US 10539489

Patent Overview — US 10539489 B2

Title: Methods for acquiring planar view STEM images of device structures.

Patent number: US10539489B2. Application number: US16/526,704. Other version: US20190353566A1.

Inventor(s): Jamie C. Porter; Scott M. Williams; Clint R. Davlin; Joel B. LeBret.

Assignee: Micron Technology Inc (listed as both original and current assignee; the source notes listed assignees may be inaccurate and that no legal analysis was performed).

Dates (as stated in the source, which labels priority/legal status as assumptions, not legal conclusions): Priority date 2018-03-30; filing date 2019-07-30; publication date 2020-01-21; granted 2020-01-21. Priority is claimed from US15/984,581 (2018-05-21), corresponding to patent US10410829B1. Anticipated expiration listed as 2038-05-21. Legal status: Active.

Purpose and plain-language scope: The patent concerns methods for acquiring planar view STEM (scanning transmission electron microscopy) images of device structures. In plain terms, the process centers on preparing a lamella (a thin sample slice) from a wafer, using milling (including ion-beam techniques such as focused ion beam) to shape it for imaging, with related steps involving deposition and cleaning. The recurring prior-art keywords are lamella, wafer, initial, milling, and planar; the claim/abstract/description terms include lamella, milling, ion-beam, carbon, sample, material, imaging method, and deposition. The disclosure discusses wafer, substrate, silicon, semiconductor, electron-beam, dual-beam, and TEM/STEM contexts, and mentions protective layers and markers in the description.

Source: https://patents.google.com/patent/US10539489/en

What this excerpt does not establish: The excerpt omits the full claim text, abstract prose, and detailed description, so it cannot support statements about specific claimed steps, claim scope, or embodiments. It also does not establish litigation, ownership transfers, validity, patentability, or prior-art status; the source explicitly treats listed assignees, priority date, and legal status as non-legal assumptions.

I'll search for litigation involving US patent 10539489.

Let me search more specific litigation sources.

Let me try a few more targeted searches to confirm.

Answer: No litigation found for US Patent 10,539,489

I searched for litigation specifically involving US Patent No. 10,539,489 ("Methods for acquiring planar view STEM images of device structures," assigned to Micron Technology, Inc.). I found no record of any litigation — district court, ITC, or Federal Circuit — asserting or otherwise involving this patent.

What the searches returned

Important caveats (I want to be explicit rather than overstate)

1. This is a negative result based on limited searching. My queries were web searches only. I was not able to directly query PACER, the Unified Patents litigation portal (portal.unifiedpatents.com/litigation/caselist), Docket Navigator, Lex Machina, or the ITC EDIS database within this session. Those are the authoritative sources for a definitive list.
2. A negative result is plausible here. This patent is a semiconductor test/sample-preparation metrology patent (FIB lift-out of lamellae for TEM/STEM imaging) owned by an operating company (Micron). Patents of this type are typically maintained as defensive portfolio assets and are rarely asserted in litigation, which is consistent with finding no cases.
3. Absence of evidence is not proof of absence. It is possible a case exists (e.g., a recently filed complaint, a consolidated action where '489 is one of many asserted patents, or a case indexed only in a paid database) that my searches did not surface.

Recommended next steps to confirm definitively

• Unified Patents litigation portal: search portal.unifiedpatents.com/litigation for patent number 10539489 (and the family members 10,410,829 and 15/984,581).
• PACER / CourtListener RECAP: free-text search for the patent number across district court dockets.
• USPTO Patent Center / Global Dossier: the "Litigation" and "Third-Party Submissions" tabs for the patent's family.
• Docket Navigator / Lex Machina / Westlaw Litigation Analytics (paid): authoritative for asserted-patent tracking.

If you'd like, I can attempt more targeted searches against specific dockets (e.g., W.D. Tex., D. Del., E.D. Tex.) once more search capacity is available.

Bottom line: Based on the searches performed, I found no known litigation involving US 10,539,489, but I cannot rule it out conclusively and recommend verification against PACER/Unified Patents before relying on this as a definitive "no litigation" finding.

I'll verify against the canonical structured data and then run targeted searches to see whether any PTAB proceeding exists beyond the ODP index.

Let me run a few more targeted checks before concluding.

One more pass to check docket aggregators and any litigation-adjacent challenge.

Proceedings overview

Total AIA trial proceedings on file for US 10539489: 0. The structured "PTAB proceedings on file" block supplied with this task — sourced from the USPTO Open Data Portal (ODP) and described as unindexed for any AIA trial — returns no IPR, PGR, or CBM for this patent, and my independent web checks surfaced none either (no petition, no institution decision, no Final Written Decision, no PTAB appeal, and no Federal Circuit opinion naming the patent). Breakdown by status is therefore: active — 0; claims invalidated — 0; claims sustained — 0; settled — 0; institution denied — 0.

Bottom line for a defendant: this is not a "hardened patent that survived two IPRs" story, and it is not a "claims 1-5 canceled, the troll has no case" story. It is a clean-slate patent — every claim carries its original, unadjudicated scope. All validity attacks are still available to you, but they must be built from scratch, and there is no PTAB record to leverage, no estoppel to exploit, and no adverse FWD to quote.

Because there are no proceedings, there are no per-proceeding entries to report. I am not going to invent proceeding numbers to fill the template — the correct output is an empty list.

(no proceedings)

There are no ### {PROCEEDING_NUMBER} — {Petitioner} v. {Patent Owner} entries. Specifically:

• Type: n/a
• Filed: n/a
• Status: n/a (nothing on file)
• Judge panel: none assigned — no trial was ever instituted
• Petition grounds: none of record
• Institution decision: none of record
• Final Written Decision: none issued — so no claim of US 10539489 has ever been canceled or confirmed at the PTAB
• Settlement / termination: n/a
• Appeal: none — no PTAB decision exists to appeal
• Defensive value: no estoppel, no cancellation, no useful PTAB admissions by the patent owner

Strategic summary

Claim status: 100% untested. Every claim of US 10539489 — and I deliberately avoid assigning claim numbers I cannot verify against a real FWD — remains in its as-issued form. There are no canceled claims, no surviving-after-IPR claims, and no narrowed claims. Any claim you are accused of infringing is exactly the claim the examiner allowed on 2020-01-21.

Estoppel landscape: nothing to work with, and nothing to fear from it. Because no petitioner ever reached a Final Written Decision, § 315(e)(2) estoppel has never attached to anyone as to this patent. Conversely, you enjoy no benefit from someone else's prior challenge: there is no earlier IPR art set, no institution decision reasoning, and no Board claim constructions to import into a district court case. If you want PTAB relief, you would be the first petitioner, and you would bear the full § 311(b) burden from a standing start under the current discretionary-denial regime (Fintiv-type analysis and the Director's discretionary-denial practice).

Pattern signals: none. No repeat petitioner (there is no petitioner at all), no patent-owner appeal activity (there is nothing to appeal), and no defensive aggregator such as Unified Patents in the chain. The patent is held by Micron Technology, Inc. (current and original assignee), with named inventors Jamie C. Porter, Scott M. Williams, Clint R. Davlin, and Joel B. LeBret. One relevant context point: this is a method-of-preparing-a-microscopy-sample patent (lamella prep for TEM/STEM), not a product/device claim set — which materially lowers the odds of it being a mass-assertion litigation patent, and may partly explain the absence of IPRs. That is a technology-context observation, not evidence about any particular litigation.

Family/priority note (relevant if you ever file): per the patent's own CROSS-REFERENCE section, US 10539489 is a continuation of US 16/135,821 (filed 2018-09-19), which is a continuation-in-part of US 15/984,581 (filed 2018-05-21), which claims benefit of US provisional 62/650,529 (filed 2018-03-30). Google Patents lists an anticipated expiration of 2038-05-21 and an external priority claim from US 15/984,581 (related issued patent US 10,410,829 B1). If you do challenge, the CIP/continuation chain is where your § 102/§ 103 priority-date fights will live — determine which claims get which effective filing date before you invest in art.

Recommended next steps

• No PTAB activity exists — say so plainly, and do not build a strategy on a record that isn't there. There is no FWD to link to, and I will not manufacture a CourtListener or PTAB E2E citation for a decision that was never issued. If you need the definitive, real-time confirmation before relying on this, check: USPTO PTAB E2E (https://ptacts.uspto.gov/ptacts/) and the USPTO ODP / Patent Trial and Appeal Board API for application 16/526,704, plus CourtListener (https://www.courtlistener.com) for any CAFC appeal naming the patent. My web search found none as of 2026-09-29.
• Treat the absence as a signal, not a shield. Well-asserted patents eventually attract IPRs; a clean PTAB record is consistent with this patent not being in active mass assertion, or with its being recent enough (issued 2020-01-21) and specialized enough (FA/metrology sample prep) to have flown under challengers' radar. It is not evidence of validity.
• Do a litigation/assertion check before committing to any PTAB strategy. I could not confirm from the available sources whether US 10539489 has ever been asserted in district court or the ITC. Confirm that via PACER/Docket Alarm and the ITC EDIS. If it has been asserted against you, note the two deadlines that matter: IPR petitions must be filed within 1 year of service of a complaint alleging infringement (§ 315(b)), and a parallel litigation posture will drive the discretionary-denial analysis for any petition you file.
• If you do file, the statutory clock is your planning anchor. From institution, the Board must reach an FWD within 1 year (extendable to 18 months for good cause) under § 316(a)(11), with a 3-month deadline for the institution decision under § 314(b) measured from the patent owner's preliminary-response window.
• Preserve your § 102/§ 103 options now. Since no estoppel exists, you remain free to raise any printed publication or patent art, in any combination, in either forum — but a first-filed IPR against a clean patent is a full-merits undertaking, so budget for a complete expert record rather than a "piggyback on the prior IPR" effort.

Confidence and caveats: I have high confidence that no AIA trial proceeding appears for this patent in the ODP-derived structured data provided (that is the canonical list, and it is empty). I have moderate confidence that this reflects the complete real-world picture, because I could not run an exhaustive, authoritative PTAB docket query — my checks were keyword web searches, which returned only the patent itself and unrelated proceedings. I found no evidence of a petition under any number, so I have invented none. If ODP ingest lags for a recently filed petition (a real possibility, and the reason the task flags it), a newly filed IPR could exist that neither source has indexed; verify directly in PTAB E2E before relying on the zero-count.

I'll research the assignment record for US 10,539,489, starting with searches to locate the recorded assignments and correspondents.

Let me look for the specific assignment records and the Google Patents legal events for this patent.

Let me search for the recorded assignment details for this specific application and family.

Assignment Analysis — US Patent 10,539,489

Data-integrity note up front. I was not able to retrieve the actual recorded-assignment entries (reel/frame, conveyance, correspondent) for US 10,539,489 from the USPTO Assignment Center. My session tools return web-search results only and did not surface the patent's Assignment Abstract of Title. Everything below is grounded in (a) the authoritative full patent text, (b) the patent family/priority data it recites, and (c) verification of the assignee's corporate status. Where I could not confirm a primary-source fact, I say so explicitly rather than filling the gap. I have not fabricated any reel/frame, correspondent, or conveyance.

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Inventors

Named on the face of US 10,539,489 (all four, per the issued patent and Google Patents bibliographic data):

Unusual-pattern check — not present (with a caveat). There is no evidence of inventors departing Micron within 12 months of filing, nor of a fire-sale pattern. All four are consistent with Micron's Boise, Idaho failure-analysis/metrology engineering staff (the subject matter — FIB lift-out lamella prep for in-house TEM/STEM process control — is Micron internal metrology work). Caveat: I could not obtain individual employment start/end dates from a primary source; "no departure signal" reflects absence of any such evidence, not a positive confirmation.

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Original assignee

Micron Technology, Inc. (Boise, Idaho), per the issued patent's Assignee field and Google Patents "Current Assignee / Original Assignee."

• Primary line of business: semiconductor memory and storage (DRAM, NAND, HBM, SSD/related) — a large operating company (NAS-DAQ-listed, "large entity" for USPTO fee purposes).
• Does Micron ship a product embodying the claims? Not in the ordinary sense. The claims are method claims for preparing a TEM/STEM lamella (FIB milling, lift-out, re-placing the lamella on the wafer, re-milling a "planar lamella"). These are internal failure-analysis / process-control methods practiced in Micron's own fabs, not a product sold in commerce. So Micron is an operating company that practices the patent internally; it does not sell a product covered by the claims. This distinction matters for the verdict below.
• Current status: operating (no bankruptcy, acquisition, or dissolution signal found). Micron is actively litigating in 2023–2024 as a defendant in unrelated matters (e.g., Yangtze Memory Technologies v. Micron; Netlist v. Micron), which confirms it is a live operating company — but those cases involve different patents, not '489, and do not bear on this patent's ownership chain.

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Assignment timeline

Finding: I could not retrieve any recorded-assignment entry (reel/frame) for US 10,539,489 from the Assignment Center in this session. I therefore cannot present the chronological reel/frame list the template calls for, and I will not invent one.

What is established from primary/authoritative sources:

• 2018-03-30 — priority date (provisional application 62/650,529; the priority date is an assumption per Google Patents).
• 2018-05-21 — parent application 15/984,581 filed (this is the application that issued as US 10,410,829 B1, per the "Priority claimed from US15/984,581" event on the '489 Google Patents page).
• 2018-09-19 — application 16/135,821 filed (continuation, and a continuation-in-part of 15/984,581, per the '489 specification's Cross-Reference section).
• 2019-07-30 — application 16/526,704 filed (the application that issued as '489); continuation of 16/135,821.
• 2020-01-21 — US 10,539,489 B2 granted. Assignee of record at grant: Micron Technology, Inc.

The presence of Micron as Assignee on the face of the issued patent is itself evidence that the inventors' rights were assigned to Micron before grant (either by an application-time assignment or an inventor-to-Micron assignment recorded during prosecution). I could not confirm the reel/frame or correspondent for that assignment.

Correspondent — could not be confirmed for this patent. For context only (and not attributable to '489 without verification): Micron's patent-assignment recordings are commonly handled under Micron's USPTO Customer Number 79141 ("Micron Technology Inc. et al."), and a separate Micron application (16/653,062) shows correspondent WELLS ST. JOHN P.S. (Spokane, WA; submitter Bridget Wiseman). I flag these as possible patterns only — I have no evidence tying either correspondent to the '489 reel/frame.

No post-issuance (e.g., security-interest) assignment is confirmed for '489, and I found no record of one. Note that Micron has granted broad security interests over its patent portfolio in the past (e.g., U.S. Bank / Morgan Stanley collateral-agent filings around 2016–2018, and a JPMorgan Chase collateral-agent grant to Micron Semiconductor Products, Inc. in 2018), but I could not verify whether '489 is captured under any such portfolio-level security agreement.

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Timeline diagram

timeline
    title Ownership of US 10539489
    2018 : Provisional filed
         : Parent application filed
         : Continuation filed
    2019 : Current application filed as 16526704
    2020 : Patent issued to Micron Technology Inc

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NPE / troll-pattern signals

1. Shell-entity transfer — not present. No evidence the patent ever left Micron. Assignee of record is Micron Technology, Inc., an operating company at its Boise, Idaho headquarters address (not a registered-agent service address). I could confirm no transfer to an "IP / Licensing / Holdings / Ventures" entity.
2. Known asserter in the chain — not present. No assignee in the chain matches the Acacia / Marathon / IV / Wi-LAN / Conversant / Round Rock / Spangenberg etc. lists. Current assignee is Micron.
3. Repeat correspondent across the chain — unclear (no data). I could not retrieve the correspondent of record for any '489 assignment. No recurrence finding can be made.
4. Cascading transfers — not present. No consecutive LLC-to-LLC assignments observed; the only ownership relationship evident is inventor→Micron.
5. Pre-litigation transfer — not present. The prior litigation section (authoritative) found no litigation naming '489, so no transfer-before-suit pattern exists.
6. Bankruptcy fire-sale — not present. Micron has not filed Chapter 7/11; no asset-sale signal.
7. Privateering — not present. No transfer to a third-party NPE; Micron retains the patent.
8. Defensive aggregator — not present. The chain does not terminate at RPX / AST / LOT / Unified / OIN. '489 remains with the operating company.

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Verdict

Defensive / non-asserting.

Justification: The patent's own front page lists Micron Technology, Inc. as assignee, and I found no recorded assignment moving '489 away from that operating company, no NPE in the chain, and no litigation naming the patent (per the authoritative litigation section). The claims cover internal FIB/lamella sample-prep methods Micron practices in its own fabs rather than a sold product, so this is a non-asserted operating-company portfolio asset — not an NPE play. Definitional caveat: the five verdict labels assume "defensive/non-asserting" means termination at a defensive aggregator (RPX/AST/LOT/Unified); here the patent is simply retained unasserted by an operating company, which is the closest available category but is not a defensive-aggregator outcome. If strict definitions are applied, the honest alternative is Insufficient data, because I could not retrieve the Assignment Center reel/frame records to positively confirm the complete chain.

Verify at: USPTO Assignment Center — https://assignmentcenter.uspto.gov/ (search patent number 10539489, and family members US 10,410,829 and application 15/984,581); mirrored at https://assignment.uspto.gov/patent/index.html.

Bottom line: On the evidence available, US 10,539,489 appears to be a Micron-owned, unasserted operating-company patent with no NPE/troll signals. I could not obtain the reel/frame-level assignment record in this session, so treat the "no post-issuance assignments" conclusion as provisional pending a direct Assignment Center lookup.

I'll research the prior-art citations for US 10,539,489. Let me start with several targeted searches.

I found the key "References Cited" section. Let me retrieve the complete citation list and verify details.

Prior-Art Analysis — US 10,539,489 B2

1. Patent identified (literal reading of the identifier)

Family members relevant to prior art framing (but not prior art to this patent — same family): US 62/650,529; US 15/984,581 → US 10,410,829 B1; US 16/135,821 → US 2019/0304744 A1; US 16/526,704 → US 2019/0353566 A1.

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2. What I could and could not verify (read this before relying on the mapping)

• I located the (56) "References Cited" block reproduced from the granted‑patent PDF (source: patentimages.storage.googleapis.com/.../US10539489.pdf) and cross‑checked it against the Google Patents record (https://patents.google.com/patent/US10539489B2/en) and the pending‑application text at Justia (patents.justia.com/patent/20190353566).
• I did not obtain the issued claim set verbatim. The analysis below therefore assigns references to claim families reconstructed from the specification's "Some embodiments of the present disclosure" paragraphs and the abstract — these normally track the claims, but claim numbers must be confirmed against the granted claims (USPTO Patent Center / Global Dossier). I flag every place where a number is inferred.
• The citation snippet was partially truncated. There may be additional Foreign Patent Documents and/or an "Other Publications" (non‑patent literature) list on the front page that I could not see. No NPL citations were visible.
• The inventor name printed for US 9,576,772 B1 in the OCR reads "Aijavac" — this is an OCR artifact and is preserved literally above; treat the inventor field as unverified.
• One inconsistency worth flagging: the task header states "Current Date: April 26, 2026," while the environment date is 2026‑09‑29 and the patent fetch stamp is 2026‑09‑24. This does not affect the prior‑art dates below (all are pre‑2018 priority), but I am noting it per the operating rules.

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3. Front-page citation list — US 10,539,489 B2, item (56)

U.S. Patent Documents

References 1, 2, 3 and 9 are also cited in the body of the specification (the applicant incorporated them by reference for gas-delivery, asymmetrical-lamella, and dual-beam-system disclosure).

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4. Reference-by-reference analysis

General caveat on § 102: Anticipation requires every element of an issued claim in a single reference, arranged as claimed. None of the references below was reviewed against the verbatim claim language in this session, so the "§ 102" designations are preliminary, screening-level assessments, not infringement/validity opinions.

4.1 US 5,435,850 A — Rasmussen, "Gas injection system" (issued 1995‑07‑25)

• Citation: U.S. Patent 5,435,850 A, issued Jul. 25, 1995 (as printed 7/1995).
• Description: Apparatus for injecting a process gas into the vacuum chamber of a charged-particle-beam instrument (precursor delivery for FIB-induced deposition/etching). The '489 specification cites it as an example of the gas delivery system 146 used to deposit the carbon nest 226, protective layer 208, and adhesion material 232.
• Potential § 102 anticipation: None. An apparatus claim for gas injection does not disclose the claimed method steps (milling an initial lamella; lifting it out; placing it flat on the wafer surface; milling a planar lamella; placing on a carbon grid).
• Better characterization: § 103 auxiliary reference for the "depositing material/nest via a gas delivery system" sub‑limitations, if any dependent claim recites them.

4.2 US 5,851,413 A — Casella et al., "Gas delivery system" (issued 1998‑12‑22)

• Citation: U.S. Patent 5,851,413 A, issued Dec. 22, 1998 (as printed 12/1998).
• Description: Gas-delivery hardware for a FIB system; same role in the specification as 4.1 (gas delivery system 146).
• Potential § 102 anticipation: None (same reasoning as 4.1).
• Better characterization: § 103 auxiliary, duplicative of 4.1.

4.3 US 8,884,247 B2 — Miller et al. (issued 2014‑11‑11) ★ closest lamella-art reference

• Citation: U.S. Patent 8,884,247 B2, issued Nov. 11, 2014.
• Description: Directed to asymmetrical lamellae (e.g., convex-quadrilateral / right-trapezoid shapes with a straight side and an obtuse side) made by FIB lift‑out, which aid in identifying a region of interest during TEM/STEM sample preparation. The '489 specification expressly states the initial lamella "may include any of the asymmetrical lamellae described in U.S. Pat. No. 8,884,247, to Miller et al." and "may be formed via any of the manners described in" it.
• Potential § 102 anticipation: Partial / claim‑family level. Because the specification concedes that the initial lamella formation (milling, shaping, tab cutting, lift‑out) is the '247 disclosure, any claim limited to "milling an initial lamella within a wafer; lifting the initial lamella out of the wafer" would face a serious § 102 challenge. However, the independent claims also require placing the lamella flat on the wafer's upper surface and milling a second (planar/shallow) lamella that includes the upper portion of the initial lamella, then placing on a carbon grid — a combination not disclosed by '247 alone. So '247 is unlikely to anticipate a full independent claim; it is a strong § 103 primary reference.
• Claim families implicated: Family A (initial‑lamella formation/step) and Family D, preliminarily.

4.4 US 9,576,772 B1 — inventor printed "Aijavac," classified H01J 37/28 (issued 2/2017)

• Citation: U.S. Patent 9,576,772 B1, granted Feb. 2017 (exact day not verified).
• Description: Classified in H01J 37/28 — "Electron or ion microscopes … with scanning beams," i.e., SEM/FIB/STEM sample‑preparation or imaging subject matter. The specification does not discuss this reference by name.
• Potential § 102 anticipation: Cannot be confirmed in this session. Given its classification, it could be relevant to the STEM‑imaging/plan‑view aspects of the claims; I could not retrieve its disclosure and will not guess at its content.
• Action: Pull the full text and confirm inventor/title, then re‑assess against claim families A–E.

4.5 US 2014/0061032 A1 — Miller et al., classified G01N 1/32 (published 2014‑03‑06) ★ closest "planar" reference

• Citation: U.S. Pub. 2014/0061032 A1, published Mar. 6, 2014; classification G01N 1/32 (Polishing; Etching) and 204/192.33 (sputter etching).
• Description: Appears directed to plan‑view TEM/STEM sample preparation (i.e., preparing a sample so internal structures are viewed from a plane parallel to the wafer surface) — precisely the subject matter of the '489 title and its "planar view" definitional passage.
• Potential § 102 anticipation: Highest screening priority. If the reference discloses plan‑view lamella preparation including lift‑out and re‑orientation onto a support, it is the best candidate to anticipate claims covering the "planar view image" outcome (claim families A–D, preliminarily). Its G01N 1/32 / sputter‑etching classification aligns with the ion‑milling/preparation steps recited.
• Caveat: I could not open the reference body text; the mapping is by classification and title‑level subject matter only. This must be verified element‑by‑element against the issued claims.

4.6 US 2014/0217283 A1 — Blackwood et al. (published 2014‑08‑07)

• Citation: U.S. Pub. 2014/0217283 A1, published Aug. 7, 2014.
• Description: Not verifiable in this session (title/disclosure not retrieved).
• Potential § 102 anticipation: Unassessed. Treat as a candidate § 103 secondary reference pending full‑text review; its issue date (2014) places it squarely within the relevant art window.

4.7 US 2015/0075972 A1 — Senowitz (published 2015‑03‑19)

• Citation: U.S. Pub. 2015/0075972 A1, published Mar. 19, 2015.
• Description: Not verifiable in this session; likely FIB sample extraction / lamella‑preparation art (consistent with the field and the inventor's known sample‑prep work at FEI/Thermo Fisher).
• Potential § 102 anticipation: Unassessed; plausible § 103 combination partner with 4.3/4.5 if it discloses the "place lamella flat and re‑mill" step.

4.8 US 2015/0369710 A1 — Fuller et al. (published 2015‑12‑24)

• Citation: U.S. Pub. 2015/0369710 A1, published Dec. 24, 2015.
• Description: Not verifiable in this session.
• Potential § 102 anticipation: Unassessed. Candidate § 103 secondary reference (e.g., for automated sample‑preparation or metrology aspects such as the Metrios‑type automated imaging/metrology limitation).

4.9 US 2017/0250055 A1 — Keady et al. (OCR: "Ready"), filed 2017‑05‑15, published 8/2017

• Citation: U.S. Pub. 2017/0250055 A1, filed May 15, 2017, published Aug. 2017 (day not verified).
• Description: The dual‑beam system disclosure that the '489 specification adopts as its FIG. 1 environment (SEM + angled FIB column, gas delivery system, micromanipulator, STEM detector, image‑recognition software). The specification states the dual beam system 110 "may include the dual beam system 110 described in U.S. Patent Publication No. 2017/0250055A1, to Keady et al."
• Potential § 102 anticipation: None of the method claim families. It discloses apparatus/environment, not the claimed sequence of milling a first lamella, re‑positioning it flat, and milling a second lamella that incorporates the first lamella's upper portion.
• Better characterization: § 103 auxiliary reference supplying the dual‑beam‑system/genus‑hardware teachings.

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5. Preliminary § 102 screening matrix

Claim families below are reconstructed from the '489 specification's summary paragraphs + abstract; numbering is indicative and must be confirmed.

Bottom line of the screening: The two Miller references (US 8,884,247 and US 2014/0061032) are the only cited documents that go to the core inventive concept (lamella formation and plan‑view preparation). The remaining cited documents are apparatus/auxiliary art (gas delivery; dual‑beam system) that supply environment or sub‑features and are § 103 material rather than § 102 art.

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6. The most relevant prior art (ranked, with claim impact)

1. US 2014/0061032 A1 (Miller et al.) — closest overall; the only cited reference whose subject matter is plan‑view sample preparation. Potential § 102 threat to claim families A and D; requires element‑by‑element verification.
2. US 8,884,247 B2 (Miller et al.) — the specification itself treats this as the source of the asymmetrical‑lamella forming steps. Strong § 102 threat to any claim that recites only "milling an initial lamella and lifting it out"; otherwise § 103 primary reference for families A and D.
3. US 9,576,772 B1 — potentially relevant to the STEM/scanning‑beam imaging aspects (H01J 37/28); unverified, but the highest‑priority unknown.
4. US 2015/0075972 A1 (Senowitz) — likely lamella‑preparation art; possible § 103 partner for the "re‑position and re‑mill" step.
5. US 2014/0217283 A1 (Blackwood) / US 2015/0369710 A1 (Fuller) — unverified; retain as § 103 candidates.
6. US 5,435,850 / US 5,851,413 / US 2017/0250055 — apparatus and environmental art; § 103 auxiliary only (gas‑delivery and dual‑beam‑system sub‑limitations).

Forward citation (not prior art, for completeness): the granted patent is cited by US 10,658,154 B2 (International Business Machines Corp.), noted only to show the field's continuing art.

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7. Explicit limitations of this analysis, and how to close them

1. The issued claim text was not retrieved in this session, so the claim‑by‑claim § 102 designations are preliminary and family‑level (reconstructed from the specification's "Some embodiments" paragraphs and the abstract). Confirm against the granted claims at USPTO Patent Center / Global Dossier.
2. The (56) block was truncated in the source I could reach; additional U.S./foreign patent documents and any "Other Publications" (non‑patent literature) may exist and are not covered here.
3. References 4.4, 4.6, 4.7, 4.8 could not be opened; their descriptions and any § 102 relevance are marked "unassessed" rather than inferred.
4. The inventor name "Aijavac" for US 9,576,772 B1 is an OCR artifact and is reported literally, not corrected.

Recommended next steps: (a) pull the full text of US 2014/0061032 A1, US 9,576,772 B1, US 2014/0217283 A1, US 2015/0075972 A1 and US 2015/0369710 A1 and compare element‑by‑element to issued claims; (b) re‑fetch the complete (56) list including foreign documents and NPL; (c) confirm claim numbering. Because the parent/related filings (US 10,410,829 B1; US 2019/0304744 A1) share the specification, the same reference set will govern their examination — treat the analysis as applicable across the family.

If you can supply the verbatim granted claims (or authorize another search pass), I can convert the matrix in §5 into a strict, numbered § 102 anticipation chart.

I'll gather the prior art references relevant to this patent, including the references cited on its face and in its specification, to build the § 103 analysis.

Let me gather more detail on the key cited references and related prior art, including the examiner-cited references.

Obviousness Analysis — US 10,539,489 B2 under 35 U.S.C. § 103

Note on inputs. This analysis uses the prior-art references that appear in the "Prior Art" material available for this patent — i.e., the references cited on the face of the '489 patent (56) and those cited in its specification — plus closely related lamella-preparation art found in searching. Because the authoritative text I was given contains the abstract and specification but not the verbatim claims, I analyze the claim families (which the specification summarizes in near-claim language) rather than asserting exact claim numbers. Where a limitation is the crux and I lack a direct reference, I say so explicitly rather than papering over it. Dates are checked against the AIA effective filing date of March 30, 2018 (provisional) / May 21, 2018 (CIP).

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1. Governing standard

• Graham v. John Deere Co., 383 U.S. 1 (1966): scope/content of claims, differences over prior art, PHOSITA level, secondary considerations.
• KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007): a combination is obvious where prior-art elements are combined "according to known methods to yield predictable results," where a "simple substitution of one known element for another" is made, or where the claimed approach is "obvious to try" — one of a finite number of identified, predictable solutions with a reasonable expectation of success.
• MPEP §§ 2141–2144: requires an articulated reason to modify/combine with a reasonable expectation of success; the reason may come from the references, the knowledge of a PHOSITA, or the nature of the problem.

The '489 claims are method claims in a mature, incremental field (FIB lamella lift-out for TEM/STEM). That posture makes KSR's "known techniques yielding predictable results" rationale especially potent — and makes any asserted non-obviousness rest on the specific sequence of steps, not on any new machine or material.

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2. Person having ordinary skill in the art (PHOSITA)

A PHOSITA here is a metrology/FIB applications engineer or TEM sample-preparation scientist with ~2–5 years of hands-on experience with dual-beam (FIB-SEM) systems (e.g., the Thermo Fisher ExSolve DualBeam™ named in the spec), GIS deposition, micromanipulator lift-out, and TEM/STEM imaging of semiconductor lamellae. That person knows, as a matter of routine practice (and as the references confirm): the distinction between cross-sectional-view and plan-view TEM specimens; that lift-out lamellae can be re-oriented by probe rotation; and that standard FIB grids, GIS precursors (W, C, TEOS), and fiducial markers are the everyday toolset. The '489 specification itself defines "planar view" only in terms of looking down on the wafer plane and adopts known dual-beam hardware unchanged — a signal that the invention sits at the workflow, not the tool, level.

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3. The claim families (from the specification's own summary paragraphs)

All families share one inventive kernel: relocate an already-milled lamella flat onto the (original) wafer and re-section it so that TEM/STEM captures a plan (top-down) view in addition to the conventional side cross-section. That kernel is what the § 103 inquiry must target.

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4. What the prior art discloses

4.1 US 8,884,247 B2 — Miller et al. (FEI), issued 2014‑11‑11 — cited on the face of '489

This is the closest reference and it is astonishingly congruent with '489's Figure 2 sequence:

• Protective layer (e.g., tungsten) deposited over the region of interest using electron- or ion-beam deposition — the same as '489's protective layer 208.
• High-current FIB mills two trenches flanking a thin vertical sample section — same as '489's trenches 212/214.
• Tilted stage + U-shaped cut leaving the sample hanging by tabs — same as '489's cut 220.
• Asymmetrical lamella shapes for orientation (the specification even incorporates US 8,884,247 by reference for this feature).
• Ex-situ lift-out with a micromanipulator probe, electrostatic or vacuum attachment, placement on a carbon-film TEM grid.
• Critically, Miller '247 expressly states the technique "can be used to analyze samples in any orientation (e.g., either in cross-section or in plan view)."
  (https://patents.google.com/patent/[US8884247B2](/patent/US8884247B2)/en)

4.2 US 2014/0061032 A1 — Miller et al. (FEI), pub. 2014‑03‑06 — cited by examiner

Discloses the FIB workflow, low-kV damage-removal thinning, pattern milling of lamella faces, and a programmable controller/machine-vision automation loop (claims 17–19). Supplies the "thinning/cleaning" dependent limitations.
(https://patentimages.storage.googleapis.com/e1/2b/88/d189c20f2eceba/US20140061032A1.pdf)

4.3 US 2017/0250055 A1 — Keady et al. (FEI), pub. 2017‑08‑31 / US 10,283,317 — cited on the face of '489

Teaches a FIB-SEM method in which a sample is extracted, the probe is rotated 180° to change the orientation of the sample's top surface, the sample is mounted to a tiltable holder, thinned from the backside, the stage rotated 180°, and thinned again — all in-vacuum without re-welds. It also recites the "cross-sectional view vs. planar view" taxonomy verbatim.
(https://www.patents.justia.com/patent/20170250055 ; https://patentimages.storage.googleapis.com/f9/6b/26/9b02aa35cbc08f/US20170250055A1.pdf)

4.4 EP 2 818 844 A1 (pub. 2014‑12‑31) — the key "place it back" reference

Not cited on the '489 face, but directly on point for the central limitation:

• Classifies TEM samples as "plan view" or "cross sectional view."
• Milling a sample free, attaching a probe, rotating the probe about its shaft axis so the lamella plane changes orientation.
• Then: "The sample is attached to or placed on the sample on either the first work piece, the first work piece being the work piece from which the sample was milled, or on a second work piece."
• Then thinning using the ion beam.

(http://data.epo.org/publication-server/rest/v1.2/patents/EP2818844NWA1/document.pdf)

This reference expressly discloses placing an extracted lamella back onto the wafer from which it was milled and then re-milling/thinning it — the "placing the initial lamella on an upper surface of the wafer" step, plus the recognition that a re-oriented lamella yields a plan-view specimen.

4.5 EP 2 106 555 B1 (pub. 2009) — ex-situ sample prep ("ESP")

Teaches vacuum-assisted probe handling, rotating the probe tip 180°, and laying the lamella down flat on the TEM grid film to maximize adhesion; uses machine-based image recognition to locate the lamella. Directly relevant to flat placement, orientation control, and the electrostatic-sticking problem ('489's "nest" rationale).
(https://patentimages.storage.googleapis.com/76/c1/02/dd00e281c14a27/EP2106555B1.pdf)

4.6 US 5,435,850 (Rasmussen) and US 5,851,413 (Casella) — cited on the face of '489

Gas-injection systems for FIB deposition/etch — the background machinery for depositing the tungsten material, carbon material, TEOS, and fiducial markers the '489 claims recite.

4.7 Additional examiner-cited art

US 9,576,772 B1 (Aijavac); US 2014/0217283 A1 (Blackwood); US 2015/0075972 A1 (Senowitz); US 2015/0369710 A1 (Fuller) — TEM/lamella preparation references in H01J 37/28 and G01N 1/32. I retrieved only fragmentary content for these; they cannot be relied on beyond confirming that automated lamella prep and imaging were crowded fields.

4.8 Non-patent literature

A DTIC technical note, "Efficacy of a FIB and Planar Preparation Technique for Producing TEM Lamella of CLS," describes "planar- or plan-view" FIB lamella preparation. Caveat: it references a 2019-purchased Helios G4 UX and is likely post-2018 — NOT prior art. I cite it only to show the technique became standard; it should not be used as § 102/§ 103 art without a verified publication date.
(https://apps.dtic.mil/sti/trecms/pdf/AD1201906.pdf)

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5. The combinations and why a PHOSITA would make them

Ground 1 — Miller '247 + EP 2 818 844 (primary; renders Family A obvious)

Mapping. Miller '247 supplies: FIB milling of an initial lamella in a wafer, lift-out with a probe, the cross-section/plan-view taxonomy, and carbon-grid placement. EP 2 818 844 supplies the missing step: placing the extracted sample back on the work piece from which it was milled, re-orienting it, and re-milling it with the ion beam. Together they disclose every step of the basic claim except the recitation that the second milling cuts a second lamella that includes a portion of the first.

Motivation (KSR). (1) Both references articulate the plan-view/cross-section dichotomy; a metrology engineer who needs a top-down image of buried, in-plane structures has an identified, finite solution set — make/re-orient a plan-view specimen. (2) EP 2 818 844 expressly motivates re-using the original work piece as the mounting substrate, obviating a separate grid and holder and providing a flat, rigid, FIB-compatible support. (3) Re-milling a re-oriented lamella with the same FIB is a known technique applied in the same way to yield a predictable result (a thinned specimen whose imaging face is parallel to the original wafer surface).

The weakest link. Neither reference plainly says "mill a second lamella that contains a portion of the first lamella." Both thin the specimen itself. Absent an additional reference teaching re-embedding/re-sectioning a previously extracted lamella to produce a composite specimen, this limitation is where a patent owner would anchor a non-obviousness argument. I flag this rather than assert art I could not retrieve.

Ground 2 — Keady '055 + Miller '247 (+ EP 2 106 555) (renders Families A & B obvious)

Mapping. Keady '055 supplies probe rotation (180°) to transpose the sample's top surface, mounting, and dual-side FIB thinning; Miller '247 supplies plan-view capability and carbon-grid placement; EP 2 106 555 supplies flat placement and machine-vision orientation control. Motivation: re-orienting an extracted lamella and re-milling it is precisely what Keady teaches; applying the known plan-view objective to Keady's re-orientation is a "use of a known technique to improve a similar device in the same way." Keady is on the '489 face, so this is the ground the examiner already had.

Ground 3 — Family B (dual-beam/micromanipulator + fiducials): obvious over Grounds 1–2 + Miller '247/'1032

The "dual beam system," "micromanipulator/TEMLink extraction station," "gas delivery system," and "fiducial markers to identify a milling site" limitations are all disclosed as conventional in Miller '247, US 2014/0061032 (machine vision/controller), EP 2 106 555 (image recognition to locate the lamella), and the gas-system patents (Rasmussen '850, Casella '413). Depositing fiducials via GIS to locate a subsequent milling site is a routine, results-predictable step. Motivation: precise placement of the second mill is the acknowledged critical variable; markers are the accepted way to achieve it.

Ground 4 — Family C (window-alignment): obvious over Grounds 1–2 + machine-vision art

Milling a "window" to expose internal structure and using pattern-recognition/edge-finding to align a specimen is standard automated-FIB practice (Miller '1032 controller/vision claims; EP 2 106 555 image recognition; the Automated TEM Sample Preparation art using reference structures). Forming the window at least partly within the upper (feature-bearing) portion is a natural choice to expose the features you intend to align to. Motivation: the references teach that mis-placement of the final mill ruins the specimen; exposing the structures and aligning before the critical cut is the obvious way to reduce that risk.

Ground 5 — Family D (bulk-silicon "additional window" for diffraction alignment): obvious as an application of routine TEM technique

Using a silicon lattice/diffraction pattern to tilt a specimen onto a zone axis (α and θ tilts) is a bedrock TEM skill; the '489 specification itself describes nothing more than this routine ("analyzes a diffraction pattern … and determines required tilts … to center the pattern about a zone axis"). Creating an electron-transparent window that leaves bulk silicon exposed on both lateral sides to enable that alignment is a design choice within ordinary skill. Motivation/predictability: the result (specimen centered on a zone axis) is expected. Caveat: I did not retrieve a single reference squarely teaching "mill an additional window in the bulk-silicon portion of an already-lifted lamella specifically for diffraction alignment." Absent that reference, this ground leans on the "knowledge of a PHOSITA" prong and is therefore the most susceptible to an unexpected-results or teaching-difference rebuttal.

Ground 6 — The "nest" limitations (carbon/graphite, tungsten, TEOS): obvious

Miller '247/EP 2 106 555 expressly identify the problem the nest solves: the lamella unpredictably sticks to the probe tip due to electrostatic attraction, making placement/orientation hard to control. Placing a locating feature (nest/U-shape/right-angle) on the wafer to receive the lamella and "break the electrostatic connection" is an obvious, predictable remedy using known GIS-deposited materials (carbon, W, TEOS per Rasmussen/Casella). Motivation: solve the documented placement-accuracy problem.

Ground 7 — Family E (deep lamella / planar shallow lamella) — likely the claim(s) mirrored by the ABSTRACT

Mapping/obviousness. The deep-lamella variant differs from Family A only in the deliberate dimensions ("depth of about 4 µm to about 6 µm"; upper portion "about 2 µm to about 3 µm"; shallow lamella spanning "at least substantially the entire length" of a tall structure). These are ranges and orientation choices, and the specification concedes that forming the initial lamella may use "any manner known in the art absent cleaning/thinning" — i.e., the applicant treats the initial milling as conventional. Ground 1 or 2 therefore renders this family obvious as a predictable application to tall structures. Motivation: the high-aspect-ratio problem is acknowledged as a known limitation of conventional dual-beam systems (spec: structures "typically outside of a usable range"); centering the lamella on the entire length of the tall structure avoids the error-magnification-at-the-ends that the specification itself identifies. That reasoning is exactly the kind of pre-existing problem-solving a PHOSITA performs. Whether the specific numeric ranges carry patentable weight turns on unpredictability — and the specification offers no data showing the ranges are critical.

Ground 8 — Family F (elongated deposited material): obvious

Depositing an elongated adhesion strip whose long axis is perpendicular to the lamella's top surface is a shape choice for a known GIS-deposition step (Miller '247 tungsten protective layer; Rasmussen/Casella GIS). Motivation/predictability: aligning the adhesion strip with the features of interest is the natural way to hold the lamella during re-milling; no new result is obtained.

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6. Motivation-to-combine, consolidated

A single overarching motivation ties every ground together: process control for shrinking semiconductor features demands a plan-view (top-down) look at buried structures, and the art already knew (a) that TEM specimens can be plan-view or cross-section (Miller '247; Keady '055; EP 2 818 844; EP 2 106 555), (b) that a lifted lamella can be re-oriented by rotating the probe (Keady '055; EP 2 818 844; EP 2 106 555), and (c) that a lamella can be placed back onto the wafer it came from and re-milled (EP 2 818 844). KSR supplies the legal connective tissue: combination of known elements according to known methods, predictable results, finite identified solutions, and use of a known technique to improve a similar method in the same way. The routine hardware (dual-beam FIB-SEM, GIS, micromanipulator) and materials (W, C, TEOS) need no modification — the entire asserted invention is a rearrangement of process steps on the same machine.

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7. Where obviousness is strong vs. weak

• Strongest for the accused infringer: Families B (dual-beam + fiducials), the nest/ material limitations, and Families E and F — these are almost pure "known steps + design choice," and several elements come from the '489 face citations themselves (Miller '247, Keady '055).
• Strongest for the patent owner (non-obviousness): the "second lamella that includes a portion of the first lamella" limitation in the basic family, and the composite specimen yielding two orthogonal cross-sectional views from one lift-out. The closest art (EP 2 818 844; Keady) re-mills the same specimen; it does not clearly teach re-sectioning a re-placed lamella to form a new lamella containing part of the old one (an "embed-and-re-cut" concept, akin to re-embedding a sample and re-sectioning it). If the independent claims are drafted narrowly around that composite re-section step, a § 103 challenge grounded only on these references may fail for lack of a teaching of that specific step. The patent owner would also point to the "plan view that is not achievable utilizing conventional operations" passage (spec., discussing FIG. 3).
• Rebuttal risk to the patent owner: the asserted benefit is largely inherent — if you make a plan-view specimen, you get a plan-view image. The plan-view/cross-section dichotomy was expressly known (Miller '247; Keady '055; EP 2 818 844), which undercuts any "unexpected results" argument as to what is seen. The asserted advantage ("both views in one image") is a natural consequence of embedding a re-oriented lamella in a new section.

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8. Secondary considerations (no evidence found)

I found no evidence of: commercial success tied to the claimed method, licensing, copying, industry praise, or a long-felt-but-unmet need documented as of the 2018 priority date. The field's adoption of "planar/plan-view FIB preparation" (e.g., the DTIC note, if post-dated) suggests the technique is an expected evolution, not a breakthrough — which further weakens non-obviousness. Nexus would also be difficult to establish given that the claim is a method practiced on standard dual-beam equipment.

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9. Practical/procedural notes

• Prosecution history matters. The examiner cited Miller '247 (US 8,884,247), US 2014/0061032, Keady '055, Aijavac '772, Blackwood '283, Senowitz '972, Fuller '710, plus Rasmussen '850 and Casella '413. The claims nonetheless issued, so the examiner apparently viewed the combination/sequence as non-obvious — consistent with my assessment that the "second lamella including a portion of the first" step is the likely point of patentability. Any real § 103 attack must either find art teaching that re-sectioning step or frame it as an obvious "obvious-to-try" modification; both require evidence I could not retrieve.
• No post-grant challenge found. My searches surfaced Micron IPR activity only on unrelated memory patents (e.g., Micron v. YMTC, IPR2025-00229; matters touching the '974, '322, '838 patents) — none involving '489, consistent with the litigation-search section above. This does not prove absence; verify against PTAB/PatentCenter.
• Family note. '489 is a continuation of US 16/135,821 (filed 2018‑09‑19), which is a CIP of US 15/984,581 (filed 2018‑05‑21), claiming benefit of provisional 62/650,529 (2018‑03‑30); US 10,410,829 B1 is a related family member. If any claim is supported only by the CIP disclosure, the effective date could shift and change which art qualifies — worth confirming in PatentCenter.

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10. Bottom line

On the references available here, **US 10,539,489 is vulnerable to § 103 over combinations of:

1. Miller '247 (US 8,884,247) in view of EP 2 818 844 — the strongest ground: FIB lamella formation, lift-out, and the acknowledged plan-view/cross-section taxonomy (Miller) combined with expressly placing the extracted sample back on the work piece from which it was milled and re-milling it (EP 2 818 844). Motivation: the known plan-view objective plus the known practice of re-mounting on the source wafer.
2. Miller '247 in view of Keady '055 (US 2017/0250055 / US 10,283,317), optionally with EP 2 106 555 — probe re-orientation (180°) + flat placement + carbon-grid imaging; both references are already on the '489 face.
3. Either of the above + Miller US 2014/0061032 and the machine-vision/GIS art (Rasmussen '850, Casella '413) — renders the dual-beam, fiducial-marker, nest, window-alignment, thinning, and elongated-deposition dependents obvious.

The combination yields a predictable result (a plan-view specimen imaged in a TEM/STEM), uses only known elements on known equipment, and is supported by finite, identified solutions — the classic KSR fact pattern.

The limitation most likely to survive a § 103 challenge on this record is the basic family's requirement to mill a second lamella that includes a portion of the first, re-oriented lamella (producing two mutually orthogonal cross-sectional views in one specimen). None of the references I retrieved clearly teaches re-sectioning a re-placed lamella into a new lamella containing part of the old one; the closest art re-mills the same specimen. To convert the "strong" grounds above into a winning invalidity case, a challenger would need an additional reference (or evidence of PHOSITA knowledge) teaching embed-and-re-cut of a previously extracted lamella — which I could not retrieve in this session and therefore do not assert.