DETAILED ACTION
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 Status
Claims 1-20 are pending.
Claims 10-17 are withdrawn
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0240933 [Yuk].
Regarding Claims 1, 6, and 19:
Yuk teaches a sample support device for charged particle microscopy, the device comprising:
a substrate (Fig. 2 (110)),
a heater element and/or biasing electrode integrated in or on the substrate to heat and/or bias a sample of interest when positioned in an observation region of the device (paras 16-18 describe electrodes for such a purpose in the hole part of the substrate),
a membrane covering (Fig. 2 (120)), an opening in the heater element and/or substrate in the observation region of the device (Fig. 2 (115)), wherein said membrane is perforated to form at least one hole therein (Fig. 2 (121)),
a graphene layer covering said at least one hole in said membrane to form a sample support to place the sample thereon for study (Fig. 2 (150)), and
a cap to cover at least the membrane such that a chamber is formed between the cap and the membrane (see annotated Fig. 2 below)
wherein a sample can be isolated in a controllable gaseous environment (the sealed chamber created in annotated Fig. 2 below can accommodate a controlled gaseous environment, as is evidenced by its ability to accommodate a liquid environment).
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However, Yuk fails to teach that said at least one hole in said membrane is at least ten times smaller in area than said opening, covered by said membrane, forming the observation region. Instead, Yuk teaches that: “The hole diameter of the lower hole part 121 may be variously several tens of microns to several tens of nanometers. The hole diameter of the lower hole part 121 and the thickness of the lower support 120 may be appropriately adjusted to prevent the bowing of a lower transmissive thin film part 150 covering the lower hole part 121.” Para 64.
Optimizing hole area in the membrane is well within the bounds of normal experimentation. See MPEP 2144.05 II (A). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, “[a] particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.” In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In the case at hand, Yuk teaches hole size, i.e. area, as a variable which achieves a recognized result, a parameter to adjust in order to prevent bowing. Therefore, the prior art teaches adjusting hole area and identifies said area as result-effective variables. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective time of filing to optimize the hole areas to be less than 1/10th the area of aperture (115) since it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.
Regarding Claim 2:
Yuk teaches the sample support device of claim 1, wherein said graphene layer has a thickness of less than 2 nm (paras 86, 93).
Regarding Claim 3:
Yuk teaches the sample support device of claim 1, wherein said membrane has a thickness in the range of 2 nm to 1 μm (para 64).
Regarding Claim 4:
Yuk teaches the sample support device of claim 1, wherein said graphene layer comprises a number n of stacked graphene layers, in which n is in the range of 2 to 5. Yuk teaches “graphene of a single layer or multiple layers as necessary.” This range overlap the claimed range, and thus makes it obvious.
Regarding Claim 5:
Yuk teaches the sample support device of claim 1, wherein said membrane comprises an amorphous silicon nitride layer (para 63 – note that Yuk para 5 specifies that SiNx refers to amorphous silicon nitride.).
Regarding Claim 7:
Yuk teaches the sample support device of claim 1, wherein said heater element comprises a spiral-shaped and/or meandering electrical conductor. Fig. 24 (113).
It would have been obvious to one of ordinary skill in the art before the effective time of filing to incorporate the meandering conductive heating element of Yuk in or on its substrate. One would have been motivated to do so since this would allow one to test the sample under specific thermal conditions (paras 7, 22, 128, 133) and since placing the heating element in the lower chip is suggested by Yuk (para 135).
Regarding Claims 18 and 20:
Yuk teaches the sample support device of claim 1, wherein said at least one hole in said membrane is at least 10 times smaller in diameter than said opening, covered by said membrane, forming the observation region.
Instead, Yuk teaches that: “The hole diameter of the lower hole part 121 may be variously several tens of microns to several tens of nanometers. The hole diameter of the lower hole part 121 and the thickness of the lower support 120 may be appropriately adjusted to prevent the bowing of a lower transmissive thin film part 150 covering the lower hole part 121.” Para 64.
Optimizing hole area in the membrane is well within the bounds of normal experimentation. See MPEP 2144.05 II (A). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, “[a] particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.” In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In the case at hand, Yuk teaches hole size, i.e. area and diameter, as variables which achieves a recognized result; a parameter to adjust in order to prevent bowing. Therefore, the prior art teaches adjusting hole area and identifies said area as result-effective variables. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective time of filing to optimize the hole areas to be less than 1/10th the area of aperture (115) since it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0240933 [Yuk] in view of US 2011/0079710 A1 [Damiano].
Regarding Claim 8:
Yuk teaches the sample support device of claim 1, but fails to teach the device comprising at least one heat sink element to improve the temperature stability and/or heating uniformity of a sample when placed on the graphene layer and heated by the heater element.
Damiano teaches a sample support device with a hear sink (Fig. 3 (Heat sink element)) to improve the temperature stability and/or heating uniformity of a sample (paras 77, 80, 81) when placed on the graphene layer (paras 66-67) and heated by the heater element (Fig. 3 (Heat source element)).
It would have been obvious to one of ordinary skill in the art before the effective time of filing to add the heat sinks of Damiano to the membrane of Yuk. One would have been motivated to do so since this would allow one to define a specific thermal gradient to achieve more temperature stability near the sample under test (Damiano paras 80-81).
Regarding Claim 9:
The modified invention of claim 8 teaches the sample support device of claim 8, comprising at least one channel to provide a flow of a gas or a fluid of interest through said chamber. As shown in Yuk Fig. 3.
Response to Arguments
Applicant's arguments filed 1/9/26 have been fully considered but they are not persuasive.
Applicant’s claim to foreign priority is acknowledged.
Applicant argues that claim 1 is not obvious over Yuk at least because Yuk fails to disclose a structure for isolating a gaseous environment. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., structure for isolating a gaseous environment) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Rather, the instant claims recite, “a cap to cover at least the membrane such that a chamber is formed between the cap and the membrane wherein a sample can be isolated in a controllable gaseous environment.” The claim at issue, as drafted, requires two items: 1) a cap to cover at least the membrane such that a chamber is formed between the cap and the membrane; and 2) the chamber in which a sample can be isolated in a controllable gaseous environment. There is no requirement for isolating a gaseous environment. Rather, there is a requirement for the ability to isolate (corresponding to “can be isolated”) a sample, where that sample is in a gaseous environment. To wit, this is a functional limitation describing an ability of the claimed chamber, not a positive recitation of gas in a cell. That established, the question becomes whether the sealed chamber of Yuk could isolate a sample (from something) and exist in a gaseous environment.
Clearly, the chamber of Yuk can isolate a sample in the chamber, as such a relationship is shown throughout the publication. See e.g., Figs. 2, 4, 5, et al. As such, it meets that limitation,
Further, the chamber is structured such that it can hold a gaseous environment. As applicant notes, and as Yuk explains at length, the chamber of Yuk is designed to carry fluids and liquids. The applicant alleges that because Yuk is directed to a liquid containing cell, it could not contain gas. However, the structure of Yuk appears to be the same as that disclosed in the instant application. The instant claims and specification describe holes covered in a graphene layer, the holes having a diameter of 50 nm to 5 μm, and the graphene having a thickness of less than 2 nm. The instant application suggests that such sized holes and graphene layers provide the claimed ability to hold a gaseous environment. Since Yuk describes the same size holes in the same components and the same thickness of graphene, it inherently has the same ability. This is evidence that Yuk discloses the same ability to hold a gaseous environment, and sufficient support for the prima facie case of obviousness above.
Since Yuk teaches all of the elements at issue, the rejection of record is maintained.
Applicant argues that adjusting the hole size of Yuk to meet the claimed sizes is not obvious because Yuk mitigation of bowing does not reasonably equate to the instant invention’s prevention of degradation to the graphene layer. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., prevention of degradation to the graphene layer) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The applicant has claimed hole size/diameter without any context. Yuk provides a reason to change the hole size/diameter. As such, it at least suggests the claims.
Applicant argues that Yuk fails to recognize the ratio of the diameter/size of the hole to diameter/size of the opening, and as such it would not have been obvious to optimize such a ratio. This is not persuasive. There is no discussion of changing the size of the opening in either the instant application or in Yuk. Clearly the recitation of a ratio in the instant claims is a circuitous description of the size/diameter of the hole, not a genuine consideration of a ratio. Further, it is noted that the ratio of hole size to opening size in Fig. 2 of Yuk clearly meets the claimed ratio, but owing to lack of specificity as to whether said drawing is to scale, the rejection was drafted explain the extensive teaching and suggestions of Yuk.
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 WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/ Primary Examiner, Art Unit 2881