DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Applicant’s amendment filed on 5/18/26 has been received and made of record.
3. Applicant has amended claims 1-6, 8, 11, 14-16, and 18-20. Applicant has canceled claim 17. Applicant has added new claim 21. Currently, claims 1-16 and 18-21 are pending.
4. Applicant has amended claims 1 and 20 with partial subject matter of claim 14 which gives these claims new scope. Applicant’s representative has amended claim 16 with the subject matter of claim 17. Examiner refers to the action below.
Response to Arguments
5. Applicant's arguments filed 5/18/26, regarding the 35USC 101 rejection, have been fully considered but they are not persuasive. Applicant’s representative in essence argues “that at least the above-noted features recited in claim 1 clearly cannot practically be performed in the human mind. For example, regarding the aspect of "creating contours in or from the substrate pattern inspection images to form a set of inspection contours embodied in a non-transitory medium, wherein creating contours comprises detecting edges of features in the substrate pattern inspection images," Applicant respectfully submits that creating contours in or from images by detecting edges of features in those images cannot be performed in the mind. For example, "detecting" cannot be done in the mind but rather requires a physical tool. Examiner disagrees. These steps can be performed in the mind or with paper in the field of performing product inspection such as in plastic, glass, or other materials (i.e. substrates) that used in making these products such as in glass bottles with labels or etching produced in the materials/substrate (i.e. plastic, glass, etc.) of these products. The edges/contours defects can be viewed and analyzed and any edges/contours outside of a range can be ignored/filtered. Further, paper can be used to analyze the edges/contours by superimposing the paper and tracing the edges/contours by a pen or pencil and then manually comparing it with a template/reference image. Therefore, examiner believes that the 35USC 101 rejection is proper and maintains this rejection on the claims.
Claim Objections
6. Claim 21 is objected to because of the following informalities: Claim 21 is a “system” claim which is dependent from claim 20 which is a “non-transitory computer readable medium” claim which is improper. Appropriate correction is required. Claim 21 will be treated as dependent from claim 20.
Claim Rejections - 35 USC § 101
7. 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.
8. Claims 1-16 and 18-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a mental process. This judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The following reasons are provided to evaluate subject matter eligibility.
(1) Are the claims directed to a process, machine, manufacture or composition of matter;
(2A) Prong One: Are the claims directed to a judicially recognized exception, i.e., a law of nature, a natural phenomenon, or an abstract idea; Prong Two: If the claims are directed to a judicial exception under Prong One, then is the judicial exception integrated into a practical application;
(2B) If the claims are directed to a judicial exception and do not integrate the judicial exception, do the claims provide an inventive concept.
With regard to (1), the analysis is a 'yes', claim 1 recites a process/method, claim 16 recites a system/machine, and claim 20 recites a product/manufacture (i.e. non-transitory computer readable medium).
With regard to (2A) Prong One, the analysis is a "yes". Claim 1 (similarly claims 16 and 20) recites "receiving substrate pattern inspection images, determining, by a hardware computer system, contours in the substrate pattern inspection images to form a set of inspection contours, wherein determining contours comprises detecting edges of features in the substrate pattern inspection images; and filtering outlier contours from the set of inspection contours." When viewed under the broadest most reasonable interpretation the claim recites an abstract idea of mental processes. The steps of "determining" and "filtering" are generically recited because there is no description of how this is accomplished. It can be interpreted as merely looking at the data, and evaluating the data in the mind. The concepts, as claimed, are observations and/or evaluations ("determining...") and judgement ("filtering outlier contours....." i.e. which contours do not fit a certain criteria/limits). There is nothing in the claim that requires more than an operation that a human, armed with the appropriate apparatus, pen/paper, can perform. One can perform the process using pen and paper, and the recitation of hardware computer system/processors/computer system in the claims is a mere use of generic computer components. See MPEP 2106.04 and the 2019 PEG.
With regard to (2A) Prong Two: the analysis is a "No". Claims 1, 16, and 20 recite the additional elements of "filtering outlier contours from the set of inspection contours." These additional elements represents mere data gathering and indexing the data all together (i.e. obtaining certain contours and not outlier contours) that is necessary for use of the recited abstract idea. Therefore, the limitation is insignificant extra-solution activity. See MPEP 2106.05(1). The claim as a whole, looking at the additional elements individually and in combination, does not integrate the abstract idea into a practical application.
With regard to (2B): the pending claims do not show what is more than a routine in the art presented in the claims, i.e., the additional elements are nothing more than routine and well-known steps. The additional elements do not reflect an improvement to a technology or technical field, including the use of a particular machine or particular transformation. It has not been shown that the mental process allows the "technology" to do something that it previously was not able to do.
Claims 16 and 20 are similarly rejected for the same reasons as claim 1. Dependent claims 2-15, 18-19, and 21 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims are rejected for the same reasons and not repeated herewith.
Claim Rejections - 35 USC § 103
9. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 13, 20, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Bailey et al. (U.S. patent pub. 2016/0283617 A1 will be further referred to as Bailey) and further in view of Simpkins (U.S. patent 7,684,611 B2).
Regarding claim 1: Bailey discloses a method for enhancing a patterning process (Bailey; paragraphs 0003 and 0017), the method comprising:
receiving substrate pattern inspection images (Bailey; fig. 4 and paragraphs 0053 and 0054),
creating, by a hardware computer system, contours in or from the substrate pattern inspection images to form a set of inspection contours embodied in a non-transitory medium (fig. 4 and paragraphs 0054 and 0055), wherein creating contours comprises detecting edges of features in the substrate pattern inspection images (paragraphs 0054-0057);
filtering outlier contours from the set of inspection contours (paragraph 0078). Bailey does not teach the feature of “determining, by the hardware computer system, a manufacturing variation of the features based on remaining contours in the set of inspection contours after the filtering.” Simpkins teaches the feature of “determining, by the hardware computer system, a manufacturing variation of the features based on remaining contours in the set of inspection contours after the filtering” (Simpkins; col. 5 lines 4-15, col. 5 line 49 to col 6 line 22, claim 7, and claim 8, only the edges within a range are saved and analyzed. Edges outside the range are filtered out, i.e. outliers.).
Regarding claim 13: The method of claim 1, wherein the substrate pattern inspection images are generated with a charged particle inspection system, and wherein the charged particle inspection system comprises a scanning electron microscope (Bailey; paragraphs 0008, 0041, and 0061).
Regarding claim 20: See claim 1.
Regarding claim 21: The system of claim 20, wherein the one or more processors configured to determine the manufacturing variation of the features are further configured to stack the remaining contours in the set of inspection contours, and statistically analyze the stacked remaining contours (Simpkins; fig. 9, col. 2 line 51-52, and col. 6 lines 37-57, layers=stacked).
NOTE: Regarding claims 2-16 and 18-19 there is no prior art rejection made since prior art was not found on the claimed subject matter but are still rejected under 35USC 101 rejection.
Conclusion
11. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANAND BHATNAGAR whose telephone number is (571)272-7416. The examiner can normally be reached on M-F 7:30am-4:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Vu Le can be reached on 571-272-4650. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANAND P BHATNAGAR/
Primary Examiner, Art Unit 2668
July 30, 2026
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