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Claims 7 and 8 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 February 24, 2026.
Applicant's election with traverse of Group I, claims 1-6, in the reply filed on February 24, 2026 is acknowledged. The traversal is on the ground(s) that the search for the both the method and apparatus would overlap and would not present a serious burden to examiner both inventions. This is not found persuasive because the search for the apparatus differs from the search for the method and the two inventions are shown to be divergent based on their different classifications.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1, 4-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schroeter (DE 20 2009 016 337 U1)
INDEPENDENT CLAIM 1:
Regarding claim 1, Schroeter teach a shield plate fabrication apparatus said shield plate fabrication apparatus comprising: a base plate holding shaft (8) for rotatably holding a base plate (7) and winding tape (5) around the base plate (7); and a tension mechanism (4) for applying tension to the tape (5) while it is being wound around the base plate (7). (See Figs. 1, 3; Paragraph [0005] - By unwinding the films from the roll 5 over the holding device 4 onto the plate 7 and repeatedly rotating the plate 7 radially around the rotatable receptacle 8, a multi-layered film is wound onto the plate 7. By moving the holding knob 9 in an axial direction from position 15 to position 16, the film is initially separated into a part from the roll 5. This process simultaneously creates several layers of film with twice the width (short side of plate 7) of the dimensions of the end section. By repeating the process using the second holding button 9, the foil sections are now separated into their final width.)
The limitation of “for fabricating a shield plate of a sample milling apparatus which mills a sample by shielding a part of the sample with the shield plate and irradiating the sample with a charged particle beam,” is viewed as intended use and not considered a limitation of the apparatus. (See MPEP 2111.02 – If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation"); Kropa v. Robie, 187 F.2d at 152, 88 USPQ2d at 480-81 (preamble is not a limitation where claim is directed to a product and the preamble merely recites a property inherent in an old product defined by the remainder of the claim)
DEPENDENT CLAIM 4:
Regarding claim 4, Schroeter teach an enclosure (3) provided with slots (in 3) for receiving said base plate holding shaft (8); and a shaft hold-down member for holding down said base plate holding shaft in such a way that a force opposite in direction to the tension applied to said tape by said tension mechanism is applied to the tape.(Inherent in Fig. 1 for example)
DEPENDENT CLAIM 5:
The difference not yet discussed is further comprising a base plate securing spring for pressing said base plate against said base plate holding shaft.
Regarding claim 5, Schroeter teach a base plate securing spring for pressing said base plate against said base plate holding shaft. (Fig. 1 – the spring clamp holding the plate 7)
DEPENDENT CLAIM 6:
Regarding claim 6, Schroeter teach a knob (9) for rotating the base plate holding shaft. (See Paragraph 0005; Fig. 1)
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.
Claim(s) 2, 3 are rejected under 35 U.S.C. 103 as being unpatentable over Schroeter (DE 20 2009 016 337 U1) in view of Colson (U.S. Pat. 4,450,027).
DEPENDENT CLAIM 2:
The difference not yet discussed is wherein said tension mechanism comprises: a sliding member to which one end of said tape is secured; and a spring connected to the sliding member and applying tension to the tape, and wherein the tape is wound around said base plate from around the other end of the tape by rotating said base plate holding shaft.
Regarding claim 2, Colson teaches a sliding member (93) to which one end of said tape is secured; and a spring connected to the sliding member and applying tension to the tape, and wherein the tape is wound around said base plate from around the other end of the tape by rotating said base plate holding shaft. (Fig. 1)
DEPENDENT CLAIM 3:
The difference not yet discussed is wherein said tension mechanism comprises an arm to which one end of said tape is secured, an arm securing shaft to which the arm is rotatably secured, and a spring for biasing the arm in a direction opposite to the direction of rotation of said base plate holding shaft when the tape is wound, and wherein the tape is wound around said base plate from around the other end of the tape by rotating the base plate holding shaft.
Regarding claim 3, Colson teach the tension mechanism comprises an arm (142) to which one end of said tape is secured, an arm securing shaft to which the arm is rotatably secured, and a spring (145/148) for biasing the arm in a direction opposite to the direction of rotation of said base plate holding shaft when the tape is wound, and wherein the tape is wound around said base plate from around the other end of the tape by rotating the base plate holding shaft. (Fig. 1)
The motivation for utilizing the features of Colson is that it allows for preventing wrinkles. (Column 2 line 15)
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified Schroeter by utilizing the features of Colson because it allows for preventing wrinkles.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODNEY GLENN MCDONALD whose telephone number is (571)272-1340. The examiner can normally be reached Hoteling: M-Th every Fri off.
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/RODNEY G MCDONALD/Primary Examiner, Art Unit 1794
RM
June 1, 2026
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