DETAILED ACTION
Response to Arguments
Applicant’s arguments with respect to claim(s) 21-25, 27-34 and 45-46 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Note claim 1 has been amended to be commensurate in scope with the claims filed 20 May 2021 in the parent application 16/459,212. Many of the issues under 35 USC 112(a) and 112(b) raised in the Final Rejection of 17 December 2021 are reiterated herein below.
The amended subject matter is addressed specifically herein below.
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:
“an activatable switching element” in claim 21.
“an activation element configured to activate the switching element via physical contact” in claim 21.
“movement elements” in claim 21.
“First translational movement element configured to move the sample stage in a first translational degree of freedom” in claim 21.
“a second translational movement element configured to move the sample stage in a second translational degree of freedom perpendicular to the first translational degree of freedom” in claim 21.
A rotational movement element configured to rotate the sample stage about a first axis that extends perpendicular to a surface of the stage” in claim 21.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 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 invokes 112(f) for each of the above elements. However, the specification is devoid of any corresponding structure to perform the claimed steps. MPEP 2163.03(VI) recites:
“A claim limitation expressed in means- (or step-) plus-function language "shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof." 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. If the specification fails to disclose sufficient corresponding structure, materials, or acts that perform the entire claimed function, then the claim limitation is indefinite because the applicant has in effect failed to particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc). Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention”
Here the specification is silent with respect to the structure, thus covering all ways of performing the claimed functional limitations and indicates the inventor has not provided sufficient disclosure to show possession of the claimed invention.
Moreover, even if 112(f) were not invoked, 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 the claimed receptacle device to receive and prepare a microscopic sample, mountable onto a sample stage, which is movable via some movement elements comprising rotational and/or translational elements and rotation about two axis. However, the specification is silent as to any definition to the broadly claimed elements that would result in the claimed function of rotation. The specification is silent as to what the applicant considered to be for instance the claimed “receptacle device”, “sample stage”, “kinematic chain of elements, “rotational element”, “last rotational element”. Indeed, the specification fails to structurally describe how the “receptacle device is arranged so that the receptacle is rotatable” about axis R2 such that the “receptacle device is transferrable from a first position to a second position via rotation about the axis R2”. 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 [0043] 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 appears 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.
The examiner notes that the switching element discussed in paragraphs [0055]-[0056] 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 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. Lastly, the actuators, electric or piezo drives used for the purpose of rotation discussed in paragraph [0058], does not suggest how such devices would be integrated into the receptacle/stage or elsewhere to allow rotation at the angular position of the receptacle along axis R2. That is, the receptacle must be rotatably mounted to the stage at R2, actuators for providing rotational force does not resolve the issue that the structure for rotatably mounting the receptacle along R2 is not disclosed.
Claims 22-25, 27-34 and 45-46 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 21-25, 27-34 and 45-46 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 limitations listed above invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The disclosure is devoid of any structure that performs the function in the claim Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Additionally, claim 46 is vague and indefinite for reciting “the activation element is mounted to a movement element of an upstream axis of the sample stage” Specifically, claim 21 requires a number of movement elements, therefore it is unclear as to which movement element claim 46 is referring to or if the claim is referring to a different movement element not required by independent claim 21.
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 and 45-46 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 receptacle comprising an activatable switching element (controller 142 is interpreted to be the claimed switching element since it controls the rotational movements, thus the transfer between the first and second positions [0089] and [0077]) and the particle beam system comprising an activation element configured to activate the switching element via physical contact (via mechanical connection between the control apparatus and the movement apparatuses ([0077]) some physical contact occurs between the controller and the mechanical connection that activates the movements (activation element). Note this is commensurate with paragraphs [0056]-[0057] which suggests elements touch one another or rotated via actuators. That is, a mechanical connection will inherently have two components that physically contact to initiate movement)
the sample stage comprising movement elements arranged successively in an open kinematic chain ([0076]), the movement elements comprising a first translational movement element configured to move the sample stage in a first translational degree of freedom ([0076], either 121 providing movement along z, 125 providing movement along x or 126 providing movement along y),a second translational movement element configured to move the sample stage in a second translational degree of freedom perpendicular to the first translational degree of freedom ([0076] any of the movement elements perpendicular to the first movement element), and a rotational movement element configured to rotate the sample stage about a first axis that extends perpendicular to a surface of the sample stage ([0076] fifth movement element 127 about second rotation axis 128 (first axis), which is perpendicular to the sample stage as seen in figure 3),the rotational movement element being a last rotational movement element of the open kinematic chain ([0076] teaches fifth movement element thus the last in the chain)
the method comprising:
a) causing relative movement between the switching element and the activation element until the switching element physically contacts the activation element, the physical contact activating the switching element to initiate rotation (controller via mechanical connection ([0077]), some physical contact causes movement. For example, figure 7a shows gears wherein the teeth of the center gear causes rotation of the peripheral gears (i.e. switching element and activation element), which is a mechanical drive envisioned in paragraph [0077]) 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, see annotated figure below R1 corresponds to the claimed first axis);
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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).
Regarding claim 45, Biberger et al. teach the activation element is mounted to a chamber wall of a sample chamber (figure 3 shows entire receptacle mounted to housing 112, thus the activation element is indirectly mounted to the housing wall of the sample chamber); and causing the relative movement comprises moving the sample stage together with the receptacle relative to the activation element (for mechanical movement to be achieved all elements must move. That is, the claim does not require the activation element to be stationary, therefore does not preclude movement of all elements).
Regarding claim 46, Biberger et al. teach the activation element is mounted to a movement element of an upstream axis of the sample stage (movement elements are beneath sample stage ([0074] teaches 120 is embodied with the fifth movement element 127, thus all elements are thereunder) and the controller 142 is beneath the movement elements. The upstream axis of the stage is interpreted to be under the stage as there is no requirement other than the movement member as to the direction of the upstream axis.); and causing the relative movement comprises moving the switching element and the activation element relative to one another (for mechanical movement to be achieved all elements must move. That is, the claim does not require the activation element to be stationary, therefore does not preclude movement of all elements).
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)1.
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 and 27-33 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 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.
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 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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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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/MICHAEL J LOGIE/Primary Examiner, Art Unit 2881
1 Note the amended subject matter is treated similarly as the first interpretation and therefore for the purposes of conciseness is not reiterated. Note the only difference being that the first rotational axis is interpreted as 129 with the last rotational element of the kinematic chain being the means of rotating about 129, see further discussion in the Final Rejection in 16/459212, pages 25-26 mailed 05/28/2021
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