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 .
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 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), 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f), 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f), 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 , 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), except as otherwise indicated in an Office action.
The cited limitations have been interpreted under 35 U.S.C. 112(f), because they use a generic placeholder “means” coupled with functional language without reciting sufficient structure to achieve the function. The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f): "mechanism for," "module for," "device for," "unit for," "component for," "element for," "member for," "apparatus for," "machine for," or "system for."
Since the claim limitations invoke 35 U.S.C. 112(f), the claims have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
The following table provides the generic place holder, functional language and the review and citation of the specification that shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f):
Claim(s)
Generic nonce place holder language or “means”
Functional Language
Interpretation from written description
1-3, 11 & 15
Pressing member which (e.g. for)
Interpreted as nonce term “member for” where “pressing” is a functional not structural modifier
slidably presses the specimen mount against the holder main body,
[0072: The plunger 30 includes a first contact member 32, a first spring 34, and a first shaft 36] Interpreted as a spring plunger
6
a moving mechanism which (e.g. for)
Interpreted as nonce term “apparatus for” where “moving” is a functional not structural modifier
simultaneously moves the first plunger and the second plunger and which simultaneously changes forces by which the first plunger and the second plunger press the specimen mount against the holder main body
[0125: a base 212, a screw 214, a lever 216, a first stopper 218a, and a second stopper 218b] Interpreted as an adjustable screw
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) applicant may amend the claims so that they will clearly not invoke 35 U.S.C. 112(f), or present a sufficient showing that the claim recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f).
For more information, see MPEP § 2173 etseq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
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.
Claims 1-16 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1 & 11 recites the limitation “the specimen mount is tilted with respect to the holder main body by tilting a rod-like member” which is structurally unclear as to the mechanism for tilting. Examiner looks to the specification [0141 paraphrased: the user applies a force, and the pressing member is compressed and the specimen mount tilts].
All dependent claims are rejected for their dependence on a rejected base claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding Claim 10 the claim is unclear as the element claimed of “the rod-like member” does not seem to further limit the rod-like member of Claim 1 and no additional features are claimed.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Indication of Allowable Subject Matter
Claims 5-6 & 15 are objected to and would be allowable if:
1) Rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
2) Rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claims 5-6 & 15. The closest prior art is Kataoka (US 20190287755) which discloses a specimen holder with a holder main body, a specimen mount to which a specimen is to be fixed and a through-hole is provided in the specimen mount, and wherein the specimen mount is tilted with respect to the holder main body by tilting a rod-like member which is inserted into the through-hole.
Kataoka, nor the prior art discloses Claim 5’s adjustable tension screws on each of the first and second spring plungers.
Kataoka, nor the prior art discloses Claim 6’s moving mechanism simultaneously changes forces by which the first plunger and the second plunger press the specimen mount against the holder main body.
Kataoka, nor the prior art discloses Claim 15’s pressing member presses the specimen mount with a first pressing force, in polishing the specimen with the mechanical polishing apparatus, the pressing member presses the specimen mount with a second pressing force, and the first pressing force is smaller than the second pressing force.
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 1-4, 7-14 & 16 rejected under 35 U.S.C. 103 as being unpatentable over Kataoka (US 20190287755: “Kataoka”) in view of Du (CN 115229317: “Du”).
Claim 1. Kataoka discloses a specimen holder comprising: a holder main body (33); a specimen mount (32) to which a specimen (37) is to be fixed [0051];wherein a through-hole (35b) is provided in the specimen mount (32)[0057], and wherein the specimen mount (32) is tilted (51a) with respect to the holder main body (33) by tilting a rod-like member (52)[0114] which is inserted into the through-hole (35b). Kataoka does not explicitly disclose:
a pressing member which slidably presses the specimen mount against the holder main body.
Du teaches ion polishing system is a surface treatment device used for sample cross-section preparation [0002]. Du further teaches a pressing member (320) which slidably presses the specimen mount (100 & 310) against the holder main body (410 & 610)[0032-0033 & 0065].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Du’s pressing member between the specimen holder and the holder main body between Kataoka’s, specimen holder and the holder main body because the pressing member provides stability between the elements as a guide for proper alignment [Du 0031].
Claim 2. Dependent on the specimen holder according to claim 1. Kataoka further teaches the specimen mount (32) comprises a first surface (32 top face), a second surface (32 bottom face) which faces an opposite direction to the first surface (32 top and bottom are opposing), and a third surface which is orthogonal (32 back face) to the first surface (32 top face) and the second surface (32 bottom face), the through-hole penetrates the specimen mount between the first surface (32 top face) and the second surface (32 bottom face). Kataoka, as modified, does not explicitly disclose:
the pressing member presses the third surface of the specimen mount.
Du teaches ion polishing system is a surface treatment device used for sample cross-section preparation [0002]. Du further teaches a pressing member (320) presses the third surface (Back surface) of the specimen mount (100 & 310) against the holder main body (410 & 610) [0032-0033 & 0065].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Du’s pressing member between the specimen holder and the holder main body between Kataoka’s, as modified, specimen holder and the holder main body because the pressing member provides stability between the elements as a guide for proper alignment [Du 0031].
Claim 3. Dependent on the specimen holder according to claim 1. Kataoka, as modified, does not explicitly disclose:
a force by which the pressing member presses the specimen mount against the holder main body is variable.
Du teaches ion polishing system is a surface treatment device used for sample cross-section preparation [0002]. Du further teaches a force by which the pressing member (320) a force by which the holder main body (410 & 610)[0032-0033 & 0065] is variable [0030: spring plunger is a variable spring force where a spring force varies over distance].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Du’s variable force spring pressing member between the back surface of the specimen holder and the holder main body between Kataoka’s, as modified, specimen holder and the holder main body because the pressing member provides stability between the elements as a guide for proper alignment [Du 0031].
Claim 4. Dependent on the specimen holder according to claim 1. Kataoka, as modified, does not explicitly disclose:
1) the pressing member comprises a first plunger
2) a second plunger.
With regard to 1) Du teaches ion polishing system is a surface treatment device used for sample cross-section preparation [0002]. Du further teaches the pressing member (320) comprises a first plunger (320) [0030: spring plunger is a variable spring force where a spring force varies over distance].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Du’s variable force spring pressing member between the back surface of the specimen holder and the holder main body between Kataoka’s specimen holder and the holder main body because the pressing member provides stability between the elements as a guide for proper alignment [Du 0031].
With regard to 2) Providing a second plunger over a single plunger is a duplication of parts. The courts have held mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. vs. Bemis Co. 293 USPQ 8 and In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), where the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (see MPEP 2144.04 (VI)(B).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Kataoka’s, as modified by Du’s first plunger to arrange a second plunger between the elements of the specimen holder and the holder main body because a second plunger increases the stability and alignment of the elements from offset forces.
Claim 7. Dependent on the specimen holder according to claim 1. Kataoka further discloses a female screw is formed on an inner surface of the through-hole (35b), a male screw is formed on the rod-like member (figure 5: depicts threaded pin rod 52 with male threads), and the specimen (37) mount moves along an axis of the rod-like member by rotating the rod-like member (52) inserted into the through-hole (35b) [0066: the milling position adjusting pin 52 rotates together with the cover side connecting pin 46. Consequently, the sample 37 moves along with the milling position adjusting mechanism 51 in the second direction Y. Hence, the amount of protrusion of the sample 37 relative to the shield plate 34 can be adjusted] & [0074].
Claim 8. Dependent on the specimen holder according to claim 1. Kataoka further discloses the holder main body (33) comprises a mounting part (56)[0050] to which a shield plate (34) of an ion beam milling apparatus [0032]. Kataoka’s, as modified, does not explicitly disclose:
a polishing target jig for a mechanical polishing apparatus are to be interchangeably mounted.
Du teaches ion polishing system is a surface treatment device used for sample cross-section preparation [0002]. Du further teaches a polishing target jig for a mechanical polishing apparatus are to be interchangeably mounted [0027: As shown in Figures 2 and 7, the ion beam shield 210 is inserted into the shield limiting bracket 220 and is set at an angle, and the top surface of the ion beam shield 210 is set horizontally to shield the ion beam and thus protect the parts of the sample that do not need to be cut. Specifically, a dovetail groove is provided on the shielding plate limiting bracket 220, and the ion beam shielding plate 210 is inserted into the dovetail groove to ensure that the ion beam shielding plate 210 is firmly positioned on the shielding plate limiting bracket 220].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Du polishing shield target to adjust the laser alignment for polishing with Kataoka’s, as modified, cutting jig arrangement because it provides a time and resource efficient arrangement for sample processing [Du 0027].
Claim 9. Dependent on the specimen holder according to claim 1. Kataoka further discloses the holder main body (33) is provided with a guide (45 & 53) which restricts a movement range of the specimen mount (37) [0069].
Claim 10. Dependent on the specimen holder set comprising: the specimen holder according to claim 1. Kataoka further discloses the rod-like member (handle Fig. 3: 60 & 52a are shown as rod shaped).
Claim 11. Kataoka discloses a specimen preparation method [Abstract] comprising: fixing a specimen (37) to a specimen mount (32)[0051]; and inserting a rod-like member (52)[0114] into a through-hole (35b) provided in the specimen mount (32)[0057] and adjusting a tilt (51a) of the specimen mount (32) by tilting the rod-like member (52)[0114]. Kataoka, as modified, does not explicitly disclose:
slidably pressing the specimen mount to which the specimen has been fixed, against a holder main body by a pressing member
Du teaches ion polishing system is a surface treatment device used for sample cross-section preparation [0002]. Du further teaches slidably presses the specimen mount (100 & 310) to which the specimen (100) has been fixed [0031-0032], against a holder main body (410 & 610) [0032-0033 & 0065] by a pressing member (320)[0030-0031].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Du’s pressing member between the specimen holder and the holder main body between Kataoka’s, as modified, specimen holder and the holder main body because the pressing member provides stability between the elements as a guide for proper alignment [Du 0031].
Claim 12. Dependent on the specimen preparation method according to claim 11. Kataoka further discloses the specimen (37) fixed to the specimen mount (32); and milling, with an ion beam milling apparatus, the specimen (37) fixed to the specimen mount (32) [0029-0030]. Kataoka, as modified, does not explicitly disclose:
Polishing, with a mechanical polishing apparatus.
Du teaches ion polishing system is a surface treatment device used for sample cross-section preparation [0002]. Du further teaches a polishing [0002] with a mechanical polishing apparatus [0009].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Du’s polishing arrangement and adjustment of the laser with Kataoka’s, as modified, cutting jig arrangement because cutting and polishing on one system provides a time and resource efficient arrangement for sample processing [Du 0027].
Claim 13. Dependent on the specimen preparation method according to claim 12. Kataoka further discloses mounting a shield plate (38) which shields a part of the specimen (37) to the holder main body (33) before milling with the ion beam milling apparatus [0067].
Claim 14. Dependent on the specimen preparation method according to claim 12. Kataoka, as modified, does not explicitly disclose:
mounting a polishing target jig which holds a target to be a guide of an amount of polishing of the specimen to the holder main body before polishing with the mechanical polishing apparatus.
Du teaches ion polishing system is a surface treatment device used for sample cross-section preparation [0002]. Du further teaches mounting a polishing target jig which holds a target to be a guide of an amount of polishing of the specimen to the holder main body before polishing with the mechanical polishing apparatus [0027: As shown in Figures 2 and 7, the ion beam shield 210 is inserted into the shield limiting bracket 220 and is set at an angle, and the top surface of the ion beam shield 210 is set horizontally to shield the ion beam and thus protect the parts of the sample that do not need to be cut. Specifically, a dovetail groove is provided on the shielding plate limiting bracket 220, and the ion beam shielding plate 210 is inserted into the dovetail groove to ensure that the ion beam shielding plate 210 is firmly positioned on the shielding plate limiting bracket 220].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use Du polishing shield target to adjust the laser alignment for polishing with Kataoka’s, as modified, cutting jig arrangement because cutting and polishing provides a time and resource efficient arrangement for sample processing [Du 0027].
Claim 16. Dependent on the specimen preparation method according to claim 11. Kataoka further discloses inserting the rod-like member into the through-hole (35b), causing a female screw formed on an inner surface of the through-hole (35b) to screw with a male screw formed on the rod-like member (52) by rotating the rod-like member (Fig. 5: depicts threaded pin rod 52 with male threads), and moving the specimen mount along an axis (Fig. 5: Y1) of the rod-like member [0066: the milling position adjusting pin 52 rotates together with the cover side connecting pin 46. Consequently, the sample 37 moves along with the milling position adjusting mechanism 51 in the second direction Y. Hence, the amount of protrusion of the sample 37 relative to the shield plate 34 can be adjusted] & [0074: the amount of protrusion of the sample 37 in the second direction Y1 can be adjusted].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Monica S Young whose telephone number is (303)297-4785. The examiner can normally be reached M-F 08:30-05:30 MST.
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/MONICA S YOUNG/Examiner, Art Unit 2855
/PETER J MACCHIAROLO/Supervisory Patent Examiner, Art Unit 2855