DETAILED ACTION
This Office action is in response to the request for continued examination filed on March 5th, 2025. Claims 1 and 4-15 are pending, with claims 10-15 being new.
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 .
Claim Rejections - 35 USC § 112(b)
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 and 4-15 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.
The claims recite an approach operation including “controlling a characteristic value to reach a set point, the characteristic value varying according to a distance between the tip and the object to be measured, the set point determined when a variance of the characteristic value with respect to a decreased amount of the distance between the tip and the object to be measured is greater than or equal to a specific value”.
It is unclear if the set point is determined as part of approach operation or if it determined prior to the approach operation. If determining the set point is part of the approach operation, it is unclear how the approach operation can be controlled to reach a set point when the set point is still being determined. If determining the set point is done prior to the approach step, the claim is incomplete because no step of measuring the variance of the characteristic value with respect to a decreased amount of distance is claimed to occur prior to the approach step.
Claims 1 and 4-15 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.
The claims recite “wherein the set point is variably set based on a measurement-point condition of a point on which the approaching operation is performed”. It is unclear how the measurement-point condition is used in setting the set point.
Claims 1 and 4-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: whatever steps are necessary to obtain information about the measurement-point condition, such as the geometric context of the local surface at the specific point, an interaction preview/history relative to a specific point, or controller limits tied to that specific point.
The claims recite “wherein the set point is variably set based on a measurement-point condition of a point on which the approaching operation is performed”. In order for the set point to be variably set based on the measurement-point condition, the measurement-point condition must be known. According to applicants’ remarks filed 03/05/25, see page 14, “Such information for each point may be any one of (1) the geometric context of the local surface at the specific point, (2) interaction preview/history relative to the specific point, or (3) controller limits tied to that region.” None of the method steps claimed would allow for this information to be obtained prior to the approach operation when it would be needed.
Closest Prior Arts of Record
Examiner is unable to perform at matching due to the 112 issues currently existing in the application. However, the closest prior arts of record are US 2014/0223615 (Shi et al.), which discloses scanning probe microscopy method which determines a setpoint based on variance of a characteristic value and then controls the SPM to maintain the characteristic value at the setpoint (fig. 19), US 2018/0306837 (Sadeghian Marnani et al.), which discloses a method of intermittent contact scanning probe microscopy that include controlling the force to reach a force set point (fig. 4) and US 2007/0277599 (Wang et al.), which discloses a scanning probe microscopy method for variably setting a force setpoint to account for changing topography (fig. 4).
Response to Arguments
Applicant’s arguments have been considered but are moot because all the prior rejections and claim interpretation disagreements have been overcome by amendment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZA W OSENBAUGH-STEWART whose telephone number is (571)270-5782. The examiner can normally be reached 10am - 6pm Pacific Time M-F.
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/ELIZA W OSENBAUGH-STEWART/Primary Examiner, Art Unit 2881