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 Amendment
The amendments filed 03/26/2026 have been entered. Claims 1-20 remain pending in the application.
Response to Arguments
Applicant’s remarks regarding the drawings are acknowledged, and the previously presented objection to the drawings is withdrawn herein.
Applicant’s amendments to the abstract have overcome the objection previously put forth in the Non-Final Office Action dated 10/30/2025, hereinafter NFOA1030.
Applicant’s amendments to the claims have overcome each and every objection previously set forth in NFOA1030.
Applicant’s amendments to the claims have overcome some of the 35 U.S.C. 112(a) rejections previously set forth in NFOA1030, however, while Applicant’s response is bona fide, issues remain in claims 8 and 13, and an additional issue has been identified.
Applicant’s amendments to the claims have overcome some of the 35 U.S.C. 112(b) rejections previously set forth in NFOA1030, however, while Applicant’s response is bona fide, issues remain in claims 5, 8, and 13, and an additional issue has been identified.
Applicant's arguments filed 03/26/2026 have been fully considered but they are not persuasive.
In regards to the previously presented 112(a) rejection of claim 8, Applicant argues “…the specification teaches removing the object by cutting with the particle beam, which Applicant respectfully submits is sufficient to meet the requirements of 35 U.S.C. 112(a) with respect to claim 8.” Examiner respectfully disagrees that this is sufficient to overcome the rejection, because while the specification does support that specific technique, that does not address/ameliorate the rejection. Claim 8 requires “…wherein the object is removed from an object material when the object is moved using the manipulator and/or the object stage.” Under the broadest reasonable interpretation (BRI), this does not require cutting with the particle beam, and is broad enough to include any means by which an object could be removed from an object material when the object is moved via the manipulator/stage (i.e., the limitation allow far more than the cutting that is supported by the specification). One of ordinary skill in the art would be reasonably apprised of conventional separation (i.e., cutting/milling/etc.) techniques, but would not be reasonably apprised of every possible technique that could be included in this limitation in such a manner as to be supported by mere ordinary knowledge. Furthermore, the specification clearly does not contain written description of every possible technique that would be included by such a limitation, and in fact, appears to only include support for the specific technique indicated by Applicant, namely, cutting with the beam. In other words, the claim is far broader than what is supported by the written description, and thus the claim does not have adequate written description under the BRI of the claim, and the 112(a) rejection is maintained as proper.
In regards to the previously presented 112(a) rejection of claim 13, Applicant argues “…claim 13 specifically recites that the object is thicker at the first surface. Applicant respectfully submits that the modifier “at the first surface” establishes a specific dimension, namely, the dimension of the object that is orthogonal to the first surface. Moreover, this is supported by the paragraph at line 7 on page 41 of the substitute specification which, after mentioning the thickness, state: “By way of example, this [the thickness] ensures that sufficient material is made available for redeposition and hence for good fastening of the object 125 to the manipulators 501.” Accordingly, based on the above, Applicant respectfully requests that this rejection be reconsidered and withdrawn.”
Examiner respectfully disagrees. First, ‘at the first surface’ merely indicates a location, and has no implication on the direction of the thickness whatsoever. Under the BRI, the limitation “…thicker at the first surface…” merely requires that the object is thicker at the location of the first surface than other regions of the object, but does not provide any limitation on what direction it is thicker in (i.e., in which direction it extends further), which is possible in arbitrary dimensions (i.e., extending from the face of the surface, extending in any lateral direction from the face of the surface). Applicant’s argument that a specific orthogonal dimension is established is not founded in any of the claim language and would require improperly reading limitations from the specification into the claim that are not required by the claim. Furthermore, even assuming ‘orthogonal to the first surface’ were established, there are multiple directions orthogonal to the first surface that could be thicker, and the claim language does not distinguish between these, even assuming the orthogonality is established (which Examiner disagrees with, as noted above). While Examiner agrees that the cited portion of the specification supports the first surface being thicker in a particular direction, the claim does not limit the thickness being greater in that particular supported direction. Additionally, the following portion of the specification does not limit the directionality, even in the specification, as ‘sufficient material being made available for redeposition’ could be satisfied by a plurality of directions ‘at the first surface’ as well. Furthermore, it appears Applicant’s specification only supports the above cited direction of additional thickness, at least explicitly, and thus, the specification does not contain written description of each potential increase in thickness that would be included by such a limitation. In other words, the claim is broader than what is supported by the written description, and thus the claim does not have adequate written description under the BRI of the claim, and the 112(a) rejection is maintained as proper.
In regards to the previously presented 112(b) rejection of claim 5, Applicant argues “…this incorrectly assumes that all of the steps of claim 5 are only performed after all of the steps of claim 1. Applicant respectfully submits that there is nothing in the claims that requires a specific ordering of steps except, of course, where the ordering is recited explicitly…or where the ordering is inherent based on aspect that flow in a specific order logically. For Example, in claim 1, fastening the object to the manipulator in a boundary region between the first surface and the second surface logically follows the steps for generating the first and second surfaces….In the case of claim 5 combined with claim 1, logic would indicate that the steps of claim 5 would be performed before at least the final step of claim 1 of moving the object fastened to the manipulator.”
Examiner respectfully disagrees that this overcomes the previously indicated indefiniteness and notes that an additional written description issue has been identified. Examiner agrees that precise ordering of steps is not required (i.e., see the alternative on Page 9 on NFOA1030, indicating an unknown combination with the steps of claim 1), however, this itself is a contributing factor to the indefiniteness of the claim, as Applicant must particularly point out and distinctly claim their invention. The claim (in combination with claim 1) is not distinctly claimed as presently understood. Because of the fact that no precise ordering is required, one is left to speculate as to which steps are to occur when, and what patent coverage would therefore be required.
This additionally leads to the written description issue, as some combinations could be reasonably considered as included by the claim, but are not adequately described in the specification. For example, under the BRI, the claims include potentially performing all of the steps of claim 1, other than the moving step, prior to any of the steps of claim 5, which does not appear to be supported by Applicant’s disclosure. Such an ordering would require the first and second surfaces to be fastened, then have additional surfaces formed on the object and the manipulator while the first and second surfaces are fastened, and subsequently arranging the further surfaces and fastening to one another. Depending on the morphology of the sample and the manipulator, this is theoretically possible, but does not appear to be adequately supported by Applicant’s disclosure. Accordingly, the claim appears to include combinations of method steps that do not have adequate written description.
While obvious step ordering such as generating a first and second surface logically occurring before arranging and fastening those surfaces, logic alone cannot precisely and distinctly dictate when the steps of claim 5 occur relative to those of claim 1, outside of occurring prior to the moving step. In other words, the relative ordering of the steps of claim 5 are clear (i.e., within the claim), and the relative ordering of the steps of claim 1 are clear. However, the relative ordering of the steps of claim 5 in combination with claim 1 are not clear, and appear to include, under the BRI, orderings (due to the lack of explicit ordering) that may be impossible (which in clear cases may be logically excluded) and/or outside the written description of the specification. It appears Applicant’s specification only supports each of the generating steps occurring before any of the arranging/fastening steps (i.e. generating the four surfaces prior to the respective arranging of the respective first and second surfaces and the two respective further surfaces, and fastening thereafter). It does not appear that Applicant’s specification includes the arranging and fastening of the first and second surfaces occurring prior to the generating and arranging steps of the two further surfaces, but the claim does not explicitly exclude such an ordering. However, the claim does not limit to this ordering, or any such ordering, rendering it indefinite. Accordingly, Examiner maintains that the claim is indefinite under the BRI.
In regards to the previously presented 112(b) rejections of claims 8 and 13, Applicant’s arguments largely follow the above arguments regarding the 112(a) issues, and are not convincing for similar reasons. Examiner notes that the specification teaching cutting is irrelevant to the indefiniteness of claim 8 as indicated in NFOA1030, as cutting is not required by claim 8, and it is not permitted to read limitations from the specification into the claims.
Applicant’s further arguments pertain to amended limitations not present at the time of NFOA1030, which are thus moot. Nevertheless, for clarity of the record, Examiner will address relevant point(s).
Applicant argues that the interpretation adopted for ‘corresponds to’ is contrary to the specification and the use in the claims. Examiner disagrees. Applicant points to several figures (11-14) which agree directly with Examiner’s interpretation. These show surfaces which ‘correspond’ in that they ‘are sufficient to be joined together’, i.e., physically. The shapes correspond in shape, such that they can be joined together. Applicant has not indicated precisely what is required to ‘generat[e] a second surface on the object…such that the second surface corresponds to the first surface’, and as such, under the BRI, various interpretations could reasonably be adopted. Applicant discusses the surfaces as being ‘complimentary’ and ‘enabling a particularly good connection/hold’, however, these are not required by the claim. Examiner has adopted an interpretation in agreement with their interpretation of the specification. If Applicant would like to adopt a particular interpretation, they may amend the claims to require specific limitations of the surfaces in order to ‘correspond’.
As indicated in the rejection of claim 1 in NFOA1030, Doemer discloses depositing material on or removing material from the equivalent of the object, and depositing material on or removing material from the equivalent of the manipulator in the cited portions. One specific disclosed example in Doemer does not render irrelevant all other teachings, in particular because no specific ordering is required by the claims.
Applicant argues, in regards to the amended limitations of cooling the object to cause the object to be frozen, that “…even if Doemer teaches cooling objects, there is nothing in Doemer about cooling any objects until the objects are frozen.” Examiner respectfully disagrees, as Doemer discloses that the system is usable in cryo-electron microscopy ([0022]), using biological samples, with cryogenic being understood as less than or equal to -100° C, and makes reference to the temperature of liquid nitrogen and helium. Furthermore, Doemer explicitly discloses both the material unit and the structural unit as being actively cooled to -160° C ([0027], [0031]), which one of ordinary skill in the art would interpret as cooling until frozen. Additionally, cooling objects until frozen is clearly known in the art (See: Hayles, Mitchels, Dietl, and Schertel; each of which disclose freezing samples for particle microscopy). Examiner notes for completeness that Applicant’s assessment that Hayles teaches freezing the object to the manipulator is incomplete. Hayles discloses a sample being frozen, then having a non-examination portion modified such that it melts/sublimates, and this portion is connected to a frozen manipulator. Hayles is clearly reasonably pertinent and discloses samples being frozen prior to modification, and could reasonably disclose freezing cooling an object to be frozen, implicitly, as it pertains to frozen samples.
See below for further discussion of amended claim limitations.
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 5, 8, and 13 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 5 recites additional method steps to be performed in some combination with those of claim 1, however, it does not particularly limit the ordering of the steps. As discussed above, some combinations could be reasonably considered as included by the claim, but are not adequately described in the specification. For example, under the BRI, the claims include potentially performing all of the steps of claim 1, other than the moving step, prior to any of the steps of claim 5, which does not appear to be supported by Applicant’s disclosure. Such an ordering would require the first and second surfaces to be fastened, then have additional surfaces formed on the object and the manipulator while the first and second surfaces are fastened, and subsequently arranging the further surfaces and fastening to one another. Depending on the morphology of the sample and the manipulator, this is theoretically possible, but does not appear to be adequately supported by Applicant’s disclosure. Accordingly, the claim includes combinations of method steps that do not have adequate written description, and as such, the claim lacks adequate written description and is rejected under 35 U.S.C. 112(a).
Claim 8 requires “wherein the object is removed from an object material when the object is moved using the manipulator and/or the object stage”, however, the specification provides no instruction as to how the object is removed from an object material other than by cutting out with the particle beam (i.e., as required in claim 9). While one of ordinary skill in the art may be reasonably apprised of techniques by which an object attached to a manipulator could be removed from an object material, Applicant is nevertheless required to provide adequate written description as to how they intend such functionality to be performed in their invention. This claim includes embodiments which do not have adequate written description under the BRI and the specification provides no additional instruction beyond the language which is in the claim (or in claim 9), and as such, the claim lacks adequate written description and is rejected under 35 U.S.C. 112(a).
Claim 13 requires “wherein the object is thicker at the first surface than in other regions of the object”, however, a three-dimensional object can be thicker in multiple directions, and the claim does not indicate in which direction or directions the object is thicker. Furthermore, the specification provides no additional instruction beyond what is present in the claim as to in what direction(s) the object is thicker at the particular location of the surface, and thus the disclosure does not reasonably convey to one of ordinary skill in art that Applicant had possession of the claimed invention. While Applicant’s drawings and related description may be reasonably be interpreted as supporting one such embodiment of an object being thicker in a particular direction from the surface, it does not contain adequate written description of all of the potential thickness directions included in the claim under the BRI. As such, the claim is rejected under 35 U.S.C. 112(a) for failing to provide adequate written description.
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 5-6, 8, 13, and 15-19 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 5 recites no instruction as to how the steps therein are to be performed with the steps of claim 1, in a manner that would leave one of ordinary skill in the art to speculate as to the covered scope of the claim. As discussed above, while each of claims 1 and 5 is individually clear, as the relative order of the steps within each claim are clear, the lack of ordering between the steps of the two claims makes the combination of the limitations unclear. It appears that the steps in claim 5 would need to be performed during the method steps of claim 1, as discussed above, to be possible as claimed. However, no such ordering of the steps is required and as such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, all of the generating steps are completed prior to the arranging and fastening steps.
Claim 6 has two alternative limitations with the same scope in the third and fifth alternatives. While the language is not identical, the scope is identical.
Claim 8 recites “wherein the object is removed from an object material when the object is moved using the manipulator and/or the object stage”, however, it is unclear how the object is removed from the object material, as no particular technique is required in the claim. A method claim must positively recite how the method steps are performed in sufficient detail to indicate to an ordinary skill in the art what is and is not covered by the claim. This claim contains no such boundary. The specification only recites similar language to the claim language or that the object can be cut out of the object material using the particle beam (i.e., as required in claim 9). While such limitations contain partial support (see 112(a) section above), they are nevertheless not required by the claim, and it is not permitted to read such limitations into the claim. Furthermore, additional techniques are possible and included under the BRI of the claim, however, which techniques are not limited in the claim, leaving one unclear what techniques would be suitable to read on such a limitation. As such, it is unclear how the object is to be removed and one of ordinary skill in the art would not be reasonably apprised of the required methods steps of the claim. Accordingly, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, a prior art mapping is forgone, as the only interpretation possible that contains adequate written description would be via cutting the object out of the object material via the particle beam, however, this would need to be done prior to moving the object, which would result in an identical scope to claim 9.
Claim 13 recites “wherein the object is thicker at the first surface than in other regions of the object”, however, a three-dimensional object can be thicker in multiple directions, and the claim does not indicate in which direction or directions the object is thicker. As discussed above, ‘at the first surface’ merely indicates a location, however, the ‘additional thickness’ can be in multiple directions therefrom. Furthermore, the specification provides no additional instruction beyond one potential embodiment that is not claimed, and as such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, any region that extends further from the first surface than from another region of the object relative to some viewpoint is interpreted as reading on the limitation.
Claim 15 recites “…when executed, controls the particle beam apparatus to cool the object to cause the object to be frozen…”, however, claim 15 is an apparatus claim and does not recite any structure capable of performing such a function. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, the claim is interpreted as previously requiring ‘comprising: a cooling device’.
Claims that depend on the above rejected claims are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Examiner Note with Respect to Prior Art
Examiner notes that the instant Applicant appears to be a mere application of known prior art techniques (for example, see Applicant’s specification [0003]-[0017]) to freeze an object, attach the object to a manipulator (via addition of material between the object and manipulator), and using known techniques (i.e. ion beam milling/ablation). For instance, these portions presented in Applicant’s background section appear to disclose each and every limitation required by claim 1, and each and every element which is not directed toward conventional ion beam elements (e.g., manipulator, beam generator/particle beam, objective lens, scanning device, detector unit, processor/program code) in claim 14 and/or 15 under the broadest reasonable interpretation. For completeness, Examiner nevertheless has included a prior art mapping thereof.
Applicant’s disclosure and claims (e.g., claims 2-4 and 6) appears to indicate the difference between their techniques and the prior art techniques are the disposal of specific morphologies between the surfaces of the manipulator and object, however, it is known in the prior art to mill object to arbitrary shapes for specific purposes (See prior art Mayer and Chang cited below), and the required limitations are disclosed by the below cited prior art under the broadest reasonable interpretation.
As such, in the following claim mapping, it is assumed that one of ordinary skill in the art would be reasonably apprised of the admitted prior art techniques of applying material via ablation to connect an object to a manipulator, and that one of ordinary skill in the art would be reasonably apprised of ion beam milling techniques to form arbitrary shapes.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 5-7, 9, 11, 13-16, and 18-20 are rejected under 35 U.S.C. 102(a)(1) and (2) as being anticipated by Doemer (U.S. PGPub. No. US 20220130639 A1).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 1, Doemer teaches a method for fastening an object to a mobile manipulator in a particle beam apparatus ([0014]-[0015]; [0021]; [0028]; [0030]) and for moving the object in the particle beam apparatus ([0021]; [0042]; [0155]), comprising:
cooling the object to cause the object to be frozen ([0022]; See above cited art; See [0015] of Applicant’s disclosure);
generating a first surface on the manipulator using a particle beam of the particle beam apparatus (See Figs. 18, 20; [0167]; [0183]-[0184]; [0189]; Examiner interprets depositing material on or removing material from as reading on ‘generating at least one first surface on’), wherein the particle beam includes charged particles (See Figs. 18, 20; [0006]; [0183]-[0184]; [0189]);
generating a second surface on the object using the particle beam of the particle beam apparatus (See Figs. 18, 20; [0006]-[0007]; [0009]; [0014]-[0015]; [0183]-[0184]; [0189]; Examiner interprets depositing material on or removing material from as reading on ‘generating at least one second surface on’) such that the second surface corresponds to the first surface ([0009]; [0184]; [0189]; Examiner interprets ‘corresponds to’ as meaning ‘sufficient to be securely joined with’);
arranging the first surface at the second surface such that the manipulator is arranged at the object after cooling the object ([0022]; [0027]; [0031]; [0183]-[0184]; [0187]-[0189]);
fastening the object to the manipulator in a boundary region between the first surface and the second surface using the particle beam of the particle beam apparatus ([0183]-[0184]; [0189]); and
moving the object fastened to the manipulator using the manipulator and/or a mobile object stage, on which the object is arranged ([0021]; [0042]; [0098]; [0114]; [0116]; [0155]; [0187]-[0188]; [0193]).
Regarding claim 2, Doemer teaches the method as claimed in claim 1.
Doemer further teaches wherein the first surface is generated with a first shape (See Figs. 18, 20; [0006]-[0007]; [0009]; [0014]-[0015]; [0183]-[0184]; [0189]; Examiner interprets the deposited or removed material as inherently having ‘a first shape’), and wherein the second surface is generated with a second shape (See Figs. 18, 20; [0006]-[0007]; [0009]; [0014]-[0015]; [0183]-[0184]; [0189]; Examiner interprets deposited or removed material as inherently having ‘a second shape’) such that, following arranging of the first surface at the second surface, a plane of the first shape is parallel to a plane of the second shape (See Figs. 18, 20; [0006]-[0007]; [0009]; [0014]-[0015]; [0183]-[0184]; [0189]; Examiner interprets the respective deposited or removed material and subsequent joining as reading on ‘the first and second shapes having planes that are parallel’, as many such arbitrary planes can be formed on the morphologies formed by Doemer) and/or the first shape engages in the second shape and/or the second shape engages in the first shape.
Regarding claim 5, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Doemer teaches the method as claimed in claim 1.
Doemer further teaches wherein
at least one further surface is generated on the manipulator using the particle beam of the particle beam apparatus (See Figs. 18, 20; [0164]-[0167]; [0183]-[0184]; [0189]; Examiner interprets depositing material on or removing material from as reading on ‘generating at least one first surface on’),
at least one further surface is generated on the object using the particle beam of the particle beam apparatus such that the at least one further surface on the object corresponds to the at least one further surface on the manipulator (See Figs. 18, 20; [0006]-[0007]; [0009]; [0014]-[0015]; [0164]-[0168]; [0183]-[0184]; [0189]; Examiner interprets depositing material on or removing material from as reading on ‘generating at least one second surface on’),
the at least one further surface on the manipulator is arranged at the at least one further surface on the object such that the manipulator is arranged at the object; and wherein ([0164]-[0168]; [0183]-[0184]; [0187]-[0189]),
using the particle beam of the particle beam apparatus, the object is fastened to the manipulator in a boundary region between the at least one further surface on the manipulator and the at least one further surface on the object ([0183]-[0184]; [0189]).
Regarding claim 6, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Doemer teaches the method as claimed in claim 1.
Doemer further teaches further comprising one of the following:
the particle beam of the particle beam apparatus is used to generate a structure unit on the first surface before the object is fastened to the manipulator (See Figs. 18, 20; [0167]; [0183]-[0184]; [0189]; Examiner interprets ‘a structure unit’ as including deposited or removed material present on the manipulator and ‘before the object is fastened to the manipulator’ as meaning ‘during ablation’, as the specification indicates the ablated material is used to join the first surface to the second surface), and the structure unit generated on the first surface is arranged at the second surface when the object is fastened to the manipulator (See Figs. 18, 20; [0006]-[0007]; [0009]; [0014]-[0015]; [0183]-[0184]; [0189]);
the particle beam of the particle beam apparatus is used to generate a structure unit, having at least one projection, on the first surface before the object is fastened to the manipulator, and the at least one projection is arranged at the second surface when the object is fastened to the manipulator;
the particle beam of the particle beam apparatus is used to generate a first structure unit on the first surface and a second structure unit on the second surface before the object is fastened to the manipulator, and the first structure unit generated on the first surface is arranged at the second structure unit on the second surface of the object when the object is fastened to the manipulator;
the particle beam of the particle beam apparatus is used to generate a first structure unit, having at least one projection, on the first surface and a second structure unit on the second surface before the object is fastened to the manipulator, and the at least one projection of the first structure unit is arranged in a first cutout in the second structure unit of the second surface of the object when the object is fastened to the manipulator;
before the object is fastened to the manipulator, the particle beam of the particle beam apparatus is used to generate a first structure unit on the first surface and the particle beam of the particle beam apparatus is used to generate a second structure unit on the second surface, and the first structure unit generated on the first surface is arranged at the second structure unit generated on the second surface when the object is fastened to the manipulator;
the particle beam of the particle beam apparatus is used to generate a first structure unit, having at least one projection, on the first surface and the particle beam of the particle beam apparatus is used to generate a second structure unit, having at least one second cutout, on the second surface, before the object is fastened to the manipulator, and the at least one projection is arranged in the at least one cutout when the object is fastened to the manipulator.
Regarding claim 7, Doemer teaches the method as claimed in claim 1.
Doemer further teaches further comprising one of the following:
to fasten the object to the manipulator, the particle beam of the particle beam apparatus is guided to the object in such a way that material of the object is applied in the boundary region between the first surface and the second surface (See Figs. 18, 20; [0006]-[0007]; [0009]; [0014]-[0015]; [0183]-[0184]; [0189]);
to fasten the object to the manipulator, the particle beam of the particle beam apparatus is guided to the manipulator in such a way that material of the manipulator is applied in the boundary region between the first surface and the second surface (See Figs. 18, 20; [0167]; [0183]-[0184]; [0189]).
Regarding claim 9, Doemer teaches the method as claimed in claim 1.
Doemer further teaches wherein the object is cut out of an object material using the particle beam of the particle beam apparatus before the object is moved ([0188]).
Regarding claim 11, Doemer teaches the method as claimed in claim 1.
Doemer further teaches wherein the object is fastened to the manipulator using a gas which is provided by a gas feed device ([0006]-[0009]; [0103]-[0108]; [0121]-[0126]).
Regarding claim 13, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Doemer teaches the method as claimed in claim 1.
Doemer further teaches wherein the object is thicker at the first surface than in other regions of the object (See Figs 18, 20; Object would necessarily be thicker in at least one direction at first surface than in other regions when material is received).
Regarding claim 14, Doemer teaches a non-transitory computer readable medium containing a program code which is loadable into a processor and which, when executed, controls a particle beam apparatus (Abstract; [0002]; [0039]-[0040]; [0169]; Claim 18) to perform the following:
cooling an object to cause the object to be frozen ([0022]; See above cited art; See [0015] of Applicant’s disclosure);
generating at least one first surface on the manipulator using a particle beam of the particle beam apparatus (See Figs. 18, 20; [0167]; [0183]-[0184]; [0189]; Examiner interprets depositing material on or removing material from as reading on ‘generating at least one first surface on’), wherein the particle beam includes charged particles (See Figs. 18, 20; [0006]; [0183]-[0184]; [0189]);
generating at least one second surface on the object using the particle beam of the particle beam apparatus (See Figs. 18, 20; [0006]-[0007]; [0009]; [0014]-[0015]; [0183]-[0184]; [0189]; Examiner interprets depositing material on or removing material from as reading on ‘generating at least one second surface on’) such that the second surface corresponds to the first surface ([0009]; [0184]; [0189]; Examiner interprets ‘corresponds to’ as meaning ‘sufficient to be securely joined with’);
arranging the first surface at the second surface such that the manipulator is arranged at the object after cooling the object ([0022]; [0027]; [0031]; [0183]-[0184]; [0187]-[0189]);
fastening the object to the manipulator in a boundary region between the first surface and the second surface using the particle beam of the particle beam apparatus ([0183]-[0184]; [0189]); and
moving the object fastened to the manipulator using the manipulator and/or a mobile object stage, on which the object is arranged ([0021]; [0042]; [0098]; [0114]; [0116]; [0155]; [0187]-[0188]; [0193]).
Regarding claim 15, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Doemer teaches a particle beam apparatus for processing, imaging and/or analyzing an object (Abstract; [0002]-[0004]; [0015]), comprising:
at least one mobile manipulator ([0009]-[0010]; [0021]; [0109]);
at least one beam generator for generating a particle beam with charged particles ([0083]-[0090]; [0111]-[0115]);
at least one objective lens for focusing the particle beam onto the object and/or onto the manipulator ([0083]-[0090]; [0111]-[0115]);
at least one scanning device for scanning the particle beam over the object and/or over the manipulator ([0083]-[0090]; [0111]-[0115]);
at least one detector unit for detecting interaction particles and/or interaction radiation resulting from an interaction of the particle beam with the object and/or from an interaction of the particle beam with the manipulator ([0091]-[0095]; [0099]-[0100]; [0118]-[0119]; [0140]-[0144]); and
at least one processor coupled to a non-transitory computer readable medium that contains a program code which is loadable into the processor and which, when executed, controls the particle beam apparatus (Abstract; [0002]; [0039]-[0040]; [0169]; Claim 18) to cool the object to cause the object to be frozen ([0022]; See above cited art; See [0015] of Applicant’s disclosure), generate a first surface on the manipulator using the particle beam (See Figs. 18, 20; [0167]; [0183]-[0184]; [0189]; Examiner interprets depositing material on or removing material from as reading on ‘generating at least one first surface on’), generate a second surface on the object using the particle beam of the particle beam apparatus such that the second surface corresponds to the first surface (See Figs. 18, 20; [0006]-[0007]; [0009]; [0014]-[0015]; [0183]-[0184]; [0189]; Examiner interprets depositing material on or removing material from as reading on ‘generating at least one second surface on’), arrange the first surface at the second surface such that the manipulator is arranged at the object after cooling the object ([0022]; [0027]; [0031]; [0183]-[0184]; [0187]-[0189]), fasten the object to the manipulator in a boundary region between the first surface and the second surface using the particle beam of the particle beam apparatus ([0183]-[0184]; [0189]) and move the object fastened to the manipulator using the manipulator and/or a mobile object stage, on which the object is arranged ([0021]; [0042]; [0098]; [0114]; [0116]; [0155]; [0187]-[0188]; [0193]).
Regarding claim 16, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Doemer teaches the particle beam apparatus as claimed in claim 15,
Doemer further teaches wherein the particle beam apparatus includes a gas feed device for feeding a gas ([0006]-[0009]; [0103]-[0108]).
Regarding claim 18, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Doemer teaches the particle beam apparatus as claimed in claim 15.
Doemer further teaches further comprising:
at least one additional beam generator for generating an additional particle beam with additional charged particles ([0083]-[0090]; [0111]-[0115]); and
at least one additional objective lens for focusing the additional particle beam onto the object and/or onto the manipulator ([0083]-[0090]; [0111]-[0115]).
Regarding claim 19, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Doemer teaches the particle beam apparatus as claimed in claim 15.
Doemer further teaches wherein the particle beam apparatus is an electron beam apparatus and/or an ion beam apparatus ([0083]-[0090]; [0111]-[0115]).
Regarding claim 20, Doemer teaches the non-transitory computer readable medium as claimed in claim 14.
Doemer further teaches wherein, to fasten the object to the manipulator, the particle beam of the particle beam apparatus is guided to the object or to the manipulator to apply material to the boundary region between the first surface and the second surface ([0183]-[0184]; [0189]).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Doemer (U.S. PGPub. No. US 20220130639 A1).
Regarding claim 3, Doemer teaches the method as claimed in claim 1.
Doemer does not explicitly teach wherein the first surface is generated as a plane surface and/or the second surface is generated as a plane surface.
However, one of ordinary skill in the art would know that when ablating material, the ablated material will diffuse outward according to the diffusion equation (i.e., in all directions available), and that the diffused material will naturally conform to the surface it is deposited on, which in the case of TEM samples, would be a planar or nearly planar surface (i.e., thin samples for TEM inspection). Thus, in the arrangement of Figs. 18 and 20, the removed or deposited material will naturally form a flat surface on the object or the manipulator in the region of the deposit, absent specific alterations to form specific shapes. Additionally, in the case of Fig. 18 and the corresponding disclosure, the material will attach to both the manipulator and the object such that they are joined. The point at which the material joins between the two objects will inherently meet at a surface (wherein the angle/orientation of the surface will depend upon the shape of the two objects and their relative orientations), which could be reasonably interpreted as two plane surfaces which join. As such, it is Examiner’s opinion that one of ordinary skill in the art would interpret the disclosure of Doemer to at least read on one of the first or second surfaces being generated as a plane surface.
Examiner also notes that in separate embodiments, Doemer discloses various shapes for the tip of the material unit, and discloses the use of the manipulator as being the material unit. As such, it is Examiner’s opinion that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Doemer to combine the embodiments having the manipulator as the material unit with the embodiments of the material unit having varied shapes in order to achieve wherein the first surface is generated as a plane surface and/or the second surface is generated as a plane surface.
Doing so would allow one to simplify construction by using the manipulator as the material unit, while allowing for the material to be formed on the manipulator in ways that are beneficial for the ablation of the material and/or the disposal of the material on the object for connection with the manipulator, as disclosed in the embodiments of Figs. 6-13.
Examiner additionally notes for completeness that the prior art Chen (DOI:) discloses depositing a planar surface to attach a manipulator to an object to be cut from an object material. Such a technique is well represented in the prior art, as evidenced by both Doemer and the instant application referring to the general practice of fastening an object to a manipulator and/or sample carrier via deposition of a material as being known in the prior art. As such, in the case of an alternative interpretation of Doemer, it would have nevertheless been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Doemer to include wherein the first surface is generated as a plane surface and/or the second surface is generated as a plane surface, as taught by Chen.
Doing so represents combining known prior art techniques according to known methods in order to achieve predictable results, and would allow one to connect the object to the manipulator for subsequent moving/processing via a known prior art technique.
Regarding claim 4, Doemer teaches the method as claimed in claim 1.
Doemer does not explicitly teach wherein the first surface and the second surface are generated to be aligned parallel to one another.
However, one of ordinary skill in the art would know that when ablating material, the ablated material will diffuse outward according to the diffusion equation (i.e., in all directions available), and that the diffused material will naturally conform to the surface it is deposited on, which in the case of TEM samples, would be a planar or nearly planar surface (i.e., thin samples for TEM inspection). Thus, in the arrangement of Figs. 18 and 20, the removed or deposited material will naturally form a flat surface on the object or the manipulator in the region of the deposit, absent specific alterations to form specific shapes. Additionally, in the case of Fig. 18 and the corresponding disclosure, the material will attach to both the manipulator and the object such that they are joined. The point at which the material joins between the two objects will inherently meet at a surface (wherein the angle/orientation of the surface will depend upon the shape of the two objects and their relative orientations), which could be reasonably interpreted as two plane surfaces which join (and would thus be inherently parallel). As such, it is Examiner’s opinion that one of ordinary skill in the art would interpret the disclosure of Doemer to at least read on one of the first or second surfaces being generated as a plane surface.
Examiner notes for completeness that in separate embodiments, Doemer discloses various shapes for the tip of the material unit, and discloses the use of the manipulator as being the material unit. As such, it is Examiner’s opinion that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Doemer to combine the embodiments having the manipulator as the material unit with the embodiments of the material unit having varied shapes in order to achieve wherein the first surface and the second surface are generated to be aligned parallel to one another, such as in the embodiments of Figs. 8 or 10.
Doing so would allow one to simplify construction by using the manipulator as the material unit, while allowing for the material to be formed on the manipulator in ways that are beneficial for the ablation of the material and/or the disposal of the material on the object for connection with the manipulator, as disclosed in the embodiments of Figs. 6-13.
Examiner additionally notes for completeness that the prior art Chen (DOI:) discloses depositing a planar surface to attach a manipulator to an object to be cut from an object material. The planar connection of the manipulator and object is interpreted as reading on the first and second surfaces being generated to be aligned parallel to one another. Such a technique is well represented in the prior art, as evidenced by both Doemer and the instant application referring to the general practice of fastening an object to a manipulator and/or sample carrier via deposition of a material as being known in the prior art. As such, in the case of an alternative interpretation of Doemer, it would have nevertheless been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Doemer to include wherein the first surface and the second surface are generated to be aligned parallel to one another, as taught by Chen.
Doing so represents combining known prior art techniques according to known methods in order to achieve predictable results, and would allow one to connect the object to the manipulator for subsequent moving/processing via a known prior art technique.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Doemer (U.S. PGPub. No. US 20220130639 A1) in view of Chen (DOI: 10.1016/j.ultramic.2017.09.011).
Regarding claim 10, Doemer teaches the method as claimed in claim 1.
Doemer does not explicitly teach further comprising at least one of the following:
the object is fastened to an object holder using the particle beam of the particle beam apparatus after the object has been moved using the manipulator and/or the object stage;
the object is released from the manipulator using the particle beam of the particle beam apparatus after the object has been moved using the manipulator and/or the object stage.
However, one of ordinary skill in the art would be reasonably apprised of the purpose and general use of a manipulator to connect to and move and object before being disconnected from the object, as such techniques represent typical functionality for such a system.
Nevertheless, Chen teaches the object is fastened to an object holder using the particle beam of the particle beam apparatus after the object has been moved using the manipulator and/or the object stage (See Fig. 3; See Section 3, step [f]);
the object is released from the manipulator using the particle beam of the particle beam apparatus after the object has been moved using the manipulator and/or the object stage (See Fig. 3; See Section 3, step [f]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Doemer to explicitly include further comprising at least one of the following: the object is fastened to an object holder using the particle beam of the particle beam apparatus after the object has been moved using the manipulator and/or the object stage; the object is released from the manipulator using the particle beam of the particle beam apparatus after the object has been moved using the manipulator and/or the object stage, as taught by Chen.
Doing so represents combining known prior art techniques according to known methods in order to achieve predictable results, and would allow one to reposition the sample into the analysis system for subsequent inspection/processing with the manipulator before disconnecting for the aforementioned inspection/processing, as disclosed in Chen.
Claims 12 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Doemer (U.S. PGPub. No. US 20220130639 A1) in view of Hayles (EPO Doc. No. EP 2009420 A1).
Regarding claim 12, Doemer teaches the method as claimed in claim 1.
Doemer does not explicitly teach wherein the object is cooled using a first heating and/or cooling device and/or the manipulator is cooled using a second heating and/or cooling device.
However, Doemer discloses operating on cryogenic samples and at cryogenic temperatures for beam applications, as well as applying a temperature controlled gas to the object and/or manipulator, which could be reasonably interpreted as cooling the object and/or manipulator. Furthermore, one of ordinary skill in the art would be reasonably apprised of sample holders and/or manipulators having heating and/or cooling capabilities, as such elements are typical in such systems, especially when handling cryogenic samples. See also above cited prior art.
Nevertheless, for completeness, Hayles teaches wherein the object is cooled using a first heating and/or cooling device and/or the manipulator is cooled using a second heating and/or cooling device ([0025]; [0029]; [0036]; [0045]-[0046]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Doemer to explicitly include wherein the object is cooled using a first heating and/or cooling device and/or the manipulator is cooled using a second heating and/or cooling device, as taught by Hayles.
Doing so represents combining known prior art elements according to known methods in order to achieve predictable results, and would allow one to maintain samples at the desired temperatures for preserving the samples for processing/analysis, as is known in the art.
Regarding claim 17, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Doemer teaches the particle beam apparatus as claimed in claim 15.
Doemer does not explicitly teach wherein the particle beam apparatus includes a heating and/or cooling device for setting a temperature of the manipulator and/or the object.
However, Doemer discloses operating on cryogenic samples and at cryogenic temperatures for beam applications, as well as applying a temperature controlled gas to the object and/or manipulator, which could be reasonably interpreted as cooling the object and/or manipulator. Furthermore, one of ordinary skill in the art would be reasonably apprised of sample holders and/or manipulators having heating and/or cooling capabilities, as such elements are typical in such systems, especially when handling cryogenic samples.
Nevertheless, for completeness, Hayles teaches wherein the particle beam apparatus includes a heating and/or cooling device for setting a temperature of the manipulator and/or the object ([0025]; [0029]; [0036]; [0045]-[0046]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Doemer to explicitly include wherein the particle beam apparatus includes a heating and/or cooling device for setting a temperature of the manipulator and/or the object, as taught by Hayles.
Doing so represents combining known prior art elements according to known methods in order to achieve predictable results, and would allow one to maintain samples at the desired temperatures for preserving the samples for processing/analysis, as is known in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Dietl (US 20130256558 A1);
Mitchels (US 20180114671 A1);
Schertel (US 20210241992 A1).
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 CHRISTOPHER J GASSEN whose telephone number is (571)272-4363. The examiner can normally be reached M-F 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ROBERT H 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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/CHRISTOPHER J GASSEN/Examiner, Art Unit 2881
/DAVID E SMITH/Examiner, Art Unit 2881
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