`
`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
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
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`
`
`
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
`
`
`
`CONF {MATION NO.
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`12/379,415
`
`02/20/2009
`
`Yasuhiro Omura
`
`258882000102
`
`8093
`
`01/07/2011
`7590
`25227
`M0NRLSON&EOENSTER LLE
`1650 TYSONS BOULEVARD
`SUITE 400
`NCLEANVALAAL
`
`FINEMAN, LEE A
`
`2872
`
`mm
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`
`
`
`NOT 7ICATION DATE
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`DELIVERY MODE
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`01/07/201 1
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`ELECTRONIC
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`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):
`EOfficeVA @ m0f0.c0m
`drcaldwell @ m0f0.c0m
`
`gpaulazzo @ m0f0.c0m
`
`PTOL—90A (Rev. 04/07)
`
`1
`
`ZEISS 1138
`Zeiss v. Nikon
`
`|PR2013-00363
`
`1
`
`ZEISS 1138
`Zeiss v. Nikon
`IPR2013-00363
`
`

`

`
`Application No.
`Applicant(s)
`
`Office Action Summary
`
`12/379,415
`
`Examiner
`LEE FINEMAN
`
`OMURA, YASUHIRO
`
`Art Unit
`2872
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1. 136( a).
`In no event however may a reply be timely filed
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
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`1)IZI Responsive to communication(s) filed on 22 October 2010.
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`a)I:l This action is FINAL.
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`2b)IZ| This action is non-final.
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`3)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`4)IXI Claim(s) fl) is/are pending in the application.
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`4a) Of the above claim(s) _ is/are withdrawn from consideration.
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`5)I:I Claim(s) _ is/are allowed.
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`6)|Zl Claim(s
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`1-_20 is/are rejected.
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`)
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`)
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`(
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`(
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`Application Papers
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`is/are objected to.
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`are subject to restriction and/or election requirement.
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`9)IXI The specification is objected to by the Examiner.
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`0)IZI The drawing(s) filed on 20 February 2009 is/are: a)I:l accepted or b)|Zl objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`11)|:l The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)lZ| AII
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`b)I:l Some * c)|:l None of:
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`LIZI Certified copies of the priority documents have been received.
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`2.|:I Certified copies of the priority documents have been received in Application No. _
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`3.|:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) I] Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) E Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| DateW.
`US. Patent and Trademark Office
`
`4) D Interview Summary (PTO-413)
`Paper N°(5 )/Mai| Date. _
`5)I:I Notice 0f Informal Patent Application
`)6|:| Other:
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`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20101223
`
`2
`
`
`
`2
`
`

`

`Continuation Sheet (PTOL-326)
`
`Application No. 12/379,415
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`Continuation of Attachment(s) 3). Information Disclosure Statement(s) (PTO/SB/O8), Paper No(s)/Mai| Date
`:2/20/09,12/09/09,1/19/10,2/17/10,4/27/10,7/16/10,8/17/10,10/14/10.
`
`3
`
`

`

`Application/Control Number: 12/379,415
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`Page 2
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`Art Unit: 2872
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`DETAILED ACTION
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`Election/Restrictions
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`1.
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`Applicant’s election of Species I in the reply filed on 22 October 2010 is acknowledged.
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`Because applicant did not distinctly and specifically point out the supposed errors in the
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`restriction requirement, the election has been treated as an election without traverse (MPEP
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`§ 818.03(a)).
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`Information Disclosure Statement
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`2.
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`The information disclosure statement filed 20 February 2009 fails to comply with 37
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`CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non—
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`patent literature publication or that portion which caused it to be listed; and all other information
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`or that portion which caused it to be listed. Although the patents listed in the “US patent
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`documents” section were considered, items listed in the “Foreign Patent Documents” section and
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`the “Other Documents” section of PTO— 1449 have been lined through and not considered, as
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`they were not supplied with the instant application or the parent application.
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`Priority
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`3.
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`Applicant’s claim for the benefit of a prior—filed application under 35 U.S.C. 119(e) or
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`under 35 U.S.C. 120, 121, or 365(c) is acknowledged. Applicant has not complied with one or
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`more conditions for receiVing the benefit of an earlier filing date under 35 U.S.C. 119(e) or 35
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`U.S.C. 120 as follows:
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`4
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`

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`Application/Control Number: 12/379,415
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`Page 3
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`Art Unit: 2872
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`Applicant states that this application is a continuation or divisional application of the
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`prior—filed application. A continuation or divisional application cannot include new matter.
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`Applicant is required to change the relationship (continuation or divisional application) to
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`continuation—in—part because this application contains new matter in the claims that was not
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`disclosed in the prior—filed application: For example, the parent application does not include any
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`lens diameters much less maximum diameters of different lens units. It is noted that drawings are
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`not to scale and cannot be considered support for these limitations.
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`Drawings
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`4.
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`The drawings are objected to under 37 CFR l.83(a). The drawings must show every
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`feature of the invention specified in the claims. Therefore, a first lens unit, a second lens unit, a
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`third lens unit and a fourth lens unit, an effective imaging area of a predetermined shape not
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`including the optical system, intermediate image, an optically conjugate point of the aperture
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`stop, and wherein the two mirrors away from an optically conjugate point of the aperture stop
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`must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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`Corrected drawing sheets in compliance with 37 CFR l.l2l(d) are required in reply to
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`the Office action to avoid abandonment of the application. Any amended replacement drawing
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`sheet should include all of the figures appearing on the immediate prior version of the sheet,
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`even if only one figure is being amended. The figure or figure number of an amended drawing
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`should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure
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`must be removed from the replacement sheet, and where necessary, the remaining figures must
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`be renumbered and appropriate changes made to the brief description of the several views of the
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`5
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`

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`Application/Control Number: 12/379,415
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`Page 4
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`Art Unit: 2872
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`drawings for consistency. Additional replacement sheets may be necessary to show the
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`renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an
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`application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet”
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`pursuant to 37 CFR l.l2l(d). If the changes are not accepted by the examiner, the applicant will
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`be notified and informed of any required corrective action in the next Office action. The
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`objection to the drawings will not be held in abeyance.
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`Specification
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`5.
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`The lengthy specification has not been checked to the extent necessary to determine the
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`presence of all possible minor errors. Applicant's cooperation is requested in correcting any
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`errors of which applicant may become aware in the specification.
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`6.
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`The specification is objected to as failing to provide proper antecedent basis for the
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`claimed subject matter. See 37 CFR l.75(d)(l) and MPEP § 608.0l(o). Correction of the
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`following is required: The specification fails to include the following limitations detailed in the
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`claims:
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`A first lens unit, a second lens unit, a third lens unit and a fourth lens unit (at least with
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`respect to the embodiment shown in fig. 5), wherein a maximum diameter of the fourth lens unit
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`larger than a maximum diameter of the third lens unit, including an effective imaging area of a
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`predetermined shape not including the optical system, wherein a diameter of the second lens unit
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`larger than the diameter of the third lens unit, wherein an optically conjugate point of the
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`6
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`

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`Application/Control Number: 12/379,415
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`Page 5
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`Art Unit: 2872
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`aperture stop is formed between the first lens unit and the second lens unit, and wherein the two
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`mirrors away from an optically conjugate point of the aperture stop.
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`Claim Objections
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`7.
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`Claim 18 is objected to under 37 CFR 1.75(c), as being of improper dependent form for
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`failing to further limit the subject matter of a preVious claim. Applicant is required to cancel the
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`claim(s), or amend the claim(s) to place the claim(s) in proper dependent form, or rewrite the
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`claim(s) in independent form. Claim 18 only includes the limitation “number of mirrors of the
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`mirror group is two.” However claim 1, from which claim 18 depends already includes the
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`limitations “a mirror group...including of two mirrors” and “wherein number of mirrors
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`belonging the immersion projection optical system are two.”
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`8.
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`Claims 1—20 are objected to because of the following informalities:
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`Regarding claim 1, the limitation on line 5 should read ——a first lens unit including at least
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`tw_o [[to]] lenses——; the limitation “a mirror group, arranged between the first lens unit and the
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`image surface, including of two mirrors” is grammatically incorrect; the limitation “a fourth
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`lens unit, arranged between the second lens unit and the image surface, including a liquid
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`immersed optical element which is contact with a liquid and a plurality of lenses between the
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`third lens unit and the liquid immersed optical element” is grammatically incorrect; the limitation
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`“wherein number of mirrors belonging the immersion projection optical system are two” is
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`grammatically incorrect; and the final limitation should read ——wherein every transmitting
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`7
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`

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`Application/Control Number: 12/379,415
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`Page 6
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`Art Unit: 2872
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`member [[r]]and every mirror constituting the projection optical system are arranged along a
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`single straight optical aXis——.
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`Regarding claim 2, the claim is not a proper grammatical sentence.
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`Regarding claim 5, the claim is not a proper grammatical sentence.
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`Regarding claim 6, the limitation “wherein the two mirrors of the mirror group is two
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`concave mirrors.” is grammatically incorrect.
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`Regarding claim 9, the claim is not a proper grammatical sentence.
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`Regarding claim 11, the claim is not a proper grammatical sentence.
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`Regarding claim 12, the claim is not a proper grammatical sentence.
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`Regarding claim 15, the claim is not a proper grammatical sentence.
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`Regarding claim 16, the claim is not a proper grammatical sentence.
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`The dependent claims inherit the deficiencies of the claims from which they depend.
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`Appropriate correction is required.
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`Claim Rejections - 35 USC § 112
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`9.
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`The following is a quotation of the second paragraph of 35 USC. 112:
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`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.
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`10.
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`Claim 2 is rejected under 35 USC. 112, second paragraph, as being indefinite for failing
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`to particularly point out and distinctly claim the subject matter which applicant regards as the
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`invention. The limitation “wherein the immersion projection optical system including an
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`effective imaging area of a predetermined shape not including the optical system” is confusing
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`and unclear. How can the optical system include something not including itself?
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`8
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`

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`Application/Control Number: 12/379,415
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`Page 7
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`Art Unit: 2872
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`Claim Rejections - 35 USC § 102
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`11.
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`The following is a quotation of the appropriate paragraphs of 35 USC. 102 that form the
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`basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless ,
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`(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on
`sale in this country, more than one year prior to the date of application for patent in the United States.
`
`(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed
`in the United States before the invention by the applicant for patent or (2) a patent granted on an application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this
`subsection of an application filed in the United States only if the international application designated the United
`States and was published under Article 21(2) of such treaty in the English language.
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`12.
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`Claims 1—4, 6—9, 16 and 18—20 are rejected under 35 USC. 102(e) as being anticipated by
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`Shafer et al., US 2005/0190435 A1 (henceforth Shafer).
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`Regarding claims 1—2, 6, 16 and 18, Shafer discloses in fig. 27 an immersion projection
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`optical system which images a pattern (page 2, section [0022]) provided in an object surface
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`(1303) of the immersion projection optical system onto an image surface (1302) of the
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`immersion projection optical system, comprising: a first lens unit including at least two lenses
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`(1310); a mirror group (1320), arranged between the first lens unit (1310) and the image surface
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`(1302), including two mirrors (1321,1322), wherein the two mirrors of the mirror group are two
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`concave mirrors (fig. 27); a second lens unit (28, 30), arranged between the mirror group (1320)
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`and the image surface (1302), which is a plurality of lenses (fig. 27); a third lens unit (32, 34),
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`arranged between the second lens unit and the image surface (fig. 27), including at least two
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`negative lenses (32, 34); and a fourth lens unit (rest of lenses in 1330), arranged between the
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`second lens unit and the image surface (fig. 27), including a liquid immersed optical element
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`(52) which is in contact with a liquid (H20, see table 27) and a plurality of lenses between the
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`9
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`

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`Application/Control Number: 12/379,415
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`Page 8
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`Art Unit: 2872
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`third lens unit and the liquid immersed optical element (fig. 27), wherein a maximum diameter of
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`the fourth lens unit larger than a maximum diameter of the third lens unit (table 27), wherein a
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`number of mirrors belonging the immersion projection optical system are two (1321,1322), and
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`wherein every transmitting member and every mirror constituting the projection optical system
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`are arranged along a single straight optical aXis (fig. 27). In as much as claim 2 is able to be
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`understood in light of the 35 U.S.C 112 rejection made above the rejection applies.
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`Regarding claims 3—4, Shafer further discloses wherein at least one intermediate image
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`(1304) of the object surface is formed between the first lens unit (1310) and the third lens unit
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`(32, 34); and wherein the at least one intermediate image (1304) is formed in an optical path
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`between the mirror group (1320) and the third lens unit (fig. 27).
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`Regarding claims 7—8, Shafer further discloses wherein the liquid immersed optical
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`element (52) is a positive lens including a conveX surface facing toward the object surface (fig.
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`27); and wherein the fourth lens unit including a meniscus lens (50) adjoining the positive lens
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`(fig. 27), a concave surface of the meniscus lens facing the conveX surface of the positive lens
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`(fig. 27).
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`Regarding claim 9, Shafer further discloses wherein a diameter of the second lens unit is
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`larger than the diameter of the third lens unit (table 27).
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`Regarding claim 19, Shafer further discloses a projection—exposure system (page 10,
`
`section [0141]) for use in microlithography including an illumination system (not shown) and the
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`immersion projection optical system as set forth above.
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`Regarding claim 20, Shafer further discloses a method for fabricating semiconductor
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`devices or other types of micro devices, comprising: providing a mask (at 1301) having a
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`10
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`10
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`

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`Application/Control Number: 12/379,415
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`Page 9
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`Art Unit: 2872
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`prescribed pattern;
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`illuminating the mask with ultraviolet light having a prescribed wavelength
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`(see page 10, section [0141]); projecting an image of the pattern onto a photosensitive substrate
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`(see page 2, section [0022]) arranged in the vicinity of the image plane of the immersion
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`projection optical as set forth above (see fig. 27); and providing a liquid (H20) between the
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`immersion projection optical system and the photosensitive substrate (fig. 27).
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`13.
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`Claims 1—4, 6—9 and 18—20 are rejected under 35 U.S.C. 102(b) as being anticipated by
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`Epple et al., US 2006/0119750 A1 (henceforth Epple).
`
`Regarding claims 1—2, 6 and 18, Epple discloses in fig. 1 an immersion projection optical
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`system which images a pattern (page 5, section [0045]) provided in an object surface (101) of the
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`immersion projection optical system onto an image surface (102) of the immersion projection
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`optical system, comprising: a first lens unit including at least two lenses(110); a mirror group
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`(120), arranged between the first lens unit (110) and the image surface (102), including two
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`mirrors (121,122), wherein the two mirrors of the mirror group are two concave mirrors (fig. 1);
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`a second lens unit (first lens after mirror 122), arranged between the mirror group (120) and the
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`image surface (102), including at least one lens (fig. 1); a third lens unit (next two lenses after the
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`second lens unit), arranged between the second lens unit and the image surface (fig. 1), including
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`at least two negative lenses (fig. 1); and a fourth lens unit (rest of lenses in 130), arranged
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`between the second lens unit and the image surface (fig. 1), including a liquid immersed optical
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`element (last lens next to I, see page 5, section [0052]) which is in contact with a liquid (1) and a
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`plurality of lenses between the third lens unit and the liquid immersed optical element (fig. 1),
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`11
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`11
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`

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`Application/Control Number: 12/379,415
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`Page 10
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`Art Unit: 2872
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`wherein a maximum diameter of the fourth lens unit larger than a maximum diameter of the third
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`lens unit (table 1), wherein a number of mirrors belonging the immersion projection optical
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`system are two (121,122), and wherein every transmitting member and every mirror constituting
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`the projection optical system are arranged along a single straight optical axis (fig. 1). In as much
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`as claim 2 is able to be understood in light of the 35 U.S.C 112 rejection made above the
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`rejection applies.
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`Regarding claims 3—4, Epple further discloses wherein at least one intermediate image
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`(104) of the object surface is formed between the first lens unit (110) and the third lens unit (fig.
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`1); and wherein the at least one intermediate image (104) is formed in an optical path between
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`the mirror group (120) and the third lens unit (fig. 1).
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`Regarding claims 7—8, Epple further discloses wherein the liquid immersed optical
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`element is a positive lens including a convex surface facing toward the object surface (fig. 1);
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`and wherein the fourth lens unit including a meniscus lens adjoining the positive lens (fig. 1), a
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`concave surface of the meniscus lens facing the convex surface of the positive lens (fig. 1).
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`Regarding claim 9, Epple further discloses wherein a diameter of the second lens unit is
`
`larger than the diameter of the third lens unit (table 1).
`
`Regarding claim 19, Epple further discloses a projection—exposure system (see, e.g., fig.
`
`6) for use in microlithography including an illumination system (not shown) and the immersion
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`projection optical system as set forth above.
`
`Regarding claim 20, Epple further discloses a method for fabricating semiconductor
`
`devices or other types of micro devices, comprising: providing a mask (at 101) having a
`
`prescribed pattern;
`
`illuminating the mask with ultraviolet light having a prescribed wavelength
`
`12
`
`12
`
`

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`Application/Control Number: 12/379,415
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`Page 11
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`Art Unit: 2872
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`(see page 5, section [0045]); projecting an image of the pattern onto a photosensitive substrate
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`(see page 1, section [0005]) arranged in the vicinity of the image plane of the immersion
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`projection optical as set forth above (see fig. 1); and providing a liquid (1) between the
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`immersion projection optical system and the photosensitive substrate (fig. 1).
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`Claim Rejections - 35 USC § 103
`
`14.
`
`The following is a quotation of 35 USC. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`15.
`
`Claims 5, 10—12 and 14 are rejected under 35 USC. 103(a) as being unpatentable over
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`Epple.
`
`Regarding claims 5, 10—12 and 14—15, Epple discloses the claimed invention except for
`
`wherein the fourth lens unit includes an aperture stop arranged between a plurality of lenses and
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`the liquid immersed optical element. However, Epple further discloses a pupil (P3) in the fourth
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`lens unit between a plurality of lenses and the liquid immersed optical element. Official notice is
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`taken that it is extremely well known to have aperture stops arranged at the pupil plane to
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`remove stray background light or adjust brightness. Therefore, it would have been obvious to one
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`of ordinary skill in the art at the time the invention was made to put an aperture stop at pupil P3
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`of Epple to further remove stray background light or adjust brightness. Regarding claims 10—11,
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`it is noted that the other pupils (P1 and P2) are considered optically conjugate points to P3 and
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`therefore an optically conjugate point of the aperture stop is formed between the first lens unit
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`13
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`13
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`

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`Application/Control Number: 12/379,415
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`Page 12
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`Art Unit: 2872
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`and the second lens unit (fig. 1) and wherein the two mirrors are away from an optically
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`conjugate point of the aperture stop (fig. 1, in at least so far as they are not at the same spot).
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`Regarding claim 12, there are at least two positive lenses between the aperture stop (at P3) and
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`the liquid immersed optical element (fig. 1). Regarding claims 14—15, there is a meniscus lens
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`(lens closest to third lens unit) arranged between the third lens unit and the aperture stop (fig. 1),
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`whose concave surface facing the third lens unit (fig. 1), and wherein the meniscus lens of the
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`fourth lens unit is arranged adjacent to the third lens unit (fig. 1).
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`16.
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`Claim 17 is rejected under 35 U.S.C. 103(a) as being unpatentable over Shafer.
`
`Shafer discloses the claimed invention except for further comprising a lens arranged
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`between the two mirrors of the mirror group. However, Shafer further teaches on page 5, section
`
`[0072] that is useful to have at least one at least one lens arranged between an intermediate
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`image and the associated concave mirror, wherein at least one surface of the lens is aspheric to
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`correct for field aberrations. Therefore, it would have been obvious to one of ordinary skill in the
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`art at the time the invention was made to have a lens arranged between the two mirrors of the
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`mirror group to correct for field aberrations (Shafer, page 5, section [0072]).
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to LEE FINEMAN whose telephone number is (571)272—2313. The
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`examiner can normally be reached on Monday — Friday 8:00 - 5:30.
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`Application/Control Number: 12/379,415
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`Page 13
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`Art Unit: 2872
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Stephone B. Allen can be reached on (571) 272—2434. The fax phone number for the
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`organization Where this application or proceeding is assigned is 571—273—8300.
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
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`/Lee Fineman/
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`Primary Examiner, Art Unit 2872
`3 January 2011
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