DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12 December 2025 has been entered.
Response to Arguments
Applicant's arguments filed 12 December 2025 have been fully considered but they are not persuasive.
Claim interpretation under 35 USC § 112(f)
Claim 1 has been amended to include sufficient structure to perform the function of the electron irradiation unit. The claim interpretation under 35 USC § 112(f) has been withdrawn.
Claim rejections under 35 USC § 112(a)
Point 1:
The remarks point to paragraphs [0040], [0047] and [0037] for support for “acquiring, by a computer through data communication with another computer, surface profile data of a substrate with a stepped portion, the surface profile data being created by the another computer on the basis of design data of the substrate which has a surface profile matching a surface profile of a target film, the surface profile data
including a first arrangement information which indicates an arrangement state of the stepped portion on the substrate, the stepped portion being arranged to match the surface profile of the target film, and height information which indicates a height of the
stepped portion”
In particular the remarks appear to suggest the claimed design data is generated by a computer. The issue is not whether the specification demonstrates possession of transmission of data from one computer to another, but rather how the surface profile data is created based on design data. That is, as clear from claim 1 a substrate is measured and a first height distribution is calculated. In other words, the substrate exists to be measured. Prior to the measuring step “design data” creates surface profile data including “a first arrangement information which indicates an arrangement state of the stepped portion on the substrate, the stepped portion being arranged to match the surface profile of the target film, and height information which indicates a height of the
stepped portion”.
In other words, a separate computer by some means based on design data creates a surface profile indicates a first arrangement information of an actual substrate. None of paragraphs [0040], [0047] or paragraph [0037] teach how the design data creates surface profile data including a first arrangement information including the arrangement state of the stepped portion on the substrate. Initially, there is no disclosure as to where the design data is obtained. That is, because the substrate is measured, the substrate actually exists. Therefore creating design data about a substrate would require knowledge of the profile of the substrate. Alternatively, if the design data is the data that was used to generate the master plate (which is not supported by the instant specification), the question still raises as to how the result of creation of a surface profile data including first arrangement information is achieved from the design data. That is, merely reciting that the claimed surface profile is created based on design data is not sufficient to demonstrate how the result is achieved. As discussed previously, MPEP 2161.01 recites:
“Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed”
Here, the specification merely reiterates the claimed language suggesting the surface profile data is created…based on design data. However, the specification is devoid of any algorithm steps or detail as to how the result is achieved. MPEP 2161.01 further recites:
It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015)
Here again the specification is silent with how the result of creating a surface profile from design data is achieved, therefore the remarks have been found unpersuasive and this rejection stands.
Moreover, the limitation “the surface profile data be created… basis of design data” amounts to an unlimited functional claim limitation. Specifically, MPEP 2173.05(g) recites: “Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983)”
Here, the specification provides no means of achieve the function, thus covering all means of achieving the creation of the surface profile data including the first arrangement when actual disclosure of how this result is achieved is not disclosed.
With respect to point 2 on pages 11-12, the remarks persuasively show possession of the measuring clause.
With respect to point 3, the remarks are not persuasive. Specifically, a high-degree polynomial is generic. Initially term “high-degree” is indefinite as there is no standard as to what is considered to be high. Moreover, since there is no limitation to the actual degree of polynomial, “calculating… a first height distribution…using a high-degree polynomial” is unlimited. MPEP 2173.05(g) recites “Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983)” That is, any means of calculating a height distribution using an unbounded degree polynomial is not adequately supported when there is no example of any specific degree polynomial of demonstrating possession of calculating a height distribution.
Moreover, there is nothing in the specification to suggest the applicant had possession to an infinite degree of polynomial.
With respect to point 4, the remarks are unpersuasive because there is no disclosure as to how the first arrangement of the surface profile is created. Moreover, since there is no support how the first arrangement information is created there cannot be support for ranges of stepped portion in the arrangement information. That is, the specification is devoid of any suggestion as to how the arrangement information designates ranges of stepped portions as suggested in the specification. This calculation is therefore a desired result with no disclosure as to how the result is achieved. For instance, the remarks point to paragraph [0061] which merely reiterates the desired result of increasing a height by a heigh indicated by the stepped portion height information in the arrangement information. However, as above, there is no disclosure as to how the arrangement information is created, nor how the raising or lowing is achieved. The remarks further point to paragraph [0040], however paragraph [0040] further describes surface profile information, this does not remedy the absence of how the surface profile data is created so as to include stepped portion arrangement information. The remarks continue by discussing paragraphs [0047] and figure 4, which again teach information included by the surface profile data, however again are silent as to how it is created from design data.
Lastly, the remarks point to paragraph [0051] which merely recites setting the height in each of the ranges indicated by the stepped portion arrangement information in the heigh distribution to be lower by the heigh of the relevant concave step. This does not remedy the deficiency of the specification of any suggestion as to how the arrangement information required to perform this calculation step is created, nor how the setting based on the arrangement is achieved. Therefore the remarks are not persuasive and the rejection stands.
Moreover, as pointed out in the final rejection:
[0061]-[0063] of the published application which recite:
[0061] In the second embodiment, the computer 2 calculates a height distribution that is obtained by eliminating the influences of the stepped portions 6b from the height distribution including the influences of the stepped portions 6b on the basis of the stepped portion arrangement information and the stepped portion height information (Step S52). For example, the height in a range indicated by the stepped portion arrangement information in the height distribution including the influences of the stepped portions 6b is increased by a height indicated by the stepped portion height information. Necessary profile complementation using a high-degree polynomial or the like may be further performed.
[0062] After the height distribution from which the influences of the stepped portions 6b has been eliminated is calculated, the processes identical to Step 6 and subsequent steps in FIG. 3 are performed.
[0063] According to the second embodiment, the height distribution from which the influences of the stepped portions 6b are eliminated later is calculated, and the stepped portion arrangement information and the stepped portion height information are added to the calculated height distribution to calculate a focus map, so that a pattern can be drawn with a high accuracy irrespective of the surface profile of the substrate 6 similarly in the first embodiment.
Here, the specification calculates the focus map by initially calculating the height distribution by eliminating the influences of the stepped portion. The example suggests height in a range indicated by the stepped portion arrangement information in the height distribution including the influences of the stepped portions 6b is increased by a height indicated by the stepped portion height information, however the specification is devoid of any algorithm, equation, steps or prose that would suggest how the “height in a range indicated by the step portion” is determined and thus how the step portions are eliminated as required by the claim. Indeed the specification is devoid of how the elimination is accomplished Paragraph [0062] refers back to figure 3. However, in the disclosure of calculating the focus map with respect to figure 3, the published application similarly requires the focus map to be acquired by :
“setting the height in each of ranges indicated by the stepped portion arrangement information in the height distribution to be lower by the height of the relevant concave step indicated by the stepped portion height information. When the stepped portions are convex steps, it suffices that the focus map is calculated by setting the height in each of ranges indicated by the stepped portion arrangement information in the height distribution to be higher by the height of the relevant convex step indicated by the stepped portion height information.” ([0051] of the published application)
Similar to above there is no disclosure of how the height in each of ranges indicating a stepped portion is determined. That is, by what threshold can it be determined that the height is or a stepped portion or not in the arrangement information.
With respect to Point 5, the remarks are unpersuasive. Paragraphs [0051] and [0061] provide no actual algorithm to achieve the calculated focus map. Instead, paragraph [0051] discusses setting heights based on stepped portion arrangement information to be lower or higher, however there is no steps, prose, algorithm flow chart as to how this is performed. Specifically, figure 7 for instance shows a calculated focus map from the second height distribution s5 in figure 5. However, because there is no disclosure as to how the surface profile data (including the first arrangement information is created), there is no support as to how that information is identified in the arrangement information and by what steps it is used to increase or decrease the height in the second height distribution.
Lastly, with respect to point 6, the remarks point to paragraph [0052] which merely suggests determining a beam focus “on the basis of the calculated focus map”, however the specification is devoid of any suggestion as to how the height information is translated into focus information for the electron optical system.
Therefore, the remarks have been found unpersuasive and the rejection stands as reiterated herein below.
Prior art rejections:
The remarks have been found persuasive. The rejections are withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 lacks written description for “acquiring, by a computer… on the basis of design data of the substrate”. Specifically, each acquisition step is performed by the computer prior to or at the same time as drawing ([0047]).
However, the specification is devoid of any specific algorithm to acquire the information on the basis of design data of the substrate of claim 1. MPEP 2161.01 (I) recites:
Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.
Here, the specification merely reiterates the claimed subject matter that the information is acquired, without any algorithm as to how the computer acquires the first arrangement information and the height information. As recited in MPEP 2163.01 (I)
“It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. ”
That is, without any explanation in prose, equations, flow charts or steps as to how to applicant achieves the acquisition of a surface profile having the required configuration on the basis of design data of the claimed information, one of ordinary skill in the art would not recognize how the inventor intended the function to be performed.
Further claim 1 lacks written description for:
The three calculation steps
Specifically, the specification reiterates that a first and second height distribution are calculated, however fails to suggest how or by what algorithm the first and second height distribution are calculated.
Moreover, in the elected species the calculation is described in paragraphs [0061]-[0063] of the published application which recite:
[0061] In the second embodiment, the computer 2 calculates a height distribution that is obtained by eliminating the influences of the stepped portions 6b from the height distribution including the influences of the stepped portions 6b on the basis of the stepped portion arrangement information and the stepped portion height information (Step S52). For example, the height in a range indicated by the stepped portion arrangement information in the height distribution including the influences of the stepped portions 6b is increased by a height indicated by the stepped portion height information. Necessary profile complementation using a high-degree polynomial or the like may be further performed.
[0062] After the height distribution from which the influences of the stepped portions 6b has been eliminated is calculated, the processes identical to Step 6 and subsequent steps in FIG. 3 are performed.
[0063] According to the second embodiment, the height distribution from which the influences of the stepped portions 6b are eliminated later is calculated, and the stepped portion arrangement information and the stepped portion height information are added to the calculated height distribution to calculate a focus map, so that a pattern can be drawn with a high accuracy irrespective of the surface profile of the substrate 6 similarly in the first embodiment.
Here, the specification calculates the focus map by initially calculating the height distribution by eliminating the influences of the stepped portion. The example suggests height in a range indicated by the stepped portion arrangement information in the height distribution including the influences of the stepped portions 6b is increased by a height indicated by the stepped portion height information, however the specification is devoid of any algorithm, equation, steps or prose that would suggest how the “height in a range indicated by the step portion” is determined and thus how the step portions are eliminated as required by the claim. Indeed the specification is devoid of how the elimination is accomplished Paragraph [0062] refers back to figure 3. However, in the disclosure of calculating the focus map with respect to figure 3, the published application similarly requires the focus map to be acquired by :
“setting the height in each of ranges indicated by the stepped portion arrangement information in the height distribution to be lower by the height of the relevant concave step indicated by the stepped portion height information. When the stepped portions are convex steps, it suffices that the focus map is calculated by setting the height in each of ranges indicated by the stepped portion arrangement information in the height distribution to be higher by the height of the relevant convex step indicated by the stepped portion height information.” ([0051] of the published application)
Similar to above there is no disclosure of how the height in each of ranges indicating a stepped portion is determined. That is, by what threshold can it be determined that the height is or a stepped portion or not.
Again as recited above, MPEP 2161.01 (I) recites:
“It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. ”
Here, the specification does not disclose how “the acquired first arrangement information and the height information, and the measured height of the substrate” are used to calculate the claimed focus map. Therefore claim 1 fails to meet the written description requirement.
Additionally, it is noted that the calculated focus map is from height information. The instant specification is devoid as to how a focus map generated can be generated from a height distribution. Instead, the specification merely recites that the control device determines a beam focus value on the basis of the calculated focus map ([0052]). There is no disclosed algorithm to convert the height distribution to a focus map. MPEP 2163.01 (I) recites:
Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.
Here, the specification merely reiterates the claimed subject matter without any disclosure as to how the measured height, the positional and height acquired information can be used to calculate a focus distribution. Therefore “calculating a focus map” additionally lacks written description.
Lastly, Claim 1 lacks written description for determining a beam focus value on the basis of the calculate focus map. If the focus map is merely height data, the specification does not teach how the height data is converted into focus data to control the electron beam system such that the beam focus is determined based on the focus map.
Claim 12 fails to meet the written description requirement under 35 USC § 112(a) by virtue of its dependency on claim 1.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “high degree polynomial” in claim 1 is a relative term which renders the claim indefinite. The term “high degree polynomial” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specifically, high degree is a relative term that is not limited at the upper end, nor does it appear at which degree of the polynomial would be considered high.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J LOGIE whose telephone number is (571)270-1616. The examiner can normally be reached M-F: 7:00AM-3:00PM.
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/MICHAEL J LOGIE/Primary Examiner, Art Unit 2881