DETAILED ACTION
Note to applicant:
A publication authored by the inventors was submitted with the office action of 05 December 2025. It was not submitted with the IDS. Please submit any other known publications pertinent to the claimed subject matter so as to complete the record.
Response to Arguments
Applicant's arguments filed 19 February 2026 have been fully considered but they are not persuasive.
Rejections under 35 USC 102: Moses
The remarks take the position that Moses does not disclose bringing a thin film under tension into contact with the target sample in such a way that a portion of the thin film deforms to follow an outer shape of the target sample.
Moses teaches the cells may be attached or grown on the membrane ([0175]). Moses also teaches in paragraph [0056] that deformation is possible if one were to try to compress the fluid inside the chamber as the sample is closed with the membrane in place. Therefore, while not preferred, Moses envisioned deformation of the membrane by the sample. MPEP 2123 recites “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005)”
That is, after the cells are attached or grown on the membrane and experience the deformation of paragraph [0056], under tension the membrane deforms to the sample surface. The deformation of the surface is inherently either a convex or concave portion consisting of a submicron size. Additionally, paragraph [0147] teaches imaging with 10 nm resolution thus imaging a submicron portion.
Lastly with respect to three-dimensional observation, there is no active step of observing the sample, therefore three dimensional observation is a result. Since Moses teaches a scanning electron microscope that is capable of sampling at a depth ([0154]) at submicron resolution ([0147]), the deformation enables three dimensional observation of the sample.
Alternatively, as discussed below three dimensional imaging using an SEM is known to the art.
With respect to Sekiguchi the remarks suggest Sekiguich teaches a step. As discussed in the last office action an organism cannot be rectangular as shown. Therefore the deformed film of Sekiguichi is inherently convex or concave to conform to the shape of the organism. Moreover, with respect to the tension, there is no claimed requirement on the degree of tension. As discussed in the interview summary because the film deforms (as evident from figure 3) there is inherently some tension applied to the film.
The remarks are therefore unpersuasive and the rejection stands as reiterated herein below.
Lastly, upon further search and consideration additional references have been found to make obvious the claimed invention.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-2, 4 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by over Moses et al. (US pgPub 2004/0046120).1
Regarding claim 1, Moses et al. teach a method for observing a target sample on a sample stage using a scanning electron microscope (inherent in the apparatus of figures 2-3) comprising a radiation source for electron beam irradiation (primary electron beam 12 inherently requires a source), the method comprising:
a sealing step of bringing an insulating and electron-permeable thin film under tension into contact with the target sample (sample 32 in contact with membrane 36 in figure 2 [0175]. Figure 3 designates membrane as 56. Membrane is transparent to electrons (abstract). Finally sealing of membrane with sample is disclosed in [0175]. Seal is provided by O-ring 66 in figure 3. Lastly, paragraph [0177] teaches the material of the membrane is polyimide which is insulating. Tension required for deformation discussed in paragraph [0056]) in such a way that a portion of the thin film deforms to follow an outer shape of the target sample on the radiation source side of the target sample (Moses teaches the cells may be attached or grown on the membrane ([0175]). Moses also teaches in paragraph [0056] that deformation is possible if one were to try to compress the fluid inside the chamber as the sample is closed with the membrane in place. Therefore, while not preferred, Moses envisioned deformation of the membrane by the sample), and sealing the target sample in a gap between the thin film and the sample stage (fig. 2 shows sealing the membrane 36 with sample 32 in a gap between the membrane 36 and the chamber 34. Figure 3 more clearly shows the sealing of sample 64 in volume 54 (i.e. gap) between membrane 45 and body 52); and
a radiating step of radiating an electron beam onto the target sample from the radiation source through the deformed portion of the thin film (as illustrated in figure 2, see electron beam 12 radiated onto the sample 32 from an inherent source through the membrane (i.e. electron transparent see abstract), membrane is deformed as discussed above) and
a detecting step of detecting secondary electrons emitted from the target sample and the deformed portion of the thin film at a time of the electron beam irradiation ([0178], when deformed the SE will emit additionally from the deformed portion, see discussion above and [0064] and [0066] and [0178]).
Wherein the outer shape of the target sample includes a convex or concave portion having a submicron size (The deformation of the surface is inherently either a convex or concave portion consisting of a submicron size. Additionally, paragraph [0147] teaches imaging with 10 nm resolution thus imaging a submicron portion), and deformation of the thin film to follow the outer shape of the target sample enables three dimensional observation of submicron portions on the target (there is no active step of observing the sample, therefore three dimensional observation is a result. Since Moses teaches a scanning electron microscope that is capable of sampling at a depth ([0154]) at submicron resolution ([0147]), the deformation enables three dimensional observation of the sample. That is, 3D observation is an inherent result of a 3D object).
Regarding claim 2, Moses teaches wherein the target sample coexists with a fluid material or is in a hydrated state (sample 32 in fluid see figs. 2-3 and paragraph [0016]).
Regarding claim 4, Moses teaches wherein the thin film is capable of being elastically deformed according to movement of the target sample ([0221] teaches living samples, thus movement thereof. Paragraph [0058] teaches a flexible membrane, thus capable of deformation according to movement of the sample).
Regarding claim 18, Moses teaches wherein the thin film comprises a polyimide and has a thickness of 100 nm or more and 5 µm or less ([0061] teaches 1450 angstrom thick polyimide membrane thus 145 nm).
Regarding claim 24, Moses teaches wherein the deformation of the thin film to follow the outer shape of the target sample is caused by a reaction force applied to the target sample by the sample stage ([0056] reaction force is the compression of the fluid inside the chamber as the sample is closed with the membrane. That is the chamber causes the reaction force (compression) to depress the film).
Claims 1, 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Sprinzak et al. (US pgPub 2009/0045349) in view of
103 Sprinzak in view of Thiberg et al. (Thinberg et al., “Scanning electron microscopy of cells and tissues under fully hydrated conditions”, submitted with IDS of 15 December 2015)2.
Regarding claim 1, Sprinzak teaches a method for observing a target sample on a sample stage (via SEM of figure 5, note stage 162 supporting sample container 160, figure 9c shows target 250 inside enclosure see paragraph [0061] (enclosure/stage interpreted to be the stage)) using a scanning electron microscope (fig. 5, [0050]) comprising a radiation source for electron beam irradiation (inherent to an SEM), the method comprising:
a sealing step of bringing an electron-permeable thin film under tension into contact with the target sample ([0059] teaches membrane 110 and tube element 138 are sealingly engaging orifices 140. Figure 9c shows membrane 110 displaced or bows ([0061]) thus in sealing membrane 110 in contact with 250 under tension. Membrane 110 is electron permeable, fluid impermeable (abstract), thus a thin film) in such a way that a portion of the thin film deforms to follow a surface an outer shape of the target sample (fig. 9C shows 110 follows the surface of 250) on the radiation source side of the target sample (110 is on the radiation side in figure 9c as evidenced by the position of 110 in figure 5), and sealing the target sample in a gap between the thin film and the sample stage (250 sealed as seen in figure 9c, note paragraph [0059] teaches membrane 110 and 138 sealingly engaging orifices 140. Gap formed by sample placement volume 118 see paragraph [0061]); and
a radiating step of radiating an electron beam onto the target sample from the radiation source through the deformed portion of the thin film (fig. 5 shows SEM, thus irradiating through electron permeable membrane 110. Figure 9C shows the deformed portion of the thin film 110); and
a detecting step of detecting secondary electrons emitted from the target sample and the deformed portion of the thin film at a time of the electron beam irradiation ([0051] teaches secondary electron detector and electron beam permeable membrane, thus any secondary electrons from the sample are detected and the deformed portion are detected),
wherein the outer shape of the target sample includes a convex or concave portion having a submicron size (concave as seen in figure 9c, wherein a submicron size exists), and deformation of the thin film to follow the outer shape of the target sample (as seen in figure 9c bow of film follows outer shape of target [0061]) and enables three-dimensional observation of submicron portions on the target sample (scanning electron microscope inherently scans to create a two dimensional image, paragraph [0041] teaches imaging at a depth within the sample, thus suggesting that different depth enabled by the SEM. Therefore, the curvature of 110 in figure 9c enables a three dimensional observation).
While Sprinzak et al. teaches an electron permeable film and an electron microscope, Sprinzak fails to suggest the material of the film and therefore fails to disclose the film is an insulator.
However, Thiberg et al. teaches a thin film made of a polymer (i.e. insulator see page 3346, left column, last paragraph).
Thiberg et al. modifies Sprinzak et al. by suggesting the material of an electron permeable film.
Since both devices are directed towards electron permeable films, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the polymer material of Thiberg in the device of Sprinzak because polymer technology has yielded thin membranes that are tough enough to withstand atmospheric pressure differences (see page 3346, left column, last paragraph). Therefore the polymer film allows for a more durable membrane to the pressure conditions faced in Sprinzak thus suitable for the intended purpose.
Regarding claim 2, Sprinzak teaches wherein the target sample coexists with a fluid material or is in a hydrated state ([0059] teaches a tissue sample thus inherently containing fluid material. Paragraph [0053] teaches substantially non-liquid samples such as biological tissue (substantially non-liquid suggests some liquid thus sample coexists with a fluid material)).
Regarding claim 4, Sprinzak teaches herein the thin film is capable of being elastically deformed according to movement of the target sample (as evident when pressure is relieved as evident by comparison of figures 9a and 9b and discussed in paragraph [0061]).
Claims 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Sekiguchi et al. (JP2020064715) (copy of publication and machine translation submitted herewith) in view of Moses.
Regarding claim 1, Sekiguchi et al. teach a method for observing a target sample on a sample stage using a scanning electron microscope (inherent in the apparatus of figure 1) comprising a radiation source (123) for electron beam irradiation (E1), the method comprising:
a sealing step of bringing an electron-permeable thin film under tension into contact with the target sample ([0018] graphene sheet 102 facing the sample, wherein a peripheral portion 102b surrounds the entire periphery of the electron transmitting portion 102a the electron transmitting portion 102a is adhered to one surface 101a of the base material. The sample S is enclosed by one surface 101a of the substrate and the graphene sheet 102 and is in a sealed state. The film is inherently under some tension to conform to the surface of the sample) in such a way that a portion of the thin film deforms to follow an outer shape of the target sample on the radiation source side of the target sample (as seen in figure 2 graphene sheet 102 deforms to follow an outer shape of the sample at 102a on the radiation source side of the target (see figure 1). Note living sample, thus while a flat surface is shown in figure 2, the membrane will deform with the shape of the living sample), and sealing the target sample in a gap between the thin film and the sample stage (fig. 2 shows a gap between 101 and 102 between 102b and 102a where the sample is in a sealed state see paragraph [0018]); and
a radiating step of radiating an electron beam onto the target sample from the radiation source through the deformed thin film (see figure 1, as discussed above because the electron beams irradiate the deformed portion of the thin film (figs. 1 and 3), this requirement is met. Note there is no requirement that the electrons transmit through the deformed portion)
a detecting step of detecting secondary electrons emitted from the target sample and the deformed portion of the thin film at a time of the electron beam irradiation (inherent to irradiating the top surface 102a as seen in figure 1. That is, while 102a is shown flat, because the sample is living, it would not have any flat surfaces thus the membrane would deform along the surface 102a)
wherein the outer shape of the target sample includes a convex or concave portion ([0021] teaches the sample is a living body. Since a living body does not have any flat surfaces the film includes convex or concave portions by deforming to the surface) having a submicron size (any object is composed of submicron sizes) and the deformation to follow the outer shape of the target sample enables 3D observation of submicron portions on the target sample (enabling 3D observation is an inherent result of a 3D object. ).
Sekiguichi teaches a graphene sheet ([0018]), however suggests that the materials are not limited ([0011]). Sekiguichi fails to expressly disclose the thin film is insulative.
However, Moses teaches an insulating material (i.e. polyimide [0177]).
Moses modifies Sekiguichi by suggesting a polyimide membrane with a conductive film to maintain high electrical conductivity ([0059]).
Since Sekiguichi and Moses both suggest a conductive membrane for an environmental cell of a SEM, it would have been obvious to substitute the conductive graphene substrate of Sekiguichi for the insulative and conductive layers of Moses because it would lead to the predictable results of maintaining conductivity and electron permeability for imaging the sample. That is, the substitution was known to the art with no change to the operation of the membrane.
Regarding claim 4, Sekiguchi et al. teach wherein the thin film is capable of being elastically deformed according to movement of the target sample (the sample may be a living organism ([0003]), thus capable of motion and the film is flexible in order to conform to the sample as seen in figure 1).
Regarding claim 24, Sekiguichi et al. teach wherein the deformation of the thin film to follow the outer shape of the target sample is caused by a reaction force applied to the target sample by the stage (van der Waals force between sample support and membrane for adhesion ([0018]) causes membrane to deform to the surface as seen in figure 3).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Sekiguchi et al. in view of Moses in view of Sprague et al. (USPN 10,518,262).
Regarding claim 5, Sekiguichi teaches a relative displacement between two or more points on the thin film, a stress caused between corresponding points on the target sample (inherent to the application of the graphene sheet to the base discussed in paragraph [0026] and seen in figure 1).
Sekiguichi fails to disclose measurement of the strain.
However, Sprague et al. teaches measuring the strain (fig. 3 and col. 22, lines 7-19 which teaches and analyzed thin film as it deforms (i.e. displaced) and the film deforms with a constant radius and constant equi-biaxial strain through the membrane (i.e. radial and circumferential strains are equal and constant at all points of the film) and calculating the strain. That is, displacement between all points of the film strain is calculated, which is associated with stress see col. 10, lines 7-9).
Spraque modifies the combined device by suggesting measuring the stress of the membrane of Sekiguichi in view of Moses.
Since both inventions are directed towards thin films, it would have been obvious to measuring the stress of the film applied by the target sample in the manner suggested by Spraque because it would allow the yield strength to beam measure which is an indication of the maximum stress that can be developed in a material without causing irreversible deformation (col. 10, lines 22-27). Thus, allowing the user to know the stress tolerance of the membrane such that it is not exceeded and risking exposing the sample to the vacuum conditions of the SEM, therefore protecting both the vacuum of the SEM and the sample.
Claims 6-7 is rejected under 35 U.S.C. 103 as being unpatentable over Moses in view of Ogura (US pgPub 2015/0214003).
Regarding claims 6-7, Moses fails to disclose a marker disseminating step of disseminating a marker to a surface of the thin film opposite to the target sample side before the radiating step and an analysis step of analyzing astigmatism of the marker after the radiating step, wherein the marker has a known shape.
However, Ogura teaches a marker disseminating step of disseminating a marker to a surface of the thin film opposite to the target sample side before the radiating step (figs. 7a-7b, metal particles 71 or metal pattern 72, necessarily formed prior to radiating step in order to serve for adjust of focus ([0085]-[0086])) and an analysis step of analyzing astigmatism of the marker after the radiating step ([0085] –[0086]), wherein the marker has a known shape ([0086]).
Ogura et al. modifies Moses by suggesting particles of a grid pattern on the thin film.
Since both inventions are directed towards thin film SEM, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modifies Moses to have the grid pattern provided on its membrane as suggested in Ogura because it would allow for adjustment of focus and astigmatism in order to improve the image quality of the SEM.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Moses
Regarding claim 19, Moses teaches wherein the thin film comprises a polyimide and has a thickness of in the range of 200-5000 Ang ([0015] or 20-500 nm), Moses fails to specifically teach 300 nm to 5 microns. However, it would be obvious to find optimal working ranges since there is an overlap of the claimed ranges with that of Moses a prima facie case of obviousness exists. MPEP 2144.05 (I) recites “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);”
Relevant art of interest to the applicant
Behar et al. (US pgPub 2007/0210253) teaches a similar device and method as Sprinzak above and could be used to make obvious at least claim 1. See figures 6a-6c.
Shachal et al. (US 20140117232) teaches a chamber sealed by a membrane 132 conforming to the shape of the sample 10, wherein a force apply component can apply a force to the object while it is within the mini environment (see figure 4. [0105]-[0106]).
Moses (US pgPub 2005/0279938) teaches a similar environmental cell to Moses above.
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 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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/MICHAEL J LOGIE/Primary Examiner, Art Unit 2881
1 Note alternatively if 3D imaging with the SEM is required the claim would be obvious in view of Okumura et al. (US pgPub 2017/0330724). Okumura et al. teach an obtaining step of obtaining a scanning electron microscope (SEM) micrograph of a three-dimensional structure of the target sample based on the detected secondary electrons ([0068] teaches a 3D positional arrangement of the internal structure can be recognized on the basis of a plurality of projected images by changing the relative angle between the incident direction of the charged particle beam and the specimen, paragraph [0084] teaches detection of secondary electrons and paragraph [0090] teaches secondary charged particle beam image, thus a three dimensional image (i.e. SEM micrograph) of the sample).
Okumura et al. modifies Moses by suggesting taking several images of the sample at different projection angles to obtain a three dimensional image.
Since both inventions are directed towards SEMs, it would have been obvious to one of ordinary skill in the art to apply the relative angular adjustments suggested in Okumura in the device of Moses because it would facilitate observation of the three dimensional structure of the sample to be observed ([0012]) providing the positional relationship of internal structures of the sample providing more detailed understanding of the sample’s construction.
2Note: if the claims are clarified to require an active 3D observation step using the SEM Thiberg et al. teaches 3D imaging using SEM.