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 .
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-13, drawn to a method for optically evaluating an operating accuracy of a digital microscope, the method comprising: placing a photo mask on a movable table of the digital microscope.
Group II, claim(s) 14-17, drawn to a photo mask for optically evaluating an operating accuracy of a digital microscope.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a digital microscope that is used in combination with a photo mask for microscope calibration, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Deck et al. (US-20180130233-A1). Deck teaches a method for calibrating a digital microscope (“microscope”) using a photo mask (“calibration element disposed on the microscope stage,” Para [0014]).
During a telephone conversation with Attorney Richard Getz on October 31st, 2025, a provisional election was made without traverse to prosecute the invention of Group I, claims 1-13. Affirmation of this election must be made by applicant in replying to this Office action. Claims 14-17 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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.
Claim 8 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation "production tolerances of less than 100 nm", and the claim also recites "production tolerances of less than 50 nm" which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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) 1-7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deck et al. (US-20180130233-A1), and further in view of Atcheson et al., "CALTag: High Precision Fiducial Markers for Camera Calibration", 15th International Workshop on Vision, Modeling and Visualization, 2010, hereinafter referred to as Atcheson.
Regarding claim 1, Deck teaches:
A method for optically evaluating an operating accuracy of a digital microscope (“enables calibration of an analytical microscope across a broad range of magnification levels,” Para [0037]), the method comprising:
placing a photo mask (“calibration element”) on a movable table of the digital microscope (“a calibration element disposed on the microscope stage,” Para [0014]),
and taking a digital image of a portion of the photo mask (“region of calibration element”) with a digital camera of the digital microscope (“an image (e.g. optical or analytical) is acquired of pattern 230 from a region of calibration element,” Para [0069]).
Deck fails to teach the following limitations as further claimed. Atcheson, however, further describes:
the photo mask comprising an orthogonal grid of line structures (Fig. 3, labeled “1” in the top left corner),
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wherein the orthogonal grid of line structures forms a two-dimensional array of photo mask subfields (Fig. 3, image “1” is a grid containing “subfields”) and wherein at least a subset of the two-dimensional array of photo mask subfields are provided with unique subfield identifiers (Fig. 1, far right image containing “fiducial markers”);
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determining a relative position of the orthogonal grid of line structures in the digital image of the portion of the photo mask (Fig. 3, “4”, corners of the grid of line structures are marked);
analyzing at least one unique subfield identifier in the digital image of the portion of the photo mask (Fig. 3, “5”, and Section 3.2.5, Marker validation, “read the binary code depicted in the middle of the marker”); and
on the basis of said relative position of the orthogonal grid of line structures and said at least one unique subfield identifier, analyzed in the digital image of the portion of the photo mask (Fig. 3, steps “1” through “5”), determining an absolute position within the photo mask for a specific location within the digital image (Fig. 3, “5”, and Section 3.2.5, “Given a uniform square, the positions ci of the code dots inside this square are known by construction of the markers. We must therefore map a unit square to the region’s corners and then sample the image at the points dictated by applying the same mapping to the ci,”).
Atcheson is considered to be analogous to the claimed invention because they are both in the same field of camera calibration using fiducial markers on a checkerboard. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have incorporated the teachings of Atcheson into Deck for the benefit of more accurate camera calibration that results in less false positives or missed points.
Regarding claim 2, the rejection of claim 1 is incorporated herein. Deck in view of Atcheson teaches the method of claim 1, and Atcheson further teaches wherein each of the two-dimensional array of photo mask subfields is provided with a unique subfield identifier (Fig. 3, top left image, each square has a fiducial marker).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have incorporated the teachings of Atcheson into Deck for the benefit of more accurate camera calibration that results in less false positives or missed points.
Regarding claim 3, the rejection of claim 1 is incorporated herein. Deck in view of Atcheson teaches the method of claim 1, and Atcheson further teaches wherein the unique subfield identifiers comprise one-dimensional bar code identifiers or matrix bar code identifiers or alphanumerical identifiers (Fig. 3, top left image, fiducial markers are matrix bar code identifiers).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have incorporated the teachings of Atcheson into Deck for the benefit of more accurate camera calibration that results in less false positives or missed points.
Regarding claim 4, the rejection of claim 1 is incorporated herein. Deck in view of Atcheson teaches the method of claim 1, and Atcheson further teaches wherein said determining of the relative position of the orthogonal grid of line structures comprises edge detection (“using a Sobel filter”) with respect to at least part of the orthogonal grid of line structures in the digital image of the portion of the photo mask (Section 3.2.1, “the input image is converted to grayscale, and its edges are detected using a Sobel filter” and Fig. 3, “1” image).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have incorporated the teachings of Atcheson into Deck for the benefit of more accurate camera calibration that results in less false positives or missed points.
Regarding claim 5, the rejection of claim 1 is incorporated herein. Deck in view of Atcheson teaches the method of claim 1, and Atcheson further teaches wherein said determining of the relative position of the orthogonal grid of line structures comprises sub-pixel edge detection (“subpixel saddle point finders”) in the digital image of the portion of the photo mask (Section 1, “CALTag (“CALibration Tags”) that provides accurate localization of calibration points using subpixel saddle point finders”).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have incorporated the teachings of Atcheson into Deck for the benefit of more accurate camera calibration that results in less false positives or missed points.
Regarding claim 6, the rejection of claim 1 is incorporated herein. Deck in view of Atcheson teaches the method of claim 1, and Atcheson further teaches, wherein said determining of the relative position of the orthogonal grid of line structures comprises analyzing a section of the digital image that contains one photomask subfield or nine phot mask subfields or twenty-five photo mask subfields or forty-nine photo mask subfields or eighty-one photo mask subfields, (Fig. 7, top right and bottom right images show a photo mask with 81 subfields) wherein said determining of the relative position of the orthogonal grid of line structures in particular comprises analyzing a section of the digital image that contains a 1x1 window of photomask subfields or a 3x3 window of photo mask subfields or a 5x5 window of photo mask subfields of a 7x7 window of photo mask subfields or a 9x9 window of photo mask subfields (Fig. 7, top right and bottom right images show a photo mask that is a 9x9 grid with 81 subfields).
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It would have been obvious to one of ordinary skill in the art before the effective filing date to have incorporated the teachings of Atcheson into Deck for the benefit of more accurate camera calibration that results in less false positives or missed points.
Regarding claim 7, the rejection of claim 1 is incorporated herein. Deck in view of Atcheson teaches the method of claim 1, and Deck further teaches wherein the photo mask (“calibration element”) is a chrome-coated photo mask (“pattern 230 of calibration element 220 can be fabricated as a pattern of black-chrome-coated features on fused silica,” Para [0052]).
Regarding claim 9, the rejection of claim 1 is incorporated herein. Deck in view of Atcheson teaches the method of claim 1, and Deck further teaches wherein the method comprises using said absolute position within the photo mask (“on a correlation of the non-periodic pattern in the first image and the second image”), determined for the specific location within the digital image, for at least one of:
evaluating a positioning accuracy of the movable table in an x/y plane;
evaluating a distance accuracy between the movable table and the digital camera in a z-direction;
evaluating a position accuracy of an optical z-axis from the movable table to the digital camera with respect to the x/y plane;
evaluating a pixel density of the digital camera;
evaluating a magnification accuracy of the digital microscope (“determining a magnification level of an objective lens that acquired the first image and the second image based on a correlation of the non-periodic pattern in the first image and the second image,” Para [0015]);
evaluating a temperature sensitivity of the digital microscope;
evaluating a distortion of the digital microscope.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deck et al. (US-20180130233-A1), and further in view of Atcheson et al., "CALTag: High Precision Fiducial Markers for Camera Calibration", 15th International Workshop on Vision, Modeling and Visualization, 2010, hereinafter referred to as Atcheson, as applied to claim 1 above, and further in view of Benesch-Lee et al., "Multilayer photolithography with manual photomask alignment ", Chips and Tips, RSC Internet Services, hereinafter referred to as Benesch-Lee.
Regarding claim 8, the rejection of claim 1 is incorporated herein. Deck in view of Atcheson teaches the method of claim 1, but fails to teach the following limitations as further claimed. Benesch-Lee, however, further teaches wherein the photo mask has production tolerances of less than 100 nm (Conclusion, “We achieved repeatable accuracy of <100um and as good as 50 um” for “manual alignment of multiple transparency photomasks”), in particular production tolerances of less than 50 nm.
Examiner’s Note: the broader of the two limitations is being examined.
Benesch-Lee is considered to be analogous to the claimed invention because they are both in the field of photomask alignment. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the teachings of Benesch-Lee into Deck and Atcheson for the benefit of more accurate camera calibration that results in less false positives or missed points.
Claim(s) 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deck et al. (US-20180130233-A1), and further in view of Atcheson et al., "CALTag: High Precision Fiducial Markers for Camera Calibration", 15th International Workshop on Vision, Modeling and Visualization, 2010, hereinafter referred to as Atcheson, as applied to claim 1 above, and further in view of Steele (US-20050178976-A1).
Regarding claim 10, the rejection of claim 1 is incorporated herein. Deck in view of Atcheson teach the method of claim 1, but fail to teach the following limitations as further claimed. Steele, however, further teaches:
determining an operating position (“position”) of the movable table (“For each new position the image analysis software detects the intersection and calculates the corresponding image co-ordinates relative to the reference position. The calculated image co-ordinates are representative of a positioning error, and hence for each position the positioning error can be determined, Para [0056]) using said absolute position within the photo mask (“detects the intersection and calculates the corresponding image co-ordinates relative to the reference position”), determined for the specific location within the digital image (“detects the intersection and calculates the corresponding image co-ordinates relative to the reference position”),
and comparing said operating position with an expected position of the movable table, as expected from a controlled mechanical positioning of the movable table via a table drive assembly (“the data stored in the memory device 28 includes a table of errors representing the discrepancies between the real position as indicated by stage co-ordinates and the position indicated by the motor co-ordinates,” Para [0023]) or as expected from at least one length measurement system of the moveable table.
Steele is considered to be analogous to the claimed invention because they are in the same field of microscope alignment using grid-like templates. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the teachings of Steele into Deck and Atcheson for the benefit of more accurate camera calibration that results in less false positives or missed points.
Regarding claim 11, the rejection of claim 1 is incorporated herein. Deck in view of Atcheson teach the method of claim 1,
wherein at least the steps of taking a digital image of a portion of the photo mask, determining a relative position of the orthogonal grid of line structures, analyzing at least one unique subfield identifier, and determining an absolute position within the photo mask for a specific location within the digital image (see the rejection of claim 1).
Deck in view of Atcheson fails to teach the following limitations as further claimed.
Steele, however, further teaches wherein the above limitations are carried out in a plurality of iterations for a plurality of evaluation scenarios (“the operator moves the platform, in increments equal to multiples of the grid spacing, to other positions in which other intersections are visible. For each new position the image analysis software detects the intersection and calculates the corresponding image co-ordinates,” Para [0056]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the teachings of Steele into Deck and Atcheson for the benefit of more accurate camera calibration that results in less false positives or missed points.
Regarding claim 12, the rejection of claim 11 is incorporated herein. Deck in view of Atcheson and Steele teach the method of claim 11, and Steele further teaches: determining an offset map (“table of errors”) between a plurality of operating positions of the movable table (“motor co-ordinates”) and a plurality of expected positions (“stage co-ordinates”) of the movable table (“the data stored in the memory device 28 includes a table of errors representing the discrepancies between the real position as indicated by stage co-ordinates and the position indicated by the motor co-ordinates,” Para [0023]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the teachings of Steele into Deck and Atcheson for the benefit of more accurate camera calibration that results in less false positives or missed points.
Regarding claim 13, the rejection of claim 12 is incorporated herein. Deck in view of Atcheson and Steele teach the method of claim 12, and Steele further teaches: performing a compensated control of the moveable table by controlling a table drive assembly, taking into account the offset map (“the application software accesses the stage specific data contained in the error table and compensates for any positioning errors specific to the stage in which the memory device 28 is located,” Para [0061]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have incorporated the teachings of Steele into Deck and Atcheson for the benefit of more accurate camera calibration that results in less false positives or missed points.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jennings (US-20090147355-A1) teaches a device for calibrating a microscope using a calibration component, such as a fiducial marker.
Li et al. (US-20150248003-A1) teaches a checkerboard calibration plate that is used to calibrate a digital microscope.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL A OMETZ whose telephone number is (571)272-2535. The examiner can normally be reached 6:45am-4:00pm ET Monday-Thursday, 6:45am-1:00pm ET every other Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Vu Le can be reached at 571-272-7332. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Rachel Anne Ometz/ Examiner, Art Unit 2668 11/4/25
/VU LE/ Supervisory Patent Examiner, Art Unit 2668