DETAILED ACTION
This Office action is in reponse to the amendment and remarks filed on January 30th, 2026. Claims 1-10 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 “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 “unit” 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: “a signal detection unit to detect the strain of the cantilever” and “a signal output unit to output a signal detected by the signal detection unit” in claims 1-4 and 8-10.
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 5-7 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 5 recites the limitation "the electrode member" in the voltage application step. There is insufficient antecedent basis for this limitation in the claim.
Claims 5-7 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 5 recites the limitation "the cantilever" in the voltage application step. There is insufficient antecedent basis for this limitation in the claim.
Claims 5-7 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 5 recites the limitation "the surface" in the signal detection step. There is insufficient antecedent basis for this limitation in the claim.
Claims 5-7 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 5 recites the limitation "the sample" in the signal detection step. There is insufficient antecedent basis for this limitation in the claim.
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) 1-6 and 8-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2012/0125783 (Kalinin et al.).
Regarding claim 1, Kalinin et al. disclose a high-frequency enhanced electrochemical strain microscope, comprising:
an electrode member to support the sample (fig. 1B, element 4);
a cantilever having a probe on a free end, the probe contacting with the surface of the sample (fig. 1B, element 2);
a first AC voltage source and a second AC voltage source electrically connected between the electrode member and the cantilever (“Accordingly, in another embodiment, a method of mapping activity on an electrochemically active surface of a ionic material includes applying a pulsed electrical excitation signal to a nanoscale volume of the material though a movable SPM probe (or nanoindentor, or other local probe technique) to induce movement of mobile ions in the nanoscale volume of the material (local excitation).” P 13 wherein “The alternative modes of excitation can include, but are not limited to the multifrequency (for example, two or more) at the fixed frequency, multiple frequency excitations with the use of the feedback loop to maintain resonance conditions, frequency sweeps at each spatial/voltage location, and broad band excitation (band excitation) without or with feedback.” P 42)
a signal detection unit to detect the strain of the cantilever (“The resultant displacement of an AFM microscope tip is measured as flexural and torsional components of cantilever displacement (or by an equivalent detection system), providing information on ionic activity below the probe.” P 13);
a signal output unit to output a signal detected by the signal detection unit (“Using lock-in amplification, band excitation or the equivalent of an amplification method, the inventors have developed a method for reliable measurement of ion mobility and electrochemical reactivity.” P 11);
wherein the second AC voltage source is configured to apply a second AC voltage to be superimposed on the first AC voltage applied by the first AC voltage source and having a frequency higher than a frequency of the first AC voltage (“The alternative modes of excitation can include, but are not limited to the multifrequency (for example, two or more) at the fixed frequency, multiple frequency excitations with the use of the feedback loop to maintain resonance conditions, frequency sweeps at each spatial/voltage location, and broad band excitation (band excitation) without or with feedback.” P 42, note that the labelling of the AC voltages as first and second is arbitrary since both are applied together, hence whichever has the higher frequency can be labeled the “second” AC voltage).
Regarding claim 2, Kalinin et al. disclose the high-frequency enhanced electrochemical strain microscope according to claim 1, wherein the frequency of the second AC voltage is from two times to 1016 times the frequency of the first AC voltage (intended use, AC power supplies are generally able to set the frequencies as desired).
Regarding claims 3-4 & 8-10, Kalinin et al. discloses the claimed invention, where the specific frequency ranges claimed are intended use. Kalinin et al. also specifically includes many frequencies in the claimed ranges (‘The AC voltage frequency can range from about 1 kHz to about 10 MHz’).
Regarding claim 5, Kalinin et al. discloses a method for high-frequency enhanced electrochemical strain microscopy, comprising:
a voltage application step to apply a first AC voltage and a second AC voltage between the sample and the cantilever (“Accordingly, in another embodiment, a method of mapping activity on an electrochemically active surface of a ionic material includes applying a pulsed electrical excitation signal to a nanoscale volume of the material though a movable SPM probe (or nanoindentor, or other local probe technique) to induce movement of mobile ions in the nanoscale volume of the material (local excitation).” P 13, wherein “The alternative modes of excitation can include, but are not limited to the multifrequency (for example, two or more) at the fixed frequency, multiple frequency excitations with the use of the feedback loop to maintain resonance conditions, frequency sweeps at each spatial/voltage location, and broad band excitation (band excitation) without or with feedback.” P 42);
a signal detection step to detect, as a response signal, a bending amount of the cantilever, which is proportional to the amount of displacement of the surface of the sample due to the motion of ions in the sample (“The resultant displacement of an AFM microscope tip is measured as flexural and torsional components of cantilever displacement (or by an equivalent detection system), providing information on ionic activity below the probe.” P 13);
a signal output step to output the response signal detected in the signal detection step (“Using lock-in amplification, band excitation or the equivalent of an amplification method, the inventors have developed a method for reliable measurement of ion mobility and electrochemical reactivity.” P 11),
wherein in the voltage application step, the second AC voltage is superimposed on the first AC voltage, and is controlled to have a frequency higher than a frequency of the first AC voltage (“The alternative modes of excitation can include, but are not limited to the multifrequency (for example, two or more) at the fixed frequency, multiple frequency excitations with the use of the feedback loop to maintain resonance conditions, frequency sweeps at each spatial/voltage location, and broad band excitation (band excitation) without or with feedback.” P 42, note that the labelling of the AC voltages as first and second is arbitrary since both are applied together, hence whichever has the higher frequency can be labeled the “second” AC voltage).
Regarding claim 6, Kalinin et al. discloses the high-frequency enhanced electrochemical strain microscopy according to claim 5, wherein the sample is an ion conductor (‘The specific embodiments described herein relate to the methodology employed to enable real space mapping of ionic diffusion and electrochemical reactivity in Li-ion batteries and in oxygen-ion conductive solid surfaces.’ P 36).
Claim Rejections - 35 USC § 103
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.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0125783 (Kalinin et al.).
Regarding claim 7, Kalinin et al. discloses the claimed invention except for a insulating sample. It would have been obvious to a person having ordinary skill in the art at the time the application was filed to apply the method of Kalinin et al. to an insulator if mapping an amount of ESM response of such a sample were desired.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0223614 (Fukuma et al.).
Regarding claim 1, Fukuma et al. discloses a high-frequency enhanced electrochemical strain microscope, comprising:
a cantilever (element 105) having a probe on a free end (104), the probe contacting with the surface of the sample (element 106);
a first AC voltage source and a second AC voltage source electrically connected between the sample and the cantilever (fig. 3, elements 101 & 102);
a signal detection unit to detect the strain of the cantilever (fig. 3, element 212);
a signal output unit to output a signal detected by the signal detection unit (fig. 3, element 218),
wherein the second AC voltage source is configured to apply a second AC voltage to be superimposed on the first AC voltage applied by the first AC voltage source and having a frequency higher than a frequency of the first AC voltage (“According to this configuration, the potential measurement device applies, as a bias voltage, a voltage obtained by superimposing two alternating-current voltages of different frequencies, between the probe electrode and the sample.” P 35).
Fukuma et al. does not disclose an electrode member to support the sample. However, the addition of such an electrode member would be obvious as a way to apply the alternating current to the sample when direct connection to the sample is impractical.
Regarding claim 2, Fukuma et al. discloses the high-frequency enhanced electrochemical strain microscope according to claim 1, wherein the frequency of the second AC voltage is from two times to 1016 times the frequency of the first AC voltage (intended use, AC power supplies are generally able to set the frequencies as desired).
Regarding claim 3, Fukuma et al. discloses the high-frequency enhanced electrochemical strain microscope according to claim 1, wherein the frequency of the second AC voltage is from 1 MHz to 10 THz (intended use, AC power supplies capable of these frequencies are generally known).
Regarding claim 4, Fukuma et al. discloses the high-frequency enhanced electrochemical strain microscope according to claim 1, wherein the frequency of the first AC voltage is from 1 mHz to 10 MHz (intended use, AC power supplies capable of these frequencies are generally known).
Regarding claim 5, Fukuma discloses a method for high-frequency enhanced electrochemical strain microscopy, comprising:
a voltage application step to apply a first AC voltage and a second AC voltage between the sample and the cantilever (“a first power supply applying a first voltage between the electrode and sample; a second power supply adding, to the first voltage, a second voltage having a different frequency than the first voltage, and applying the added voltage;” abstract);
a signal detection step to detect, as a response signal, a bending amount of the cantilever, which is proportional to the amount of displacement of the surface of the sample due to the motion of ions in the sample (“The position at which the PD 913 receives light changes according to the displacement of an end portion of the cantilever 910 in the z-axis direction.” P 70);
a signal output step to output the response signal detected in the signal detection step (“and a signal detection unit outputting a particular frequency component's magnitude contained in the displacement measurement unit's output,” abstract),
wherein in the voltage application step, the second AC voltage is superimposed on the first AC voltage, and is controlled to have a frequency higher than a frequency of the first AC voltage (“According to this configuration, the potential measurement device applies, as a bias voltage, a voltage obtained by superimposing two alternating-current voltages of different frequencies, between the probe electrode and the sample.” P 35, note that the labelling of the AC voltages as first and second is arbitrary since both are applied together, hence whichever has the higher frequency can be labeled the “second” AC voltage).
Fukuma et al. does not disclose applying the voltage between an electrode member and the cantilever, applying between the sample and the cantilever instead. However, the addition of such an electrode member, and application to said electrode member, would be obvious as a way to apply the alternating current to the sample when direct connection to the sample is impractical.
Regarding claim 6, Fukuma et al. discloses the claimed invention except it does not specify the use of an ion conductor for a sample. It would have been obvious to a person having ordinary skill in the art at the time the application was filed to apply the method of Fukuma et al. to an ion conductor if mapping an amount of ESM response of such a sample were desired.
Regarding claim 7, Fukuma et al. discloses the claimed invention except it does not specify the use of an insulator for a sample. It would have been obvious to a person having ordinary skill in the art at the time the application was filed to apply the method of Fukuma et al. to an insulator if mapping an amount of ESM response of such a sample were desired.
Regarding claim 8, Fukuma et al. discloses the high-frequency enhanced electrochemical strain microscope according to claim 2, wherein the frequency of the second AC voltage is from 1 MHz to 10 THz (intended use, AC power supplies capable of these frequencies are generally known).
Regarding claim 9, Fukuma et al. discloses the high-frequency enhanced electrochemical strain microscope according to claim 8, wherein the frequency of the first AC voltage is from 1 mHz to 10 MHz (intended use, AC power supplies capable of these frequencies are generally known).
Regarding claim 10, Fukuma et al. discloses the high-frequency enhanced electrochemical strain microscope according to claim 2, wherein the frequency of the first AC voltage is from 1 mHz to 10 MHz (intended use, AC power supplies capable of these frequencies are generally known).
Response to Arguments
Applicant's arguments filed January 30th, 2026 have been fully considered but they are not persuasive.
Regarding the rejections over Fukuma, applicant argues that Fukuma measures surface potential rather than electrochemical strain. This is a difference of intended use, not a difference in structure or process. Applicant must particularly point out a difference in structure (for the apparatus claims) or process (for the method claims) in order to overcome the rejections.
Regarding the rejections of Kalinin, applicant argues that while Kalinin discloses multiple frequencies are superimposed and applied to the sample, this is done to improve measurement sensitivity by utilizing mechanical resonance, and not intended to increase ionic conductivity of the sample by applying a high-frequency electric field, as in the present invention. The recitation of an additional advantage associated with doing what the prior art suggests does not lend patentability to an otherwise unpatentable invention.
Applicant further argues “Even by referring to the disclosure of Kalinin, it is unobvious to apply superimposed two AC voltages with different frequencies to the sample in in the present invention.” It is unclear to examiner what applicant means by this, since in the preceding paragraph they admitted that that Kalinin directly discloses superimposing two different frequencies and applying them to the sample.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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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.
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/ELIZA W OSENBAUGH-STEWART/Primary Examiner, Art Unit 2881
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