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 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, 5-10, 13-16, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0207698 A1 [Zhong] in view of US 2017/0011885 A1 [Lechner].
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) based on an image of the initial sectional surface (para 29);
selecting a milling dose to expose a subsequent sectional surface (each iteration of Fig. 2 (210-216), as described in paras 30-34, is the iterative selection of total milling dose);
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).
However, Zhong fails to teach that the method includes selecting a milling dose based on a cutface height between the boundary of the sample and a sample support.
Cutface height is depth in the sample from a boundary of the sample towards a sample support. Lechner prescribes selecting milling doses based on depth, i.e., cutface height. Lechner Paras 68, 72-74.
It would have been obvious to one of ordinary skill in the art before the effective time of filing to select milling doses based on the present depth of the sample, as is suggested by Lechner, in Zhong. One would have been motivated to do so since this would allow for controlled milling of the sample to a desired depth.
Regarding Claim 5:
The above modified invention teaches the method of claim 1, further comprising repetitively:
with the processor (Zhong para 23), identifying an edge of a previously imaged sectional surface (Zhong 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 (Zhong Fig. 2 (210)); and
obtaining a CPB image of the subsequent sectional surface (Zhong Fig. 2 (210), para 33).
Regarding Claim 6:
The above modified invention 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:
The above modified invention 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.
Regarding Claim 10:
The modified invention teaches the method of claim 1, further comprising repetitively:
with the processor (Zhong para 23), identifying an edge of a previously imaged sectional surface (Zhong 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 an additional subsequent sectional surface, wherein the additional subsequent sectional surface is separated from the previously imaged sectional surface by at least one intervening sectional surface (see Zhong Fig. 4, wherein the milling reveal surface (403), and (403) is separated from (402) by a number of intervening surface) ; and
obtaining a CPB image of the additional subsequent sectional surface (Zhong Fig. 2 (210), para 33).
Regarding Claim 13:
The modified invention teaches 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. Zhong 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:
The modified invention teaches 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 of Zhong are coatings applied to the sample, and these fiducials are associated with the sample boundary as depth markers thereof.
Regarding Claim 15:
The modified invention teaches the method of claim 2, wherein the milling is ion beam milling and the CPB image is an SEM image. Zhong Para 33.
Regarding Claim 16:
The modified invention teaches the method of claim 10, further comprising combining the CPB images of the sectional surfaces to produce a three-dimensional image. Zhong Paras 36-37.
Regarding Claim 23:
The modified invention teaches the method of claim 1, wherein the sample support is a stub. Zhong Fig. 1 (7).
Claims 3-4, 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Zhong in view of Lechner as applied above, and further in view of US 2022/0392793 A1 [Buxbaum].
Regarding Claim 3:
The above modified invention 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:
The above modified invention 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:
The above modified invention 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 above modified invention 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.
Response to Arguments
Applicant’s amendments to claim 10 have obviated those issues which necessitated an indefiniteness rejection thereof. The 35 USC 112(b) rejection of claim 10 is withdrawn.
Applicant arguments with respect to claim 12 are persuasive. The 35 USC 112(b) rejection of claim 12 is withdrawn.
Applicant offers no arguments as to how or why the amended claim 1 is patentable over Zhong in view of Lechner.
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 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
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