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 17 August 2026, with respect to the claims have been entered. Claims 1, 3, 6-8, 10, 12-15, 18, 21-22, 26-32, and 37-39 remain pending in the application.
Response to Arguments
Applicant’s arguments, see pages 8, 10, and 12, filed 17 August 2026, that Oleshko et al. (“Chapter Three - Electron Tweezers as a Tool for High-Precision Manipulation of Nanoobjects”, 2013), hereinafter Oleshko (2013), fails to teach the rotational mechanism recited in amended claim 1, have been fully considered but are moot because the new ground of rejection does not rely on Oleshko (2013) to teach the rotational mechanism recited in amended claim 1.
Applicant’s arguments, see pages 8-9 and 11-12, that Chen in view of Zheng fails to teach the neck region configured to apply a gradient force in the vertical direction, have been fully considered but are not persuasive. The instant specification discloses that “in the neck region formed by cross-over of the electron beam, the electron beam has a higher dose rate” (page 15, lines 4-5). Chen discloses that a shape of the charged particle beam probe or the probe scanning region in a vertical direction comprises a neck region (FIG. 1, converged e-beam), wherein the neck region has a higher dose rate (page 31653, column 1, paragraph beginning “Finally…”: “[t]he current density of the unconverged e-beam is at least three orders of magnitudes less than that of converged e-beam”), and wherein the neck region is configured to apply a gradient force (FIG. 1C: the particle is attracted to the converged e-beam). Chen fails to disclose only that the neck region applies a gradient force in the vertical direction. Zheng discloses a neck region configured to apply a force (abstract, last sentence: converging the beam causes motion of the nanoparticles), and that a decreased beam diameter, resulting in increased electron beam flux, exerts a greater force on the particles (page 5646, column 2, last paragraph, lines 1-7). Zheng further discloses that the charged particle beam probe is configured to apply a force in the vertical direction (page 5645, column 2, paragraph below FIG. 2, lines 14-17; FIG. 1A and page 5645, column 2, further show vertical motion of the nanoparticle). Zheng discloses at page 5645, paragraph spanning the bottom of column 1 to the top of column 2 that the global movements of the nanoparticle follow the movements of the beam (“a gold nanoparticle trapped inside the beam and its global movements following the movements of the beam”, emphasis added). “Global” movement is three-dimensional movement, which includes a vertical component. Therefore, global movement of the nanoparticle requires vertical movement, and because the nanoparticle follows the movement of the beam, moving the beam in a vertical direction is inherently required to obtain said global movement. The combined teachings of Chen and Zheng show that a neck region configured to apply a force and a charged particle beam probe configured to apply a force in the vertical direction are known in the art.
Applicant’s arguments, see pages 9-10 and 12, with respect to Verbeeck 2013 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to applicant’s arguments, see pages 10 and 12, that none of the cited art addresses the problem addressed by the invention, the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (MPEP § 2144 (IV)). In this case, the global (i.e., three-dimensional) movement of the particle disclosed in Zheng, as well as the rotational movement of the particle disclosed in Oleshko et al. (“Are electron tweezers possible?”, 2011), hereinafter Oleshko (2011), provides greater control and precision in nanoparticle manipulation (see, e.g., Zheng, page 5647, column 1, lines 7-16, and Oleshko (2011), page 1605, Conclusions, paragraph 1).
rejections under 35 U.S.C. 103 require that a reference is analogous art to the claimed invention, wherein the reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). In this case, the applied references are from the same field of endeavor as the claimed invention, i.e., electric manipulation of particles.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to combine the references is found in the references themselves, as cited below (see Claim Rejections - 35 USC § 103).
In response to applicant’s arguments, see page 12, that Chen fails to teach object manipulation in a fluid medium, Chen discloses at page 31652, column 2, last 3 lines, that “A liquid cell…was employed as a specimen holder and the manipulation platform” (emphasis added).
Claim Interpretation
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
This application includes a claim limitation that does not use the word “means,” but is nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. The relevant claim limitation is: “an adjustment device, configured to adjust the charged particle beam” in claim 26.
The corresponding structure in the disclosure for performing the claimed adjustment is: one or more electromagnetic lenses (page 3) such as condenser lenses (page 18), one or more diaphragms (page 3), a vortex beam device configured to generate a charged particle beam carrying orbital angular momentum (page 3), or a scanning coil (page 7).
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3, 6-8, 10, 12-15, 18, 21-22, and 37-39 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a natural phenomenon without significantly more. The claims recite a method for manipulating an object using a gradient force resulting from a non-uniform charge distribution generated by a charged particle beam. Generating a force to move an object using charged particles is a natural phenomenon. For example, the Earth emits electromagnetic thermal radiation, or “terrestrial radiation” (“Outgoing longwave radiation”, Wikipedia, The Free Encyclopedia), which inherently exerts an electromagnetic force (“Thermal radiation: Applications: Spacecraft”, Wikipedia, The Free Encyclopedia); the electromagnetic force is one of the four known basic forces in the universe (“electromagnetic force”, Britannica Concise Encyclopedia). The motion of a charged particle beam and the generation of a non-uniform charge distribution is similarly a natural phenomenon in which charged particles exert an electromagnetic force on each other, causing charged particles to move within a given volume to result in a non-uniform distribution of said charged particles (“Charge density”, Wikipedia, The Free Encyclopedia).
This judicial exception is not integrated into a practical application because there is no claimed application of the method; the claim recites a generic manipulation of an object with no indication of where or when this manipulation may be used or applied. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claimed fluid medium merely limits the claim to a particular environment. “[L]imitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.” (MPEP 2106.05(h)).
Furthermore, the dependent claims do not integrate the judicial exception into a practical application, nor do the dependent claims include additional elements that are sufficient to amount to significantly more than the judicial exception.
Regarding claim 3, causing an object to be charged through interaction with charged particles is a natural phenomenon, such as the triboelectric effect (“Triboelectric effect”, Wikipedia, The Free Encyclopedia), and the Coulomb force is similarly a natural phenomenon (“Coulomb force”, Britannica Concise Encyclopedia).
Regarding claims 6-7, the recited electron beam or vortex beam only serves to link the judicial exception to a particular technological environment. A claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981).
Regarding claims 8 and 10, a non-uniform charge distribution generated by a charged particle beam is a natural phenomenon; charged particles exert an electromagnetic force on each other, causing charged particles to move within a given volume to result in a non-uniform distribution of said charged particles (“Charge density”, Wikipedia, The Free Encyclopedia).
The additional limitations of dependent claims 12-15, 18, 21-22, and 38-39 ultimately do not amount to more than exerting a force on an object using charged particles. As discussed supra, this is a natural phenomenon.
Claim 37 contains no additional elements beyond duplicating the elements recited in claim 1.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 7 and 31-32 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 1, upon which claim 7 depends, recites the limitation “rotating the tiny object by adjusting an angle of a charged particle beam probe or probe scanning region relative to the tiny object.” Claim 7 recites the limitation “wherein the charged particle beam is a vortex beam.” Similarly, independent claim 26, upon which claim 31 depends, recites the limitation “adjust an angle of a charged particle beam probe or probe scanning region relative to the tiny object to rotate the tiny object”, and claim 31 recites the limitation “the adjustment device comprises a vortex beam device is configured to generate a charged particle beam carrying orbital angular momentum.”
There is no disclosure in the specification of a vortex beam rotating the tiny object by adjusting an angle of the probe or probe scanning region generated by the vortex beam relative to the tiny object. The only disclosure of rotating the tiny object using an electron vortex beam is through the electron vortex beam transferring angular momentum to the tiny object (see, e.g., page 17, FIG. 10C). Therefore, claims 7 and 31 fail to comply with the written description requirement under 35 U.S.C. 112(a). MPEP 2163 (I) (B) recites “the written description requirement prevents an applicant from claiming subject matter that was not adequately described in the specification as filed. New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971)”.
Here, the vortex beams were only supported for the option “rotating the tiny object through an angular moment transfer of a charged particle beam probe to the tiny object” previously claimed and now cancelled. As evident from figures 5 and 10C, the vortex beam does not adjust angular position relative to the tiny object. Instead only the electron beam disclosed to be a planar wave or spherical wave (paragraph 0080 of the published application) is disclosed to suggest such angular adjustment relative to the tiny object (see figures 10A-10B). Paragraphs 0081 and 0105 of the instant published application is evidence that no angular adjustment between the tiny object and the probe occurs when using a EVB as a probe therefore, by amendment, claims 7 and 31 fails to meet the written description requirement under 35 USC § 112(a).
Claim 32 is rejected because of its dependence on claim 31.
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 1, 3, 6-8, 10, 12-15, 18, 21-22, 26-32, and 37-39 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 1 recites achieved results, such as “providing one or more charged particle beams”; “forming a non-uniform charge distribution in a fluid medium”; “adjusting a vertical position of a charged particle beam probe or probe scanning region”; and “adjusting an angle of a charged particle beam probe or probe scanning region relative to the tiny object” without reciting the particular structure, materials, or steps that achieve the result. The boundaries of the claim scope are unclear; 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).
Similarly, claim 3 recites the achieved result “the charged particle beam causes the tiny object to be charged”; claim 10 recites the achieved result “the charged particle beam scan[s] a region of the fluid medium”; claim 18 recites the achieved result “the gradient force is used for capturing the tiny object”; claim 21 recites the achieved results “changing…a dose rate of the charged particle beam, the shape of a charged particle beam…and the position of a charged particle beam”; claim 22 recites the achieved result “adjusting a horizontal position of a charged particle beam”; and claim 38 recites the achieved result “controlling the plurality of gradient forces to change a motion state of the tiny object.” None of the above listed dependent claims recite a particular structure, material, or steps to accomplish the achieved results.
Furthermore, independent claim 26 recites the functional limitation “the charged particle beam is adjusted to form a non-uniform charge distribution in the fluid medium within the fluid chamber, such that a gradient force is applied to the tiny object” without reciting the particular structure that achieves the result. This function is not claimed to be performed by a particular structure; the recited function does not follow from any of the structures recited in the claim (i.e., the charged particle guns, adjustment device, and fluid medium chamber). It is unclear whether the function is performed by some other structure, or is simply a result of operating the device in a particular manner. 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).
Claims 1 and 26 are further rejected under 35 U.S.C. 112(b) because it is not clear if the claimed “charged particle beam probe or probe scanning region” is provided by the claimed “one or more charged particle beams” or if the probe or probe scanning region requires a separate probe beam which is distinct from the one or more charged particle beams. For the purpose of compact prosecution, the Examiner has interpreted the “charged particle beam probe or probe scanning region” to be a portion of the claimed “one or more charged particle beams” in accordance with the instant specification at page 7 (“As defined herein, a “probe” refers to a portion of the charged particle beam approaching a target region”).
Claims 3, 6-8, 10, 12-15, 18, 21-22, and 37-39 are rejected because of their dependence on claim 1. Claims 27-32 are rejected because of their dependence on claim 26.
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 1, 3, 6, 8, 10, 12, 15, 18, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (“Electron beam manipulation of gold nanoparticles external to the beam”, 2014), hereinafter Chen, in view of Zheng et al. (“Electron Beam Manipulation of Nanoparticles”, 2012), hereinafter Zheng, and Oleshko et al. (“Are electron tweezers possible?”, 2011), hereinafter Oleshko (2011).
Regarding claim 1, Chen discloses a method for manipulating a tiny object (page 31652, ‘Introduction’ paragraph 1), comprising:
providing one or more charged particle beams (page 31652, ‘Introduction’ last paragraph);
forming a non-uniform charge distribution in a fluid medium (page 31655, ‘Discussion of e-beam manipulation mechanism’ last paragraph, lines 3-6; and page 31652, column 2, last 3 lines); and
applying, to a tiny object, a gradient force formed by the non-uniform charge distribution (page 31655, column 1, last paragraph),
wherein a shape of a charged particle beam probe or probe scanning region in a vertical direction comprises a neck region (FIG. 1) configured to apply a gradient force (FIG. 1C).
Chen fails to disclose adjusting a height of the tiny object by adjusting a vertical position of a charged particle beam probe or probe scanning region, wherein the neck region is configured to apply a gradient force in the vertical direction; and rotating the tiny object by adjusting an angle of a charged particle beam probe or probe scanning region relative to the tiny object.
However, Zheng discloses adjusting a height of the tiny object by adjusting a vertical position of a charged particle beam probe or probe scanning region (page 5645, paragraph spanning the bottom of column 1 to the top of column 2; the global movements of the nanoparticle follow the movements of the beam: “a gold nanoparticle trapped inside the beam and its global movements following the movements of the beam”, emphasis added; “global” movement requires three-dimensional movement, which includes vertical movement; therefore, global movement of the nanoparticle requires vertical movement, and because the nanoparticle follows the movement of the beam, moving the beam in a vertical direction is inherently required to obtain said global movement; FIG. 1A and page 5645, column 2, further show vertical motion of the nanoparticle), wherein the charged particle beam has a neck region configured to apply a force (abstract, last sentence: converging the beam causes motion of the nanoparticles), wherein the charged particle beam probe is configured to apply a force in the vertical direction (page 5645, column 2, paragraph below FIG. 2, lines 14-17).
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 Chen to include adjusting a height of the tiny object by adjusting a vertical position of a charged particle beam probe or probe scanning region, wherein the neck region is configured to apply a gradient force in the vertical direction, based on the teachings of Zheng that this provides versatility across applications such as building materials architectures and functional devices through precise manipulation of nanoparticles (Zheng, page 5644, column 1, lines 1-6).
Chen in view of Zheng fails to disclose rotating the tiny object by adjusting an angle of a charged particle beam probe or probe scanning region relative to the tiny object.
However, Oleshko (2011) discloses rotating the tiny object by adjusting an angle of a charged particle beam probe or probe scanning region relative to the tiny object (page 1604, column 1, last paragraph: an electron induces a torque on the particle as the electron passes the particle, causing the particle to rotate; FIG. 4 shows that the angle of the passing electron with respect to the particle changes as the electron (arrow labeled
e
-
) passes the particle (large sphere)).
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 Chen in view of Zheng to include rotating the tiny object by adjusting an angle of a charged particle beam probe or probe scanning region relative to the tiny object, based on the teachings of Oleshko (2011) that the ability to rotate particles using a charged particle beam probe is advantageous for adjusting particle orientation for greater precision in processing and fabrication of nano-devices (Oleshko (2011), page 1605, Conclusions, paragraph 1).
Regarding claim 3, Chen in view of Zheng and Oleshko (2011) as applied to claim 1 discloses the method according to claim 1.
In addition, Chen discloses that the charged particle beam causes the tiny object to be charged (page 31655, ‘Discussion of e-beam manipulation mechanism’ paragraph 2, lines 1-3), and the gradient force is a Coulomb force (page 31655, ‘Discussion of e-beam manipulation mechanism’ paragraph 1; while Chen does not explicitly refer to the force as a Coulomb force, Dictionary.com defines ‘Coulomb force’ as ‘electrostatic force’).
Regarding claim 6, Chen in view of Zheng and Oleshko (2011) as applied to claim 1 discloses the method according to claim 1.
In addition, Chen discloses that the charged particle beam is an electron beam (page 31652, ‘Introduction’ last paragraph, e-beam).
Regarding claim 8, Chen in view of Zheng and Oleshko (2011) as applied to claim 1 discloses the method according to claim 1.
In addition, Chen discloses that the non-uniform charge distribution is generated by the charged particle beam passing through a region of the fluid medium (page 31655, ‘Discussion of e-beam manipulation mechanism’ last paragraph, lines 3-4), and is defined by a shape of a charged particle beam probe (FIGs. 5A, 5B).
Regarding claim 10, Chen in view of Zheng and Oleshko (2011) as applied to claim 1 discloses the method according to claim 1.
In addition, Chen discloses that the non-uniform charge distribution is generated by the charged particle beam scanning a region of the fluid medium (page 31655, ‘Discussion of e-beam manipulation mechanism’ last paragraph, lines 3-6), and is defined by a shape of a charged particle beam probe scanning region (page 31655, ‘Discussion of e-beam manipulation mechanism’ last paragraph, lines 3-6).
Regarding claim 12, Chen in view of Zheng and Oleshko (2011) as applied to claim 1 discloses the method according to claim 1.
In addition, Chen discloses that a charged particle beam probe or probe scanning region surrounds or at least partially surrounds the tiny object (FIG. 1B: the e-beam surrounds the Au nanoparticle).
Regarding claim 15, Chen in view of Zheng and Oleshko (2011) as applied to claim 1 discloses the method according to claim 1.
In addition, Chen discloses that a ratio of a size of a probe or probe scanning region to a size of the tiny object in a plane of the tiny object is about 1.5-1:1 (page 31653, column 1, first paragraph defines the probe size diameter as 50 nm; page 31653, ‘E-beam manipulation of in situ synthesized gold nanoparticles’ paragraph 1 defines the tiny object diameter as 48 nm; therefore, the ratio of probe size to tiny object is 50 / 48 = 1.04).
Regarding claim 18, Chen in view of Zheng and Oleshko (2011) as applied to claim 1 discloses the method according to claim 1.
In addition, Zheng discloses that the gradient force is used for capturing the tiny object (page 5646, column 1, paragraph beginning “It is noted…”).
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 Chen in view of Zheng and Oleshko (2011) to include that the gradient force is used for capturing the tiny object, based on the additional teachings of Zheng that this provides versatility across applications such as building materials architectures and functional devices through precise manipulation of nanoparticles (Zheng, page 5644, column 1, lines 1-6).
Regarding claim 21, Chen in view of Zheng and Oleshko (2011) as applied to claim 1 discloses the method according to claim 1.
In addition, Chen discloses changing the gradient force by changing one or more in a following group: a dose rate of the charged particle beam, the shape of a charged particle beam probe or probe scanning region, and the position of a charged particle beam probe or probe scanning region relative to the tiny object (page 31654, column 1, paragraph beginning “A systematic study…”).
Regarding claim 22, Chen in view of Zheng and Oleshko (2011) as applied to claim 1 discloses the method according to claim 1.
In addition, Chen discloses moving a position of the tiny object horizontally by adjusting a horizontal position of a charged particle beam probe or probe scanning region (page 31653, column 2, second paragraph from last).
Claims 13-14 and 37-39 are rejected under 35 U.S.C. 103 as being unpatentable over Chen in view of Zheng and Oleshko (2011) as applied to claim 1 above, and further in view of Oleshko et al. (“Chapter Three - Electron Tweezers as a Tool for High-Precision Manipulation of Nanoobjects”, 2013), hereinafter Oleshko (2013).
Regarding claim 13, Chen in view of Zheng and Oleshko (2011) as applied to claim 1 discloses the method according to claim 1.
Chen in view of Zheng and Oleshko (2011) fails to disclose that a shape of the charged particle beam probe or probe scanning region in a plane of the tiny object is a ring, and the tiny object is located in the ring.
However, Oleshko (2013) discloses that a shape of the charged particle beam probe or probe scanning region in a plane of the tiny object is a ring, and the tiny object is located in the ring (page 240, paragraph 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 Chen in view of Zheng and Oleshko (2011) to include that a shape of the charged particle beam probe or probe scanning region in a plane of the tiny object is a ring, and the tiny object is located in the ring, based on the teachings of Oleshko (2013) that this makes it easier to observe the interaction between the beam and the object (page 240, paragraph 2).
Regarding claim 14, Chen in view of Zheng and Oleshko (2011) as applied to claim 1 discloses the method according to claim 1.
Chen in view of Zheng and Oleshko (2011) fails to disclose that a shape of the charged particle beam probe or probe scanning region in a plane of the tiny object is an arc, and the tiny object is located on one side of a circle center of the arc.
However, Oleshko (2013) discloses that a shape of the charged particle beam probe or probe scanning region in a plane of the tiny object is an arc (Merriam-Webster.com defines ‘arc’ as “something arched or curved”; FIG. 3.14 of Oleshko (2013) shows the curved charged particle beam probe), and the tiny object is located on one side of a circle center of the arc (FIG. 3.14).
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 Chen in view of Zheng and Oleshko (2011) to include that a shape of the charged particle beam probe or probe scanning region in a plane of the tiny object is an arc, and the tiny object is located on one side of a circle center of the arc, based on the teachings of Oleshko (2013) that this makes it easier to observe the interaction between the beam and the object (page 240, paragraph 2).
Regarding claim 37, Chen in view of Zheng and Oleshko (2011) as applied to claim 1 discloses the method according to claim 1.
Chen in view of Zheng and Oleshko (2011) fails to disclose that a plurality of non-uniform charge distributions are formed in the fluid medium, and the plurality of non-uniform charge distributions apply a plurality of gradient forces to a plurality of portions of the tiny object.
However, Oleshko (2013) discloses that a plurality of non-uniform charge distributions are formed in the fluid medium, and the plurality of non-uniform charge distributions apply a plurality of gradient forces to a plurality of portions of the tiny object (page 248, paragraph numbered 5).
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 Chen in view of Zheng and Oleshko (2011) to include that a plurality of non-uniform charge distributions are formed in the fluid medium, and the plurality of non-uniform charge distributions apply a plurality of gradient forces to a plurality of portions of the tiny object, based on the teachings of Oleshko (2013) that the plurality of gradient forces on different portions of the tiny object can be advantageously used to apply large amounts of rotational energy to the object (Oleshko (2013), page 248, paragraph numbered 5).
Regarding claim 38, Chen in view of Zheng, Oleshko (2011), and Oleshko (2013) as applied to claim 37 discloses the method according to claim 37.
In addition, Oleshko (2013) discloses controlling the plurality of gradient forces to change a motion state of the tiny object (page 248, paragraph numbered 5: a torque is exerted on the tiny object).
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 Chen in view of Zheng, Oleshko (2011), and Oleshko (2013) to include controlling the plurality of gradient forces to change a motion state of the tiny object, based on the additional teachings of Oleshko (2013) that the plurality of gradient forces on different portions of the tiny object can be advantageously used to apply large amounts of rotational energy to the object (Oleshko (2013), page 248, paragraph numbered 5).
Regarding claim 39, Chen in view of Zheng, Oleshko (2011), and Oleshko (2013) as applied to claim 37 discloses the method according to claim 37.
In addition, Oleshko (2013) discloses that the plurality of non-uniform charge distributions are formed by at least one charged particle beam probe or probe scanning region (page 220, last paragraph) having a corresponding shape with the surface of the tiny object (page 240, paragraph 2, and page 242, paragraph 1: the ring-shaped charged particle beam probe corresponds to the spherical tiny object)
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 Chen in view of Zheng, Oleshko (2011), and Oleshko (2013) to include that the plurality of non-uniform charge distributions are formed by at least one charged particle beam probe or probe scanning region having a corresponding shape with the surface of the tiny object, based on the additional teachings of Oleshko (2013) that this enables the trapping of multiple nanoparticles within the beam (Oleshko (2013), page 223, paragraph 1) and the corresponding shape makes it easier to observe the interaction between the beam and the object (Oleshko (2013), page 240, paragraph 2).
Claims 26-30 are rejected under 35 U.S.C. 103 as being unpatentable over Chen in view of Howe et al. (“Effects of heat and electron irradiation on the melting behavior of Al-Si alloy particles and motion of the Al nanosphere within”, 2004), hereinafter Howe.
Regarding claim 26, Chen discloses a device for manipulating a tiny object (page 31652, ‘Introduction’ paragraph 1), comprising:
one or more charged particle guns, configured to provide a charged particle beam (page 31652, ‘Introduction’ last paragraph); and
a fluid medium chamber (page 31652, column 2, last 3 lines, liquid cell), configured to accommodate a fluid medium and a tiny object (page 31655, ‘Discussion of e-beam manipulation mechanism’ last paragraph, lines 1-6);
wherein the charged particle beam forms a non-uniform charge distribution in the fluid medium within the fluid medium chamber (page 31655, ‘Discussion of e-beam manipulation mechanism’ last paragraph, lines 3-6), such that a gradient force is applied to the tiny object (page 31655, column 1, last paragraph), and
wherein a shape of a charged particle beam probe or probe scanning region in a vertical direction comprises a neck region (FIG. 1) configured to apply a gradient force (FIG. 1C).
Chen fails to disclose an adjustment device, configured to adjust the charged particle beam from the one or more charged particle guns; wherein the charged particle beam is adjusted to form the non-uniform charge distribution, and wherein the adjustment device is configured to perform following actions: adjust a vertical position of a charged particle beam probe or probe scanning region to adjust a height of the tiny object, wherein the neck region is configured to apply a gradient force in the vertical direction; and adjust an angle of a charged particle beam probe or probe scanning region relative to the tiny object to rotate the tiny object.
However, Howe discloses an adjustment device, configured to adjust the charged particle beam from the one or more charged particle guns (page 108, column 2, paragraph 2; condenser lens);
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 Chen to include an adjustment device, configured to adjust the charged particle beam from the one or more charged particle guns; based on the teachings of Howe that this enables observation of the dynamic behavior of the nanoparticle while the particle was irradiated with the charged particle beam probe (Howe, page 108, column 2, paragraph 2).
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, Chen in view of Howe teaches the structural limitations of the device, i.e., the charged particle guns, the adjustment device, and the fluid medium chamber. Therefore, the functional limitations “the adjustment device is configured to…adjust a vertical position of a charged particle beam probe or probe scanning region to adjust a height of the tiny object, wherein the neck region is configured to apply a gradient force in the vertical direction; and adjust an angle of a charged particle beam probe or probe scanning region relative to the tiny object to rotate the tiny object” are met.
Regarding claim 27, Chen in view of Howe as applied to claim 26 discloses the device according to claim 26.
In addition, Chen discloses that the charged particle gun comprises an electron gun (page 31652, ‘Introduction’ last paragraph, e-beam).
Regarding claim 28, Chen in view of Howe as applied to claim 26 discloses the device according to claim 26.
In addition, Chen discloses that the fluid medium chamber comprises a liquid cell (page 31652, column 2, last 3 lines).
Regarding claim 29, Chen in view of Howe as applied to claim 26 discloses the device according to claim 26.
In addition, Howe discloses that the adjustment device comprises one or more electromagnetic lenses (page 108, column 2, paragraph 2; condenser lens).
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 Chen in view of Howe to include that the adjustment device comprises one or more electromagnetic lenses, based on the additional teachings of Howe that this enables observation of the dynamic behavior of the nanoparticle while the particle was irradiated with the charged particle beam probe (Howe, page 108, column 2, paragraph 2).
Regarding claim 30, Chen in view of Howe as applied to claim 26 discloses the device according to claim 26.
In addition, Howe discloses that the adjustment devices comprises one or more diaphragms (page 108, column 2, paragraph 2, condenser aperture).
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 Chen in view of Howe to include that the adjustment devices comprises one or more diaphragms, based on the additional teachings of Howe that this enables observation of the dynamic behavior of the nanoparticle while the particle was irradiated with the charged particle beam probe (Howe, page 108, column 2, paragraph 2).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zeng (CN Patent No. 112296023 A) (English machine translation provided).
Yamamoto (JP Patent No. 2021057432 A) (English machine translation provided).
Appleyard et al. (U.S. Patent Application Publication No. 2007/0069119 A1).
Glueckstad (WO Patent No. 2009036761 A1).
Akamatsu et al. (WO Patent No. 2012060056 A1) (English machine translation provided).
Denisyuk et al. (“Chapter Three – Mechanical, Electrostatic, and Electromagnetic Manipulation of Microobjects and Nanoobjects in Electron Microscopes”, 2014).
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/A.K./Examiner, Art Unit 2881
/MICHAEL J LOGIE/Primary Examiner, Art Unit 2881
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