DETAILED ACTION
This Office action is in response to the amendment and remarks filed on June 4th, 2026. Claims 1 and 4-15 are pending.
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 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 “step for,” 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 functional language without reciting sufficient acts to perform the recited function. Such claim limitation(s) is/are: “determining a set point for a point of the plurality of points at which the approaching operation is performed, wherein the set point is determined for each point and is variable depending on the variance of the characteristic value with respect to the decreased amount of the distance during the approaching operation performed at a corresponding point” in claims 1, 4-7, 9, and 13-15.
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 acts described in the specification as performing the claimed function, and equivalents thereof.
In particular, the corresponding act is performance of the calculation as laid out in equation 1.
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 acts to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient acts 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 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 4-7 and 10 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.
Claims 4-7 and 10 recite “during the approaching operation, the tip makes mechanical contact with the surface of the object to be measured”. However, the parent claims recite “completing the bringing of the tip close to the surface, 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 becomes greater than or equal to a specific value”. It is unclear then how mechanical contact is made in the case that the variance of the characteristic value with respect to a decreased amount of the distance between the tip and the object to be measured becomes greater than or equal to a specific value before contact is achieved. It is further unclear how this situation could ever be avoided, since the variance of the characteristic value with respect to a decreased amount of the distance between the tip and the object becomes infinite at the point of contact (Δz becomes 0 because the tip cannot continue to move closer, hence ΔF/Δz or the equivalent calculation for non-force characteristic values becomes infinite).
Examiner’s best guess if that K is set so that ΔF/Δz (or its equivalent for other characteristic values) becomes > K very near the point of mechanical contact and that a finding that ΔF/Δz > K is effectively used by the method as a way of determining that mechanical contact has been made. However, this would represent a significant departure from the plain text of the claim language, therefore the claims have not been treated on the merits.
Claims 12 & 14 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.
Claims 12 & 14 recite “wherein, during the approaching operation, the controller controls the characteristic value by closed-loop feedback that adjusts the Z scanner to drive the characteristic value toward the set point”. It is unclear how the claimed control can occur as part of the same approaching operation described in the parent claim, which includes steps (i)-(iv), with steps (i)-(ii) driving towards surface, rather than towards a set point, step (iii) being stopping of the driving due to a specific K value being reached, and (iv) being calculation of the set point.
Since the set point is not determined until step (iv), driving towards that set point cannot possibly occur until a hypothetical step (v), however, the equation used to determine the set point (equation 1), would set the set point to the current force at that time, and there is no way to drive “towards” the current value.
It is possible applicant intends the approaching step of claims 12 & 14 to be a different approaching step, with a lift operation in between the setting of the setpoint and closed-loop approaching step of claims 12 & 14. However, the plain text of the claim language does not support this.
Alternatively, the setpoint may have some initial value that allows the closed-loop feedback to occur in concert with steps (i)-(ii), in which case step (iv) becomes an updating of the setpoint, but again the plain text of the claim language does not support this. If the feedback loop occurs in concert with steps (i)-(ii) the claims need to clarify how the closed-loop feedback interacts with step (iii). In this scenario in each approach step one of two things will happen, either:
the set point is reached prior to ΔF/Δz becoming > K, in which case step (iii) never occurs because the feedback loop prevents driving past the set point (might be okay, no need to update setpoint at every point, but claims as currently written do not allow for steps iii and iv to be skipped), OR
ΔF/Δz becomes > K before the set point is reached, in which case the bringing of the tip close to the surface completes and the tip never reaches the location at which it is was initially meant to dwell (again, might be okay because step iv updates the set point so now dwells at new location, but claims as written do not appear to suggest updating the set point of the feedback loop mid-loop).
Examiner cannot determine the intention and has not evaluated the claims on the merits.
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.
Claim(s) 1, 8-9, 11, 13, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2007/0277599 (Wang et al.).
Regarding claim 1, Wang et al. discloses a method for measuring characteristics of a surface of an object to be measured, the method comprising:
measuring, using a scanning probe microscope (SPM) comprising a cantilevered probe tip and a deflection detector, an interaction between the tip and the surface of the object to be measured, the measuring performed by repeating, for each point among a plurality of points on the surface, an approaching operation and a lifting operation of a pin point mode, the approaching operation for each point including:
(i) bringing the tip close to the surface of the object to be measured (fig. 4, step 402);
(ii) during the bringing of the tip close to the surface, monitoring a characteristic value varying according to a distance between the tip and the object to be measured, and monitoring the distance between the tip and the object to be measured (fig. 4, steps 404-408);
(iii) completing the bringing of the tip close to the surface, 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 becomes greater than or equal to a specific value (fig. 4, step 410); and
(iv) upon the completing of the bringing of the tip close to the surface, determining a set point for a point of the plurality of points at which the approaching operation is performed (fig. 4, step 412),
wherein the set point is determined for each point and is variable depending on the variance of the characteristic value with respect to the decreased amount of the distance during the approaching operation performed at a corresponding point (fig. 4, step 412, “using setpoint corresponding to detected change in phase signal”, wherein phase is the characteristic value).
Regarding claim 9, Wang et al. discloses a computer program stored in a storage medium to perform the method of claim 1 (“Another embodiment of the invention provides for a computer-readable medium containing a program for automatically detecting a setpoint for use in operating an atomic force microscope.” P 12).
Regarding claim 13, Wang et al. discloses the method of claim 1, wherein the characteristic value is not a force and comprises at least one of oscillation amplitude, oscillation phase, resonance- frequency shift, energy-dissipation, electrical current, or capacitance variation, each varying according to a distance between the tip and the object to be measured (fig. 4, steps 408-412, which use oscillation phase as characteristic value).
Regarding claim 15, Wang et al. discloses the method of claim 1, wherein the SPM is an atomic force microscope (AFM) (“Methods and apparatus for automatically determining a feedback setpoint for use in operating an atomic force microscope (AFM) are provided.” abstract).
Regarding claim 8, Wang et al. disclose an atomic force microscope (AFM) configured to measure a surface of an object to be measured, the AFM comprising:
a probe unit including a tip and a cantilever (fig. 1, element 102 & 104);
an XY scanner configured to move the object to be measured to allow the tip to relatively move in an XY direction with respect to the surface of the object to be measured (fig. 1, element 132);
a head including an optical system which measures a vibration or a flexure of the cantilever and a Z scanner configured to move the probe unit in a Z direction to control a distance between the tip and the surface of the object to be measured based on data obtained by the optical system (fig. 1, elements 108 & 128); and
a controller which controls the XY scanner and the head to measure a characteristic of the surface of the object to be measured (fig. 1, element 118), the measuring performed by repeating, for each point among a plurality of points on the surface, an approaching operation and a lifting operation of a pin point mode, the approaching operation for each point including:
(i) bringing the tip close to the surface of the object to be measured (fig. 1, element 124);
(ii) during the bringing of the tip close to the surface, monitoring a characteristic value varying according to a distance between the tip and the object to be measured, and monitoring the distance between the tip and the object to be measured (fig. 1, elements 114, 116, 120);
(iii) completing the bringing of the tip close to the surface, 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 becomes greater than or equal to a specific value (fig. 1, elements 118, 124, see also fig. 4, step 410); and
(iv) upon the completing of the bringing of the tip close to the surface, determining a set point for a point of the plurality of points at which the approaching operation is performed (fig. 4, step 412),
wherein the set point is determined for each point and is variable depending on the variance of the characteristic value with respect to the decreased amount of the distance during the approaching operation performed at a corresponding point (fig. 4, step 412, “using setpoint corresponding to detected change in phase signal”, wherein phase is the characteristic value).
Regarding claim 11, Wang et al. discloses the AFM of claim 8, wherein the characteristic value is not a force and comprises at least one of oscillation amplitude, oscillation phase, resonance-frequency shift, energy-dissipation, electrical current, or capacitance variation, each varying according to a distance between the tip and the object to be measured (fig. 1, elements 114 & 116 monitor oscillation amplitude and phase, respectively, fig. 4 step 412 discloses use of oscillation phase as the characteristic value whose variance with respect to distance is used by the algorithm for detecting completion of step (iii) and for determination of setpoint in step (iv).).
Response to Arguments
Applicant's arguments filed June 4th, 2026 have been fully considered but they are not persuasive.
With regard to Wang, applicant argues that Wang uses a single setpoint applied across the entire surface not a per point variable value. In support, they point to a paragraph that stating that a critical value may be selected as the maximum value of a data set that will prevent contact over the entire surface.
Applicant is conflating the determination of a variable setpoint with varying the setpoint during measurement. Wang discloses determining a variable setpoint, then selecting a single setpoint from a data set of variable setpoints for use in a later operation (“Since the sample composition, local charge, and other anomalies can affect the value of the critical feedback setpoint, a data set may be collected over a plurality of sample surface coordinates, and then the proper critical feedback setpoint value may be determined. For instance, the critical value may be selected as the maximum value of such a data set to further ensure that the probe tip 102 will not make intermittent hard contact across the entire sample surface 110.”). Applicant currently only claims determining a setpoint for each point that is variable, whether every value in that variable data set is used in a later step is not relevant to the claimed invention.
Applicant further argues that Wang relies on an abrupt change in phase signal, not a ΔF/Δz variance condition.
Though the examples in the specification use ΔF/Δz as the variance condition, the specification and even the claims make clear that the characteristic value does not have to be force (see for example applicant’s specification “Here, the characteristic value needs to be set as a value which varies depending on a distance between the tip 112 and the object 1 to be measured and may be determined as various values other than a force (pressing force) between the tip 112 and the object 1 to be measured as an example.”). In fact, claims 11 & 13 specifically require the characteristic value NOT be force. Wang uses phase as the characteristic value, and measures abrupt change in phase (Δφ/Δz > K) which meets the claim criteria for most claims (a few of the dependent claims do require the use of force as the characteristic value, but examiner was unable to evaluate those claims for unrelated reasons).
Applicant’s remaining arguments have been considered but are moot the relevant rejections are overcome by amendment.
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 ELIZA W OSENBAUGH-STEWART whose telephone number is (571)270-5782. The examiner can normally be reached 10am - 6pm Pacific Time M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ELIZA W OSENBAUGH-STEWART/Primary Examiner, Art Unit 2881
Prosecution Insights