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 without traverse of invention I in the reply filed on 12/16/25 is acknowledged.
Claims 17-22 are directed to the unelected apparatus, and as such are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 10-12 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 10 recites, “wherein the subsequent sectional surface is non-adjacent to the previously imaged sectional surface.” It is unclear how to determine whether a given surface is “non-adjacent” to another surface. The samples at issue are literally under examination by electron microscopes. That is to say, the samples are small. In a very real sense, the sample is conceivably so small that everything therein is adjacent to everything else therein. This leaves one of ordinary skill in the art with numerous unanswered questions when determining if two surfaces are “non-adjacent.” For example, if a layer is milled away between two surfaces, are the surfaces adjacent? If multiple instances of milling were required to reach a second surface from a first surface, are the surfaces adjacent? Generally speaking, the applicant has failed to provide criteria for determining whether surfaces are “non-adjacent,” and, as such, the limitation becomes subjective. Since one of ordinary skill in the art cannot determine the metes and bounds of “non-adjacent” surfaces, the claims at issue are rejected for being indefinite.
Claim 12 recites, “a transverse coordinate associated with the identified edge in the previously imaged sectional surface” Claim 11, upon which claim 12 depends, recites two separate identified edges. As such, it is unclear which of the edges is referred to by the claim 12 recitation of “the identified edge” and there is insufficient antecedent basis for this limitation in the claim. Accordingly, the claim is rejected for being indefinite.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 5, 10, 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2022/0207698 A1 [Zhong].
Regarding Claim 1:
Zhong discloses a method, comprising:
with a processor (para 23), identifying a boundary of a sample in an initial sectional surface of the sample (Fig. 2 (204) – determining an ROI in a sample includes identifying the boundaries of said ROI);
milling the sample based on the identified boundary to reveal a subsequent sectional surface (Fig. 2 (210)); and
obtaining a charged particle beam (CPB) image of at least a portion of the subsequent sectional surface (Fig. 2 (210), para 33).
Regarding Claim 2:
Zhong discloses the method of claim 1, wherein the identified boundary of the sample in the initial sectional surface of the sample is obtained based on an image of the initial sectional surface. Para 29.
Regarding Claim 5:
Zhong discloses the method of claim 1, further comprising repetitively:
with the processor (para 23), identifying an edge of a previously imaged sectional surface (Fig. 2 (206) after first iteration. Locating the fiducial is an identification of an edge of the previously imaged surface);
milling the sample based on the identified edge of the previously imaged sectional surface to reveal a subsequent sectional surface (Fig. 2 (210)); and
obtaining a CPB image of the subsequent sectional surface (Fig. 2 (210), para 33).
Regarding Claim 10:
Zhong discloses the method of claim 1, further comprising repetitively:
with the processor (para 23), identifying an edge of a previously imaged sectional surface (Fig. 2 (206) after first iteration. Locating the fiducial is an identification of an edge of the previously imaged surface);
milling the sample based on the identified edge of the previously imaged sectional surface to reveal a subsequent sectional surface, wherein the subsequent sectional surface is non-adjacent to the previously imaged sectional surface (see Fig. 4, wherein the milling reveal surface (403), and (403) is not adjacent to (402). While the milling to reach (403) was in direct response to measurements from the sample layer (420) directly above it, the milling was based, via iterative process, on the image sectional surface (402)) ; and
obtaining a CPB image of the subsequent sectional surface (Fig. 2 (210), para 33).
Regarding Claim 13:
Zhong discloses the method of claim 1, wherein at least a portion of the sample boundary is associated with a sample support to which the sample is secured. Fig. 1 (7). The boundary is associated with sample support (7) at least by way of the sample support placing the sample at a particular position with respect to the FIB and SEM columns.
Regarding Claim 14:
Zhong discloses the method of claim 1, wherein at least a portion of the sample boundary is associated with a coating applied to the sample. The fiducials formed on the sample are coatings applied to the sample, and these fiducials are associated with the sample boundary as depth markers thereof.
Regarding Claim 15:
Zhong discloses the method of claim 2, wherein the milling is ion beam milling and the CPB image is an SEM image. Para 33.
Regarding Claim 16:
Zhong discloses the method of claim 10, further comprising combining the CPB images of the sectional surfaces to produce a three-dimensional image. Paras 36-37.
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 3-4 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Zhong in view of US 2022/0392793 A1 [Buxbaum].
Regarding Claim 3:
Zhong teaches the method of claim 1, but fails to teach that the identifying the boundary includes identifying at least one edge in the image of the initial sectional surface of the sample, wherein the sample is milled to a selected depth based on the identified at least one edge.
Buxbaum describes a FIB-SEM dual beam system like both the instant invention and Zhong. Abstract. Buxbaum teaches identifying boundaries in a sample by identifying at least one edge in the image of the initial sectional surface of the sample (para 124), wherein the sample is milled to a selected depth based on the identified at least one edge (para 125). It would have been obvious to one of ordinary skill in the art before the effective time of filing to use the above noted edge detection of Buxbaum in the boundary identification of Zhong. One would have been motivated to do so since this would allow for high precision determination of lateral positions in the sample.
Regarding Claim 4:
Zhong teaches the method of claim 1, but fails to specify that the identifying the boundary includes identifying a sample perimeter in the image of the initial sectional surface of the sample and the sample is milled to a selected depth based on the sample perimeter.
Buxbaum describes a FIB-SEM dual beam system like both the instant invention and Zhong. Abstract. Buxbaum teaches identifying boundaries in a sample by edge detection, i.e., identification of a sample perimeter, in the image of the initial sectional surface of the sample (para 124), wherein the sample is milled to a selected depth based on the sample perimeter (para 125). It would have been obvious to one of ordinary skill in the art before the effective time of filing to use the above noted perimeter identification of Buxbaum in the boundary identification of Zhong. One would have been motivated to do so since this would allow for high precision determination of lateral positions in the sample.
Regarding Claim 11:
Zhong teaches the method of claim 10, wherein the identifying the boundary includes identifying a first edge and a second edge in the image of the initial sectional surface of the sample, wherein the sample is milled to a selected depth between the first edge and the second edge.
Buxbaum describes a FIB-SEM dual beam system like both the instant invention and Zhong. Abstract. Buxbaum teaches identifying boundaries in a sample by identifying edges in the cross-sectional plane of the image of the initial sectional surface of the sample (para 124), and further describes milling to a selected depth at a position between the first edge and the second edge (para 125). It would have been obvious to one of ordinary skill in the art before the effective time of filing to use the above noted edge detection of Buxbaum in the boundary identification of Zhong. One would have been motivated to do so since this would allow for high precision determination of lateral positions in the sample.
Regarding Claim 12:
The modified invention of claim teaches the method of claim 11, wherein the selected depth is a function of a transverse coordinate associated with the identified edge in the previously imaged sectional surface. Buxbaum Paras 124-125.
Claims 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Zhong in view of US 2017/0011885 A1 [Lechner].
Regarding Claim 6:
Zhong teaches the method of claim 5, but fails to specify that for a plurality of subsequent millings of the sample based on the identified edge of the previously imaged sectional surface, the sample is milled with a fixed dose.
Optimizing milling dose is well within the bounds of normal experimentation. See MPEP 2144.05 II (A). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, “[a] particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.” In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In the case at hand, Lechner teaches that milling doses for excavating a particular cross-section should be determined based on a desired depth (Para 54) and that particular fixed or varied doses can be used to achieve various milling goals (Paras 67-74). As such, Lechner identifies milling dose as a variable which achieves a recognized result, i.e., improving quality of milling to a prescribed depth. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective time of filing to optimize Zhong to use a fixed dose in at least part of the subsequent millings since it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.
Regarding Claim 7:
The modified invention of claim 6 teaches the method of claim 6, wherein the fixed dose is selected based on a cutface height associated with the previously imaged sectional surface. Cutface height is depth in the sample, and Lechner prescribes selecting milling doses based on depth. Lechner Paras 68, 72-74.
Regarding Claim 8:
Zhong teaches the method of claim 5, but fails to teach that for at least two of a plurality of millings of the sample based on the identified edge of the previously imaged sectional surface, the sample is milled with different doses.
Optimizing milling dose is well within the bounds of normal experimentation. See MPEP 2144.05 II (A). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Furthermore, “[a] particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation.” In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). In the case at hand, Lechner teaches that milling doses for excavating a particular cross-section should be determined based on a desired depth (Para 54) and that particular fixed or varied doses can be used to achieve various milling goals (Paras 67-74). As such, Lechner identifies milling dose as a variable which achieves a recognized result, i.e., improving quality of milling to a prescribed depth. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective time of filing to optimize Zhong to use a varied dose for at least two of a plurality of millings of the sample based on the identified edge thereof since it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.
Regarding Claim 9:
The modified invention of claim 8 teaches the method of claim 8, wherein the different doses are based on cutface heights associated with images of at least two previously obtained cutface surfaces. Cutface height is depth in the sample, and Lechner prescribes selecting milling doses based on depth. Lechner Paras 68, 72-74.
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