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 .
Response to Arguments
Rejections under 35 USC 102
Applicant’s arguments with respect to the rejection of claims 1-5 under 35 USC 102 have been fully considered and, in view of the amendment to claim 1, overcome the rejection for its recitation that “a conductive stage configured to support the sample, wherein the sample is electrically isolated from the conductive stage.” Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection under 35 USC 103 is made in view of Lee, et. al. (US 20160172158 A1). The amended portion of claim 1 reciting “wherein the probe is configured to discharge accumulated charges from the sample to a ground of a power supply” is taught by the previously cited art, Oxford Instruments, and therefore the arguments relating to this part of the amended claim are found to be unpersuasive. See the second paragraph of Oxford 2, which teaches the limitation, and see the rejection below.
Rejections under 35 USC 103
Applicant's arguments with respect to the rejection of amended claim 11 under 35 US 103 have been fully considered but they are not persuasive. The amendment does not overcome the cited art because the combination of Ditto with Oxford Instruments suggests an electrical connection of the probe tip holder to a power supply via wiring. Oxford instruments teaches the electrical connection of the holder to a power supply, while Ditto suggests using wires to provide such an electrical connection. See the rejection below.
Applicant's arguments with respect to the rejection of amended claim 21 under 35 US 103 have been fully considered but they are not persuasive. The amendment does not overcome the cited art because the combination of Ditto with Oxford Instruments suggests an electrical connection of the probe tip holder to a voltage line and a ground line via wiring. Oxford instruments teaches the electrical connection of the holder to a voltage and to ground, while Ditto suggests using wires to provide such an electrical connection. See the rejection below.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Oxford Instruments (Lindsay, J. “A brief introduction to creating a Cryo-TEM lamella”. NanoAnalysis. Oxford Instruments. 10 June 2020. https://nano.oxinst.com/library/past-blogss/creating-cryo-tem-lamella. Website accessed 12/11/2025.), hereinafter Oxford1, as evidenced by Oxford Instruments (Lindsay, J. “How an electrical connection on your Nanomanipulator can enhance the capabilities of your FIB-SEM”. NanoAnalysis. Oxford Instruments. 26 August 2020. https://nano.oxinst.com/library/past-blogss/electrical-connections-on-nanomanipulators. Website accessed 12/11/2025.), hereinafter Oxford2, in view of Lee, et. al. (US 20160172158 A1), hereinafter Lee.
Regarding claim 1, Oxford Instruments teaches an apparatus for observing a sample using a charged particle beam (electron microscope, first paragraph of Oxford1), comprising:
an ion beam column configured to generate and direct an ion beam (FIB, fourth paragraph of Oxford1);
an electron beam column configured to generate and direct an electron beam (TEM, fourth paragraph of Oxford1);
a vacuum chamber for housing the sample (in-situ Fib lift-out occurs in vacuum chamber, fourth paragraph of Oxford1); and
a probe positioned in the vacuum chamber (Omniprobe, fourth paragraph of Oxford1; also see the figure), wherein the probe is configured to discharge accumulated charges from the sample to a ground of a power supply (Oxford2 teaches that all current OmniProbes include an electrical connection to the probe tip and a power supply integrated into the controller in paragraphs 4-5. In paragraph 2, Oxford 2 teaches that “an electrically connected and grounded probe can be placed close to the area that is being imaged and the charged induced by the electron beam can be dissipated through the probe, neutralizing any charge build up.”).
Oxford Instruments does not teach a conductive stage configured to support the sample, wherein the sample is electrically isolated from the conductive stage.
Lee teaches conductive stage configured to support the sample, wherein the sample is electrically isolated from the conductive stage (Abstract, [0037]).
Lee modifies Oxford Instruments by suggesting that a sample is supported by a conductive stage, the sample being electrically isolated from the conductive stage.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Lee because electrically isolating the sample from the conductive stage allows for a separate voltage to be applied to the sample, (Lee, [0037]).
Regarding claim 2, Oxford Instruments teaches wherein the ion beam column is also configured to ion mill a lamella from the sample, and the probe is also configured to lift out the lamella from the sample (fourth paragraph of Oxford1).
Regarding claim 3, wherein the probe includes:
a probe tip (tip in figure of Oxford1);
a probe tip holder, wherein the probe tip holder is electrically connected with the probe tip (tip gripper in figure of Oxford1); and
a probe shaft coupled to the probe tip holder (probe shaft in figure of Oxford1).
Regarding claim 4, wherein the probe shaft is electrically insulated from the probe tip holder (probe shaft is insulated from probe tip holder via shaft insulation as seen in figure of Oxford1).
Regarding claim 5, wherein the probe shaft is electrically insulated from the probe tip holder by a dielectric ring stacked between the probe shaft and the probe tip holder (probe shaft is insulated from probe tip holder by shaft insulation, which is a ring-shaped and stacked between the probe shaft and probe tip holder, as shown in the figure of Oxford1).
Claims 6, 8-9, 11-15, 17, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Oxford Instruments, Oxford1 (Lindsay, J. “A brief introduction to creating a Cryo-TEM lamella”. NanoAnalysis. Oxford Instruments. 10 June 2020. https://nano.oxinst.com/library/past-blogss/creating-cryo-tem-lamella. Website accessed 12/11/2025.) as evidenced by Oxford2 (Lindsay, J. “How an electrical connection on your Nanomanipulator can enhance the capabilities of your FIB-SEM”. NanoAnalysis. Oxford Instruments. 26 August 2020. https://nano.oxinst.com/library/past-blogss/electrical-connections-on-nanomanipulators. Website accessed 12/11/2025.), in view of Ditto (US 20130037706 A1).
Regarding claim 6, Oxford Instruments does not explicitly teach wherein the probe tip includes tungsten, and the probe tip holder is free of tungsten.
Ditto teaches wherein the probe tip includes tungsten, and the probe tip holder is free of tungsten ([0026]) teaches standard tungsten probe need 314 and a copper heat sink probe tip 312 that holds 314).
Ditto modifies Oxford Instruments by suggesting a probe tip of tungsten and probe tip holder free of tungsten (copper).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Ditto because copper acts as a heat sink for the probe for cooling to cryo temperatures, (Ditto, [0026])
Regarding claim 8, Oxford Instruments does not explicitly teach wherein the probe shaft includes stainless steel.
Ditto teaches wherein the probe shaft includes stainless steel (stainless steel hollow tube 300, [0026], Fig. 3A).
Ditto modifies Oxford Instruments by suggesting the probe shaft includes stainless steel.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Ditto because a stainless steel hollow tube can be used as part of the nanomanipulator mechanism to connect to the probe tip and needle as seen in Fig. 3A of Ditto and to contain a conduit for accessing areas very close to the sample with no necessary modification to the sensitive hardware inside the chamber (Ditto, [0026]).
Regarding claim 9, Although Oxford Instruments teaches an electrical connection to the probe tip and a power supply integrated into the controller (Oxford2, paragraphs 4-5), Oxford Instruments fails to explicitly teach at least an electric wire attached to the probe tip holder, wherein the electric wire is electrically coupled to the power supply.
Ditto teaches at least an electric wire attached to the probe tip holder, wherein the electric wire is electrically coupled to the power supply (holes 322 on 312 (interpreted probe tip holder because 312 holds 314) allow for wiring 324 to pass through conduit 306 in 300 [0029], Fig. 3A. Therefore, the wiring is attached to the probe tip holder via the holes).
Ditto modifies Oxford Instruments by suggesting wiring attached to the probe tip holder such that the wiring is coupled to the power supply taught by Oxford Instruments.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Ditto because wiring allows for additional sensor and detectors to be mounted near the tip of the probe and provides tremendous versatility including electrical characterization probing and other features, (Ditto, [0029]).
Regarding claim 11, an apparatus for charged particle beam microscopy (electron microscope, first paragraph of Oxford1), comprising:
a vacuum chamber (vacuum chamber of electron microscope, first paragraph of Oxford1);
an ion beam column coupled to the vacuum chamber (FIB, fourth paragraph of Oxford1);
an electron beam column coupled to the vacuum chamber (TEM, fourth paragraph of Oxford1);
a needle positioned in the vacuum chamber (tip positioned in vacuum chamber for in-situ lift-out, fourth paragraph of Oxford1, figure of Oxford1;
a needle holder gripping the needle (tip gripper, figure of Oxford1), wherein the needle holder is electrically connected to the needle (the tip and tip gripper are attached such that an electric current can flow between them as seen in figure of Oxford1);
an elongated shaft coupled to the needle holder (probe shaft coupled to tip gripper in figure of Oxford1), wherein the elongate shaft passes movement control to the needle through the needle holder (due to their physical connection as seen in the figure of Oxford1, any controlled movement of the probe shaft will result in movement of the tip via the tip gripper).
Oxford Instruments teaches an electrical connection between the needle/needle holder and a power supply (Oxford2, paragraphs 2, 4-5), but does not explicitly teach at least an electric wire attached to the needle holder.
Ditto teaches at least an electric wire attached to the needle holder, (holes 322 on 312 (interpreted probe tip holder because 312 holds 314) allow for wiring 324 to pass through conduit 306 in 300 [0029], Fig. 3A. Therefore, the wiring is attached to the probe tip holder via the holes).
While Oxford Instruments teaches an electrical connection between the needle/needle holder and a power supply, Ditto modifies Oxford Instruments by suggesting the electrical connection is made via wiring attached to the probe tip holder such that the wiring is coupled to the power supply.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Ditto because wiring is a known form of electrical connection, and since Oxford Instruments does not explicitly state how the electrical connection between the needle holder and power supply is made, the wiring of Ditto provides a solution. Additionally, the wiring provided to the probe tip holder allows of a variety of beneficial electrical applications as noted in [0029] of Ditto.
Regarding claim 12, Oxford Instruments teaches wherein the elongated shaft is electrically insulated from the needle holder (probe shaft is insulated from probe tip holder via shaft insulation as seen in figure of Oxford1).
Regarding claim 13, Oxford Instruments teaches wherein the elongated shaft is partially embedded in the needle holder (figure of Oxford1 shows tip end of the probe shaft covered in insulation is connected to the tip griper so as to be embedded and connected with the tip gripper.
Regarding claim 14, Oxford Instruments does not explicitly teach wherein the needle and the needle holder include different conductive material compositions.
Ditto teaches wherein the needle and the needle holder include different conductive material compositions ([0026]) teaches standard tungsten probe need 314 and a copper heat sink probe tip 312 that holds 314).
Ditto modifies Oxford Instruments by suggesting a needle of tungsten and needle holder of copper.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Ditto because copper acts as a heat sink for the probe for cooling to cryo temperatures and because tungsten is the standard needle material, (Ditto, [0026])
Regarding claim 15, Oxford wherein the electric wire is a first electric wire, the probe structure further comprising:
a second electric wire attached to the needle holder ([0027] teaches wiring 324, which implies more than one wire. The wiring 324 attaches to holes 322 on 312 (interpreted probe tip holder because 312 holds 314) allow for wiring 324 to pass through conduit 306 in 300 [0029], Fig. 3A. Therefore, the wiring is attached to the probe tip holder via the holes).
Regarding claim 17, Oxford Instruments teaches wherein the needle is operable to lift out a lamella from a sample to examine under the charged particle beam microscopy (fourth paragraph of Oxford1).
Regarding claim 21, Oxford Instruments teaches an apparatus for charged particle beam microscopy (electron microscope, first paragraph of Oxford1), comprising:
an ion beam column configured to generate and direct an ion beam (FIB, fourth paragraph of Oxford1);
an electron beam column configured to generate and direct an electron beam (TEM, fourth paragraph of Oxford1);
a vacuum chamber for housing the sample (vacuum chamber of microscope, first paragraph of Oxford1);
a probe tip positioned in the vacuum chamber (tip of Omniprobe, fourth paragraph of Oxford1; also see the figure);
a probe tip holder gripping the probe tip (tip gripper, figure of Oxford1), wherein the probe tip holder is electrically connected to the probe tip (the tip and tip gripper are attached such that an electric current can flow between them as seen in figure of Oxford1);
an elongated shaft coupled to the probe tip holder, wherein the elongate shaft passes movement control to the probe tip through the probe tip holder (due to their physical connection as seen in the figure of Oxford1, any controlled movement of the probe shaft will result in movement of the tip via the tip gripper).
Oxford Instruments teaches an electrical connection between the needle/needle holder and a power supply (Oxford2, paragraphs 4-5) that comprises a ground line and a voltage line (Oxford2 paragraphs 2, 4-5 discloses an electrically connected and grounded probe), but does not explicitly teach a first electric wire attached to the probe tip holder, and a second electric wire attached to the probe tip holder.
Ditto teaches a first electric wire attached to the probe tip holder, and a second electric wire attached to the probe tip holder, ([0027] teaches wiring 324, which implies more than one wire. The wiring 324 attaches to holes 322 on 312 (interpreted probe tip holder because 312 holds 314) allow for wiring 324 to pass through conduit 306 in 300 [0029], Fig. 3A. Therefore, the wiring is attached to the probe tip holder via the holes).
While Oxford Instruments teaches an electrical connection between the needle/needle holder and a voltage line and the needle/needle holder and a ground line, Ditto modifies Oxford Instruments by suggesting the electrical connection is made via wiring attached to the probe tip holder such that the wiring is coupled to voltage and ground.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Ditto because wiring is a known form of electrical connection, and since Oxford Instruments does not explicitly state how the electrical connection between the needle holder and voltage/ground is made, the wiring of Ditto provides a solution. Additionally, the wiring provided to the probe tip holder allows of a variety of beneficial electrical applications as noted in [0029] of Ditto.
Regarding claim 22, Oxford Instruments teaches wherein the elongated shaft is electrically insulated from the probe tip holder (probe shaft is insulated from probe tip holder via shaft insulation as seen in figure of Oxford1).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Oxford Instruments, Oxford1 (Lindsay, J. “A brief introduction to creating a Cryo-TEM lamella”. NanoAnalysis. Oxford Instruments. 10 June 2020. https://nano.oxinst.com/library/past-blogss/creating-cryo-tem-lamella. Website accessed 12/11/2025.) as evidenced by Oxford2 (Lindsay, J. “How an electrical connection on your Nanomanipulator can enhance the capabilities of your FIB-SEM”. NanoAnalysis. Oxford Instruments. 26 August 2020. https://nano.oxinst.com/library/past-blogss/electrical-connections-on-nanomanipulators. Website accessed 12/11/2025.), in view of Ditto (US 20130037706 A1), further in view of Wang (US 20050247886 A1).
Regarding claim 7, Although Oxford Instruments in view of Ditto teaches wherein the probe tip holder includes copper (see 103 rejection of claim 6 above), the combination does not teach wherein the probe tip holder includes an alloy of copper and gold.
Wang teaches using an alloy of copper and gold as the conductive material to form a probe tip extension ([0025] teaches extension tip 12 formed of conductive material such as copper gold or alloys thereof).
Wang modifies the combination by suggesting the probe tip holder of Oxford Instruments includes an alloy of copper and gold.
Since the instant application is concerned with needing to reduce the electric resistance of the probe tip holder by using a material of low-resistivity ([0049] of the instant invention), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Wang because alloys of copper and gold are conductive, as taught in [0025] of Wang.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Oxford Instruments, Oxford1 (Lindsay, J. “A brief introduction to creating a Cryo-TEM lamella”. NanoAnalysis. Oxford Instruments. 10 June 2020. https://nano.oxinst.com/library/past-blogss/creating-cryo-tem-lamella. Website accessed 12/11/2025.) as evidenced by Oxford2 (Lindsay, J. “How an electrical connection on your Nanomanipulator can enhance the capabilities of your FIB-SEM”. NanoAnalysis. Oxford Instruments. 26 August 2020. https://nano.oxinst.com/library/past-blogss/electrical-connections-on-nanomanipulators. Website accessed 12/11/2025.), in view of Keady, et. al. (US 20130248354 A1).
Regarding claim 10, Oxford Instruments does not explicitly teach further comprising: an electric motor configured to move and rotate the probe, wherein the electric motor is positioned outside of the vacuum chamber.
Keady teaches an electric motor configured to move and rotate the probe, wherein the electric motor is positioned outside of the vacuum chamber (precision electric motors 748 positioned outside the vacuum chamber provide x, y, z, and theta control of micromanipulator, [0091]).
Keady modifies Oxford Instruments by suggesting an electric motor positioned outside the vacuum chamber that moves and rotates the probe.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Keady because such a motor allows for control of the micromanipulator, (Keady, [0091]).
Claims 16 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Oxford Instruments, Oxford1 (Lindsay, J. “A brief introduction to creating a Cryo-TEM lamella”. NanoAnalysis. Oxford Instruments. 10 June 2020. https://nano.oxinst.com/library/past-blogss/creating-cryo-tem-lamella. Website accessed 12/11/2025.) as evidenced by Oxford2 (Lindsay, J. “How an electrical connection on your Nanomanipulator can enhance the capabilities of your FIB-SEM”. NanoAnalysis. Oxford Instruments. 26 August 2020. https://nano.oxinst.com/library/past-blogss/electrical-connections-on-nanomanipulators. Website accessed 12/11/2025.), in view of Ditto (US 20130037706 A1), further in view of Reinke (US 20170088322 A1).
Regarding claim 16, Oxford Instruments in view of Ditto does not explicitly teach further comprising: a wire buncher configured to organize the first and second electric wires, wherein the wire buncher is attached to the elongated shaft.
Reinke teaches a wire buncher configured to organize the first and second electric wires, wherein the wire buncher is attached to the elongated shaft (Abstract teaches an improved cable tie to couple together a plurality of elongated objects).
Reinke modifies the combination by suggesting a cable tie (wire buncher) attached to the elongated shaft of Oxford Instruments in view of Ditto configured to organize the first and second electric wires of the combination.
Since Reinke is concerned with coupling together a plurality of elongated objects such as wires, which is the problem that the wire buncher of the instant application is trying to solve (see [0050] of the instant application), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Reinke because the cable tie of Reink can form two loops for coupling together a plurality of elongated objects (Reinke, [0005], Fig. 3).
Regarding claim 23, Although Oxford Instruments in view of Ditto suggests the wiring passing through the hollow tube of the shaft ([0026]), similarly to the specification of the instant application in [0050], Oxford Instruments in view of Ditto does not explicitly teach the case wherein the first and second electric wires travel through an organizer clipped on the elongated shaft.
Reinke teaches an organizer that couples together a plurality of elongated objects (Abstract teaches an improved cable tie to couple together a plurality of elongated objects).
Reinke modifies the combination by suggesting a cable tie (organizer) that can be attached to the elongated shaft of Oxford Instruments in view of Ditto configured to couple together the first and second electric wires of the combination.
Since Reinke is concerned with coupling together a plurality of elongated objects such as wires, which is the problem that the wire buncher of the instant application is trying to solve (see [0050] of the instant application), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the teachings of Reinke because the cable tie of Reink can form two loops for coupling together a plurality of elongated objects (Reinke, [0005], Fig. 3).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bauer (US 10663414 B2)
See Fig. 4
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 LAURA E TANDY whose telephone number is (703)756-1720. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm.
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LAURA E TANDY
Examiner
Art Unit 2881
/DAVID E SMITH/Examiner, Art Unit 2881
Prosecution Insights