DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Claim Interpretation - 35 U.S.C. § 112(f) :
Applicant cites Ma. Inst. Of Tech. v. Abacus Soft arguing the term “circuit” or “circuitry” connote structure and should not be interpreted under 35 U.S.C. § 112(f). The Examiner is not persuaded that Ma. Inst. Of Tech. v. Abacus Soft applies in this case. The Federal Circuit provided reasons why the term “circuitry” was sufficient structure to not invoke 35 U.S.C. § 112(f) and none of the reasons appear to apply to the present claims. The circuitry in Ma. Inst. Of Tech. v. Abacus Soft pertained to a more traditional electronics such as resistors and capacitors and the court found that one of ordinary skill in the art would know the structure that performs the claimed functions (i.e. the arrangement of the electrical components that perform the functions). In contrast, the present claims have functions that are achieved by “processing modules” with programming/algorithm (see para. 0173 as filed), not traditional resistors and capacitors, and one of ordinary skill must resort to the specification such as that of Figure 11 pointed to by Applicant on May 23, 2025. No evidence is before the Examiner showing that the term “circuitry” is sufficient structure to perform the claimed functions without resorting to the specification ("Sufficient structure exists when the claim language specifies the exact structure that performs the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure." See MPEP 2181(I) para. 2).
The statements above were made in the previous Office action of October 22, 2025 and Applicant points to MPEP 2181(I)(A) which states that "circuit" was not found to invoke 35 U.S.C. § 112(f). It appears Applicant is stating that this example in the MPEP, as a rule, must apply to the present claims. In response, MPEP 2181(I)(A) also states that "Note that the examples are fact specific and should not be applied as per se rules." As discussed above, the facts before the Examiner do not correspond to that of Ma. Inst. Of Tech. v. Abacus Soft or Linear Tech. Corp. v. Impala Linear Corp..
Claim Rejections - 35 U.S.C. § 101:
Applicant asserts the first defect detection test and the second defect detection test as claimed cannot be performed in the human mind arguing a human mind could not mentally process an image datastream of a sample. In response, it appears Applicant is taking an image datastream to be of such immense size that a human mind cannot look at the data and select a subset therefrom. The claim does not limit the size of the image. An image can comprise 16 pixels and selecting a subset from 16 numerical values representing pixel intensity is not extremely difficult to do in the human mind. Selecting a subset such as the color blue or the first half of a large datastream and discarding the rest is not difficult to do with the human mind. The claim requires selecting the subset. The disclosure states the first test is “a simple algorithm” and “may comprise selecting a subset of the sample image datastream.” See Specification paragraph [0096]. This is directed at a high level of generality and is something that can be done in the human mind or with the assistance of a computer (e.g. removing data outside a range). The second test is “any suitable defect detection test.” See paragraph [0097]. This is directed at a high level of generality and is something that can be done in the human mind or with the assistance of a computer (selecting data centered around a mean value or a smaller range) This can be done on a simple computer wherein numbers are displayed and using a mouse/cursor to highlight or draw a circle around a group of numbers. See MPEP 2106.04(C) (1) or (2).This can be done on a stream of sheets of paper being printed out and selecting the first 100 pages and ignoring the remaining printed sheets. The claims do not require any particular machine to perform the selection of the subset of image datastream.
The first defect detection test requires performing a comparator operation. This requires a comparison of the subset of data. This is capable of being performed in the human mind also as numbers in the datastream can be compared to another number, e.g. is the number higher than 7? In the alternative, it is a mathematical operation. The same applies to the second defect detection test of performing a comparator operation on the subset.
Applicant cites SRI International, Inc. v. Cisco Systems, Inc for why the claims of the present invention cannot be performed in the human mind. This is not found persuasive as the Federal Circuit explains that the detection is done using network monitors. Here, claim 1 does not recite a particular machine and nor does claim 20. The "circuit" of claim 1 is not a particular machine and is not analogous to Example 47. Applicant provides no support that the human mind “is not equipped” to perform a first defect detection test and a second defect detection test.
Applicant argues that the claims integrate the purported abstract idea into a practical application because the steps of claim 20 operates in a non-conventional and non-generic way to "reduce computational cost of processing images…" and thus amount to significantly more. The Examiner is not persuaded because Applicant points to the abstract idea itself (the steps that can be performed in the human mind) as being significantly more.
Claim Rejections - 35 U.S.C. § 102/103:
The grounds of rejection have been withdrawn.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation(s) is/are:
“processing module including circuitry" in claims 1-19 and
"processing modules" (i.e. "modules that process" or "modules for processing") in claim 17
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3-13 and 20-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A:
A claim is eligible at revised Step 2A unless it recites a judicial exception and the exception is not integrated into a practical application of the application.
Prong 1: Prong One of Step 2A evaluates whether the claim recites a judicial exception (an abstract idea enumerated in the 2019 PEG, a law of nature, or a natural phenomenon).
Groupings of Abstract Ideas:
I. MATHEMATICAL CONCEPTS
A. Mathematical Relationships
B. Mathematical Formulas or Equations
C. Mathematical Calculations
II. CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY
A. Fundamental Economic Practices or Principles (including hedging, insurance, mitigating risk)
B. Commercial or Legal Interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)
C. Managing Personal Behavior or Relationships or Interactions between People (including social activities, teaching, and following rules or instructions)
III. MENTAL PROCESSES.
Concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
See MPEP 2106.04 (a) (2) Abstract Idea Groupings [R-10.2019]
Examiner notes that independent claim 20 recites the steps of –
performing a first defect detection test using the sample image datastream to select a subset of the sample image datastream as first selected data, wherein the first defect detection test performs a first number of comparator operations per pixel; and
performing a second defect detection test on the first selected data generate a second selected data indicating defects, wherein the second defect detection test performs a second number of comparator operations per pixel, the first number of comparator operations being less than the second number of comparator operations.
These steps fall under the grouping of Mental Processes or Mathematical Concepts. The performing of first and second defect detection tests may be done in the human mind or with the aid of a calculator and is thus directed to an abstract idea.
The disclosure states the first test is “a simple algorithm” and “may comprise selecting a subset of the sample image datastream.” See paragraph [0096]. This is something that can be done in the human mind or with the assistance of a computer (e.g. removing data outside a range which can be done in the human mind or with the aid of a computer that calculates if the data is greater than and/or less than a filter values).
The second test is “any suitable defect detection test.” See paragraph [0097]. This is something that can be done in the human mind or with the assistance of a computer (selecting data centered around a mean value).
The recitation of “generating a defect detection outcome based on the second selected data” is also considered a mental or mathematical process of making a decision whether the result of the second test meets a threshold for a defect.
Hence under Prong One of Step 2A, claim 20 recites a judicial exception.
Prong 2: Prong Two of Step 2A evaluates whether the claim recites additional elements that integrate the judicial exception into a practical application of the exception.
Limitations that are indicative of integration into a practical application include:
Improvements to the functioning of a computer or to any other technology or technical field – see MPEP § 2106.05(a)
Applying the judicial exception with, or by use of, a particular machine – see MPEP § 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing – see MPEP § 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception – see MPEP § 2106.05(e)
Limitations that are not indicative of integration into a practical application include:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea – see MPEP § 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception – see MPEP § 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use –see MPEP 2106.05(h)
Claim 20 recites “receiving a sample image datastream from the charged particle assessment system, the sample image datastream comprising an ordered series of data points representing an image of a target sample” and “receiving the first selected data” which are considered data gathering and the limitations are not found to add significantly more as receiving data is considered well-understood, routine, conventional activities. See MPEP 2106.05(d)(II). The same applies to claim 1. The recitation that the method is “computer-implemented” does not add significantly more.
For claim 1, the claim is directed at a system that comprises "processing module including circuitry” that performs steps akin to the method of claim 20. The “data processing module including circuitry” is a highly generic component (e.g. similar to a generic computer) and do not add significantly more.
Dependent claims 2-13 further limit the abstract idea. Nothing is found to impart significantly more. Although claim 11 recites that the circuitry comprises a field programmable gate array or an application-specific, these are well understood and routine elements for performing calculations and thus do not amount to significantly more. The recitation of processing modules in claim 21 are also well understood/routine elements that do not amount to significantly more.
Hence, under Prong Two of PEG 2019, the independent claims do not integrate the abstract idea into a practical application.
For the above reasons, claims are ineligible under Step 2A.
Step 2B:
In Step 2B, the evaluation consists of whether the claim recites additional elements that amount to an inventive concept (aka “significantly more”) than the recited judicial exception.
As discussed above, there are no additional elements recited in the claims and the use of a general purpose computer component is insufficient to provide an inventive concept.
Hence, the claims are ineligible under Step 2B.
Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to a judicial exception without significantly more.
Allowable Subject Matter
Claims 14-19 are allowed.
Claims 1, 3-13 and 20 would be allowable if the rejection under 101 is overcome.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record fails to show or suggest all the limitations as recited in claim 1, 14, and 20 wherein the second defect detection test on the first selected data generates a second selected data indicating defects, wherein the second defect detection test performs a second number of comparator operations per pixel, the first number of comparator operations per pixel being less than the second number of comparator operations per pixel.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hwa Andrew S Lee whose telephone number is (571)272-2419. The examiner can normally be reached Mon-Fri 9am-5:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle Iacoletti can be reached at (571) 270-5789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hwa Andrew Lee/ Primary Examiner, Art Unit 2877
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