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 .
Election/Restrictions
Applicant's election with traverse of invention III in the reply filed on 4/13/26 is acknowledged. The traversal is on the ground(s) that there is no serious search burden. In particular, applicant asserts that because all three inventions are classified within H01J 2237, any relevant search “would necessarily traverse the same corpus of references.” This is not found persuasive. There are more than 40,000 US Patents and US PgPubs currently classified under H01J 2237. Searching such an area in the fashion suggested by the applicant would impose a serious search burden, since it is clearly not a “narrow technical domain” as asserted by the applicant, but rather an extensively improved upon area with nearly a century of development and prior art. Applicant further argues that since all of the inventions require elements of claim 1, a search for invention III may yield results relevant to another invention, and as such there is no burden in searching for the inventions together. This is not found persuasive. The fact that a single reference may be found to anticipate all of the inventions does not preclude restriction between the inventions; however, should such a reference be found, then reconsideration of the restriction will become necessary to the extent that a serious search burden is demonstrated not to exist. To this end, applicant is encouraged to note any withdrawn claims that are anticipated or made obvious by art of record so that claims can be rejoined and examined in a timely fashion.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2-5, 14, 18, and 20 are withdrawn.
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.
Claim 13 is 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 13 states, “the sample holder of a first size mounted to the base section during a first time period; and a second sample holder of a second size mounted to the base section during a second time period offset the first time period, the second size exceeding the first size.” The claim recites an apparatus and a method of its use in the same claim. In IPXL Holdings, L.L.C. v. Amazon.com, Inc., the court held that a single claim covering both an apparatus and a method of use of that apparatus is indefinite under section 112. 430 F.3d 1377 (Fed. Cir. 2005). Such claims are indefinite because claiming both an apparatus and method of using the apparatus within a single claim can make it "unclear whether infringement ... occurs when one creates a[n infringing] system, or whether infringement occurs when the user actually uses [the system in an infringing manner]." UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 826 (Fed. Cir. 2016) (alteration in original) (quoting IPXL Holdings, 430 F.3d at 1384). Specifically, the instant claims recite the step of the mounting different sample holders during different time periods. Further, this step language is not tied to structure in such a way that it would reasonably be considered functional language. As such, this limitation makes the claim indefinite because the step claim language makes it unclear whether infringement occurs when one creates the system that allows for the step, or whether infringement occurs when the step actually occurs.
Claim 19 is 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 19 states, “the cold finger of a first size installed within the vacuum pipe during a first time period; and a second cold finger of a second size installed within the vacuum pipe during a second time period in replacement of the cold finger, the second size exceeding the first size.” The claim recites an apparatus and a method of its use in the same claim. In IPXL Holdings, L.L.C. v. Amazon.com, Inc., the court held that a single claim covering both an apparatus and a method of use of that apparatus is indefinite under section 112. 430 F.3d 1377 (Fed. Cir. 2005). Such claims are indefinite because claiming both an apparatus and method of using the apparatus within a single claim can make it "unclear whether infringement ... occurs when one creates a[n infringing] system, or whether infringement occurs when the user actually uses [the system in an infringing manner]." UltimatePointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 826 (Fed. Cir. 2016) (alteration in original) (quoting IPXL Holdings, 430 F.3d at 1384). Specifically, the instant claims recite the step of the installing different cold fingers during different time periods. Further, this step language is not tied to structure in such a way that it would reasonably be considered functional language. As such, this limitation makes the claim indefinite because the step claim language makes it unclear whether infringement occurs when one creates the system that allows for the step, or whether infringement occurs when the step actually occurs.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 6, 7, 12, 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0174798 A1 [Boguslavsky] in view of Han, Anpan, et al. "An ice lithography instrument." Review of Scientific Instruments 82.6 (2011) [hereinafter Han].
Regarding Claim 1:
Boguslavsky teaches a system comprising:
a housing configured to hold a vacuum (paras 10, 13 – vacuum chamber);
a primary assembly arranged within the housing and comprising (Fig. 20B about (1110):
a sample receiver (Fig. 20B (1110)) comprising:
a base section defining an upper surface (Fig. 20B (1112)); and
a sample holder rigidly mounted to the upper surface of the base section (Fig. 20B (1225)) and defining a grid receptacle configured to transiently receive and retain a sample grid preloaded with a sample specimen (paras 144-145);
a receiver platform (Fig. 20B structural element holding (1114, 1116), para 139):
defining a mounting surface configured to slidably receive and support the sample receiver (as shown in connection between (1114) and (1110) and described at para 139); and
comprising a set of fixed rails (para 139):
extending from the mounting surface (as shown in Fig. 20B (1114, 1116)); and
configured to retain the sample receiver against the mounting surface (para 139); and
a set of positioner stages flexibly coupled to the receiver platform and configured to drive the sample holder to a sequence of positions in order to locate the sample specimen in a target detection position intersecting an electron pathway of an electron emitter (para 139 – motors drive holder 1110 along rail. The rails’ associated structures area flexibly coupled to the platform and are the positioning stages thereof);
a cooling assembly (Fig. 18, para 140) comprising:
a storage vessel containing a volume of coolant (para 140 – dewar).
However, Boguslavsky fails to teach that the cooling assembly comprises:
a cold finger:
extending through a vacuum pipe configured to hold the cold finger under vacuum; and
defining a first end submerged in the volume of coolant and a second end, opposite the first end, arranged external the storage vessel; and
a cooling braid:
comprising a flexible, conductive material;
coupled to the cold finger and to the primary assembly; and
configured to communicate thermal energy from the primary assembly into the cold finger to cool the sample specimen, loaded within the grid receptacle, to temperatures within a target sample temperature range.
Han teaches a cooling assembly for charged particle irradiation (abstract) comprising
a storage vessel containing a volume of coolant (Fig. 1 (dewar));
a cold finger (Fig. 1 -copper rod in dewar):
extending through a vacuum pipe configured to hold the cold finger under vacuum (as shown in Fig. 1); and
defining a first end submerged in the volume of coolant and a second end, opposite the first end, arranged external the storage vessel (as shown in Fig. 1); and
a cooling braid (Fig. 1 – copper braid):
comprising a flexible, conductive material (Fig. 1 – copper braid is inherently somewhat flexible);
coupled to the cold finger and to the primary assembly (as shown in Fig. 1); and
configured to communicate thermal energy from the primary assembly into the cold finger to cool a sample specimen, loaded within the grid receptacle, to temperatures within a target sample temperature range (as described in Section IIA second paragraph).
It would have been obvious to one of ordinary skill in the art before the effective time of filing to implement the above noted cooling arrangements of Han in Boguslavsky since this would allow the apparatus of Boguslavsky to effectively perform the ice lithography in addition to its other milling techniques.
Regarding Claim 6:
The above modified intention teaches the system of claim 1:
wherein the storage vessel contains the volume of coolant comprising a volume of liquid nitrogen (Boguslavsky para 140, Han Fig. 1);
wherein the cold finger comprises a copper rod (as shown in Han figure 1); and
wherein the cooling braid comprises a copper material and exhibits an elastic modulus less than a threshold elastic modulus at temperatures within the target sample temperature range (Han figure 1 – copper braid).
Regarding Claim 7:
The above modified intention teaches the system of claim 1, wherein the cooling braid:
is coupled to the primary assembly at a target contact region defining a contact area exceeding a threshold contact area (as shown in Han figure 2b-c); and
is configured to communicate thermal energy from the primary assembly at a target cooling rate corresponding to the contact area (all copper is so configured).
Regarding Claim 12:
The above modified intention teaches the system of claim 1, wherein the cooling braid:
comprises a solid copper wire configured to exhibit a target ductility over a target quantity of cooling cycles (the braid of Han is copper, and copper inherently has the above configuration); and
is configured to transiently decouple from the cold finger and the primary assembly for re-processing according to an annealing process, defining a target annealing temperature, responsive to execution of the target quantity of cooling cycles (the device is capable of disassembly by an operator, as least since the clamp by which the braid is attached to the rod may be unclamped).
Regarding Claim 15:
Boguslavsky teaches a system comprising:
a housing configured to hold a vacuum (paras 10, 13 – vacuum chamber);
an upper assembly arranged within the housing and comprising (Fig. 20B about (1110):
a sample receiver (Fig. 20B (1110)) comprising:
a base section defining an upper surface (Fig. 20B (1112)); and
a sample holder rigidly mounted to the upper surface of the base section (Fig. 20B (1225)) and defining a grid receptacle configured to transiently receive and retain a sample grid preloaded with a sample specimen (paras 144-145); and
a receiver platform (Fig. 20B structural element holding (1114, 1116), para 139)::
defining a mounting surface configured to slidably receive and support the sample receiver (as shown in connection between (1114) and (1110) and described at para 139);; and
comprising a set of fixed rails (para 139):
extending from the mounting surface (as shown in Fig. 20B (1114, 1116));; and
configured to retain the sample receiver against the mounting surface (para 139);
a lower assembly arranged within the housing and comprising a set of positioner stages flexibly coupled to the receiver platform and configured to drive the sample holder to a sequence of positions in order to locate the sample specimen in a target detection position intersecting an electron pathway of an electron emitter (para 139 – motors drive holder 1110 along rail. The rails’ associated structures are flexibly coupled to the platform and are the positioning stages thereof); and
a cooling assembly thermally-coupled to the upper assembly (Fig. 18, para 140) and comprising:
a storage vessel containing a volume of coolant (para 140 – dewar).
However, Boguslavsky fails to teach that the cooling assembly comprises:
a cold finger extending through a vacuum chamber and defining a first end submerged in the volume of coolant; and
a cooling braid:
comprising a flexible, conductive material;
defining a second end coupled the cold finger and a third end coupled to the upper assembly; and
configured to communicate thermal energy from the upper assembly into the cold finger to cool the sample specimen, loaded within the grid receptacle, to temperatures within a target sample temperature range.
Han teaches a cooling assembly for charged particle irradiation (abstract) comprising
a storage vessel containing a volume of coolant (Fig. 1 (dewar));
a cold finger (Fig. 1 -copper rod in dewar) extending through a vacuum pipe configured to hold the cold finger under vacuum (as shown in Fig. 1) and defining a first end submerged in the volume of coolant and a second end, opposite the first end, arranged external the storage vessel (as shown in Fig. 1); and
a cooling braid (Fig. 1 – copper braid):
comprising a flexible, conductive material (Fig. 1 – copper braid is inherently somewhat flexible);
defining a second end coupled the cold finger and a third end coupled to the upper assembly (as shown in Fig. 1); and
configured to communicate thermal energy from the assembly into the cold finger to cool a sample specimen, loaded within the grid receptacle, to temperatures within a target sample temperature range (as described in Section IIA second paragraph).
It would have been obvious to one of ordinary skill in the art before the effective time of filing to implement the above noted cooling arrangements of Han in Boguslavsky since this would allow the apparatus of Boguslavsky to effectively perform the ice lithography in addition to its other milling techniques.
Regarding Claim 16:
The above modified intention teaches the system of claim 15, further comprising an insulator section:
interposed between the upper assembly and the lower assembly (Boguslavsky insulation discussed in paras 139-140 would be between the upper and lower assembly. Further, the cyrostage jacket of Han is insulated from the cryostage by Vespel pins, i.e., an insulator section between the upper and lower assemblies)
comprising a material exhibiting a conductivity less than a threshold conductivity; and
configured to thermally isolate the upper assembly from the lower assembly (Han - Vespel inherently has this property).
Regarding Claim 17:
The above modified intention teaches the system of claim 15:
wherein the receiver platform defines a mating surface of a first area (Han Figs. 2b-c);
wherein the third end of the cooling braid defines a flat surface of a second area contacting the mating surface to define a contact area, between the flat surface and the mating surface, exceeding a threshold contact area (Han Figs. 2b-c); and
wherein the cooling braid is configured to communicate thermal energy from the upper assembly into the cold finger to cool the sample specimen to temperatures within the target sample temperature range at a cooling rate corresponding to the contact area via contact between the flat surface and the mating surface (all copper is so configured).
Allowable Subject Matter
Claims 8-11 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 13 and 19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
