DETAILED ACTION
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.
Claims 21-34 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which 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.
Claim 21 lacks written description as required by 35 USC 112(a). Specifically, MPEP 2163.03 (V) recites “While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved ”
In the instant case, the claim requires the desired result of rotating “the receptacle about a second axis so that the receptacle moves from a first position to a second position, wherein: in the first position of the receptacle, the first axis is arranged at an angle a relative to the second axis; in the second position of the receptacle, the first axis is arranged at an angle a relative to the second axis; and the angle a is from 10⁰ to 80⁰”. The specification is silent as to any specific structure to achieve the degrees of freedom or the rotation about R2 relative to R1. While the function is disclosed to be achieved a switching element, the specification is silent as to what the applicant considered to be for instance the claimed “switch”. Indeed, the specification fails to structurally describe how the switch rotates “the receptacle device about an axis, R2, to move the receptacle device from a first position to a second position which is different from the first position”. There must inherently be some structure to allow for the rotation of the receptacle and mount the receptacle along the axis R2, however the specification merely describes the rotation as the desired result. See, for instance, paragraph [0044] of the published application which recites “In order to open up a further possibility for moving the sample 3, the receptacle device 5 has a rotation axis R2, about which the receptacle device 5 is arranged such that it is rotatable. This is particularly advantageous in order to vary the spatial orientation of the sample.” As seen in the above citation, the specification merely describes the desired result of rotating the receptacle device 5 around the rotation axis R2, however does not identify structure for mounting the rotatable receptacle along axis R2 such that the claimed the desired function of rotation is achieved. The block diagrams shown in the drawings do not clarify the structure required to achieve the rotation. The applicant is reminded that “"Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement."Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).” In the instant case, since there is no particularly described structure to achieve the function provided and merely the appearances of indistinct words, one of ordinary skill in the art cannot recognize what is claimed. Therefore, the claims lack written description as required by USC § 112(a). Further since the structure of the receptacle and how to practically orient the receptacle along axis R2 for rotation is not discussed, the specification lacks sufficient disclosure as to how rotation about axis R2 is accomplished.
Lastly, a switching element is discussed in paragraphs [0056]-[0057] of the published application does not amount to sufficient written disclosure because the switching element is merely described functionally and there is no specific definition as to the components to the switching element and activation element that facilitate rotation about axis R2. Moreover, the switching element is only described as an element to “initiate the rotational movement of receptacle device 34”, thus the structure of the rotational function (nor how the receptacle is structurally mounted) along R2 is not resolved by a switching element. While paragraph [0058] suggest it is conceivable for actuators such as electric or piezo drives can provide for rotation, the specification is silent as to any structure of the receptacle itself thus insufficient to suggest how such actuators are implemented into the receptacle to allow for rotation the desired result of rotation.
Claims 22-34 lack written description by virtue of their dependencies on a claim lacking written description as required by 35 USC § 112(a).
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 21-34 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 21 recites the limitation “the stage being movable in first, second and third degrees of freedom” is vague and indefinite because the claim does not provide a discernable boundary on what performs the function. The recited function does not follow from the structure recited in the claim i.e. the stage, so it is unclear whether the function requires some other structure or is simply a result of operating the stage in a certain manner. Thus, one of ordinary skill in the art would not be able to draw a clear boundary between what is and is not covered by the claim. See MPEP 2173.05(g) for more information. Note while the claim is written as a method, the stage is defined structurally as in an apparatus. Therefore the structure to provide movement to the stage is required.
Claims 22-34 are vague and indefinite by virtue of their dependencies on rejected claim 21.
Claim 26 is vague and indefinite for reciting “in the first position of the receptacle, a region of the surface of the sample is parallel to the first axis; and in the second position of the receptacle, the region of the surface of the sample is perpendicular to the first axis.” Specifically, the instant specification teaches the opposite. That is, fig. 1a shows the first position is perpendicular to the axis R1 and figure 1b shows the second position is parallel to the axis R1. See paragraph [0046]. The specification does teach at [0052] that the receptacle device 34 “is moved from the first position into the second position, or from the second position into the first.” That is, the reverse sequence is suggested, however there is no disclosure of the second position being the first position as suggested in the claim by the respective orientations to the first axis. Therefore, the claim scope is indefinite because it is unclear whether by the claimed first position, the claim means the disclosed second position and by the claimed second position the claim means the disclosed first position or if the claim is meant to be interpreted such that the narrow portion of the sample as seen in the annotated figure below is the surface in the first position and the narrow portion of the sample is the surface in the second position. It appears that the former interpretation is meant (i.e. a reversal of the process from fig. 1B to 1A as suggested in paragraph [0052]), however no unambiguous determination can be made. Therefore both interpretations are used for the purposes of examination.
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Claims 27-31 are vague and indefinite by virtue of their dependencies on rejected claim 26.
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 21-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Biberger et al. (US pgPub 2012/0074320) (first interpretation first axis along 128 before tilt, and second axis along 128 after tilt).
Regarding claim 21, Biberger et al. teach a method of moving a receptacle (inherent to figure 3, receptacle device 120) configured to support a sample (([0070] sample holding device arranged on the sample receptacle, sample prepared by ion beam column 131 in figure 5, see paragraph [0081] and [0004] for preparation and observation under microscope and paragraph [0019] for TEM lamella, which is a microscopic sample), the receptacle being mounted on a sample stage (figure 3, 120 mounted on first through fifth movement elements of 112 discussed in paragraph [0072]-[0074]) of a particle beam system comprising at least one member selected from the group consisting of an electron beam column and an ion beam column (101, figure 5 and figure 2, note [0065] SEM with a first particle beam column 101), the sample stage being movable in first, second and third degrees of freedom, the first degree of freedom being a translational degree of freedom, the second degree of freedom being a translation degree of freedom perpendicular to the first degree of freedom, and the third degree of freedom being a rotational degree of freedom about a first axis which runs perpendicular to a surface of the sample stage ([0076], first axis R1 interpreted to be rotational axis 128),
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the method comprising:
a) rotating the receptacle about a second axis (second axis R2 is interpreted to be the axis upon which 120 rotates in figure 6 in the tilted state) so that the receptacle moves from a first position to a second position (second axis R2 in annotated figure below shows how the rotation about R2 would result in the transfer of the receptacle device 120 from a first position where 118 intercepts the optical axis 102 to a second rotational position where 118 is transferred to a second position away from optical axis 102. That is, first and second rotational positions of the receptacle are different positions)
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wherein: in the first position of the receptacle, the first axis is arranged at an angle a relative to the second axis (tilted angle of R2 in annotated figure above compared to 128 of figure 4, the angle remains fixed since R2 is at a tilted state relative to R1); in the second position of the receptacle, the first axis is arranged at an angle alpha relative to the second axis (after rotation of 114 away from 102 around axis R2, the axis R2 is still at the fixed tilted angle relative to axis R1); the angle α is from 10 to 80 degrees (the angle appears to be a 45 degree angle. Moreover, [0072] teaches that 123 of figure 3 provides the tilt axis rotation, thus capable of an angle from 10 to 80 degrees when rotating from the position of figures 3-5 and figure 6).
Regarding claims 22, Biberger et al. teach wherein the angle α is from 40-60 degrees (capable of 40-60 degrees via rotation around tilt axis see above).
Regarding claims 23, Biberger et al. teach wherein the angle α is from 20-30 degrees (capable of 20-30 degrees via rotation around tilt axis see above)
Regarding claims 24, Biberger et al. teach wherein the angle α is substantially 45 degrees (comparison of figures 5 and 6, appears as a 45 degree angle).
Claims 21 and 34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Biberger et al. (US pgPub 2012/0074320) (second interpretation first axis along 129 before tilt, and second axis along 129 after tilt).
Regarding claim 21, Biberger et al. teaches a method of moving a receptacle (inherent to figure 4, receptacle device 118) configured to support a sample (([0070] sample holding device arranged on the sample receptacle), the receptacle being mounted on a sample stage (figure 3, 118 is seen mounted to 120 which is provided on stage discussed in paragraph [0072]/[0076]) of a particle beam system comprising (as seen in figure 5, 101/131) at least one member selected from the group consisting of an electron beam column and an ion beam column (101, figure 5 and figure 2, note [0065] SEM with a first particle beam column 101), the sample stage being movable in first, second and third degrees of freedom, the first degree of freedom being a translational degree of freedom, the second degree of freedom being a translation degree of freedom perpendicular to the first degree of freedom, and the third degree of freedom being a rotational degree of freedom about a first axis which runs perpendicular to a surface of the sample stage (0076], R1 interpreted to be rotational axis 129),
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the method comprising:
a) rotating the receptacle about a second axis (second axis R2 is interpreted to be the axis upon which 118 rotates in figure 6 in the tilted state)
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so that the receptacle moves from a first position to a second position (second axis in annotated figure above shows how the second rotation about would result in change to a second rotational position)
wherein: in the first position the second axis is arranged at an angle a relative to the first axis (tilted angle of R2 (129) in figure 6 above compared to 129 of figure 4 annotated above);
in the second position, the second axis is arranged at the angle alpha relative to the first axis R1 (rotation of receptacle about 129 in figure 6 is at a fixed angle relative to 129 in figure 4) the angle α is from 10 to 80 degrees (the angle appears to be a 45 degree angle. Moreover, [0072] teaches that 123 of figure 3 provides the tilt axis rotation, thus capable of an angle from 10 to 80 degrees when rotating from the position of figures 3-5 and figure 6).
Regarding claim 34, Biberger et al. teach one or more machine-readable hardware storage devices comprising instructions that are executable by one or more processing devices to perform operations comprising the method of claim 21 ([0100] teaches hardware and software to implement the various aspects of the system—i.e. perform the claimed operations).
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.
Claims 25-33 are rejected under 35 U.S.C. 103 as being unpatentable over Biberger et al. (second interpretation) in view of Takahashi et al. (US pgPub 2011/0226947).
Regarding claim 25, Biberger teaches wherein: the sample is supported by the receptacle ([0070]); the sample has a surface (inherent).
Biberger teaches in the first position the sample surface is at an angle relative to the first axis (i.e. the angle of 129 from figure 7 to tilted state in figure 6). Moreover, Biberger teaches sample holding device 118 is rotatable around 129 ([0078]). Figure 6 shows the sample 114 rotatable under the first and second charged particle beam columns 101 and 131. However, Biberger fails to disclose in the first position of the receptacle, a region of the surface of the sample is perpendicular to the first axis; and in the second position of the receptacle, the region of the surface of the sample is parallel to the first axis.
Takahashi teaches a sample mounted on a tilt stage 31 (fig. 7A/7B), such that in a first position (fig. 7a) the sample surface 5 is perpendicular to an electron column axis (i.e. the same axis as the first axis in Biberger, where sample is horizontal in figure 5); and in the second position the of the receptacle (i.e. tilt stage seen in figure 7b), the region of the surface of the sample is parallel to the first axis (sample is in vertical orientation, thus parallel to first axis).
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Takahashi modifies Biberger et al. by suggesting a tilt stage to be incorporated into the rotational stage such that the sample may be rotated between an SEM and a FIB column.
Since both inventions are directed towards dual beam systems, it would have been obvious to adopt the additional tilt stage and column orientation suggested in Takahashi in the device of Biberger because the working distance may be further reduced (fig. 14 of Takahashi shows a similar dual beam system of Biberger, wherein figure 5 demonstrates the working distance in decreased thus improving the resolution of the SEM ([0038])). Moreover, the tilt stage allows for a perpendicular arrangement for high resolution SEM and arrangement with respect to parallel FIB allows etching for accurately removing the surface ([0053]) with additional advantages of the second position discussed in paragraph [0055].
Regarding claim 26, Biberger et al. wherein: the sample is supported by the receptacle ([0070]); the sample has a surface (inherent).
Biberger teaches in the first position the sample surface is at an angle relative to the first axis (i.e. the angle of 129 from figure 7 to tilted state in figure 6). Moreover, Biberger teaches sample holding device 118 is rotatable around 129 ([0078]). Figure 6 shows the sample 114 rotatable under the first and second charged particle beam columns 101 and 131. However, Biberger fails to disclose in the first position of the receptacle, a region of the surface of the sample is parallel to the first axis; and in the second position of the receptacle, the region of the surface of the sample is perpendicular to the first axis.
Takahashi teaches a sample mounted on a tilt stage 31, such that in a first position (fig. 7a) the narrow side sample surface of 5 is parallel to an electron column axis (i.e. the same axis as the first axis in Biberger, where sample is horizontal in figure 5); and in the second position the of the receptacle (i.e. tilt stage seen in figure 7b), the region of the surface of the narrow surface of the sample is perpendicular to the first axis (sample is in vertical orientation, thus parallel to first axis) Alternatively, paragraph [0056] teaches adjusting to be substantially perpendicular or substantially parallel. Suggesting that the sample may be reversed from 7b back to 7a, thus starting at the position in 7B in the annotated figures with respect to claim 26, the rotation back to parallel would meet the claimed requirement for the surface to be perpendicular the first position (interpreting figure 7b to be the first position) and parallel in the second position (interpreting figure 7a to be the second position)).
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Regarding claim 27, Biberger in view of Takahashi teaches before a) and while the receptacle is in its first position, exposing the sample to an electron beam generated by the electron beam column (exposing to FIB/SEM prior to rotation as discussed in paragraph [0053]-[0054]).
Regarding claim 28, Biberger in view of Takahashi teaches before a) and while the receptacle is in its first position, exposing the sample to an ion beam generated by the ion beam column ([0053]-[0054] of Takahashi).
Regarding claim 29, Biberger in view of Takahashi teach b) after a), exposing the sample to an ion beam generated by the ion beam column (fig. 7b, after rotation exposing to FIB see paragraphs [0054]-[0055]. Alternatively using the second interpretation of Takahashi in claim 26, when returning from figure 7b to figure 7a, the sample is in position for FIB irradiation as discussed in paragraph [0053]).
Regarding claim 30, Biberger in view of Takahashi teach during b), the ion beam impinges on the surface of the sample at grazing incidence relative to the region of the surface of the sample (using the alternative interpretation of claim 26 above, 7a FIB is substantially parallel to surface for etching (0053), thus having a grazing incidence to the sample surface ).
Regarding claim 31, Biberger in view of Takahashi teach after b), using an electron beam generated by the electron beam column to image the sample (first interpretation, Takahashi teaches SEM irradiation after FIB irradiation [0055]. Alternatively, Takahashi, [0053] teaches irradiation by electron beam in the state seen in figure 7a. Note again paragraph [0056] teaches the orientation of the sample can be adjusted through the rotation of the sample rotation mechanism making it possible to adjust the orientation of the sample so as to be substantially perpendicular or substantially parallel to the electron or FIB, thus envisioning rotating more than once between figure 7a and 7b (i.e. returning to the orientation of 7a after rotation to 7b)).
Regarding claim 32, Biberger in view of Takahashi teaches after a), b) exposing the sample to a charged particle beam generated by a member selected from the group consisting of the ion beam column and the electron beam column. (Takahashi, figure 7b shows after rotation and paragraph [0054]-[0055] teaches irradiation in the state after rotation by FIB and SEM).
Regarding claim 33, Biberger in view of Takahashi teaches after b), rotating the receptacle about the second axis so that the receptacle moves from the second position a third position different from both the first and second positions ([0056] teaches adjusting the rotational position of the sample to be perpendicular or parallel, thus additional positions during the rotation to the parallel or perpendicular arrangement of figure 7a/7b. Alternatively, figures 9a-9c show the tilt stage adjusting positions, thus when the tilt stage is adjusted as in figure 9c (i.e. between 45 to 90 degrees [0058]), and rotated by stage 12, it would be in a different third orientation as depicted in figure 9c).
Conclusion
Note Tappel, Schertel and Pavia cited in the parent application are all applicable to at least claim 21. However, are not currently applied.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J LOGIE whose telephone number is (571)270-1616. The examiner can normally be reached M-F: 7:00AM-3:00PM.
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/MICHAEL J LOGIE/Primary Examiner, Art Unit 2881