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 .
Response to Arguments
Applicant's arguments filed 3/26/2026 have been fully considered but they are not persuasive.
With respect to the Applicant’s traverse of the rejection of claims 1-20 under 35 USC 112(b), the amendment resolves the ambiguity on claim interpretation by attributing the claimed function to the recited “signal processing components”. This introduces a new issue for indefiniteness and claim interpretation which is addressed below.
Applicant’s traverse regarding the rejection of claims 2-3 under 35 USC 101 is not persuasive. The claims were rejected because they recite the natural phenomenon of signal generation by carrier formation, part of the natural phenomenon produced by the operation of a PIN diode. Reference was made in the prior action. That the claim recites the “detector is configured…” to effect what is on its face the underlying natural phenomenon producing the useful effect found in PIN diodes does not make the natural phenomenon patentable. The generation of charge carriers and the extraction of their produced signal, as noted in the prior action and the attached reference, is known in the art. The effect of the claim would be to grant exclusive right to the underlying physical mechanism by which PIN diodes function. Hence, claims 2-3 stand rejected under 35 USC 101 with this rejection being made final.
Regarding Applicant’s traverse of the rejection of claims 1-3, 6-10, 12-13, and 16-20 under 35 USC 102(a)(1) to Brown, the remarks are not persuasive. Applicant traverses on the grounds that the action did not make clear what element the semiconductor substrate includes, despite Fig. 3A and [0047] including reference to Item 311 with the language indicating the prior art detector includes a sensor circuit and signal processor fabricated on a silicon structure. These remarks are not persuasive. The prior art was clearly shown in the action corresponding to the claimed elements.
Applicant further alleges that the Examiner failed to show the thickness of the silicon substrate. The Office action at page 7 includes [0068] which states the silicon layer is between 10 and 100 micrometers. Since the epitaxial silicon layer of [0068] is a semiconductor substrate for purpose of the invention in Brown, the claimed limitation is met.
Applicants traverse that the use of layer 457 at page 10 of the remarks is not persuasive. Fig. 4b is but a single pixel of the detector 310. As noted, Item 457-S2 is an electron sensing element [0068] and as previously shown, the signal processing elements 320 in Fig. 3A may be formed on the same chip, and as shown in Fig. 3a, the sensing element 310 and processor 320 are on opposed sides.
Any change to the action below is necessitated by Applicant’s amendment.
This action is made final.
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:
Signal processing components in claim 1-20. The phrase “signal processing components” is a nonce phrase coupled to functional language “facilitate determination of a value…” via a transition phrase “configured to”. It therefore meets the criteria for interpretation of a means plus function term and is interpreted as a computer implemented invention governed by MPEP 2181(II)(B).
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 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 1-20 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 limitation “signal processing components” in claims 1-20 invokes 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 term “signal processing components” is interpreted as a generic computing element. There is no corresponding step by step algorithm disclosed for causing a computer to “facilitate determination of a value that represents a second property of the received charged particle”. This limitation is interpreted with the guidance supplied regarding computer implemented inventions in MPEP 2181(II)(B). 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.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 2-3 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claims are drawn to a natural phenomenon and recite non-statutory subject matter in the form of a signal. Claim 2 recites that the detector is configured such that carriers form a signal output from each sensing element. Each sensing element is a charged particle diode detector. Note [0051] and [0060] which notes that the diodes are PIN diodes and that the carrier generation is in response to receiving a charged particle. Therefore, this function is merely a recitation of the natural phenomenon of how a PIN diode functions. The generated carriers are the movement of charge, or signal, through the PIN diode and out as a detector output signal. This output current similarly is signal generated from the natural, normal behavior of a PIN diode. Note Ramirez-Jimenez, “PIN Diode Detectors”, AIP Conf. Proc. 1026, 213–226 (2008) at page 213-214. When a charged particle strikes a PIN diode, the natural phenomenon produced as an effect is the generation of electron-hole pairs acting as carriers which represent the resulting current or signal moving through the PIN diode detector.
Further, the structure of the detector of claim 1 upon which claims 2 and 3 depend is not novel, note the rejection under the prior art below, and the subject matter of claims 2 and 3 is not a practical application or significantly more than the detector of claim 1. Claim 2 merely recites the natural phenomenon of what physically happens in a PIN diode (Note Ramirez-Jimenez cited above) and claim 3 recites the content of the signal of claim 2.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 1-3, 6-10, 12-13, and 16-20 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by US Patent Application 2017/0329025.
Regarding claim 1, ‘025 discloses a monolithic detector for a charged particle beam apparatus [0047], Fig. 3a, the detector comprising:
a plurality of sensing elements formed on a first side of a semiconductor substrate:
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each of the sensing elements configured to receive charged particles emitted from a sample and to generate carriers in proportion to a first property of a received charged particle [0035, 0047-0049].
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the substrate having a thickness in a range from about 10 to 30 pm [0015, 0068];
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and a plurality of signal processing components formed on a second side of the semiconductor substrate [0035, 0047]
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the second side being opposite the first side note above Fig. 3A
the plurality of signal processing components being part of a system configured to determine a value that represents a second property of the received charged particle (Note the rejection of claim 1 pointing out this limitation as rendering the claim indefinite)
Regarding claim 2, ‘045 disclsoes the detector of claim 1, wherein the detector is configured so that the carriers form a signal that is output from each of the sensing elements.
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Regarding claim 3, ‘025 discloses the detector of claim 2, wherein the signal includes an amplified charge or current. Note [0049] above.
Regarding claim 6, ‘025 discloses the detector of claim 1, wherein the plurality of signal processing components comprises: a switch (transistors noted below) configured to connect adjacent sensing elements.
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Regarding claim 7, ‘025 disclsoes the detector of claim 1, wherein the plurality of signal processing components comprises: circuitry configured to convert an output of a sensing element to an electrical signal of a different form.
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Regarding claim 8, ‘025 discloses the detector of claim 1, wherein the detector is formed as a pixelated array including the plurality of sensing elements.
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Regarding claim 9, ‘025 discloses the detector of claim 1, wherein the plurality of sensing elements includes a diode configured to generate electron-hole pairs in response to an incident electron impacting the detector.
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Regarding claim 10, ‘025 discloses the detector of claim 9, wherein the plurality of signal processing components includes circuitry configured to generate an output signal in proportion to incoming current or charge signal generated in the diode.
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12. (Original) The detector of claim 1, wherein the charged particle beam apparatus includes a scanning electron microscope.
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13. (Original) The detector of claim 1, wherein the semiconductor substrate includes an epitaxial substrate.
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Regarding claim 16, ‘025 discloses a method corresponding to a non-transitory computer-readable medium storing a set of instructions that are executable by one or more processors of controller of a charged particle beam apparatus to cause the charged particle beam apparatus to perform operations comprising:
generating a charged particle beam; receiving a secondary charged particle impacting a sensing element;
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generating carriers in a sensitive volume of the sensing element; collecting the carriers at an electrode included in a monolithic layer of a detector that includes the sensing element;
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performing signal processing using a signal output from the electrode.
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Regarding claim 17, ‘025 discloses a method for the medium of claim 16, wherein the operations further comprise: performing signal readout from the monolithic layer. Note [0051] above.
Regarding claim 18, ‘025 discloses a method for the medium of claim 16, wherein the operations further comprise: actuating a component included in the monolithic layer. Note M1-M3 transistor switches above.
Regarding claim 19, ‘025 discloses a method for the medium of claim 18, wherein the component includes a switch configured to connect adjacent sensing elements. Note M1-M3 transistor switches above.
Regarding claim 20, ‘025 discloses a method for the medium of claim 19, wherein the operations further comprise: connecting adjacent sensing elements so that carriers from a plurality of sensing elements are output together.
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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 DAVID A VANORE whose telephone number is (571)272-2483. The examiner can normally be reached Monday to Friday 7AM to 6 PM.
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, Georgia EPPS can be reached at (571) 272-2328. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID A. VANORE
Primary Examiner
Art Unit 2881
/DAVID A VANORE/Primary Examiner, Art Unit 2878
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