DETAILED ACTION
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
Applicant’s arguments filed on 1/22/26 have been fully considered but are found not persuasive.
The remarks argue that A3-A5 show data to show that the [claimed ranges] are not routine skill, and show disclosure that shows sufficient detail and differentiates from prior art. However, the rejection of record is not asserting a lack of enabling disclosure or anticipation by the prior art, but asserting that the differences would have been obvious (in the legal/patent-law sense of obviousness, not the everyday sense of obviousness) variations of the teachings of existing TEM holders (such as Sugawara), that a skilled artisan would have expected to arrive at given routine experimentation. To rebut a prima facie case of obviousness, attorney argument, such as field remarks outside an affidavit, is insufficient. (Note arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997). MPEP §§ 2145, 2129, 2144.03, 716.01(c)). Applicant can show evidence of not just general advantageous effects, but e.g. unexpected results (see MPEP 716.02). See MPEP 716 for other kinds of evidence and information that can be provided as extrinsic evidence in an affidavit (for example, unexpected results, commercial success, long-felt need and failure of others, skepticism of experts, copying, inoperability of references, etc.
The remarks argue that 280 μm of Sugawara is similar to 300 μm of the application, but the gap width narrowing from 180 to 50 μm would significantly increase magnetic field strength. The magnetic field strength would certainly increase as distance decreased—the rejection agrees that a skilled artisan would understand the same laws of physics as the remarks point out. However, the rejection found that the variations of Sugawara—namely the modifications in size and shape where the width of the gap is smaller (50 μm in claim 2, 3 μm in claim 3), appear to be predictable variations of Sugawara, just made smaller. Further, Sugawara does not appear to disparage use of smaller gap sizes, and indeed suggested balancing induction and flux as pole sizes shrank (see Sugawara, p107, col 1, para 3). As discussed above, this is just a prima facie finding, and can be rebutted with evidence of e.g. unexpected results.
One point that Applicant may want to clarify—in claim 1, the thickness ranges from 100 nm – 280 μm, while in claim 2, the gap width ranges from 50 nm-50 μm. As the remarks point out on p9, 100 nm is 3000 times smaller than 300 μm. However, to the extent the remarks are arguing that the lowest end of the claimed range is a non-obvious variation compared to 300 μm, it is noted that this may be inconsistent with the current level of disclosure in the specification. In other words, if a skilled artisan would have found it non-obvious to shrink the features of Sugawara (while finding appropriate engineering tradeoffs) to reach configurations within the claimed ranges, then would that skilled artisan have found sufficient disclosure in the specification to go from the e.g. 280 μm thickness (fig 6 of the application) to the 100 nm thickness in claim 1, or e.g. 3 μm gap (fig 15 of the application) to the 50 nm gap in claim 2? It is suggested that this matter is addressed in the response, and/or the claimed ranges be narrowed.
Regarding the discussion of the deflection angle α, the remarks argue lower deflection at higher field strengths is possible with only one magnetic field generation device. However, the claims are currently broad enough to read on use with multiple magnetic field generation devices like the prior art discussed in that paragraph. Clarification in the claims about the deflector design may be more helpful to distinguish between the desired objectives of Sugawara vs. the application.
Regarding the discussion of manufacturing (e.g. wire cutting) in Sugawara, it is understood this is a discussion relating to inoperability of (or at least the challenge of operating) the prior art references at the smaller scales in the claims. The applicant is thanked for the detailed explanation and thoughtful hypotheses about the reference. However, evidence as to the challenges faced by the prior art and how the applicant’s disclosure solves this problem (e.g. via unexpected results, different manufacturing method, etc) and demonstrates enabling disclosure as to how to solve it, should be stated in the original specification or in an affidavit.
Similarly, the response appears to note that the information in A9 was not meant to be evidence of Sugawara’s inoperability, and a comment on motor drives vs. piezo drives. In response to the questions about (1) and (2), these were not brought up as addressing points, and not questions to answer, so it was just helpful information to consider when evaluating potential future claim amendments.
Regarding the discussions of A11-A13, the examiner appreciates the explanation of the underlying physics and differences between the prior art and the applicant’s embodiment. It is noted that the higher magnetic field is not claimed, and the claims are sufficiently broad to read on operating a variation of the Sugawara apparatus to provide less than 1.5 T.
Table summarizing differences between specification/claims and Sugawara
Application’s Embodiment 1
Sugawara
Claim 1
Claim 2
Claim 3
Thickness of the magnetic field generation device end surface
20 μm
300 μm
100 nm - 280 μm
(claim 1) 100 nm - 280 μm
20 μm
Gap width
3 μm
180 μm
Not specified
50 nm - 50 μm
3 μm
Magnetic field
Up to 1.5 T
0.5 T
Not specified
Not specified
Not specified
Applied voltages, etc
Not specified
Not specified
Not specified
Not specified
Not specified
The remarks asks the question of what field strength (percentage) would be considered sufficient to be non-obvious. The 1.5 T is larger than 0.5 T of Sugawara, but a skilled artisan should have expected the field strength to increase to some degree as the sizes decreased, as a general matter. External evidence could show that the 1.5 T is unexpectedly larger than what a skilled artisan would have roughly expected from the Sugawara reference, e.g. if it were essentially just shrunk (optimizing the two parameters of end thickness and gap width). Evidence could also show that a skilled artisan trying to shrink Sugawara, using conventional engineering, would have ended up at a different set of parameters than the dimensions in the claims.
The remarks state that fabricating and experimentally verifying the result would take about half a year (remarks, p13). However, it is noted that under MPEP 2145, the degree of cost and/or time of changing and optimizing known variables, by itself, is insufficient to show that a skilled artisan would not have found something an obvious variant of a prior art reference. The inquiry is what would have been obvious to a skilled artisan in view of the suggestion (here, to somehow increase field strength, in view of optimizing end thickness and gap width). MPEP 2145 discussed example rebuttals, and MPEP 716 discusses extrinsic evidence (such as unexpected results) that may also be able to rebut the initial finding of obviousness.
In summary, the examiner would like to highlight two broad concerns, and possible avenues for resolution.
The claims are broad enough to read on any combination of parameters within the claimed range(s), not just the particular combination of parameters disclosed in the specification. This breadth overlaps with minor obvious variations of Sugawara. Clarification of the claims may be desirable.
To rebut the prima facie case of obviousness regarding reducing the sizes/proportions of Sugawara, further extrinsic evidence may be required to show that such variations, particularly the smaller sizes and/or higher magnetic fields, would not have been the expected variations of reducing the device sizes. For example, evidence may be able to show unexpected results caused by applicant’s configuration. See MPEP 716.
If further discussion would be of assistance, applicant is invited to contact examiner to help clarify any matters at the contact information in the conclusion section of this office action.
Status of the Application
Claim(s) 1-16 is/are pending.
Claim(s) 1-16 is/are rejected.
Claim Rejections – 35 U.S.C. § 103
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:
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Claim(s) 1-4, 8-11 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Sugawara et al., A 0.5-T pure-in-plane-field magnetizing holder for in-situ Lorentz microscopy, 197 Ultramicroscopy 105-111 (February 2019).
Regarding claim 1, Sugawara teaches a transmission electron microscope sample holder (see abstract), which is capable of applying a magnetic field, comprising
a holder body (e.g. fig 1: 8 and/or 6,7) and a holder head (e.g. 3), the holder head being arranged at an end of the holder body (see fig 1),
wherein the holder head is provided with a magnetic field generation device (magnetizing pole, 3), the magnetic field generation device is provided with a magnetic field generation end surface (see around gap), the magnetic filed generation end surface is parallel to a direction of an electron beam in a transmission electron microscope beam (see fig 1), a thickness of the magnetic field generation end surface is in a range
Sugawara fails to explicitly disclose a thickness of the magnetic field generation end surface is in a range of 100 nanometers to 280 micrometers.
However, Sugawara teaches that the selection of pole size was selected to balance improving induction distribution and flux concentration as pole size shrank (see Sugawara, p107, col 1, para 3). it would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to adjust the thickness amount, especially in view of the similar range of 300 μm and the 280 μm claimed, as a routine skill in the art to try to obtain a large flux concentration. It has held that discovering an optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233. Furthermore, it has been held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05(I).
Regarding claim 2, Sugawara teaches the magnetic field generation device is provided with a gap (see Sugawara, fig 1, near g), and both end surfaces of the magnetic field generation device at both sides of the gap are defined as the two magnetic field generation end surfaces (see fig 1); a width of the gap is in a range selected to balance improving induction distribution and flux concentration as pole size shrank (see Sugawara, p107, col 1, para 3). it would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to adjust the width amount, as a routine skill in the art to try to obtain a large flux concentration. It has held that discovering an optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233. Alternately, it would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to shrink the gap while maintaining a desired a/g ratio, including dimensions where a is less than or equal to 50 μm, as a routine skill in the art to maximize flux for a given application. Although the embodiment does not recite the same structure, it would have been obvious to a person having ordinary skill in the art to change the size and/or proportion as a matter of design choice. See MPEP 2144.04, In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955).
Regarding claim 3, Sugawara fails to explicitly disclose the thickness of the magnetic field generation end surface is 20 micrometers, and the width of the gap is 3 micrometers. However, the adjustment of gap dimensions, including the ranges disclosed, would have been obvious for similar reasons as discussed in claim 2 above.
Regarding claim 4, Sugawara teaches the magnetic field generation device comprises a soft magnetic material core (see Sugawara, fig 1: 6, Permendur, see p106, col 2, last para) and a coil (see 7), the coil is wound on the soft magnetic material core (see fig 1a), and the gap is located on the soft magnetic material core (see fig 1).
Regarding claim 8, Sugawara teaches two soft magnetic material cores (see Sugawara, fig 1: 3,6) are symmetrically provided (see fig 1), the two soft magnetic material cores are both wound with the coil (see 7), and the gap is defined between end surfaces of ends of the two soft magnetic material cores (see fig 1).
Regarding claim 9, Sugawara teaches the magnetic field generation device comprises two coils (see fig 1: 7, superconducting coils, p106, col 1, para 1), and the gap is defined between ends of the two coils (see fig 1). It is unclear whether the coils are superconducting coils, but it would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to select the use of superconducting coils (see superconducting coils, p106, col 1, para 1) as the magnetic coil system as a routine skill in the art as taught by Sugawara, for example to efficiently obtain higher power magnetic fields.
Regarding claim 10, Sugawara teaches the magnetic field generation device comprises a soft magnetic material core (see Sugawara, fig 1: 6, Permendur, see p106, col 2, last para) which is wound with a coil (see 7), and end surfaces of the soft magnetic material core are the magnetic field generation end surface (see fig 1).
Regarding claim 11, Sugawara may fail to explicitly disclose the claimed limitation. However, the differences would have been obvious to a skilled artisan for similar reasons as claim 9 above. Therefore the combined teaching of Sugawara teaches the magnetic field generation device comprises a superconductor coil (see fig 1: 7, superconducting coils, p106, col 1, para 1), and side surfaces of the ends of the superconductor coil are the magnetic field generation end surfaces (see fig 1).
Claim(s) 5, 7 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Sugawara, as applied to claim 1 above, and further in view of Sugawara et al. (US 20140319371 A1) [hereinafter Sugawara II].
Regarding claim 5, Sugawara teaches the soft magnetic material core is in a shape of ring shaped rectangle (see Sugawara, square surface, p106, col 2, para 1, fig 1), and the coil is wound on the other sides of the soft magnetic material core (see fig 1). It is unclear if Sugawara teaches the gap is located at one side of the soft magnetic material core. However, the gap would need to be somewhere on the square. The use of square magnets with gaps for TEM samples was well known in the art. For example, Sugawara II teaches a magnetic field application system comprising the soft magnetic material core is in a shape of ring shaped rectangle (see Sugawara II, fig 4), the gap is located at one side of the soft magnetic material core (see fig 4), and the coil is wound on the other sides of the soft magnetic material core (see fig 4). It would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to combine the teachings of Sugawara II to enable the intended operation of Sugawara, by combining it the known effective magnetic field application and sample holding system of Sugawara II.
Regarding claim 7, the combined teaching of Sugawara and Sugawara II teaches two end surfaces of two ends of the soft magnetic material core are able to protrude to form two protrusions, respectively (see Sugawara, fig 1), and the gap is located between the two protrusions (see fig 1).
Claim(s) 6 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Sugawara and Sugawara II, as applied to claim 5 above, and further in view of Cheng et al. (US 20150248944 A1) [hereinafter Cheng].
Regarding claim 6, the combined teaching of Sugawara and Sugawara II fails to explicitly disclose wherein both upper and lower sides of the soft magnetic material core are provided with non-magnetic support sheets which are also in the shape of ring shaped rectangle. However, Cheng teaches a holder system for magnetic elements in a TEM to provide precise final alignment of the magnets (see Cheng, [0006]), comprising providing upper and lower sides of each magnet with non-magnetic support sheets in the shape of the magnet (see e.g. fig 6: 128, fig 5). It would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to combine the teachings of Cheng in the system of the prior art, thereby providing non-magnetic insulating support in the shape of ring shaped rectangle in order to obtain the ability to provide precise final alignment corrections, in the manner taught by Cheng.
Claim(s) 12-13 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Sugawara, as applied to claim 1 above, and further in view of Takahashi et al. (JPH08264146A) [hereinafter Takahashi].
Regarding claim 12, Sugawara fails to explicitly disclose the claimed limitation. However, Takahashi teaches it was well known in the art to form the magnetic components for a TEM via press-fitting, including a known effective system wherein a groove is located at the holder head (see Takahashi, see groove around 1b,2a, fig 1, translation [0014]), the magnetic field generation device is press-fitted in the groove with a pressing plate (see e.g. 3a, translation, [0014]), and the gap is in communication with the outside (see fig 1, outside of sample area). It would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to combine the teachings of Takahashi in the system of the prior art as a routine skill in the art to provide the desired system using a known effective manufacturing process that allows flexible attachment of magnets and/or the sample (see fig 1) in the manner taught by Takahashi.
Regarding claim 13, the combined teaching of Sugawara and Takahashi teaches the holder head comprises a supporting frame (see Takahashi, 5) and a connecting portion (see right side of fig 1), an end of the supporting frame is connected with the connecting portion (see fig 1), the groove is located at another end of the supporting frame (see fig 1, groove on top side); an opening (e.g. right side of top opening near 1b, 2a reference number) is located at a side of the groove close to the connecting portion (see fig 1); and the gap is exposed outside the opening (see fig 1).
Claim(s) 14-16 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Sugawara and Takahashi, as applied to claim 13 above, and further in view of Peng et al. (CN106057618A) [hereinafter Peng].
Regarding claim 14, the combined teaching of Sugawara and Takahashi fails to explicitly disclose a sample loading component is provided in the holder body, the sample loading component is capable of moving along three-dimensional directions, a needle is fixed on an end of the sample loading component, and a tip of the needle is capable of extending into the gap. However, Peng teaches a system to measure mechanical loading of samples during TEM microscopy (see Peng, translation, p2, para 1-2) said system comprising a sample loading component (see fig 1: 17, 19) is provided in the holder body (see fig 1), the sample loading component is capable of moving along three-dimensional directions (see movement, translation, p2, para 11), a needle is fixed on an end of the sample loading component (see 19), and a tip of the needle is capable of extending into the gap (see fig 1). It would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to try to combine the use of the sample loading system of Peng in the system of the combined prior art, because a skilled artisan would have been motivated to look for ways to try to learn more information about the specimen, including enabling the ability to additionally or alternately providing loading information, as taught by Peng.
Regarding claim 15, the combined teaching of Sugawara and Takahashi fails to explicitly disclose the claimed limitation(s). However, the differences would have been obvious in view of Peng, for similar reasons as claim 14 above. Therefore, the combined teaching of Sugawara, Takahashi, and Peng teaches the sample loading component comprises a needle tube (see Peng, fig 1: 11), a piezoelectric ceramic tube (see 12), and a needle (see 19), an end of the needle tube is connected with an end of the piezoelectric ceramic tube (see fig 1), another end of the piezoelectric ceramic tube is connected with an end of the needle (see fig 1), and another end of the needle is configured to fix an electron microscope sample (during loading, see fig 1).
Regarding claim 16, the combined teaching of Sugawara, Takahashi, and Peng, teaches another end of the holder body is provided with a handle (e.g. Peng, fig 1: 3), a three-dimensional fine-tuning sliding table is provided in the handle (see adjuster, 1), and another end of the needle tube is connected with the three- dimensional fine-tuning sliding table (see fig 1), an outer wall in the middle part of the needle tube is provided with a sealing ring (some kind of sealing ring required to control vacuum and ensure 8, 9 remain aligned), and the sealing ring is capable of sliding along an inner wall of the holder body (see fig 1: 8, 9, rotational movement conversion, see translation, p3, para 13).
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 extension fee 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 James Choi whose telephone number is (571) 272 – 2689. The examiner can normally be reached on 8:00 am – 5:30 pm M-T, and every other Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Kim can be reached on (571) 272 – 2293. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 – 8300.
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/JAMES CHOI/Examiner, Art Unit 2878
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