DETAILED ACTION
This Office action is in response to the election filed on January 21st, 2026. Claims 1-21 are pending, with claims 1, 3, and 5-6 being directed to the elected invention, or generic.
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 .
Election/Restrictions
Applicant’s election without traverse of group II in the reply filed on January 21st, 2026 is acknowledged.
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 such as “module”, “system”, or “displacer” (which is effectively the same as saying “means for displacing”) 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 displacer configured to position the hybrid probe or the first probe and the second probe facing a plurality of points of the surface, so that a plurality of first signals and a plurality of second signals are generated by the hybrid probe when the hybrid probe is positioned successively facing each point of the plurality of points, or by the first probe and by the second probe when the first probe and the second probe are each positioned successively facing each point of the plurality of points,” and “a processing module configured to determine a property of the surface at of the surface based on the plurality of first signals and the plurality of second signals.” in claims 1-21; and “system for rotating the probes configured so that the movement is a rotational movement” and “translation system configured to control a translation of the rotation system” in claim 5.
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, 3, and 5-6 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 1, 3, and 5-6 recite “a processing module configured to determine a property of the surface at of the surface based on the plurality of first signals and the plurality of second signals.” It is unclear what property applicant intends to claim determining with a processing module. No particular properties are disclosed as being determined from the signals. The disclosure only mentions general types of properties, and only in the context of parameters being measured directly, not properties being determined by processing of multiple signals of different types (“detect a parameter of the surface different from a force caused by the surface on the first probe 15, preferably a rheology of the surface 9, and/or an electronic property of the surface 9, a magnetic property of the surface 9, a physicochemical property of the surface 9.” and “second probe comprising a special magnetic tip is used to measure a magnetic property of the surface after this deposition.”).
Claims 1, 3, and 5-6 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 “a processing module configured to determine a property of the surface at of the surface based on the plurality of first signals and the plurality of second signals.” 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. For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b). See Net MoneyIN, Inc. v. Verisign. Inc., 545 F.3d 1359, 1367, 88 USPQ2d 1751, 1757 (Fed. Cir. 2008). See also In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011) ("[W]hen the disclosed structure is a computer programmed to carry out an algorithm, ‘the disclosed structure is not the general purpose computer, but rather that special purpose computer programmed to perform the disclosed algorithm.’") (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999)). In this case, the disclosure does not contain any algorithms for performing the claimed function of determining a property of the surface at of the surface based on the plurality of first signals and the plurality of second signals. 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 § 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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,253,516 (Elings).
Regarding claim 1, Elings discloses a device for measuring or modifying a surface of a sample, the device comprising:
a support (fig. 2, unlabeled),
a sample holder, the sample holder comprising a first area and at least a second area, the first area being configured to receive the sample, the sample being fixedly mounted to the first area, the second area being distinct from the first area, the second area being fixed relative to the support, the sample holder being deformable so as to allow relative displacement of the first area relative to the second area (fig. 2, element 16),
a detector configured to detect a displacement of the first area relative to the second area (fig. 2, elements 20 & 22),
at least one of a hybrid probe and a set of probes,
i) the hybrid probe being configured to detect a first parameter at a point of the surface when the hybrid probe faces the point, the hybrid probe being configured to generate a first measurement signal representative of the first parameter, the hybrid probe being configured to detect a second parameter at the point of the surface, the first parameter being different from the first parameter, the hybrid probe being configured to generate a second measurement signal representative of the second parameter, the first parameter being different from the second parameter (fig. 2, elements 12 & 14, wherein “Dual mode operation is achieved by combining cantilever arm deflection measurement by optical means with, for example, detection of a current between the tip and sample.” abstract),
ii) the set of probes comprising a first probe and a second probe, the first probe being different from the hybrid probe, the second probe being different from the hybrid probe, the set of probes being configured in a first configuration or a second configuration, so that in the first configuration the first probe is configured to detect a first parameter at the point of the surface when the first probe faces the point, the first probe being configured to generate the first measurement signal representative of the first parameter, the second probe being configured to detect the second parameter at the point of the surface when the second probe faces the point, the second probe being configured to generate the second measurement signal representative of the second parameter, and in the second configuration, one of the first probe and the second probe is configured to modify a third parameter of the surface at the point of the surface (has element (i) instead),
the device comprising a displacer configured to position the hybrid probe or the first probe and the second probe facing a plurality of points of the surface, so that a plurality of first signals and a plurality of second signals are generated by the hybrid probe when the hybrid probe is positioned successively facing each point of the plurality of points, or by the first probe and by the second probe when the first probe and the second probe are each positioned successively facing each point of the plurality of points (“The cantilever arm and sample are scanned relative to the sample either by moving the sample or by moving the tip.” abstract),
the device comprising a processing module configured to determine a property of the surface at of the surface based on the plurality of first signals and the plurality of second signals (“deriving surface image data from the signal.”).
Regarding claim 6, Elings discloses the device according to claim 1, wherein the sample holder is a harmonic oscillator (“The sample 10, of course, must be small enough so that when it is attached to the cantilever arm 16, it does not unduly affect the resonant frequency of the cantilever arm 16.” wherein only a harmonic oscillator has a resonant frequency).
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) 1, 3, and 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2007/0214864 (Proskch) in view of US 7,597,717 (Lu et al.).
Regarding claim 1, Proskch discloses a device for measuring or modifying a surface of a sample, the device comprising:
a support (fig. 4, element 4),
a sample holder, the sample holder comprising a first area and at least a second area, the first area being configured to receive the sample, the sample being fixedly mounted to the first area, the second area being distinct from the first area, the second area being fixed relative to the support, the sample holder being deformable so as to allow relative displacement of the first area relative to the second area (fig. 4, element 3),
a detector configured to detect a displacement of the first area relative to the second area (fig. 4, element 16),
the device comprising a displacer configured to position the hybrid probe or the first probe and the second probe facing a plurality of points of the surface, so that a plurality of first signals and a plurality of second signals are generated by the hybrid probe when the hybrid probe is positioned successively facing each point of the plurality of points, or by the first probe and by the second probe when the first probe and the second probe are each positioned successively facing each point of the plurality of points (fig. 4, element 8),
the device comprising a processing module configured to determine a property of the surface at of the surface based on the plurality of first signals and the plurality of second signals (fig. 4, element 11).
Proksch does not disclose at least one of a hybrid probe and a set of probes,
i) the hybrid probe being configured to detect a first parameter at a point of the surface when the hybrid probe faces the point, the hybrid probe being configured to generate a first measurement signal representative of the first parameter, the hybrid probe being configured to detect a second parameter at the point of the surface, the first parameter being different from the first parameter, the hybrid probe being configured to generate a second measurement signal representative of the second parameter, the first parameter being different from the second parameter,
ii) the set of probes comprising a first probe and a second probe, the first probe being different from the hybrid probe, the second probe being different from the hybrid probe, the set of probes being configured in a first configuration or a second configuration, so that in the first configuration the first probe is configured to detect a first parameter at the point of the surface when the first probe faces the point, the first probe being configured to generate the first measurement signal representative of the first parameter, the second probe being configured to detect the second parameter at the point of the surface when the second probe faces the point, the second probe being configured to generate the second measurement signal representative of the second parameter, and in the second configuration, one of the first probe and the second probe is configured to modify a third parameter of the surface at the point of the surface.
Lu et al. discloses a device for measuring or modifying a surface of a sample, the device comprising: a set of probes, ii) the set of probes comprising a first probe and a second probe, the set of probes being configured in a first configuration or a second configuration, so that in the first configuration the first probe is configured to detect a first parameter at the point of the surface when the first probe faces the point, the first probe being configured to generate the first measurement signal representative of the first parameter, the second probe being configured to detect the second parameter at the point of the surface when the second probe faces the point, the second probe being configured to generate the second measurement signal representative of the second parameter (fig. 2 & 4, element 40/130, wherein 6 probes measuring 5 different parameters are shown, including AFM, STM, SSRM, SCM, and MFM probes), and in the second configuration, one of the first probe and the second probe is configured to modify a third parameter of the surface at the point of the surface (fig. 2 & 4, element 40/130, where 2 probes are dip pen nanolithography probes that modify a surface, DPN1 & DPN2).
It would have been obvious to a person having ordinary skill in the art at the time the application was filed to substitute the set of probes from Lu et al. in for the probe in Proksch so that the probe type could be quickly and easily switched, an advantage recognized by Lu et al. (“The embodiments of the invention allow for quick, simple and cost-effective switching between various SPM characterization methods. The embodiments of the invention are particularly useful for SPM methods such as DPN, which frequently requires the use of new tips in order to avoid cross contamination of `inkwells`. The ability to perform writing of nanostructures, obtain surface topographical information, and perform electrical characterization in a single step minimizes the potential for user error.”).
Regarding claim 3, Proksch in view of Lu et al. disclose the device according to claim 1, comprising the set of probes, the device also comprising a probe switch, the first probe and the second probe each being fixedly mounted on the probe switch, the switch being configured to cause movement of the first probe and the second probe relative to the sample holder, so that when the first probe faces dot of the surface and the switch causes movement, the second probe is moved so as to face the dot (Lu et al., base, element 42/132/130).
Regarding claim 5, Proksch in view of Lu et al. disclose the device according to claim 3, wherein the switch comprises a system for rotating the probes configured so that the movement is a rotational movement (Lu et al., “The selection of the particular channel may activate a motor (not shown) that may control the rotation of base 310 such that a particular cantilever 320 rotates into position over sample surface (not shown).”).
Lu et al. does not disclose a translation system configured to control a translation of the rotation system, relative to the sample holder along an axis perpendicular to the surface as part of the switch. Translation systems are well-known in the art, and it would have been obvious to a person having ordinary skill in the art at the time the application was filed to modify the switch of Lu et al. to include such a translation system if translation of the switch perpendicular to the sample were desired.
Regarding claim 6, Proksch in view of Lu et al. disclose the device according to claim 1, wherein the sample holder is a harmonic oscillator (Proksch, “FIG. 6 shows large peaks in the response amplitude which correspond to resonances in the support structure 3. These resonances are being driven by the reaction forces between the support structure 3 and the base of the z-actuator 2.” wherein only a harmonic oscillator has a resonant frequency).
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