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 .
Response to Amendment
Applicant’s amendments, filed 09 September 2026, with respect to the claims have been entered. Claims 10-12 and 14-18 remain pending in the application.
Response to Arguments
Applicant’s arguments with respect to the rejections of the claims over Ogawa (2012) in view of Sed’a have been considered but are moot because the new ground of rejection does not rely on Ogawa (2012) or Sed’a to teach the second upper detector, forming an image by summing data, secondary electrons being pulled into a closer one of the objective lenses, or the potential applied to the second objective lens.
Applicant’s arguments, see pages 10-12, regarding the potential of the second objective lens, have been fully considered but are not persuasive.
The claim does not require that the guiding electric field divides the secondary electrons based on their emission angle; the limitation “wherein the secondary electrons are pulled into a closer one of the first objective lens and the second objective lens depending on an emission angle of the secondary electrons” does not include any recitation of the particular structure, material, or steps which causes the secondary electrons to be directed to a particular objective lens based on their emission angle.
Furthermore, features of an apparatus may be recited either structurally or functionally (In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997)), but “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)(emphasis in original)). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim (Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)), i.e., a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the case at hand, all pending claims are directed to an apparatus. The application of a particular voltage to the second objective lens with respect to the potential of the sample is a purely functional limitation. The prior art teaches all the structural elements of the limitation, i.e., a sample and an objective lens to which a voltage may be applied (see Claim Rejections - 35 USC § 103 below). Therefore, the limitation is met.
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 and 14-19 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.
When claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008). See also General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938) and United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234, 55 USPQ 381 (1942).
In this case, independent claim 10 recites the achieved result “the secondary electrons are pulled into a closer one of the first objective lens and the second objective lens depending on an emission angle of the secondary electrons” and the functional limitation “an image of the sample is formed by summing data of the secondary electrons detected by the first upper detector and data of the secondary electrons detected by the second upper detector” without reciting the particular structure that achieves the result/function. The result/function is not claimed to be performed by a particular structure; the recited result/function does not follow from any of the structures recited in the claim (e.g., the objective lenses, the detectors, or either of the first or second charged particle beam units). It is unclear whether the result is achieved/function is performed by some other structure, or is simply a result of operating the device in a particular manner; nor is it clear how the claimed device might be operated to achieve the claimed result/function. The boundaries of the claim scope are not sufficiently defined such that a person of ordinary skill in the art could draw a clear boundary between what is and is not covered by the claim; without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc). Therefore, the claim is indefinite. See MPEP 2173.05(g).
Furthermore, independent claim 10 recites limitations which are inconsistent with each other. Claim 10 recites a first limitation “the guiding electric field modifying a trajectory of the secondary electrons such that the secondary electrons are guided to the second upper detector through the second objective lens” (emphasis added); and claim 10 also recites a second limitation “the guiding electric field is generated…so that a portion of the secondary electrons is…detected by the second upper detector while a remaining portion of the secondary electrons is detected by the first upper detector” (emphasis added). The first limitation requires that the secondary electrons, as a whole, are guided to the second upper detector by the guiding electric field, while the second limitation requires that only a portion of the secondary electrons are guided to the second upper detector by the guiding electric field. The claim is indefinite because it is unclear whether the scope of the claim requires that i) all secondary electrons are guided to the second upper detector, or ii) only a portion of the secondary electrons are guided to the second upper detector.
Claims 11-12 and 14-18 are rejected because of their dependence on claim 10.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 10-11, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Imai et al. (U.S. Patent Application Publication No. 2018/0025885 A1), hereinafter Imai, in view of Frosien (U.S. Patent Application Publication No. 2006/0097184 A1), hereinafter Frosien.
Regarding claim 10, Imai discloses a charged particle beam apparatus (FIG. 1) comprising:
a stage (FIG. 1, element 10) on which a sample (FIG. 1, element 9) is placed;
a first charged particle beam unit (FIG. 1, element 1) comprising a charged particle source (FIG. 1, element 2), a first upper detector (FIG. 1, element 3), and a first objective lens (FIG. 1, elements 4, 5) configured to provide the sample with a charged particle beam of charged particles generated by the charged particle source (paragraph 0029) and induce secondary electrons generated from the sample to the first upper detector (paragraph 0029, signal electrons); and
a second charged particle beam unit (FIG. 1, element 6) comprising a second objective lens (paragraph 0060 discloses that focusing lens 8 is an objective lens) and a second upper detector (paragraph 0031),
wherein the first objective lens is configured to generate an intake electric field in a space between the first objective lens and the sample (paragraph 0041), the intake electric field pulling the secondary electrons into the first objective lens (paragraph 0043), and
wherein an image of the sample is formed (paragraph 0033).
Imai fails to disclose that the second upper detector is disposed above the second objective lens, wherein the second objective lens is configured to generate a guiding electric field in a space between the second objective lens and the sample, the guiding electric field modifying a trajectory of the secondary electrons such that the secondary electrons are guided to the second upper detector through the second objective lens, wherein the secondary electrons are pulled into a closer one of the first objective lens and the second objective lens depending on an emission angle of the secondary electrons, wherein the guiding electric field is generated by providing the second objective lens with a potential higher than a potential of the sample so that a portion of the secondary electrons is pulled into the second objective lens and detected by the second upper detector while a remaining portion of the secondary electrons is detected by the first upper detector, and wherein the image of the sample is formed by summing data of the secondary electrons detected by the first upper detector and data of the secondary electrons detected by the second upper detector.
However, Frosien discloses an upper detector (FIG. 2, element 29) disposed above an objective lens (paragraph 0005 discloses that an objective lens is referred to as a focusing lens; FIG. 2 shows detector 29 above focusing lens electrodes 17, 17a, 17b).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Imai to include an upper detector disposed above an objective lens, based on the teachings of Frosien that this arrangement detects secondary electrons with high detection efficiency (Frosien, paragraph 0047).
The limitations “the second objective lens is configured to generate a guiding electric field in a space between the second objective lens and the sample, the guiding electric field modifying a trajectory of the secondary electrons such that the secondary electrons are guided to the second upper detector through the second objective lens, wherein the secondary electrons are pulled into a closer one of the first objective lens and the second objective lens depending on an emission angle of the secondary electrons, wherein the guiding electric field is generated by providing the second objective lens with a potential higher than a potential of the sample so that a portion of the secondary electrons is pulled into the second objective lens and detected by the second upper detector while a remaining portion of the secondary electrons is detected by the first upper detector, and wherein an image of the sample is formed by summing data of the secondary electrons detected by the first upper detector and data of the secondary electrons detected by the second upper detector” are functional limitations. Features of an apparatus may be recited either structurally or functionally (In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997)), but “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)(emphasis in original)). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim (Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)), i.e., a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114.
In the case at hand, Frosien teaches the structural limitations of the second objective lens, i.e., the objective lens electrodes 17, 17a, 17b are capable of generating an electric field (paragraph 0047: voltages are applied to electrodes 17, 17a, 17b, which generates a focusing electric field as disclosed at paragraph 0041). Frosien further teaches the structural relationship between the second objective lens and the second upper detector (see, e.g., FIG. 2); secondary electrons emitted from sample 5 are guided to the second upper detector 29 through secondary objective lens electrodes 17, 17a, 17b.
The limitations “the secondary electrons are pulled into a closer one of the first objective lens and the second objective lens depending on an emission angle of the secondary electrons, wherein the guiding electric field is generated by providing the second objective lens with a potential higher than a potential of the sample so that a portion of the secondary electrons is pulled into the second objective lens and detected by the second upper detector while a remaining portion of the secondary electrons is detected by the first upper detector” are functional limitations which depend only on the strength of the electric field generated by applying different voltages to different structures in the apparatus, wherein every structure in the claimed apparatus is disclosed by Imai in view of Frosien as discussed supra.
The limitation “an image of the sample is formed by summing data of the secondary electrons detected by the first upper detector and data of the secondary electrons detected by the second upper detector” is a functional limitation which is not claimed to be performed by a particular structure. Imai teaches that an image of the sample is formed (paragraph 0033). Therefore, the limitations of the claim are met.
Regarding claim 11, Imai in view of Frosien as applied to claim 10 discloses the charged particle beam apparatus of claim 10.
The limitation “the guiding electric field is generated when the sample is tilted with respect to the first charged particle beam unit” is a functional limitation. Features of an apparatus may be recited either structurally or functionally (In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997)), but “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)(emphasis in original)). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim (Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)), i.e., a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the case at hand, Imai in view of Frosien teaches the structural limitations of the second objective lens which is capable of generating an electric field (see claim 10 supra) and a sample which is capable of being tilted (Imai, paragraph 0042). Therefore, the limitations of the claim are met.
Regarding claim 14, Imai in view of Frosien as applied to claim 10 discloses the charged particle beam apparatus of claim 10.
In addition, Frosien discloses that the second objective lens comprises a second upper electrode (FIG. 2, element 17a) and a second lower electrode (FIG. 2, element 17).
The limitation “the guiding electric field is generated by providing one or more of the second upper electrode and the second lower electrode with potential higher than the potential of the sample” is a functional limitation. Features of an apparatus may be recited either structurally or functionally (In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997)), but “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)(emphasis in original)). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim (Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)), i.e., a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the case at hand, Frosien teaches the structural limitations of the second objective lens, i.e., the second objective lens comprises a second upper electrode (FIG. 2, element 17a) and a second lower electrode (FIG. 2, element 17). Therefore, the structural and functional limitations of the claim are met.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Imai in view of Frosien to include that the second objective lens comprises a second upper electrode and a second lower electrode, based on the additional teachings of Frosien that these electrodes generate rotationally symmetric electric fields to focus the charged particle beam without undesirable distortions or bending of the beam (Frosien, paragraph 0040).
Regarding claim 16, Imai in view of Frosien as applied to claim 10 discloses the charged particle beam apparatus of claim 10.
In addition, Imai discloses that the first charged particle beam unit comprises a scanning electron microscope (paragraph 0029), and the second charged particle beam unit comprises one of a spectrometer and a focused ion beam system (paragraph 0030).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Imai in view of Frosien as applied to claim 10 above, and further in view of Sato (U.S. Patent No. 5,670,782 A), hereinafter Sato.
Regarding claim 12, Imai in view of Frosien as applied to claim 10 discloses the charged particle beam apparatus of claim 10.
In addition, Imai discloses a control processing part (FIG. 1, element 20) configured to control the first charged particle beam unit and the second charged particle beam unit (paragraph 0033).
Imai in view of Frosien fails to disclose a control processing part configured to control the stage, wherein the control processing part controls the strength of the guiding electric field depending on a tilt angle of the sample with respect to the first charged particle beam unit.
However, Sato discloses a control processing part configured to control the stage (column 3, lines 40-45),
wherein the control processing part controls the strength of the guiding electric field depending on a tilt angle of the sample with respect to the first charged particle beam unit (column 2, lines 30-40).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Imai in view of Frosien to include a control processing part configured to control the stage, wherein the control processing part controls the strength of the guiding electric field depending on a tilt angle of the sample with respect to the first charged particle beam unit, based on the teachings of Sato that this minimizes the effects of astigmatism and aberrations (Sato, column 2, lines 25-40).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Imai in view of Frosien as applied to claim 10 above, and further in view of Sed’a et al. (U.S. Patent Application Publication No. 2014/0361165 A1), hereinafter Sed’a.
Regarding claim 15, Imai in view of Frosien as applied to claim 10 discloses the charged particle beam apparatus of claim 10.
Imai in view of Frosien fails to disclose that the stage, the first objective lens, and the second objective lens are located in a single vacuum chamber.
However, Sed’a discloses that the stage (FIG. 1, element 105), the first objective lens (FIG. 1, element 116), and the second objective lens (FIG. 1, element 126) are located in a single vacuum chamber (FIG. 1, element 103).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Imai in view of Frosien to include that the stage, the first objective lens, and the second objective lens are located in a single vacuum chamber, based on the teachings of Sed’a that locating components within a single vacuum chamber advantageously reduces the cost and complexity of the apparatus by enabling operation with only a single pump controlled to achieve a singular evacuated pressure (Sed’a, paragraphs 0037, 0046, 0051).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Imai in view of Frosien as applied to claim 10 above, and further in view of Ogawa et al. (U.S. Patent Application Publication No. 2005/0184252 A1), hereinafter Ogawa (‘252).
Regarding claim 17, Imai in view of Frosien as applied to claim 10 discloses the charged particle beam apparatus of claim 10.
In addition, Imai discloses a control processing part (FIG. 1, element 20) configured to control the first charged particle beam unit and the second charged particle beam unit and to process detected signals (paragraph 0033).
Imai in view of Frosien fails to disclose a drive power source configured to drive the first charged particle beam unit and the second charged particle beam unit; and a user terminal configured to receive commands from a user.
However, Ogawa (‘252) discloses a drive power source configured to drive the first charged particle beam unit and the second charged particle beam unit (FIG. 1, drive power source 8, 9); and
a user terminal configured to receive commands from a user (paragraph 0034, lines 10-13).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Imai in view of Frosien to include a drive power source configured to drive the first charged particle beam unit and the second charged particle beam unit; and a user terminal configured to receive commands from a user, based on the teachings of Ogawa (‘252) that this enables flexibility in selection of different imaging conditions as may be desired (Ogawa (‘252), paragraph 0034).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Imai in view of Frosien as applied to claim 10 above, and further in view of Ogawa et al. (JP Patent No. 2005135611 A), hereinafter Ogawa (‘611) (English machine translation provided in a prior office action).
Regarding claim 18, Imai in view of Frosien as applied to claim 10 discloses the charged particle beam apparatus of claim 10.
Imai in view of Frosien fails to disclose that the guiding electric field is controlled according to the intensity of a signal detected by one or more of the first upper detector and the second upper detector.
However, Ogawa (‘611) discloses that the guiding electric field is controlled according to the intensity of a signal detected by one or more of the first upper detector and the second upper detector (page 5, paragraph 1, first and second upper detectors 1 and 2).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Imai in view of Frosien to include that the guiding electric field is controlled according to the intensity of a signal detected by one or more of the first upper detector and the second upper detector, based on the teachings of Ogawa (‘611) that this ensures secondary particles reach their respective detectors in order to maintain an accurate detection signal (Ogawa (‘611), page 4, last paragraph to page 5, first paragraph).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Frosien et al. (“High precision electron optical system for absolute and CD-measurements on large substrates”, 1995), hereinafter Frosien (1995), teaches a detector disposed above an objective lens, wherein secondary electrons are guided to the detector through the objective lens.
Onishi et al. (JP Patent No. H09274883 A), hereinafter Onishi (English machine translation provided), teaches a charged particle beam apparatus comprising: a sample; a first charged particle beam unit comprising a charged particle source and a first objective lens configured to provide the sample with a charged particle beam of charged particles generated by the charged particle source and induce secondary electrons generated from the sample to a first upper detector; and a second charged particle beam unit comprising a second objective lens and a second upper detector, wherein the second upper detector is disposed above the second objective lens, wherein the second objective lens is configured to generate a guiding electric field in a space between the second objective lens and the sample, the guiding electric field modifying a trajectory of the secondary electrons such that the secondary electrons are guided to the second upper detector through the second objective lens.
Ishitani et al. (U.S. Patent Application Publication No. 2006/0097166 A1), hereinafter Ishitani, teaches a charged particle beam apparatus comprising: a stage on which a sample is placed; a first charged particle beam unit, wherein the first charged particle beam unit is a scanning electron microscope, comprising a charged particle source, a first upper detector, and a first objective lens configured to provide the sample with a charged particle beam of charged particles generated by the charged particle source and induce secondary electrons generated from the sample to the first upper detector; and a second charged particle beam unit, wherein the second charged particle beam unit is a focused ion beam system, comprising a second objective lens.
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/A.K./Examiner, Art Unit 2881
/DAVID E SMITH/Examiner, Art Unit 2881
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