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 Arguments
Applicant's arguments filed 2/25/2026 have been fully considered but they are not persuasive.
Applicant traverses the rejection of claims 1-15 under 35 USC § 101 on the grounds that the added step of processing with an FIB to the method of claim 1 overcomes the previously applied rejection. The applicant argues that the reasons for the allowance of claim 16 similarly apply to claim 1. Claim 1 does not require the particulars pointed out by the Examiner in the prior action. Claim 1 merely requires the abstract idea previously pointed out, and the additional processing step which constitutes post solution activity. The recitation of processing with an FIB following the preceding abstract idea is so generic and the processing step so broad and conventional within the art, as noted in the prior art of record, that one could not construe the added processing step to claim 1 as a practical application. The reasons for the allowance of claim 16 do not apply to claim 1 because their respective scopes differ significantly. The rejection of claims under 35 USC 101 is maintained, any modification to the rejection below is necessitated by the Applicant’s amendment.
Claims 16-20 stand allowable for the reasons previously made of record.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) the judicial exception of mathematical calculation and/or mental process.
Regarding claim 1, the claim is directed to a method consisting of two steps, a producing step and an identifying step where values are produced and a preferred axis is identified. The step of producing particular projected values is either of a mental process and/or mathematical calculation, the latter being particularly true when executed on a controller. The particulars of both steps revealed in the disclosure indicates that the underlying process for producing projected values requires collecting, organizing, analyzing, and classifying information of particular content. Note the disclosure at [089-0130]. For example, the production of projected sample characterization values may include imaging a sample (Fig. 7, 722) and processing the sample (Fig. 7, 724), where imaging a sample is conventional in SEM, TEM, and FIB analysis systems. The processing discussed in the disclosure includes mapping and mathematical calculation steps (projecting image data, mapping data, and, dividing image data, Note [0121]). This processing step represents mathematical transformation, i.e. calculation in these cases. Further, the first step may comprising information comparison [0111]. The second step of claim 1 is similarly drawn to a mental process and/or mathematical calculation. For example, the identifying step requires production of uniformity metrics which is disclosed as being, “As discussed above, when calculated as a difference between maximum and minimum projected sample characterization values, the uniformity metric may be understood as representing an expected thickness (or variability of thickness) of the sample specimen upon milling along the corresponding processing axis.”, Note [0137] thus the identifying step necessitates pure mathematical calculation, or as a mental process where the identifying step requires selecting a “preferred” uniformity metric using for example, comparison of values or mathematical calculation [0142-0145]. Thus claim 1 recites two steps which recite nothing more that the abstract idea itself, the collection, analysis, organization, and comparison of information of particular content, or mathematical calculation. The addition to claim 1 of the processing of a lamella using the above abstract idea is mere post solution activity. The processing of a lamella along a desired axis is convention as indicated in the prior art of record.
This judicial exception is not integrated into a practical application because only the abstract ideas themselves are recited. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the underlying technology required to practice the claimed invention is old. Charged particle imaging, image analysis tool, computers as calculation devices or controllers are all conventionally practiced in the art and the claim indicates that these elements are mere data gathering elements or tools on which the abstract ideas are intended to be practiced. There is no improvement to the underlying technology itself.
Regarding claim 2, the claim is directed to a mathematical calculation, the planar representation transform claimed along with the associated claimed mapping and the projection of values along axes of such a planar representation. In addition to a mathematical calculation, the mapping of information of particular content may be considered the collection, organization, classification, and analysis of such information. Hence, for substantially the rationale above, the claim similarly recites the aforementioned judicial exceptions of mathematical calculation and/or mental process. As above the reasons the claim does not integrate into a practical application or present significantly more are also applicable.
Regarding claim 3, the claim defines the information content of the recited values and is rejected for the same reasons above. Merely reciting the content of information on which an abstract idea operates does not transform the abstract idea into eligible subject matter.
Regarding claims 4-7 and 9-14, the claims are directed to substantially similar abstract ideas as those presented above. Producing values via mathematical calculation, transforming or projecting information via mathematical transform or calculation, or the identification of particular values via mathematical calculation or mental process where information is collected, organized, analyzed via comparison. The rational applicable to claim 1 is similarly applicable to claims 4-7 and 9-14.
Regarding claim 8, the claim states producing a sample image comprises either capturing a micrograph and/or retrieving an image from a storage medium which was previously captured. Accessing stored information, i.e. retrieving image data from a conventional computer system such as the disclosed computer is conventionally practiced, as is capturing a micrograph of a sample in the broader field. Therefore, the claim recites the use of conventional means for providing the information the abstract idea above operates upon. As a result, there is no technological improvement claimed, merely the use of old technology as a tool.
Regarding claim 15, the claim requires the identifying step be defined by the correlation of a uniformity metric minimum to the identified axis. This, as with the above, describes the comparison of information of a particular content to a mathematical calculation result. As with the rationale applied to claim 11 above.
Allowable Subject Matter
Claims 16-20 allowed.
The following is an examiner’s statement of reasons for allowance:
The prior art fails to teach or fairly suggest a method comprising: extracting a sample specimen from a bulk sample positioned within a chamber of a charged particle microscope (CPM) system; imaging the sample specimen to produce a sample image representing a surface plane of the sample specimen; producing a set of projected sample characterization values associated with each of a plurality of sample tilt angles, each projected sample characterization value representing features of the sample image projected along a processing axis corresponding to the sample tilt angle; identifying a preferred sample tilt angle among the plurality of sample tilt angles; rotating the sample specimen to an orientation corresponding to the sample tilt angle; and processing, with a focused ion beam (FIB) system of the CPM system, the sample specimen to produce a lamella as recited in claim 16 and similarly recited in claim 19 in apparatus form.
Contrasted with claims 1-15, claims 16 and 19 employ the result to effect rotation of a sample specimen to a particular axial arrangement in a specific apparatus (The FIB of 16 and 19) to cause the production of lamella in the sample when processed. Since claims 16 and 19 so implement the result in the manner recited, one could interpret these further limitation as an integration into a practical application of the result of abstract idea of claims 1-15. Therefore, claims 16-20 recite the practical application of claims 1-15, generally speaking, and as a result, obviate the application of 35 USC 101. No prior art being applicable to the claims, claims 16-20 are allowable over the prior art.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
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 DAVID A VANORE whose telephone number is (571)272-2483. The examiner can normally be reached Monday to Friday 7AM to 6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Georgia EPPS can be reached at (571) 272-2328. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID A. VANORE
Primary Examiner
Art Unit 2881
/DAVID A VANORE/Primary Examiner, Art Unit 2878