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 .
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 3-5, 8-14, 18, 20-26 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The standard for determining whether the specification meets the enablement requirement was cast in the Supreme Court decision of Mineral Separation v. Hyde, 242 U.S. 261, 270 (1916) which postured the question: is the experimentation needed to practice the invention undue or unreasonable? There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to: the breadth of the claims; the nature of the invention; the state of the prior art; the level of one of ordinary skill; the level of predictability in the art; the amount of direction provided by the inventor; the existence of working examples; and the quantity of experimentation needed to make or use the invention based on the content of the disclosure. In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). In the instant matter, upon consideration of all the evidence related to each of these factors, and based on the evidence as a whole, claims 3-5, 8-14, 18, 20-26 are found to lack enablement. Particularly, claim 3 recites “the charged particle beam is focused with a combination of an electrostatically charged cone-shaped reflector and an electrostatically charged annular reflector.” Further, claims 18 and 24 recite “a curved cone-shaped electrostatically charged reflector, charged and positioned to reflect the charged particle beam source to provide a first reflected beam; an annular electrostatically charged reflector charged and positioned to reflect the first reflected beam to provide a second reflected beam and to focus the second reflected beam to a three-dimensional probe.” These limitations refer to the same structure, and will be treated together hereinafter.
Breadth of the claims/ the amount of direction provided by the inventor:
The breadth of the instant claims includes a “combination of an electrostatically charged cone-shaped reflector and an electrostatically charged annular reflector” that focuses a charged particle beam. The specification offers some clarity in stating that the “reflectors can be made of, for example, but not limited to shiny, high charged particle-reflective metal, specifically austenitic stainless steel, molybdenum coated stainless steel for ion beams and brass, preferably copper-beryllium brass.” However, the breadth of the claims is enormous, because the claimed reflectors are intended for use with charged particles ranging from 50 eV to 2 MeV.1 Applicant appears to acknowledge this to some degree, stating “[the reflectors] electrostatic charge is tuned to either be the same as the charged particle beam voltage or different to the charged particle beams voltage, depending on the application.”2 Elsewhere, applicant further states that “the cone-shaped electrostatically charged reflector 16 is tuned to have the same charge as the charged particle beam.”3 However, these are two different types of “tuning,” and neither explains how one is to actually achieve the functions of reflecting and focusing charged particles. The former instruction would either match or not match a voltage, which obviously amounts to doing anything. The latter instruction would match a charge, e.g., positive for a proton, negative for an electron. In sum, the disclosure only instructs one to use a voltage and match the reflector’s charge to that of the emitted particle for reflecting and focusing everything from a 50 eV electron, i.e., an electron moving about 4.2 km/s, to a 2 MeV electron, i.e. an electron traveling at 98% the speed of light. No specific examples of the necessary voltages are provided, nor is any explanation given as to how one is to prevent catastrophic results when 2 MV of voltage are applied to a brass cone being bombarded with relativistic electrons. Further, no explanation of the electrostatic fields used to reflect the charged particles is provided. This is telling, in that charged particles do not reflect off the surface of the reflectors in the fashion that photons reflect off of mirrors, but rather decelerate and then accelerate as they pass, and then re-pass, through an electric field. For comparison, US 2025/0308879 A1 demonstrates a state-of-the-art ion mirror in the diagram below:
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Note in the above image the multiple electrodes held at different potentials that were necessary to reflect and focus a 10 eV ion beam. The instant disclosure provides no such detail. In fact, there is no explanation whatsoever as to how the reflectors were adapted to reflect any charged particles. Further, the claims recite focusing the charged particles using such reflectors, but offer no explanation as to how this is done. Electrostatic focusing of charged particles is an entirely different problem than focusing of photons, as charged particles interact with electric and magnetic fields to bend their vectors, as is shown below in an excerpt from Feynman’s lectures4
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How the charged particles are focused is entirely ignored in the instant disclosure. Rather, the charged particles are treated like photons. While prior art electron microscopes often represent charged particle optics as lens shaped drawings5, this is only for convenience. The actual structure are sophisticated magnets and electrostatic lenses of the types shown in the Feynman lectures. In the instant case, the applicant looks to achieve photon type reflections using photon reflective structures which are, simply put, not capable of performing the same functions with charged particles. In fact, to the extent that the application provides any direction in making and using the full breadth of the claimed application, it is only that it provides an idea that perhaps an electrostatic field could be constructed to achieve the sort of reflections with charged particles that can easily be produced by shiny metallic surfaces with photons. In sum, the disclosure provides a claim of immense breadth, and virtually no guidance. Undue experimentation would be necessary to even approach the claimed invention’s breadth. This weighs against enablement.
The nature of the invention; the state of the prior art; the level of one of ordinary skill; the level of predictability in the art; the existence of working examples
The applicant correctly points to modern Transmission electron microscopy (TEM) as being the field that most closely resembles the instant application.6 Therein, a charged particle is emitted, accelerated, focused, and detected.7 This reflects both the state of the prior art and the nature of the invention, i.e., manipulating a charged particle, interacting said charged particle with a sample, and detecting the results of said interaction. Further, such a TEM effectively demonstrates the inherent difficulty in controlling the path of an energetic (i.e., fast) charged particles using cumbersome mechanisms to generate electric or magnetic fields. Specifically, US 20180254168 A1 speaks to the necessity of aberration correction, beam deflection, vacuum enclosure, compensation for angular current density, and any number of other factors. Working in such an intricate field necessitates a high level of skill for one of ordinary skill in the art, as each small feature of the device has enormous complexity and potential for failure. Further, the number of corrections and considerations necessary for effectively imaging a specimen using charged particles also highlights the extremely low level of predictability in the art. Small changes in lens’ field yield enormous changes in aberration over the course of a charged particle’s path through multiple fields and a specimen. Despite the extreme complexity in the nature of the invention and the state of the prior art, and the minimal predictability in the art, the applicant provides no evidence of a working example. Further, in the entirety of the art, there is no example of electrostatic fields provided by elements of the same or similar shape performing the claimed function. As such, it is clear that undue experimentation would be necessary achieve the claimed invention’s breadth. This weighs against enablement.
Quantity of experimentation
To make and use an invention commensurate with the scope of the claimed invention, one would need to make the first example of the claimed “electrostatically charged cone-shaped reflector,” to make the first example of the claimed “electrostatically charged annular reflector,” and then somehow to modify both to reflect and focus charged particles ranging between 50 eV and 2 MeV. Each of these steps would require extensive research, and then require further research to modify the reflectors for five orders of magnitude of energy, and require further research still to modify them for multiple types of charged particle. As such, it is clear that undue experimentation would be necessary to make and use the claim. This weighs against enablement.
The totalilty of the evidence demonstrates that a person of ordinary skill in the art would not have been able to make or use the claimed invention without undue experimentation. Therefor the claims at issue are not enabled.
Claims 1-5, 8-14, 18, 20-26 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. Claims 1, 18, and 24 recite, “focusing a charged particle beam to a virtual charged particle beam source in the first material” or “focus[ing] the second reflected beam to a three-dimensional probe.” Claim 1 further recites, “defocusing the interference zone to provide a Fresnel fringe.”
The courts have described the essential question to be addressed in a description requirement issue in a variety of ways. An objective standard for determining compliance with the written description requirement is, "does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Under Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and that the invention, in that context, is whatever is now claimed.
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc).
In the instant case, the claim defines the invention by functional language specifying a desired result to be obtained from the charged particle optics, namely “focusing” and “defocusing” However, the disclosure fails to explain how such a result is achieved. Instead, the disclosure describes an “electrostatically charged cone-shaped reflector and an electrostatically charged annular reflector.” Such disclosures provide basic geometric structures, but offers no explanation whatsoever as to what voltages are to be applied to the reflectors to produce said electrostatic fields. This is particularly problematic since the charged particle beam at issue include both electrons and protons, and range from 50 eV to 2 MeV. Furthermore, the proposed elements for performing such a function, even sans voltages, are not enabled, as is discussed in the enablement rejection above. That is to say, the disclosure provides no evidence that the problem is solved. As such, one of ordinary skill in the art would not recognize that the applicant had possession of the claimed reflectors that could “focused” and “defocused” across the extreme range claimed. Since one of ordinary skill in the art would not recognize that the applicant had possession of the claimed invention, the claims are rejected for failing the written description requirement.
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 1-5, 8-14, 18, 20-25 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 1 recites, “defocusing the interference zone to provide a Fresnel fringe, the Fresnel fringe forming an image of the object.” Claim 18 recites, “move the charged particle beam source to produce a Fresnel fringe in the interference zone or self interference zone.” “Fresnel fringe” is a well-understood concept in charged particle microscopy, and it is not in any way related to the above limitation or its reference to interference zones. As such, it is entirely unclear what is being claimed. For this reason, the claim is rejected as indefinite.
Claims 1 and 18 recite, “a first lower energy charged particle beam and a second lower energy charged particle beam.” However, the claim provides no explanation as to what the energy is lower than. As such, the claims are indefinite.
Notes
The claimed invention appears to borrow a geometry from a catoptric lens. See e.g., US 3,802,767. Such a lens system is for photons, and there is no record of a similar system working for charged particles.
The present invention suggests directing a high energy charged particle beam at an electrode. Such a geometry is a known technique for generating x-rays, not a technique for causing particle deflection. See e.g. US 2015/0371806 A1.
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
1 PgPub paras 61-63, claim 5.
2 Id at Para 64.
3 Id at Para 67.
4 See https://www.feynmanlectures.caltech.edu/II_29.html
5 See e.g., Fig. 1b of US 8,772,715 B2.
6 Instant PgPub at para 3 referencing US 20180254168 A1.
7 See Fig. 1b of US 20180254168 A1.