DETAILED ACTION
Response to Arguments
Applicant's arguments filed 01/12/2026 have been fully considered but they are not persuasive.
Claim Rejections under 35 USC §102 and 35 USC §103
Applicant's arguments regarding the rejections under 35 USC 102 and 35 USC 103 have been fully considered but they are not persuasive.
Claim 1 has been amended such that it overcomes the rejections under 35 USC 102 and 35 USC 112(b). Consequently, these rejections have been withdrawn.
The rejection of claim 3 under 35 USC 112(b) is maintained because the claim remains indefinite.
Regarding the 103 rejection of claim 10 under 35 USC 103, see pgs. 8-11 of Remarks filed 01/12/2026, have been fully considered and are not persuasive because the claim is obvious over Hayles (EP 2009421 A1) in view of Den Hoedt (US20220172921 A1). The remarks argue on pg. 8 that Den Hoedt does not teach the limitation “arranged or arrangeable such that the ion beam can pass through the aperture of the body onto the sample.” The remarks are unpersuasive because Den Hoedt does teach that the ion beam can pass through the aperture of the body onto the sample, as seen in Fig. 10 where the aperture is denoted as (through opening) 205 and the sample is 208, in which the ion beam must pass through 205 to reach 208, as explained in [0102]-[0105], especially [0105]. Please note that under the broadest reasonable interpretation of the claim, the claim does not require the ion beam to pass through ‘the entire aperture’, as mentioned in the remarks on pg. 8. Even so, Den Hoedt would constitute teaching as such, since an aperture is understood to be an opening, hole, or gap, and the ion beam passes through 205 to meet the sample where it is held on 211, supported by rim 207 at the end of 205.
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 05/28/2020. 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 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.
Claim 3 is 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.
Claim 3, which depends on independent claim 1, recites the limitation “characterized in that the body comprises a first surface and a second surface opposite the first surface, wherein the aperture extends between the first surface and the second surface, and wherein said total area is 0.5 % or less of the surface area of the first surface.” The limitation is indefinite because it is not clear if the “a first surface and a second surface opposite the first surface” are the same or different to the first surface and second surface of claim 1 on which claim 3 depends. If they are intended to be referring to the same first and second surfaces, consider removing this limitation from the claim, since it is redundant with claim 1 (claim 1 already teaches the body comprises a first surface and a second surface opposite the first surface, wherein the aperture extends between the first surface and the second surface). Examiner suggests rewriting claim 3 as, “The device (100) according to claim 1, wherein said total area is 0.5% or less of the surface area of the first surface” to eliminate repeated limitations that create indefiniteness and a lack of clarity.
Claim Rejections - 35 USC § 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:
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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hayles (EP 2009421 A1) in view of Den Hoedt, et. al. (US20220172921 A1), hereinafter De Hoedt.
Regarding claim 10, Hayles teaches a focused ion beam milling apparatus ([0059], [0042]) comprising a chamber for receiving a sample (vacuum chamber 70 contains core sample 1, [0058], Fig. 5), an ion source configured to generate an ion beam (ion source 201, [0059], Fig. 5) and a device for reducing ice contamination of a sample in the chamber(cryo-shield, [0061]), the device comprising a body configured to be cooled to cryogenic temperatures (cryo-shield cooled to cryogenic temperature by connection with cold finger, [0061]), wherein the body comprises an aperture ([0041], [0061] teaches the cryo-shield surrounds the sample position, therefore Hayes teaches a body having an opening (to provide access to the sample by the FIB, see [0062]), wherein the body of the device is arranged or arrangeable such that the ion beam can pass through the aperture of the body onto the sample ([0061]-[0062]) teaches cryo-shields surrounding the sample position and the beams intersect the sample. Therefore, the body of the cryo-shield is arranged in such a way that the beam passes through the opening in the cryo-shields surrounding the sample position to reach the sample.), and wherein the focused ion beam milling apparatus comprises a cold source configured to cool the body (cold finger 21 cools the cryo-shields, [0061]).
Hayles does not teach a device wherein the body comprises an aperture and a recess, wherein the aperture is arranged in the recess, wherein the body of the device is arranged or arrangeable such that the ion beam can pass through the aperture of the body onto the sample.
Den Hoedt teaches a device for reducing ice contamination of a sample (sample holder 200 may act as a cryo-shield, [0108]) wherein the body comprises an aperture (opening 205, [0102], Fig. 10) and a recess (insert 212 coupled by screw [0105], wherein the threads of the screw are interpreted as a recess), wherein the aperture is arranged in the recess (205 is arranged in the insert coupled by threads of screw, thus in the recess, see Fig. 10), wherein the body of the device is arranged or arrangeable such that the ion beam can pass through the aperture of the body onto the sample (FIB passes through 205 in insert 212 to sample carrier 210 supporting specimen, [0105]).
De Hoedt modifies Hayles by suggesting a structure of a cryo-shield such that it surrounds the sample.
Since both inventions are directed towards sample holders and cryo-shields, it would have been obvious to one of ordinary skill in the art to adopt the cryo-shield sample holder suggested in De Hoedt in the device of Hayes because Hayes is silent as to how to structure the cryro shield such that it surrounds the sample, therefore the modification by De Hoedt would resolve the problem of how to structure the cryo-shield such that it surrounds the sample while providing access to the FIB as desired by Hayes.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Hayles (EP 2009421 A1) in view of Den Hoedt (US20220172921 A1), further in view of Mulders, et. al. (US 20120003394 A1), hereinafter Mulders.
Regarding claim 11, Hayles teaches that the focused ion beam milling apparatus comprises an electron source configured to generate an electron beam (electron source 101, [0058], Fig. 5), wherein the ion source (ion source 201, [0059], Fig. 5) and the electron source are arranged such that the electron beam generated by the electron source is oriented at an angle with respect to the ion beam generated by the ion source (See Fig. 5 where electron beam 102 is shown oriented at an angle with respect to ion beam 202).
Hayles in view of Den Hoedt does not explicitly teach an angle of one of: 1° to 89°, 5° to 85°, 10° to 80°, 20° to 70°, 30° to 60°.
Mulders teaches an angle of one of: 1° to 89°, 5° to 85°, 10° to 80°, 20° to 70°, 30° to 60° ([0041], Fig. 7).
Mulders modifies Hayles in view of Den Hoedt by suggesting the electron beam is oriented at an angle of 52 degrees with respect to the ion beam.
Incorporating the teachings of Mulders renders the claimed invention obvious 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.” See MPEP 2144.05 I.
Claims 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hayles (EP 2009421 A1) in view of Den Hoedt (US20220172921 A1), in view of Mulders (US 20120003394 A1), further in view of Zandbergen (US20200141846 A1).
Regarding claim 12, Hayles does not explicitly teach that the device comprises an actuator configured to move the body between a first position and a second position, wherein in the first position the body is arranged outside of a beam path of the electron beam from the electron source to the sample, and wherein in the second position the body is arranged in said beam path.
Zandbergen teaches that the device comprises an actuator (translator driver 524 and translator 525, [0043]) configured to move the body between a first position and a second position (into beam path and out of beam path [0043]), wherein in the first position the body is arranged outside of a beam path of the electron beam from the electron source to the sample, and wherein in the second position the body is arranged in said beam path (translator can move cartridge such that the body of the cartridge is in the electron beam path and the sample is exposed to the electron beam, [0043], this implies that the cartridge can be located outside of the beam path (first position) such it may be moved into the beam path (second position)).
Zandbergen suggests a translator and translator driver such that the body of the device can be moved into and out of the electron beam path.
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 translator and translator driver of Zandbergen because the translator allows the cartridge to move in a longitudinal direction and can allows the cartridge to move so that a sample is exposed to an electron or ion beam, (Zandbergen, [0043]).
Allowable Subject Matter
Claims 1-2, 4-9 and 13-18 are allowed.
Claim 3 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The invention of independent claim 1 is directed to a device for reducing ice contamination of a sample in a chamber of a focused ion beam milling apparatus. The most similar prior art to the claimed invention is Den Hoedt (US20220172921 A1) and Zandbergen (US20200141846 A1). Although Zandbergen and Den Hoedt teach most of the limitations of dependent claim 1, the instant invention is distinguished over such art for its teaching that “one or several openings, including said aperture, extending from the first surface to the second surface comprise a total area that is 1 % or less of the surface area of the first surface.” No prior art was found that teaches this limitation of the claim in an anticipatory or obvious way.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Kim can be reached at 5712722293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LAURA E TANDY
Examiner
Art Unit 2881
/ROBERT H KIM/Supervisory Patent Examiner, Art Unit 2881