UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`
`HAMAMATSU PHOTONICS K.K.,
`Petitioner,
`
`v.
`
`SEMICAPS PTE LTD.,
`Patent Owner
`
`
`
`__________________________________
`
`Case IPR2017-02110
`Patent 7,623,982
`
`__________________________________
`
`
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`___________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________
`
`HAMAMATSU PHOTONICS K.K.,
`Petitioner,
`
`v.
`
`SEMICAPS PTE LTD.,
`Patent Owner
`
`
`
`__________________________________
`
`Case IPR2017-02110
`Patent 7,623,982
`
`__________________________________
`
`
`PATENT OWNER’S MOTION TO AMEND
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION ....................................................................................... 1
`
`RELIEF REQEUSTED ................................................................................ 1
`
`I.
`
`II.
`
`III. THE PROPOSED SUBSTITUTE CLAIMS MEET ALL THE
`
`REQUIREMENTS OF 35 U.S.C. § 316(D) AND 37 C.F.R. § 42.121 ......... 2
`
`A.
`
`B.
`
`The proposed number of substitute claims is reasonable .................... 2
`
`Responses to Grounds of Unpatentability Involved in the Trial ......... 2
`
`1.
`
`2.
`
`3.
`
`Proposed Claims 26, 31, and 32 ............................................... 3
`
`Proposed Claims 27-30, 33 and 34 ........................................... 6
`
`Proposed Claim 35 ................................................................... 9
`
`C.
`
`The proposed amendments do not seek to enlarge the scope of the
`
`claims .............................................................................................. 10
`
`D.
`
`The proposed amendments do not introduce new subject matter ...... 13
`
`1.
`
`2.
`
`3.
`
`4.
`
`Proposed Claim 26 ................................................................. 14
`
`Proposed Claim 31 ................................................................. 16
`
`Proposed Claim 35 ................................................................. 19
`
`Proposed Claims 27-30 and 32-34 ......................................... 24
`
`E.
`
`Claim Listing ................................................................................... 24
`
`IV. CONCLUSION.......................................................................................... 25
`
`
`
`
`
`
`
`i
`
`
`
`EXHIBIT LIST
`
`Ex.
`Description
`
`2001 Email dated April 5, 2006 from Alfred Quah to Co-inventors attaching
`Ex. 2002
`
`2002
`
`Email Attachment - Alfred Quah, et al., “Enhanced Detection
`Sensitivity with Pulsed Laser Signal Integration Algorithm” (April 4,
`2006)
`
`2003 Email dated May 25, 2006 from ASM International to Co-inventors RE
`Acceptance
`
`2004 Declaration of Dr. Michael Bruce
`
`2005 Declaration of ASM International
`
`2006 Patents of Dr. Michael Bruce
`
`2007 Relevant pages from AMERICAN HERITAGE DICTIONARY
`
`2008 Relevant pages from Julian Heath, DICTIONARY OF MICROSCOPY
`(Wiley 2005)
`
`2009 Relevant pages from Jeff Hecht, UNDERSTANDING LASERS (IEEE 1992)
`
`2010 Relevant pages from Dipak Basu, PURE AND APPLIED PHYSICS (CRC
`Press 2001)
`
`2011 Declaration of Alfred Quah
`
`2012 DC Winburn: WHAT EVERY ENGINEER SHOULD KNOW ABOUT LASERS
`
`2013 Email from ASM to M. Bruce RE Submission Date and Deadline
`
`2014 S. Tumanski, PRINCIPLES OF ELECTRICAL MEASUREMENT (CRC Press
`2006)
`
`2015 Levert Sevgi, “Digital Multi-Meters and Basic Measurements” IEEE
`Antennas and Propagation Magazine, Vol. 49, No. 4 (August 2007)
`
`
`
`ii
`
`
`
`
`2016
`
`
`2017
`
`
`2018
`
`
`2019
`
`
`2020
`
`
`2021
`
`
`2022
`
`
`2023
`
`
`2024
`
`
`2025
`
`
`2026
`
`
`2027
`
`Second Declaration of Alfred Quah RE Authenticity of Email
`Correspondence
`Proceedings of the 32nd International Symposium for Testing and
`Failure Analysis (November 14, 2006)
`Excerpt of Ex. 1004, p. 14, marked up by Dr. Mercer during cross-
`examination
`
`Transcript of Cross-Examination of Dr. Mercer, May 22, 2018
`
`JP H11-316266 (“Kiyoshi”)
`
`Cole, et al., BACKSIDE LOCALIZATION OF OPEN AND SHORTED IC
`INTERCONNECTIONS, 36th Annual International Reliability Physics
`Symposium, Reno, Nevada, 1998 (IEEE 98CH36173) (“Cole”)
`Excerpts from Dueck, FUNDAMENTAL OF DIGITAL ELECTRONICS,
`West Publishing Company, 1994
`
`Excerpts from Carr, DESIGNER’S HANDBOOK OF INSTRUMENTATION
`AND CONTROL CIRCUITS, Academic Press, Inc. 1991
`
`Excerpts from AGILENT TECHNOLOGIES TEST & MEASUREMENT
`CATALOG 2001
`
`English language translation of Kiyoshi
`
`Excerpts from Schlag, et al., IMPLEMENTATION OF AUTOMATIC
`FOCUSING ALGORITHMS FOR A COMPUTER VISION SYSTEM WITH
`CAMERA CONTROL, Dept. of Electrical Engineering, Robotics
`Institute, Carnegie-Mellon University, 1983
`Nikawa, et al., VARIOUS CONTRASTS IDENTIFIABLE FROM THE
`BACKSIDE OF A CHIP BY 1.3 µM LASER BEAM SCANNING AND
`CURRENT CHANGE IMAGING, Proceedings of the 22nd International
`Symposium for Testing and Failure Analysis, 18-22 November
`1996, Los Angeles (ISTFA ’96)
`
`
`
`iii
`
`
`
`
`2028
`
`
`2029
`
`
`2030
`
`Excerpt from File History of U.S. Pat. No. 7,623,982, Specification,
`Claims, Abstract, and Drawings as filed (“Disclosure”)
`
`Declaration of Dr. Gary Woods
`
`Excerpts from Horowitz, et al., THE ART OF ELECTRONICS, 2nd Ed.,
`Cambridge University Press, 1995
`
`
`
`iv
`
`
`
`I.
`
`INTRODUCTION
`
`SEMICAPS Pte Ltd. (“SEMICAPS”) respectfully moves under 35 U.S.C. §
`
`316(d) and 37 C.F.R. § 42.121 to amend U.S. Patent No. 7,623,982 (“the ’982
`
`patent”), contingent on the outcome of this trial. In the event the Board finds any of
`
`claims 1, 4-7, and 21-25 unpatentable in the Final Written Decision, Patent Owner
`
`respectfully requests that the Board grant this motion to amend and issue the
`
`corresponding substitute claims 26-35 presented herein for any claim found to be
`
`unpatentable.
`
`As the motion and the accompanying declaration of Dr. Woods demonstrate,
`
`this motion and the substitute claims meet all of the requirements of 37 C.F.R
`
`§ 42.121. Namely, each contingent amendment is responsive to a ground of
`
`unpatentability involved in this proceeding, none of the amendments seeks to
`
`enlarge the scope of the claims or introduce new subject matter, each amendment
`
`proposes only one substitute claim for each original claim, and the motion shows
`
`the changes sought and the support in the original disclosure of the patent for each
`
`claim that is added or amended.
`
`II. RELIEF REQUESTED
`To the extent the Board finds an original claim unpatentable in this
`
`proceeding, SEMICAPS respectfully requests that the Board grant this motion to
`
`amend any unpatentable claim with a corresponding substitute claim as presented
`
`
`
`1
`
`
`
`herein. The Board should not consider this motion for each original claim it finds
`
`patentable in the Final Written Decision.
`
`III. THE PROPOSED SUBSTITUTE CLAIMS MEET ALL THE
`REQUIREMENTS OF 35 U.S.C. § 316(D) AND 37 C.F.R. § 42.121
`A. The proposed number of substitute claims is reasonable
`
`Patent Owner proposes a single substitute claim for each original claim the
`
`Board may find unpatentable, a number that is presumed to be reasonable. See 37
`
`C.F.R. § 42.121(a)(3); see also, Western Digital Corp. v. SPEX Techs., Inc., Case
`
`IPR2018-00082, -00084, Paper 13 (Apr. 25, 2018).
`
`B. Responses to Grounds of Unpatentability Involved in the Trial
`The amendments to the proposed substitute independent claims 26, 31, and
`
`32 are responsive to the grounds of unpatentability raised in the petition. As
`
`shown below, the main proposed amendments introduce limitations requiring the
`
`use of a pulsed laser beam that, during each dwell time at each location, radiates
`
`the location of the tested device with at least two laser pulses, resulting in
`
`corresponding response signals that are each sampled with a plurality of samples.
`
`As further explained below, the proposed amendments address each of the grounds
`
`raised in the petition because these additional limitations are not found in the prior
`
`art relied upon in the Petition. Further, additional proposed amendments in the
`
`independent claims and in substitute claims 27-30 and 33-35 are intended to
`
`address Section 112 issues, such as references to the proper claim numbers and
`
`
`
`2
`
`
`
`referring to the proper antecedent basis due to the other amendments in the
`
`independent claims. These additional amendments are not precluded by rule or
`
`statue and allowing these amendments “serves the public interest” and “helps
`
`ensure a ‘just’ resolution of the proceeding and fairness to all parties. See Western
`
`Digital, Case IPR2018-00082, -00084, Paper 13 at 6.
`
`1.
`
`Proposed Claims 26, 31, and 32
`
`Claims 26 and 31 are proposed as substitute for claims 1 and 21 if those
`
`claims are found unpatentable. Claims 1 and 21 were challenged under Ground 1
`
`as anticipated under 35 U.S.C. § 102 by Hamada (Ex. 1004) and under Ground 3 as
`
`obvious under § 103 over Hamada. In the petition, petitioner incorrectly alleged
`
`that Hamada disclosed a pulsed laser beam, however Hamada does not teach or
`
`suggest radiating a single site with multiple pulses of a pulsed laser. See Ex. 1004
`
`Figs. 2(b), 3(b), 4(b), 5(c), 6(c), and 8(c); Ex. 2029 at ¶ 93. The amendments
`
`proposed in claim 26 recite the additional limitation of “directing a pulsed laser
`
`beam to dwell on a first location of an electronic circuit.” Claim 26 also recites
`
`“radiating the pulsed laser beam onto the first location of the electronic circuit, the
`
`radiating comprising radiating a first laser beam pulse and a second laser beam
`
`pulse for a period of time while the pulsed laser beam is dwelling on the first
`
`location.” Similarly, the amendments proposed in claim 31 recite the additional
`
`limitations of “a pulsed laser beam source, wherein the pulsed laser beam source
`
`
`
`3
`
`
`
`radiates a plurality of pulses of a laser beam onto each of a plurality of locations on
`
`an electronic circuit.” These amendments respond to Grounds 1 and 3 because
`
`Hamada does not teach or suggest radiating a site with multiple pulses of a pulsed
`
`laser beam. Ex. 2029 at ¶ 93.
`
`In the petition, Petitioner alleged that Hamada’s paragraph 21-25 reference
`
`to “the calculation of an average current at each of sites 1, 2, and 3” indicate that
`
`the measurements of Hamada’s current meter necessarily involved a plurality of
`
`samples. Pet. at 16-17. Relying on Dr. Mercer’s interpretation of Fig. 2(c),
`
`petitioner incorrectly alleged that the current meter of Hamada sampled the
`
`operation current at each site “in synchronization with the H-level interval” of the
`
`LSI test signal. Id. at 17-19.
`
`Claim 26 also recites “determining a first plurality of samples of a first
`
`response signal output by the electronic circuit during the period when the first
`
`laser beam pulse of the pulsed laser beam is radiated on the first location of the
`
`electronic circuit” and “determining a second plurality of samples of a second
`
`response signal output by the electronic circuit during the period when the second
`
`laser beam pulse of the pulsed laser beam is radiated on the first location of the
`
`electronic circuit.” Similarly, claim 31 also recites that “the measuring circuit
`
`determines a plurality of samples of a response signal output by the electronic
`
`circuit during the period when each pulse of the plurality of pulses of the pulsed
`
`
`
`4
`
`
`
`laser beam is radiated on each location on the electronic circuit while the pulsed
`
`laser beam is dwelling on each location.” These amendments also respond to
`
`Grounds 1 and 3 because Hamada does not teach or suggest determining multiple
`
`samples of each response signal output by an electronic circuit for each pulse of a
`
`pulsed laser beam while dwelling at single site of the device. In Hamada, as for
`
`example shown in Fig. 2 and described paragraphs 21-25, the current measurement
`
`is made for a single radiation of the laser beam at each site 1, 2, and 3. See Ex.
`
`1004, Fig. 2 and ¶0024; see also, Ex. 2029 ¶¶ 70-74, 93 and 147. Even under Dr.
`
`Mercer’s interpretation of Hamada’s Fig. 2(b) as pulsing at the rate of the LSI
`
`signal in Fig. 2(a) (Ex. 2014 at 114-116) because the current meter of Hamada is
`
`also alleged to be sampling at the same rate (i.e. only one measurement (sample)
`
`per laser pulse), the proposed amendment requiring multiple samples for each
`
`pulse and multiple pulses per location responds to Grounds 1 and 3 relying on
`
`Hamada. See Ex. 2029 at ¶ 147.
`
`Claims 1 and 21 were also challenged as anticipated and rendered obvious
`
`by Quah (Ex. 1005) and under Grounds 2 and 7 respectively. As noted above
`
`regarding Grounds 1 and 3, claims 26 and 31 recite amendments to the radiating
`
`limitations that require at least two pulses of a “pulsed laser beam” while dwelling
`
`on each location of an electronic circuit. These amendments also respond to
`
`Grounds 2 and 7 because, as Dr. Quah testified, the Quah reference is based on
`
`
`
`5
`
`
`
`experiments conducted with a continuous wave laser, thus it only teaches or
`
`suggests the use of a continuous laser beam. See Ex. 2011 at ¶¶ 5-6; Ex. 2004 at ¶¶
`
`62,86; Ex. 2029 at ¶ 147. Even under Petitioner’s overly broad interpretation of a
`
`pulsed laser, Quah, in Fig. 6 or elsewhere, does not teach or suggest radiating
`
`multiple pulses of a pulsed laser beam while dwelling on a single location.
`
`Claim 32 is proposed as substitute for claim 22, if found unpatentable.
`
`Claim 22 was also challenged as anticipated and rendered obvious by Hamada (Ex.
`
`1004) in Grounds 1 and 3, respectively, and under Ground 5 as obvious over
`
`Hamada in view of Bruce (Ex. 1010). Proposed substitute claim 32 depends from
`
`proposed substitute claim 31, and includes a clarification that its reference to “the
`
`laser beam source” is that of the pulsed laser beam source in claim 31.
`
`Accordingly, for the same reasons noted above regarding claim 31, these
`
`amendments respond to Grounds 1 and 3. In addition, as further noted below, the
`
`combination of Hamada with Bruce would not have been obvious to a POSITA nor
`
`would the combination render obvious the limitations of proposed claim 31. Thus,
`
`these amendments also respond to Ground 5.
`
`2.
`
`Proposed Claims 27-30, 33 and 34
`
`Claims 27-30 are proposed as substitutes for claims 4-7 respectively, if
`
`found unpatentable. Claims 33 and 34 are proposed as substitute for claims 24 and
`
`25, if found unpatentable. Claims 4-7, 24, and 25 were challenged as anticipated
`
`
`
`6
`
`
`
`and rendered obvious by Quah (Ex. 1005) in Grounds 2 and 7. Claims 27-30
`
`depend from claim 26, which, as shown above, requires “directing a pulsed laser
`
`beam” and “radiating a first laser beam pulse and a second laser beam pulse for a
`
`period of time while the pulsed laser beam is dwelling on the first location.”
`
`Similarly, claims 33 and 34 include amendments to make them dependent from
`
`claim 31, which, as discussed above also include similar pulsed laser limitations.
`
`These amendments respond to Grounds 2 and 7 because these pulsed laser
`
`limitations are not taught or suggested by Quah; Quah discloses only a continuous
`
`laser beam. See Ex. 2011 at ¶¶ 5-6; Ex. 2004 at ¶¶ 62,86; Ex. 2029 at ¶ 147.
`
`Claims 4-7, 24, and 25 were also challenged under Grounds 5 and 6 as
`
`obvious over Hamada in view of Bruce and over Hamada in view of Quah
`
`respectively. And claims 4, 5, 7, and 24 were also challenged under Ground 4 as
`
`obvious over Hamada in view of Beaudoin. Their proposed substitute claims, 27-
`
`30, depend from claim 26 and include the “determining” a first and second
`
`plurality of samples of a first and second response signal output by the electronic
`
`circuit during the period when each of the laser beam pulses is radiated on the first
`
`location. Similarly, claims 33 and 34, as dependent on claim 31, also include the
`
`limitation of “the measuring circuit determines a plurality of samples of a response
`
`signal output by the electronic circuit during the period when each pulse of the
`
`plurality of pulses of the pulsed laser beam is radiated on each location on the
`
`
`
`7
`
`
`
`electronic circuit while the pulsed laser beam is dwelling on each location.” These
`
`amendments respond to Grounds 4, 5, and 6 because, as shown regarding Ground
`
`1, Hamada does not teach these limitations. Further, the proposed combination of
`
`Beaudoin’s pulsed laser with the current meter of Hamada still fails to teach or
`
`suggest determining multiple samples of a response signal for each of the pulses of
`
`a pulsed laser while radiating a single location as recited in proposed claims 26 and
`
`31. Ex. 2029 at ¶¶ 70-74, 93, 103 and 147. Neither Hamada nor Beaudoin provide
`
`any disclosure regarding using a current meter to detect multiple samples of a
`
`response signal to each of multiple pulses of a pulsed laser while dwelling at a test
`
`location, much less how to do so without lock-in detection or in the presence of the
`
`additional switching noise created by the LSI test signal input of Hamada. Id. at
`
`Ex. 2029 at ¶¶ 98, 101-103, and 147. Accordingly, the proposed amendments
`
`respond to Grounds 4, 5, and 6.
`
`Similarly, the proposed combination of Bruce and Hamada does not teach or
`
`suggest the limitations of proposed claims 26 and 31 requiring determining
`
`multiple samples for each response signal output by the circuit when radiated with
`
`the pulsed laser beam for each of the multiple pulses radiated at each location. Ex.
`
`2029 at ¶147. Accordingly, for these reasons, the amendments in claims 31 and 32
`
`respond to Ground 5 with respect to claim 32. Further, as discussed above, neither
`
`Hamada nor Quah teach the use of a pulsed laser beam that radiates multiple pulses
`
`
`
`8
`
`
`
`in a single location during a single dwell time; both Hamada and Quah teach
`
`radiating each location with a single continuous beam. Ex. 1004 at ; See Ex. 2011
`
`at ¶¶ 5-6; Ex. 2004 at ¶¶ 62,86; Ex. 2029 at ¶¶ 93 and 147. Thus, the proposed
`
`amendments are also responsive to Ground 6 regarding claims 27-30 and 33-34.
`
`3.
`
`Proposed Claim 35
`
`Claim 35 is proposed as substitute for claim 23, if found unpatentable.
`
`Claim 23 was challenged in the petition under Grounds 2, 4, 5, 6, and 7. Claim 23
`
`includes amendments similar to those of claim 31, including “a pulsed laser beam
`
`source configured to dwell on a first location of an electronic circuit under test
`
`with two or more laser beam cycles within a first time duration, each laser beam
`
`cycle including a radiating period when the pulsed laser beam emits a laser pulse
`
`and a non-radiating period when the pulsed laser beam does not emit a laser pulse,
`
`and further wherein the pulsed laser source is configurable to dwell on a second
`
`location of the electronic circuit with two or more laser beam cycles during a
`
`second time duration.” Similarly, claim 35 also includes “a measuring circuit
`
`configured to obtain a plurality of samples of a laser-induced response signal
`
`output by the electronic circuit during each of the two or more laser beam cycles
`
`within the first time duration before the second time duration.” Thus, for the same
`
`reasons stated above with respect to claim 31, these amendments respond to
`
`Grounds 2, 4, 5, 6, and 7 with respect to claim 35.
`
`
`
`9
`
`
`
`In addition, claim 35 also recites that “the measuring circuit [is] further
`
`configured to obtain the plurality of samples while the electronic circuit is powered
`
`with a constant voltage source, when performing an optical beam induced
`
`resistance change procedure, or a constant current source, when performing a
`
`thermally induced voltage alteration procedure, but without being subject to other
`
`input test signals other than radiation from the pulsed laser beam.” This additional
`
`amendment responds to Grounds 4, 5, and 6 because in those grounds, Petitioner
`
`relies on Hamada’s “current meter 6” and its measuring of operation current at
`
`sites 1, 2, and 3, which is done while subjecting the semiconductor device to the
`
`LSI test signal generated by the test signal generator 3. See Ex. 1004 at ¶¶ 0023-
`
`0024. However, proposed claim 35 requires that the claimed OBIRCH or TIVA
`
`procedures be performed “without being subject to other input test signals.” Thus,
`
`for this additional reason, this amendment is responsive to Grounds 4, 5, and 6.
`
`C. The proposed amendments do not seek to enlarge the scope of the
`claims
`
`Each substitute claim includes a revised version of the same limitations as
`
`the claim it is replacing and additional limitations, making it narrower than the
`
`original claim. See Ex. 2029 at ¶¶ 145-146. For example, proposed substitute
`
`claims 26-30, each require the limitations of claim 1 with the additional
`
`amendments that further require the “laser beam” to be a “pulsed laser beam” and
`
`the “radiating” of claim 1 to further comprise in claim 26 the additional limitation
`
`
`
`10
`
`
`
`of “radiating a first laser beam pulse and a second laser beam pulse for a period of
`
`time while the pulsed laser beam is dwelling on the first location.” Id. at ¶ 145.
`
`Similarly, claim 26 also includes the original “determining” limitation of claim 1
`
`amended to clarify that the “first response signal [is] output by the electronic
`
`circuit during the period when the first laser beam pulse of the pulsed laser beam is
`
`radiated on the first location of the electronic circuit.” Id. And claim 26 includes
`
`an additional “determining” limitation for “a second plurality of samples of a
`
`second response signal.” Id.
`
`Proposed substitute claims 31-34 are similarly narrower than the claims they
`
`are intended to substitute for similar reasons. For example, claims 31-34 all
`
`require the limitations of claim 21 as further amended in claim 31, including the
`
`“laser beam source” of claim 21, which in claim 31 is a “pulsed laser beam source”
`
`and further requires it to radiate “a plurality of pulses of a laser beam onto each of
`
`a plurality of locations on an electronic circuit.” Id. at ¶ 146. In addition, the
`
`“measuring circuit” of claim 21 is amended in claim 31 to clarify that the “plurality
`
`of samples” is determined of “a response signal output by the electronic circuit
`
`during the period when each pulse of the plurality of pulses of the pulsed laser
`
`beam is radiated on each location on the electronic circuit while the pulsed laser
`
`beam is dwelling on each location.” Id.
`
`Similarly, proposed substitute claim 35, like claim 31, includes similar
`
`
`
`11
`
`
`
`additional limitations over those of claim 23, which depended on claim 21. For
`
`example, the pulsed laser beam source of claim 23, which according to claim 21
`
`needed to radiate “a laser beam onto the electronic circuit,” in claim 35 it is
`
`“configured to dwell on a first location of an electronic circuit under test with two
`
`or more laser beam cycles within a first time duration, each laser beam cycle
`
`including a radiating period when the pulsed laser beam emits a laser pulse and a
`
`non-radiating period when the pulsed laser beam does not emit a laser pulse, and
`
`further wherein the pulsed laser source is configurable to dwell on a second
`
`location of the electronic circuit with two or more laser beam cycles during a
`
`second time duration.” In addition, the “measuring circuit” in the original claim 23
`
`is also amended to be “further configured to obtain the plurality of samples while
`
`the electronic circuit is powered with a constant voltage source, when performing
`
`an optical beam induced resistance change procedure, or a constant current source,
`
`when performing a thermally induced voltage alteration procedure, but without
`
`being subject to other input test signals other than radiation from the pulsed laser
`
`beam.” Claim 35, like claim 23, also requires a signal processor but amended to
`
`require the accumulation of samples “obtained in the two or more cycles within the
`
`first time duration to generate a test result value for the first location of the
`
`electronic circuit.” And claim 35 further includes “an output module” that was not
`
`in the original claim 23.
`
`
`
`12
`
`
`
`Lastly, some of the proposed dependent substitute claims depend directly
`
`from the proposed independent substitute claims but the claims they are intended
`
`to substitute did not. For example, claims 5-7 were dependent from claim 4 but
`
`substitute claims 28-30 depend directly from claim 26. However, these changes do
`
`not remove any limitations because claim 26 includes the limitations of claim 4,
`
`requiring that “the laser beam is a pulsed laser beam,” thus, claims 28-30 also
`
`include those limitations. Similarly, claims 24 and 25 were dependent from claim
`
`23 but substitute claims 33 and 34 depend directly from claim 31. However, claim
`
`31 also includes the “pulsed laser beam” limitation of claim 23 and therefore
`
`claims 33 and 34 also include the same limitation.
`
`Accordingly, all the proposed substitute claims are narrower than the claims
`
`they substitute. Ex. 2029 at ¶ 145.
`
`D. The proposed amendments do not introduce new subject matter
`The ’982 patent was filed on November 5, 2007 as an original new
`
`application. The original disclosure of the application, as filed, is provided as
`
`Ex. 2028 (“Disclosure”). As demonstrated below and in the accompanying
`
`Declaration of Dr. Woods (Ex. 2029), a POSITA would have understood based
`
`on the Disclosure that the inventors possessed the substitute claims’ systems and
`
`methods at the time of the application. Ex. 2029 at ¶ 148 and Appendix B.
`
`Appendix B to the Declaration of Dr. Woods (Ex. 2029) provides a chart with
`
`
`
`13
`
`
`
`“citations to where in the original disclosure filed by the patent owner as the
`
`application leading to the ’982 patent (Ex. 2028) each limitation of each
`
`proposed substitute claim can be found.” Ex. 2029 at ¶ 148. This chart may be
`
`a convenient tool for the Board to quickly find references to the Disclosure for
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`each claim limitation in the proposed claims.
`
`1.
`
`Proposed Claim 26
`
`The Disclosure provides support for the preamble of claim 26 for example at
`
`p. 7, ll. 25-28 and corresponding Fig. 2. The Disclosure provides support for the
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`“directing a pulsed laser beam to dwell on a first location of an electronic circuit”
`
`at p. 8, ll. 1-2 and p. 5, l. 31-33, disclosing “the case where a pulsed laser beam is
`
`used.” The Disclosure provides support for the “radiating the pulsed laser beam
`
`onto the first location of the electronic circuit” at p. 7, ll. 32-33. The Disclosure
`
`provides support for “the radiating comprising radiating a first laser beam pulse
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`and a second laser beam pulse for a period of time while the pulsed laser beam is
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`dwelling on the first location” for example at p. 11, ll. 8-13 and Figs. 5(a)-5(f),
`
`showing at two pulses of the pulsed laser beam at “the location of the fault on the
`
`electronic circuit.” At p. 14, ll. 1-8, the disclosure explains that the dwell time, Td,
`
`includes the radiating and the non-radiating periods while the pulsed laser radiates
`
`a location of the circuit, which in Figs. 5(a)-5(f) includes two sets of radiating and
`
`non-radiating periods. The equation for the intensity signal I at each location x, y,
`
`
`
`14
`
`
`
`and related description at p. 16, ll. 15-30, also supports radiating multiple laser
`
`pulses “N” per location.
`
`The Disclosure provides support for the “determining a first plurality of
`
`samples of a first response signal output by the electronic circuit during the period
`
`when the first laser beam pulse of the pulsed laser beam is radiated on the first
`
`location of the electronic circuit” at, for example, p. 8, ll. 25-28 and p. 11, ll. 26-
`
`28, discussing “Fig. 5(a)-(f)” as graphs of a response signal resulting from the
`
`stimulus of the pulsed laser beam. At p. 13, ll. 27-30 and the related Fig. 6,
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`showing a “sampled response signal” made up of a plurality of samples within a
`
`period 609 when a laser beam pulse (“Beam ‘ON’” 603) is radiated on a location
`
`of the circuit also supports this limitation. The Disclosure, at p. 16, ll. 21-30 and p.
`
`17, ll. 1-3, further supports determining a plurality of samples during the period
`
`when the laser beam pulse is radiated on a location by indicating that for a location
`
`of the circuit (xi, yi), there are “N pulses,” and for each pulse, there are a number of
`
`samples M of the response signal that is equal to the dwell time corresponding to
`
`each pulse (TDT) minus any delay time (TPD) divided by the sampling period (TS).
`
`And further by referring, at p. 17, ll. 1-3, to “the plurality of samples obtained
`
`during the radiating period, tON (603)” used for generating the value. The
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`disclosure, at p. 14, ll. 22-24, also notes that “the frequency of sampling of the
`
`response signal is higher than the frequency of the pulsed laser beam,” which
`
`
`
`15
`
`
`
`indicates to a POSITA, that for each pulse, there are multiple samples of the
`
`response signal. See Ex. 2029 at p. 083. Given that, for example, Fig. 5(a)-5(f) in
`
`the Disclosure show multiple pulses of the pulsed laser at a circuit location (p. 11,
`
`ll. 8-13), the above descriptions in the Disclosure provide support for the
`
`“determining a second plurality of samples of a second response signal output by
`
`the electronic circuit during the period when the second laser beam pulse of the
`
`pulsed laser beam is radiated on the first location of the electronic circuit.”
`
`The Disclosure provides support for “accumulating the first and second
`
`plurality of samples to generate a value,” for example, at p. 8, ll. 30-32. In
`
`addition, the Disclosure, at p. 16, ll. 15-30, describes how the samples of the
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`response signal at a location (S(xi, yi)(t)) are averaged over N laser pulses, with each
`
`pulse being represented by the accumulation over M samples to generate a value I
`
`equal to “ "# ∑
`#10"
`
`∑
`./0"
`
`S(’(,*()(t)…
`
`” The Disclosure provides support for
`
`“generating a test result based on the value,” for example, at p. 9, ll. 1-10,
`
`describing the generation of a digital image with pixel values (e.g., pixel
`
`brightness), resulting from the formula of p. 16 accumulating the signal samples.
`
`2.
`
`Proposed Claim 31
`
`The Disclosure provides support for “an apparatus, comprising a pulsed laser
`
`beam source,” for example, at p. 5, ll. 1-3, 32. The Disclosure provides support for
`
`“the pulsed laser beam source radiates a plurality of pulses of a laser beam onto
`
`
`
`16
`
`
`
`each of a plurality of locations on an electronic circuit,” for example, at p. 5, ll. 22-
`
`25, describing moving the laser beam source “according to a pattern over a
`
`plurality of locations on the electronic circuit.” Further, as noted above, Figs. 5(a)-
`
`5(f) and p. 11, ll. 8-13 in the Disclosure show that at each location, the laser beam
`
`source radiates a plurality of pulses (shown as two pulses). The same description
`
`on p. 5 of the Disclosure also provides support for “a control system operable to
`
`direct the pulsed laser beam source to dwell on each location of the plurality of
`
`locations on the electronic circuit,” also described at p. 3, ll. 12-13 and p. 8, ll. 1-9.
`
`The Disclosure provides support for a measuring circuit, wherein the
`
`measuring circuit determines a plurality of samples of a response signal output by
`
`the electronic circuit during the period when each pulse of the plurality of pulses of
`
`the pulsed laser beam is radiated on each location on the electronic circuit while
`
`the pulsed laser beam is dwelling on each location,” for example, at p. 6, ll. 16-20,
`
`describing the measuring circuit 107, and at p. 13, ll. 27-30, describing, in
`
`connection with Fig. 6, the determining of samples for “the sampled response
`
`signal during the period when the laser beam is radiating, tON,” which is also
`
`referred to at p. 17, ll. 1-3. The multiple samples of a response signal output by the
`
`electronic circuit during the period when each pulse is radiated also described by
`
`way of example as the “2000 sample values during the radiating period” in p. 15,
`
`ll. 5-9. Figs. 5(a)-5(f) of the Disclosure also provide support for the “plurality of
`
`
`
`17
`
`
`
`pulses” at each location of the circuit, also shown at pp. 16, l. 27 to 17, l. 3.
`
`The Disclosure provides support for “a signal processor” at p. 3, ll. 16-18
`
`and pp. 6, l. 32 to 7, l. 6, for example. The Disclosure provides support for “the
`
`signal processor accumulates the plurality of samples from each of the response
`
`signals output for each location to generate a value for each location,” for example,
`
`at p. 7, l. 1. The specifics of the accumulation of samples of the multiple responses
`
`signals for each location are further supported in the Disclosure at p. 16, ll. 15-30,
`
`describing accumulation of multiple signal samples (S(xi, yi)(t)) from 1 to M samples
`
`per pulse and average
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