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
Claims 27-31 are directed to a method corresponding to invention II, described in the restriction requirement of 12/19/25 and non-elected with traverse in the reply filed on 2/19/26.
Claims 27-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/19/26.
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 23-26 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 24 recites, “wherein… the sample responses are phase sensitive, and wherein the phase sensitive sample responses are averaged.” It is unclear what component of the claimed apparatus, if any, is to perform the claimed averaging step. Further, if the step is not affiliated with a part of the apparatus, then the claim is 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. As such, the claim is indefinite.
Claim 23 recites, “wherein at least one of the light pulses and extracted sample responses is gated during the probe-sample contact time.” It is unclear what component of the claimed apparatus, if any, is to perform the claimed gating step. Further, if the step is not affiliated with a part of the apparatus, then the claim is 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. As such, the claim is indefinite.
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 23, 24, 26 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0011053 [Dazzi] in view of US 2010/0122385 A1 [Hu].
Regarding Claim 23:
Dazzi teaches an apparatus of performing spectroscopy of sub-micron regions of a sample with an atomic force microscope (AFM) (abstract), the apparatus comprising:
a drive that generates an oscillating drive signal to cause a probe of the AFM to interact with the sample for multiple probe-sample interaction cycles (Fig. 2a (112, 110) are the driving actuator and oscillator), so as to produce a transient probe-sample interaction force (para 29), wherein the oscillating drive signal has a frequency near a resonance frequency of the probe (paras 58, 69);
at least one controller to control the transient probe-sample interaction force (Fig. 2a (112));
a tunable light source to illuminate the tip-sample region with light pulses to induce a sample modification (Fig. 2a (100), paras 66, 67, 72);
a detector to measure probe deflection due at least in part to the induced sample modification (Fig. 2a (118)); and
at least one of a lock-in amplifier and a signal integrator to extract sample responses to the light pulses from the measured probe deflection (paras 37, 40).
However, Dazzi does not specifically teach that the oscillating drive signal has a frequency lower than the resonance frequency of the probe, or that at least one of the light pulses and extracted sample responses is gated during the probe-sample contact time.
Hu teaches a peak force tapping mode wherein the drive signal is less than the resonance frequency of the probe (Fig. 6, paras 91, 92, 95) and that one of the light pulses and extracted sample responses is gated during the probe-sample contact time. Hu paras 97, 98, 116. It would have been obvious to one of ordinary skill in the art before the effective time of filing to operate Dazzi using the above noted peak force tapping mode of Hu, such that the oscillating drive signal has a frequency lower than the resonance frequency of the probe. One would have been motivated to do so since Dazzi suggests using a peak force tapping mode (Dazzi para 29) and since it would substantially eliminate cantilever delay due to transient resonance response (Hu para 91). Further, tt would have been obvious to one of ordinary skill in the art before the effective time of filing to add the signal gating of Hu to the above modified invention in order to improve the signal to noise of the detection. Hu paras 97, 98, 116.
wherein at least one.
Regarding Claim 24:
The above modified invention teaches the apparatus of claim 23, wherein the at least one of a lock-in amplifier and a signal integrator is a lock-in amplifier, and the sample responses are phase sensitive, and wherein the phase sensitive sample responses are averaged. Hu para 102. Dazzi para 40.
Regarding Claim 26:
The above modified invention teaches the apparatus of claim 23, wherein the at least one of a lock-in amplifier and a signal integrator to extract sample responses. Dazzi paras 37, 40.
Response to Arguments
Applicant’s arguments and amendments, filed 8/3/26, with respect to claim 1 have been fully considered and are persuasive. The rejection of claim 1 has been withdrawn.
With respect to claim 23, applicant asserts that Hu “has no regard for performing IR spectroscopy” such as are performed in the instant application and Dazzi, and instead focuses on mechanical feedback control. Applicant argues that owing to these differences from the instant application and Dazzi, it would not have been obvious to combine Hu with Dazzi. This is not persuasive. The light pulses at issue include sample modification. Dazzi specifies that its invention is combination of contact mode AFM with sample modification, Abstract, claim 5, para 29, etc. One of the specified contact modes is Peakforce® tapping. Para 29. Hu describes Peakforce® tapping. Abstract. One of ordinary skill in the art would naturally look to Hu when practicing Dazzi, at least since Dazzi effectively suggests as much.
Allowable Subject Matter
Claims 1-9 are allowed.
Claim 25 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
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
