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 .
Election/Restrictions
The restriction requirement of record is withdrawn.
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:
“particle analyzing device…” of claims 1-2, 4-10.
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 § 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 1-2, 4-6, 9-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to the abstract idea of using mathematical calculations to update data without significantly more. In particular, the claims recite the abstract idea of gathering signal data (in the forms of an image and a signal) and using that data with a conversion formula to update image brightness. This is akin to the data gathering, calculation, and updating of alarm limits that were found to be not patent eligible in Parker v. Flook. 437 U.S. 584 (1978). As in Parker v. Flook, data, i.e., signals and images, are gathered and calculation are performed.
The instant judicial exception is not integrated into a practical application because changing the brightness of an image in conventional post-solution activity, and affects nothing more than the presentation of data that has already been collected. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims’ recitations of a particle analyzing device appears to be a description of a processing device, which is not significantly more than the abstract idea itself. Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2359 (2014). The claims’ recitations describing the subject matter to be imaged, e.g., the predetermined particle and the instrument for holding the same, are not significantly more than the abstract idea, because they are not even part of the claimed invention, but rather are information about the origin of the image which is collected and modified by the claimed invention.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 1-2 and 4-10 are rejected under 35 U.S.C. 112(b) 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. Further. Claims 1-2 and 4-10 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. Claim limitation “particle analyzing device…” invokes 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the functions. Further, since the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the functions, the above noted subject matter was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b), and lacks written description support and is rejected under 35 U.S.C. 112(a).
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.
Claims 1-2 and 4-10 are rejected under 35 U.S.C. 112(b) 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 1 recites a number of steps that are not associated with any structure, and as such cannot reasonably be interpreted as functions. These steps include, “the first standard value is a value determined based on brightness of the first region, and the second standard value is a value determined based on brightness of the second region.” These limitations are steps because they recite an action to be performed, namely determining. As such, the claims including these steps recite an apparatus and a method of its use in the same claim. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). MPEP 2173.05(p) (II); and See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). These limitations make the claims indefinite because the step claim language makes it unclear whether infringement occurs when one creates the system that allows for the step, or whether infringement occurs when the step actually occurs.
Claims 1-2, 4-6, and 9-10 are further rejected under 35 U.S.C. 112(a) because the claims invoke 35 U.S.C. 112(f), but fail to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. The additional limitations in the claims at issue regarding “the instrument” and “the particle” are not additional elements in the claim, but instead are descriptions of the preamble limitations describing the origin of an image to be processed. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim.
The above indefinite limitations will be interpreted as best understood in light of the specification.
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.
Claims 1-2, 4-8, 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2005/0040331 A1 [Gunji]
Regarding Claim 1:
Gunji teaches a particle analyzing device for analyzing a predetermined particle to be analyzed, placed on an instrument, with an electron microscope (abstract), wherein
the particle analyzing device acquires a first standard value and a second standard value regarding brightness in an electron microscope image (para 52, the images include a first and second standards among the transistors and normal junction),
the particle analyzing device acquires an electron microscope image and a signal profile generated by irradiating the instrument and the particle with an electron beam (Fig. 3 (350-390)),
the particle analyzing device adjusts brightness of the electron microscope image based on the first standard value, the second standard value, and the signal profile (Fig. 3 (390), para 52),
the instrument includes a first region having different brightness from the particle (Fig. 6(780), para 53 “transistors”) and a second region having different brightness from the particle and the first region when observed with the electron microscope (Fig. 6(780), para 53 “normal junction”),
the first standard value is a value determined based on brightness of the first region, and
the second standard value is a value determined based on brightness of the second region (para 52).
Regarding Claim 2:
Gunji teaches the particle analyzing device according to claim 1, wherein
the particle analyzing device acquires a type of a particle and a type of an instrument (paras 51-52, a wafer and a standard are the types of particle and instrument, respectively), and acquires the first standard value and the second standard value based on the type of the particle and the type of the instrument (see Fig. 3).
Regarding Claim 4:
Gunji teaches the particle analyzing device according to claim 1, wherein
a material constituting the first region is different from a material constituting the second region. Junctions and the rest of transistor are different materials.
Regarding Claim 5:
Gunji teaches the particle analyzing device according to claim 1, wherein
the first region and the second region are portions different from each other in a three-dimensional structure of the instrument. Transistor junctions are three dimensional, if only slightly.
Regarding Claim 6:
Gunji teaches the particle analyzing device according to claim 1, wherein
the particle is a stained particle. Limitations regarding the material to be imaged do not materially limit the device that images them. Thus the claimed invention is still anticipated.
Regarding Claim 7:
Gunji teaches the particle analyzing device according to claim 1, further comprising:
an electron gun that irradiates the instrument and the particle with an electron beam (Fig. 1 (10));
a detector that detects electrons generated by irradiation with the electron beam (Fig. 1 (20)); and
an image output unit that outputs an electron microscope image whose brightness has been adjusted (Fig. 1 (50)).
Regarding Claim 8:
Gunji teaches the particle analyzing device according to claim 7, wherein
brightness of the electron microscope image is adjusted offline. Fig. 3 (390), para 52.
Regarding Claim 11:
Gunji teaches a particle analyzing method for analyzing a predetermined particle to be analyzed, placed on an instrument, with an electron microscope, the particle analyzing method comprising:
acquiring a first standard value and a second standard value regarding brightness in an electron microscope image (para 52, the images include a first and second standards among the transistors and normal junction),
acquiring an electron microscope image and a signal profile generated by irradiating the instrument and the particle with an electron beam (Fig. 3 (350-390)); and
adjusting brightness of the electron microscope image based on the first standard value, the second standard value, and the signal profile (para 52, Fig. 3 (390)),
wherein
the instrument includes a first region having different brightness from the particle (Fig. 6(780), para 53 “transistors”) and a second region having different brightness from the particle and the first region when observed with the electron microscope (Fig. 6(780), para 53 “normal junction”),
the first standard value is a value determined based on brightness of the first region, and
the second standard value is a value determined based on brightness of the second region (para 52).
Conclusion
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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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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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/ Primary Examiner, Art Unit 2881
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