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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01 April 2026 has been entered.
Response to Arguments
Applicant's arguments filed 01 April 2026 have been fully considered but they are not persuasive.
The remarks take the position that Kim and Rue fail to disclose the claimed force convention chiller that forcibly circulates a cooling medium on the heat radiating surface.
This has been found unpersuasive.
Initially, the amendment raises issues under 35 USC 112(a) with respect to the written description requirement. Specifically, claim 1 requires all of “a cooling unit”, “an attachment connecting unit” and “a forced convection chiller”. Paragraph [0045] of the instant published application recites “a forced convection chiller can mean, for example, a chiller that forcibly circulates a cooling medium on a heat radiation surface”. This is further described in paragraphs [0060]-[0061] and figure 3 which recite “50 is a coolant heat sink attachment, 51 is a cover for the cooling medium or the forced cooling, 52 is a cooling medium OUT, and 53 is a cooling medium IN, respectively… 4 is a heat sink, and the cooling unit is detachable in this embodiment. A solid cooling medium, a liquid cooling medium, or a gas cooling medium can be used as the cooling medium used for cooling. Specifically; liquid cooling mediums such as water, liquid nitrogen, and liquid helium, gaseous cooling mediums of various gases, solid cooling mediums, or the like can be used, and are not particularly limited”.
That is, as apparent from the instant specification 50/51 form an enclosure for circulating a cooling medium, wherein the cooling unit is detachable (no disclosure as to what is the cooling unit or how it is detachable) and the forced convection is the fluid circulating through cover and heat sink via inlet and outlet.
In other words, as best can be understood the claimed cooling unit appears to be the combination of the cover 51 and heat sink attachment 50 (however no structure of the cooling unit is disclosed as no nexus is disclosed between the cooling unit and figure 3), the claimed attachment connecting unit appears to be the heat sink attachment (however no structure is disclosed for the connecting unit as no nexus is disclosed between the connecting unit and the heat sink attachment) and the forced convection chiller appears to also be the combination of the cover 51 and the heat sink attachment. Therefore, the claim appears to provide separate claim limitations that all suggest the same element(s) when there is no support for separate elements.
The specification is devoid of any suggestion of “a cooling unit”, “an attachment connecting unit” and “a forced convection chiller”.
Moreover, the specification is silent with respect to “a heat radiating surface of the thermoelectric element…a forced convention chiller that forcibly circulates a cooling medium on the heat radiating surface”. Specifically, the specification teaches the cover 51 for the cooling medium or forced cooling ([0060]) and a heat sink 4 between the Peltier element 7 and the cooling medium.
That is, the forced cooling is provided to the radiative surface of the heat sink 4 not on the heat radiating surface of the thermoelectric element as claimed.
For the purposes of examination, it will be interpreted that the cooling unit is a forced convection chiller that comprises an attachment connecting unit. Additionally, it will be interpreted that the heat radiating surface is that of the heat sink.
With respect to Kim, it is noted that the claim does not require the cooling medium to be directly on the heat radiating surface. Because Kim teaches the channels 22a on the heat radiative surface of 22, the cooling medium is circulated on the heat radiating surface via the channels 22a.
Therefore, the remarks have been found unpersuasive and the rejection stands as reiterated herein below.
However, it is noted that in Kim the cooling medium is not directly on the heat radiative surface 22. Applicant should note, even if the claim were amended to require the fluid to be directly on the heat radiative surface would not distinguish the claimed invention over prior art.
Specifically, USPN 5,075,555 teaches like Kim an external water cooling system (34) that is piped to a heat sink 32. ‘555 suggests that the heat sink itself has internal passages (col. 4, lines 57-58). ‘555 could modify Kim by suggesting internal passages in the heatsink as opposed to the passages formed on top of the heat sink of Kim. Since both inventions are directed towards cooling a Peltier element, it would have been obvious to one of ordinary skill in the art to modify the heat sink of Kim to have internal passages as suggested in ‘555 because it would more efficiently transfer heat away from the heat sink because the entire surface area of the internal passages would be exposed to the cooling medium.
However, since the claims do not currently require the fluid to directly contact the heat sink, this rejection is not currently applied.
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:
Tubular unit capable of housing the specimen holder shaft unit in claim 1 (cylinder or tube 10).
Cooling unit in claim 1.
A thermoelectric element placed close to the cooling unit (Peltier element)
Attachment connecting unit for switching cooling medium that connects the specimen holder main body to the cooling unit in claim 1
A clamping mechanism in claim 6 (elastic or spring member [0058])
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 § 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 1-8 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 invokes 35 USC 112(f) for Cooling unit and an attachment connecting unit. MPEP 2163.03(VI) recites:
“A claim limitation expressed in means- (or step-) plus-function language "shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. If the specification fails to disclose sufficient corresponding structure, materials, or acts that perform the entire claimed function, then the claim limitation is indefinite because the applicant has in effect failed to particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc). Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”
Here, the specification depicts the cooling unit as “5” in figure 1 (an unclaimed embodiment) or a space between a cover 51 and coolant heat sink attachment (50) see paragraph [0060]. However, the specification is devoid of any structure of the actual cooling unit. Therefore, the claimed “cooling unit” covers ways of cooling and the inventor as not provided sufficient disclosure to show possession of the claimed invention.
Similarly, the “attachment connecting unit” has no disclosed structure. The specification merely reiterates this term in paragraphs [0020], [0051] and paragraph [0054]. Paragraph [0054] expressly recites the “connecting unit is not particularly limited as long as it, can connect the specimen holder main body and the cooling body”. This demonstrates that the claim scope is intended to cover any connecting means when no means of attachment connecting unit for switching cooling medium is disclosed.
Additionally, claim 1 fails to meet the written description requirement for requiring “a cooling unit”, “an attachment connecting unit” and “a forced convection chiller”. Paragraph [0045] of the instant published application recites “a forced convection chiller can mean, for example, a chiller that forcibly circulates a cooling medium on a heat radiation surface”. This is further described in paragraphs [0060]-[0061] and figure 3 which recite “50 is a coolant heat sink attachment, 51 is a cover for the cooling medium or the forced cooling, 52 is a cooling medium OUT, and 53 is a cooling medium IN, respectively… 4 is a heat sink, and the cooling unit is detachable in this embodiment. A solid cooling medium, a liquid cooling medium, or a gas cooling medium can be used as the cooling medium used for cooling. Specifically; liquid cooling mediums such as water, liquid nitrogen, and liquid helium, gaseous cooling mediums of various gases, solid cooling mediums, or the like can be used, and are not particularly limited”.
That is, as apparent from the instant specification 50/51 form an enclosure for circulating a cooling medium, wherein the cooling unit (no structure see issue discussed above) is detachable (no structure see issue above) and the forced convection is the fluid circulating through cover and heat sink via inlet and outlet.
In other words, as best can be understood the claimed cooling unit appears to be the combination of the cover 51 and heat sink attachment 50, the claimed attachment connecting unit appears to be the heat sink attachment and the forced convection chiller is also the combination of the cover 51 and the heat sink attachment. Therefore, the claim appears to provide separate claim limitations that all suggest the same element when there is no support for separate elements.
The specification is devoid of any suggestion of “a cooling unit”, “an attachment connecting unit” and “a forced convection chiller”.
Lastly, the specification is silent with respect to “a heat radiating surface of the thermoelectric element…a forced convection chiller that forcibly circulates a cooling medium on the heat radiating surface”. Specifically, the specification teaches the cover 51 for the cooling medium or forced cooling ([0060]) and a heat sink 4 between the Peltier element 7 and the cooling medium.
That is, the forced cooling is provided to the radiative surface of the heat sink not on the heat radiating surface of the thermoelectric element as claimed.
For the purposes of examination, it will be interpreted that the cooling unit is a forced convection chiller that comprises an attachment connecting unit. Additionally, it will be interpreted that the heat radiating surface is that of the heat sink.
Claims 2-8 lack written description by virtue of their dependencies on rejected 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 1-8 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.
Claim limitations “cooling unit” and “attachment connecting unit” recited in claim 1 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure that performs the function in the claim. Specifically, the specification merely uses the functional terms without any disclosure as to what structure to accomplish the claimed function. Additionally as discussed above, the connecting unit is disclosed to cover any means of connecting see rejection under 112(a) above.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 2-8 are vague and indefinite by virtue of their dependencies on claim 1.
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.
Claim(s) 1-5 and 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (WO2017073816) (copy of publication and machine translation submitted with the office action of 10 April 2025) in view of Rue et al. (US pgPub 2006/0065853).
Regarding claim 1, Kim et al. teach a specimen holder (fig. 3) comprises:
a specimen holder shaft unit (30) having a specimen (sample mounting tip 11 in contact and connected to the heat conducting rod 30, see page 4, lines 140-143 );
an outer tubular unit (10) capable of housing the specimen holder shaft unit (as seen in figure 3);
a cooling unit (page 5, lines 197-205 external heat exchange device being a cooling water supply device connected to the heat exchange unit 22); and
a thermoelectric element (21) placed on the cooling unit with a heat sink in between, (as seen in figure 8 shows 22a (cooling unit) in contact with 21 with a heat exchanger 22 (heat sink) between, wherein 22 connects with external cooling water supply (i.e. cooling unit))
wherein the cooling unit and the heat sink are detachable (figures 3-8 show the completed assembly and partially assembled device. Page 4, lines 148-152 teach the Peltier element 21 is in contact with the heat exchange unit 22 (i.e. heat sink) which has a heat medium circulation path 22a passing through the inside thereof. Since the structure may be assembled as seen in figure 6 such that the cooling unit/heat sink are in contact with the Peltier element, the system is inherently detachable from the assembled configuration by a reverse process);
the specimen holder and the cooling unit have an attachment connecting unit (22a provides a circulation path, thus attachment between the external cooling unit and the sample holder as seen in figures 3 and 6) and that connects the specimen holder and the cooling unit (22a in fig. 6 connects the specimen holder (best seen in figure 3) to external cooling water supply (page 5, lines 197-205))
the specimen holder has a forced convection chiller (page 5, lines 197-205 external heat exchange device being a cooling water supply device connected to the heat exchange unit 22 for circulating the low temperature heat medium (i.e. forced convection chiller)) that forcibly circulates a cooling medium on the heat radiating surface (cooling medium through 22a forcibly circulated (i.e. in order to have circulation, there must inherently be some force and low temperature cooling medium requires some chiller) and cools 22 via circulation passage 22a (i.e. cooling medium on 22 via 22a or indirectly on)).
Kim et al. differs from the claimed invention by not disclosing the thermoelectric element has a multi-stage configuration; and an area of a heat absorbing surface of the thermoelectric element is smaller than an area of a heat radiating surface of the thermoelectric element.
However, Rue teaches the thermoelectric element (fig. 5, 504, [0034]) has a multi-stage configuration (504a/504b); and an area of a heat absorbing surface of the thermoelectric element is smaller than an area of a heat radiating surface of the thermoelectric element (see annotated figure below).
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Rue modifies Kim et al. by suggesting the substitution of a single stage Peltier element for a stacked or serial pair of individual Peltier elements ([0035]).
Since both inventions are directed towards cooling with Peltier elements, it would have been obvious to one of ordinary skill in the art to substitute the single stage Peltier element 21 of Kim et al. for a serial stacked configuration as suggested in Rue because the stacked pair allows for lower absolute temperatures to be attained ([0035]), therefore improving the operational range of temperature upon which the cooling system may operate. That is, facilitating the ability to cool to lower temperatures with the serial stacked Peltier as compared to the single stage.
Regarding claim 2, Kim et al. teach wherein the thermoelectric element is a thermoelectric element that utilizes at least one effect selected from the Peltier effect (page 4, line 144).
Regarding claim 3, Kim et al. teach wherein the heat radiation side of the thermoelectric element and the cooling unit are in contact with each other (page 4, lines 147-154, Peltier element has one side in contact with one end of the heat conducting rod and the other side in contact with the heat exchange unit 22 to recover heat from the Peltier element 21. Thus 22a is on the heat radiating side. Since 22a is connected to external unit, the external cooling water supply is in indirect contact with the thermoelectric element via circulation path 22a).
Regarding claim 4, Kim et al. teach a cooling medium of the cooling unit is composed of a solid cooling medium, a liquid cooling medium, or a gas cooling medium (water, see page 5, lines 203-205)
Regarding claim 5, Kim et al. teach the heat from the thermoelectric element is transferred to the specimen holder shaft unit (page 4, lines 147-154, alternatively supply heat to the Peltier element and thus to the conducting rod 30).
Regarding claims 7-8, Kim et al. teach wherein the specimen holder shaft is rotatable and movable back and forth (the shaft of figure 6 when outside of the vacuum chamber is movable both rotatably and back and forth by manual rotation or translation by an operator. The claim in no way requires any structure to achieve the claimed function. However, in the event structure is required, see the 103 rejection herein below interpreting the functional language to require some structure other than manual operation).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Rue.
Regarding claim 6, Kim et al. teach wherein the heat is transferred via a mechanism (page 4, lines 147-148 teach the Peltier element is in contact at one side with the conducting rod 30 and heat transfer portion 24 is in contact with the exposed surfaces of the Peltier elements and the contact rod (page 4, lines 166-168). Therefore heat is transferred via 24.
Kim fails to disclose the heat transfer mechanism to be a clamp. However, figure 6 shows 24 with holes in both the upper and lower 24. Since the transfer portions 24 requires some means of remaining in contact with both the rod 30 and both sides of the Peltier components 21, It would have been obvious to one of ordinary skill in the art to provide fasteners inside the holes of 24 such that 24 would act as a clamp because it would facilitate a means for the heat transfer elements to retain their position as described such that heat can be effectively transferred from the conducting rod 30.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kim in view of Rue and further in view of van de Water et al. (US pgPub 2007/0252090) (herein Water).
Regarding claims 7-8, Kim fails to disclose any movement of the specimen holder shaft.
However, Water teaches wherein the specimen holder shaft unit is rotatable ([0035], last sentence) and wherein the specimen holder shaft unit is movable back and forth ([0035], last sentence).
Water modifies Kim by suggesting a control unit outside of the column for the purpose of translating and or rotating the sample holder.
Since both inventions are directed towards TEM sample holders, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the motion controller of Water in the device of Kim because it would facilitate a means of positioning of the sample relative to the electron beam to enable flexibility in the portion of the sample to be imaged and/or allow for correction for any positional misalignment between the sample and the electron beam.
Relevant art of interest to the applicant:
US5075555 to Woldseth teaches a pyramidal Peltier element.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Kim can be reached at (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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/MICHAEL J LOGIE/Primary Examiner, Art Unit 2881