DETAILED ACTION
Response to Arguments
Applicant's arguments, filed 11/12/2025, have been fully considered but they are not persuasive.
Rejections under 35 USC 112(b)
In view of the amendment to claim 1, the claim is now definite and the rejection under 35 USC 112(b) has been withdrawn.
Rejections under 35 USC 103
Applicant's remarks regarding the rejection under 35 USC §103, filed 05/27/2025, have been fully considered. In consequence to the amendment of claim 1, a new ground of rejection is made in view of Omme, et. al. (Advanced microheater for in situ transmission electron microscopy; enabling unexplored analytical studies and extreme spatial stability, Ultramicroscopy, Volume 192, 2018, Pages 14-20, ISSN 0304-3991).
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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) filed on 03/12/2020. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-9 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 has been amended to teach “a single spiral annular heating wire that is continuous.” The amendment introduces new matter because there is no disclosure to support a single, continuous spiral annular heating wire. There is no description or drawings demonstrating possession of a single, continuous spiral annular heating wire. Fig. 4 shows the heating wire 9, but the wire appears to be formed into a double spiral. Additionally, in the remarks filed 11/12/2025, there was no indication of where the amended subject matter could be found in the disclosure.
Claims 2-9 are rejected by virtue of their dependence on claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-4, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Creemer, et. al. (US 20080179518 A1), hereinafter Creemer, Chen, et. al. (US 20130009071 A1), hereinafter Chen, and Omme, et. al. (Advanced microheater for in situ transmission electron microscopy; enabling unexplored analytical studies and extreme spatial stability, Ultramicroscopy, Volume 192, 2018, Pages 14-20, ISSN 0304-3991), hereinafter Omme.
Regarding claim 1, Creemer teaches a transmission electron microscope in-situ liquid phase heating chip (Title, [0012]), structurally comprising a top chip (second chip 3, [0041]) and a bottom chip (first chip 2, [0041]) combined via a bonding layer (spacers 9, [0041],Fig. 2), the top chip and the bottom chip each comprising a front side and a back side (the first and second chips are 3-dimensional objects and have front and back sides as seen in Fig. 1), the front side of the top chip being directly bonded to the front side of the bottom chip via the bonding layer to be self-sealed to form a chamber ([0047], Fig. 2), and the top chip and the bottom chip being each made of a silicon substrate with silicon nitride or silicon oxide on two sides ([0044]), wherein
the top chip (second chip 3, [0041], Fig. 1) is provided with a first central window (window formed in recess 7 by cover layers given as element 25, [0054], [0046]-[0047], Fig. 1, Fig. 5), the first central window is located in a center of the top chip (7 is located at a center of the top chip along the horizontal axis as seen in Figs. 1 and 3);
the bottom chip (first chip 2, Fig. 1, [0041]) is provided with a liquid inlet (inlet 4 through which liquid can flow, [0047], Fig. 1), a liquid outlet (outlet 5 through which liquid can flow, [0047], Fig. 1), a runner (reaction chamber 15, [0047]), a heating layer (layer between 12a and 12b containing heating means 8 and electrodes, [0048], Fig. 10), a second central window (window created in recess 6 by cover layers given as element 25, [0054], [0047], Fig. 1, Fig. 5), and an insulating layer (layer 12A (upper 12 layer on the top surface of the heating layer) on first chip 2, [0044], Fig. 2); the heating layer is provided with four contact electrodes (two first electrodes 15 and two second electrodes 16 with contacts, [0048], [0051], Fig. 3) and a single spiral heating wire that is continuous (heater coil 8 is a single continuous wire as seen in Figs. 3 and 10, [0048]), the single spiral heating wire is in a symmetrical shape (Figs. 3, 10, 11), inner coils of the single spiral heating wire are spaced apart and disconnected from each other (spiral is inherently spaced apart due to continuous widening of the curve about a central point, [0048], Figs. 3, 10, 11), and the four contact electrodes are disposed at an edge of the transmission electron microscope in-situ gas phase heating chip (Fig. 3, [0051]);
the single spiral heating wire is located in a center of the heating layer and is disposed on the silicon substrate of the bottom chip (heater coil 8 is in a center of the heating layer, and is disposed on the silicon substrate 10 of the first chip 2 via layers 12a and 12b, which sit on top of silicon substrate 10 and contains the heating coil 8, as seen in Figs. 1 and 3, [0044], [0048]);
the second central window is located in a center of the bottom chip (region with window of recess 6 being a center, as seen in Figs. 1, 2), the second central window exceeds an outer edge of the single spiral heating wire (window in 12A and 12B of recess 6 is larger than heater coil 8, as seen in Fig. 2), a silicon nitride layer or a silicon oxide layer is used as a support layer ( layer 12B (lower layer of 12, adjacent to layer 13, under the heating layer and within recess 6) supports the heating layer, [0048], [0044], Fig. 2), the silicon nitride layer or the silicon oxide layer is suspended on the second central window (layer 12 is suspended on region with window of recess 6 as seen in Fig. 2, [0048], [0044]);
a center region of the single spiral heating wire is separated from other positions of the silicon substrate of the bottom chip via the silicon nitride layer or silicon oxide layer ([0048], [0044], Fig. 2);
the liquid inlet and the liquid outlet are symmetrically disposed with respect to the second central window ([0047], Figs. 1 and 2) and communicate via the runner (Fig. 2 shows how 4 is connected to 5 via 15); the second central window is located in the center of the heating layer and is not shielded by a heating material (Fig. 2, Fig. 3); the insulating layer is disposed on the heating layer and covers an entirety of the heating layer except the four contact electrodes (layer 12A on first chip 2 is disposed above the heating layer, [0044], Fig. 2, everything in the heating layer is covered except the electrode contacts, as stated in [0051]); and
an area of the top chip is smaller than an area of the bottom chip (Fig. 1), the first central window of the top chip and the second central window of the bottom chip are aligned (Fig. 1, Fig. 2), and a plurality of pores are provided in the first central window and the second central window (windows/recesses 19, [0049], Fig. 10).
Creemer does not explicitly teach that the bonding layer is metal. Also, Creemer does not teach two sample injection ports, and the two sample injection ports are symmetrically disposed with respect to the first central window. Creemer does not teach the single spiral heating wire is annular.
Chen teaches that the bonding layer is metal (metal adhesion layer 13, [0031], [0034], Fig. 1). Also, Chen teaches two sample injection ports (first through holes 114, [0018], [0032], [0038], Fig. 1, Fig. 5), and the two sample injection ports are symmetrically disposed with respect to the first central window (Fig. 1 shows that the first through holes 114 are symmetrically disposed with respect to first concave 113).
Omme teaches an annular spiral heating wire (Fig. 1, 4th paragraph of “3. Design of the Chip”).
Chen modifies the combination by suggesting that the bonding layer is metal. Further, Chen suggests two sample injection ports symmetrically disposed with respect to the first central window. Omme modifies the combination by suggesting that the single spiral heating wire is annular.
Since both inventions are directed to environmental cells for electron microscopes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Chen because a metal adhesion layer is able to adhere the first substrate and second substrate to form a space where the specimen can be inserted or injected, (Chen, [0031]). Furthermore, it would have been obvious to one of ordinary skill in the art to incorporate the teachings of Chen because the first through holes allow for the injection of the specimen into the space, (Chen, [0018], [0038]).
Since both inventions are directed to in-situ heating elements, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Omme because the circular shape avoids sharp corners to ensure no hotspots will appear as a result of current crowding (Omme, 4th paragraph of “3. Desing of the Nano-Chip”).
Regarding claim 3, Creemer teaches wherein a thickness of the bonding layer is 50 nm-2000 nm ([0045], where 1 µm = 1000 nm).
Creemer does not teach that the metal bonding layer is made of a metal having a melting point less than 1100 °C.
Chen teaches that the metal bonding layer is made of a metal having a melting point less than 1100 °C ([0016] metal adhesion layter comprises a metal material selected from a group consisting of Ti, Cr, Sn, In, Bi Cu, Ag Ni Zn, Au, and Ti—W alloy).
Chen modifies the combination by suggesting that the metal bonding layer is made of a metal which has a melting point less than 1100 °C.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Chen because the metal material of Chen has excellent features of waterproofing, high sealing, and biocompatibility, (Chen, [0016]).
Regarding claim 4, Creemer does not teach wherein the metal bonding layer is made of In, Sn or Al.
Chen teaches wherein the metal bonding layer is made of In, Sn or Al (Chen, [0016]).
Chen modifies the combination by suggesting that the metal bonding layer is made of In or Sn.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Chen because the metal material of Chen has excellent features of waterproofing, high sealing, and biocompatibility, (Chen, [0016]).
Regarding claim 6, Creemer teaches teach wherein the first central window and the second central window are square central windows (window formed in recesses 6 and 7 by cover layers appears square in Figs. 1 and 3, [0046]-[0047]). Even if the windows of Creemer are not square, it would be obvious to one of ordinary skill in the art to modify the shape of the window of Creemer to be square because any shape can be used to form an effective window, and the specification of the instant application is void of information as to how a square shape is significant. See MPEP 2144.04 IV. B., In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Creemer (US 20080179518 A1), Chen (US 20130009071 A1), and Omme (Advanced microheater for in situ transmission electron microscopy; enabling unexplored analytical studies and extreme spatial stability, Ultramicroscopy, Volume 192, 2018, Pages 14-20, ISSN 0304-3991), in view of Ito, et. al. (US 20040011782 A1), hereinafter Ito.
Regarding claim 7, Creemer teaches the heating layer (layer between 12a and 12b containing heating means 8 and electrodes 15, 16, [0048]), supplying power to produce heat ([0069]), and monitoring a resistance value of the single spiral heating wire after heating in real time ([0048]).
Creemer does not teach the single spiral heating wire is annular. Creemer does not explicitly teach two equivalent circuits, the two equivalent circuits are controlled by separate current source meters and voltage source meters; one of the two equivalent circuits is used for supplying power to produce heat, and a second of the two equivalent circuits is used for monitoring a resistance value of the spiral annular heating wire after heating in real time; and the spiral annular heating wire is made of metallic gold, platinum, palladium, rhodium, molybdenum, tungsten, platinum-rhodium alloy or non-metallic molybdenum carbide.
Omme teaches an annular spiral heating wire (Fig. 1, 4th paragraph of “3. Design of the Chip”).
Omme modifies the combination by suggesting that the single spiral heating wire is annular.
Since both inventions are directed to in-situ heating elements, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Omme because the circular shape avoids sharp corners to ensure no hotspots will appear as a result of current crowding (Omme, 4th paragraph of “3. Desing of the Nano-Chip”).
Ito teaches two circuits, the two circuits are controlled by separate current source meters and voltage source meters ([0031]); the two circuits are used for supplying power to produce heat, and monitoring a resistance value of the spiral annular heating wire after heating in real time ([0070], [0159], [0164]-[0165], [0168]-[0171]); and the spiral annular heating wire is made of metallic gold, platinum, palladium, rhodium, molybdenum, tungsten, platinum-rhodium alloy or non-metallic molybdenum carbide ([0080]).
Ito does not mention that the two circuits are equivalent circuits. Further, Ito does not explicitly teach that one of the two equivalent circuits is used for supplying power to produce heat, and a second of the two equivalent circuits is used for monitoring a resistance value of the spiral annular heating wire after heating in real time; however, one of ordinary skill in the art could substitute the claimed equivalent circuits having separate functions, with the two circuits of Ito to achieve the same result as the claimed invention to yield a predictable result. Although the individual functions of each of the two circuits are not specified in Ito, Ito does specify that the two circuits work in conjunction to both supply power to produce heat and also control and change the resulting calorific value/temperature produced (Ito, [0070]), where temperature is directly related to resistance (see [0128] of the instant application). As a result, the claim is obvious in view of Ito; see MPEP (I) (B).
Ito modifies the combination by suggesting two equivalent circuits controlled by separate current source meters and voltage source meters, and that the heating wire of Creemer is made of tungsten, molybdenum or non-metallic molybdenum carbide. Ito modifies the combination by suggesting that the single spiral heating wire is annular.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Ito because “by the division into the circuits, each electric power supplied to the respective circuits can be controlled to change the calorific value thereof so that the temperature of the heating surface for a silicon wafer can be adjusted,” (Ito, [0070]). Furthermore, metals such as tungsten and molybdenum have resistance values sufficient for generating heat, (Ito, [0092], [0080]). Further, the spiral annular heating element of Ito allows for uniform heating of a surface (Ito, [0054]).
Claims 2 is rejected under 35 U.S.C. 103 as being unpatentable over Creemer (US 20080179518 A1), in view of Chen (US 20130009071 A1) and Omme (Advanced microheater for in situ transmission electron microscopy; enabling unexplored analytical studies and extreme spatial stability, Ultramicroscopy, Volume 192, 2018, Pages 14-20, ISSN 0304-3991), further in view of Zandbergen (US 20180376537 A1).
Regarding claim 2, Creemer teaches a bottom chip (first chip 2, Fig. 1, [0041]).
Chen does not explicitly teach wherein an external dimension of the bottom chip is 2 mm*2mm – 10 mm*10mm. Zandbergen teaches an external dimension of the chip is 2 mm*2mm – 10 mm*10mm ([0026]).
Zandbergen modifies the combination by suggesting that the bottom chip of Creemer has an external dimension in the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Zandbergen because “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).” See MPEP 2144.05 I.
Claims 5 and 8 rejected under 35 U.S.C. 103 as being unpatentable over Creemer (US 20080179518 A1), in view of Chen (US 20130009071 A1) and Omme (Advanced microheater for in situ transmission electron microscopy; enabling unexplored analytical studies and extreme spatial stability, Ultramicroscopy, Volume 192, 2018, Pages 14-20, ISSN 0304-3991), further in view of Grogan, et. al. (US 20120298883 A1), hereinafter Grogan.
Regarding claim 5, Creemer teaches the silicon substrate (central first layer 10 manufactured from silicon, [0044]).
Creemer does not teach a thickness is 50 µm – 500 µm.
Grogan teaches a thickness is 50 µm – 500 µm ([0025] teaches thickness in the range 50 nm (0.05 micrometers) -1 mm (1000 micrometers)).
Grogan modifies the combination by teaching the silicon substrate of Creemer has a thickness in the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Grogan because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).” See MPEP 2144.05 I.
Regarding claim 8, Creemer teaches the liquid inlet and the liquid outlet (inlet 4 and outlet 5 through which liquid can flow, [0047], Fig. 1).
Creemer does not teach sizes are 200 µm*200 µm-1000 µm*1000 µm.
Grogan teaches 200 µm*200 µm-1000 µm*1000 µm (cross-sectional dimension of an aperture of the device in the range from 50nm (50 nm = 0.05 micrometers) – 1 millimeter (1 millimeter = 1000 micrometers), [0039], and the apertures (which include the inlet and outlet, [0025]) are shown to be square-shaped as seen in Fig. 1 and Fig. 7).
Grogan modifies the combination by suggesting that the size of the liquid inlet/outlet of Creemer has a dimension in the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Grogan because “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).” See MPEP 2144.05 I.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Creemer (US 20080179518 A1), in view of Chen (US 20130009071 A1) and Omme (Advanced microheater for in situ transmission electron microscopy; enabling unexplored analytical studies and extreme spatial stability, Ultramicroscopy, Volume 192, 2018, Pages 14-20, ISSN 0304-3991), further in view of Carpenter, et. al. (US 20170062177 A1), hereinafter Carpenter.
Regarding claim 9, Creemer teaches a thickness of the silicon nitride layer or the silicon oxide layer used as the support film is 200 nm-5 µm (12B, which supports the heating layer, is 5 µm thick, [0045]), and a structure of the support film is an approximate circle or square (structure of support film (part of 12B in recess 6) appears to be approximately square-shaped in Figs. 1 and 3) with the second central window as a center (the support film (part of 12B in recess 6) is part of the window created in recess 6 by cover layers 12, and is at a center of the window as best seen in Fig. 2, [0047]).
Creemer does not explicitly teach wherein a width of the support film is 10 nm-500 nm, and the second central window having an inner diameter of 0.15 mm-0.5 mm.
Carpenter teaches wherein a width of the support film is 10 nm-500 nm (the size of the observation region, interpreted to be the support film since it is disclosed to be made of silicon nitride and is structural similar to the interpreted support film of Creemer, is in a range x times y of from about 10 nm-10 mm times 10 nm-10 mm, [0070], Fig. 1C), and the second central window having an inner diameter of 0.15 mm-0.5 mm ([0070], where the observation region (5) is interpreted to be part of the second central window, and fills an inner diameter of such, so that the x or y dimension of the observation region shares the inner diameter of the interpreted second central window, 10 nm-10 mm, Fig. 1C).
Carpenter modifies the combination by suggesting that the support film and the second central window have dimensions within the claimed ranges.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Carpenter because these dimension lend themselves to be beneficial for the type of microscopy being practiced, (Carpenter, [0070]). Additionally, “in the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).” See MPEP 2144.05 I.
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 LAURA E TANDY whose telephone number is (703)756-1720. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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LAURA E TANDY
Examiner
Art Unit 2881
/ROBERT H KIM/Supervisory Patent Examiner, Art Unit 2881