USPQ2d 1473, 1480-81 (Fed. Cir. 2016), the court disagreed, because it interpreted the claims as encompassing nothing other than pure mental steps (and thus falling within an abstract idea grouping) because the claims did not include any limitations requiring computer implementation. The court held that the claims were directed to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper"). Mental processes can be performed by humans with the assistance of physical aids such as pens or paper.
See MPEP 2106.04(B) which has distilled some concepts that the courts have deemed ineligible. Each limitation above is analogous to subject matter deemed an abstract idea in previous court decisions as collecting, displaying, and manipulating data (MPEP 2104.04(B)(i) and collecting information, analyzing it, and displaying certain results of the collection and analysis (MPEP 2104.04(B)(ii).
The claims at issue can be summarized, where noted as merely mathematical concepts and calculations, as collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group v. Alstrom, 2015-1778). Both cases are highly relevant and also very recent. Information as such is an intangible. See Microsoft Corp. v. AT & TCorp., 550 U.S. 437,451 n.12 (2007); Bayer AG v. Housey Pharm., Inc., 340F.3d 1367, 1372 (Fed. Cir. 2003). See also the seminal case of Parker v. Flook, 437 U.S. 584, where the Supreme Court found that mere post-solution activity (such as the natural output of a mathematical algorithm) does not make the ineligible eligible. The CAFC has treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas. See, e.g., Internet Patents, 790 F.3d at 1349;... In a similar vein, the Court has treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category. See, e.g., TLI Commc'ns, 823 F.3dat 613;. . . And the Court has recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis. See, e.g., Content Extraction, 776F.3dat 1347.
Step 2A prong 2
Under prong 2 Examiner is to determine whether the additional elements integrate the abstract idea into a practical application. In order to do this Examiner must identify whether there are additional elements and evaluate whether those additional elements individually and in combination integrate the abstract idea into a practical application.
In this case, there are no additional elements aside from describing the gathered data. The only elements of claim 6 are directed towards gathering and manipulation of data and/or mental processes and no result is discussed. Without a result there can be no practical application of the algorithm of claim 6.
Courts have determined that elements including sensors, processors and memory do not cause a Claim having an abstract idea to be directed at more than the abstract idea. For example. Courts have declined to find significantly more than an abstract idea in claims involving receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321,120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto.
LLC, 823 F.3d 607, 610,118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359,1363,115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355,112 USPQ2d 1093,1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245,1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
Also, Courts have declined to find significantly more than an abstract idea in claims involving performing repetitive calculations, Flook, 437 U.S. at 594,198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266,1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.").
Furthermore, as stated above, the act of repair and maintenance is wholly unrelated to the abstract idea/algorithm. In Diehr, the abstract algorithm was tied into a practical application because the rubber that was manufactured had characteristics (the degree of cure) that was determined by the algorithm. In this case, the algorithm has no effect on the repair, aside from merely flagging the need for repair, much more analogous to the alarm limit in Flook.
Step 2B
In step 2B Examiner must determine whether the additional elements are well-understood, routine, and conventional. Examiner must do this consistent with the Berkheimer Memo.
The Berkheimer Memo describes "an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in the MPEP’s noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).
See Berkheimer Memo at 3-4.
As mentioned above, there are no additional elements in claims 6-14 aside from the recitation of the algorithm, performative mental processes, and the data gathered and manipulated.
As such, there are no additional elements to be considered individually and in combination with the other claim elements, and therefore cannot make the claim as a whole significantly more than the abstract idea itself. Rather than being a particular limited application of the abstract idea which serves to improve a specific method or device, the claim would tend to monopolize the abstract idea itself in practice.
Stated simply, nothing in claims 6-14 form a nexus between the algorithm and a measurement system or process. Claims 6-14 do not include any limitations to cause the claims to be directed at more than the abstract idea.
Allowable Subject Matter
Claims 1-5 are allowed.
The following is an examiner’s statement of reasons for allowance:
RE Claim 1, the prior art of record does not disclose or suggest “a computer configured to measure the electrical conductivity of the semiconductor substrate by calculating a distortion value of the SEM image,” in combination with the other claim limitations. Matsumoto et al. USPG Pub. No.: 2009/0078869 is discussed below as the closest cited prior art. Claims 2-5 depend from base Claim 1, and therefore these claims are also allowed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Matsumoto et al. USPG Pub. No.: 2009/0078869 discloses an SEM apparatus for measuring a parameter of a semitontine substrate based on the drift distortion associated with the scanning electron microscope. However, the prior art is silent in disclosing that the parameter is the conductivity value of the semiconductive device being scanned.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A HARRISON whose telephone number is (571)272-3573. The examiner can normally be reached Monday-Friday 9:00 AM - 5:00 PM.
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/MICHAEL A HARRISON/Examiner, Art Unit 2852
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