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 I in the reply filed on 2/19/26 is acknowledged. The traversal is on the ground(s) that there is no search burden, as all the claims are directed to an AFM operated in AC mode. This is not found persuasive. Applicant admits that the method claim is narrower than the apparatus claim. This in of itself demonstrates that there are different search requirements for the method and the apparatus. Since there are searches that are necessary for the method that are not necessary for the apparatus, there is an undue search burden in examining the claimed invnetions together.
The requirement is still deemed proper and is therefore made FINAL.
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 2, 4, 7, and 8 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 2 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 4 recites, “the lowest resonance frequency of the probe.” It is unclear if this recitation is referencing the claim 1 limitation “a resonance frequency of the probe,” or if it is something else. In particular, the use of the definite article “the” with the limitation raises questions as the antecedent basis of the limitation. As such, the claim is indefinite.
Claims 7 and 8 recite, “wherein at least one of the light pulses and extracted sample responses is gated during the probe-sample contact time” and “wherein the at least one of the light pulses and extracted sample responses is gated in every cycle of probe-sample interaction” respectively. 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 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 1-3 and 7-9 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 1:
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.
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. 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).
Regarding Claim 2:
The above modified invention teaches the apparatus of claim 1, 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 3:
The above modified invention teaches the apparatus of claim 1, wherein the at least one controller creates a spatially resolved map indicative of absorbed infrared radiation using the sample responses. Dazzi Fig. 6a-c, para 77.
However, the above modified invention fails to teach that the map is created over a region of the sample with at least 100×100 pixels in less than 5 minutes.
Both making the map larger (in pixels) or making the map faster are 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). It is well understood in the art that imaging a larger area is preferable to imaging a smaller area, since a larger area allows for greater analytical throughput. Further, it is well understood in the art that imaging quickly is preferable to imaging slowly, since faster imaging also allows for greater analytical throughput. Thus, both mapping size and speed achieve well understood and desirable results. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective time of filing to optimize speed and size of the map in Dazzi such that the map is created over a region of the sample with at least 100×100 pixels in less than 5 minutes. This is obvious because it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.
Regarding Claim 7:
The above modified invention teaches the apparatus of claim 1, wherein at least 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 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.
Regarding Claim 8:
The above modified invention teaches the apparatus of claim 7, wherein the at least one of the light pulses and extracted sample responses is gated in every cycle of probe-sample interaction. Hu paras 97, 98, 116.
Regarding Claim 9:
The above modified invention teaches the apparatus of claim 1, wherein the controller extracts at least one of a nano-mechanical property and a nano-electrical property from the sample responses. Dazzi Paras 22, 91, 93.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0011053 [Dazzi] in view of US 2010/0122385 A1 [Hu] as applied to claim 1, and further in view of US 2018/0052186 A1 [Su].
Regarding Claim 4:
The above modified invention teaches the apparatus of claim 1, but fails to teach that the oscillating drive signal frequency is at least 5× below the lowest resonance frequency of the probe.
Su also teaches a peak force tapping AFM (abstract), and suggests using a drive frequency at least 10x below the probe resonance frequency, i.e., the lowest resonance frequency of the probe (paras 34, 85). It would have been obvious to one of ordinary skill in the art before the effective time of filing to use the drive frequency ratio taught by Su in the device of Dazzi since this would allow for effective peak force tapping microscopy.
Allowable Subject Matter
Claims 5-6 are 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.
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
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