DETAILED ACTION
National Stage Application
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 Interpretation
MPEP § 2111.01 states that “… Under a broadest reasonable interpretation (BRI), words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the relevant time. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms …”. Thus under a broadest reasonable interpretation, the greatest clarity is obtained when the specification (e.g., see “… nanostructured mask 120 and the sample/object 100 were attached to opposite sides of a silicon nitride (Si3N4) window/substrate (commercially available for use in transmission electron microscopes, TEMs) with thicknesses ranging from 8 nm to 200 nm, with area on the order of 1 mm2. Such TEM window is recessed a few hundred microns into a Si wafer on one side, to form a small gap between the window and the active area of the image sensor. On the bottom side of the window, the mask was fabricated out of randomly positioned metallic nanoparticles drop-cast from a liquid suspension … In order to preserve the randomness of the distribution of nano-sized particles (of the mask) on the substrate, plasma-treating of the substrate surface can be employed to raise its surface energy, and/or using volatile organic solvents that dry quickly, and/or drying the sample in a vacuum oven, and/or spin-coating to rapidly thin the liquid suspension, and/or chemically-functionalizing surfaces to promote immediate bead attachment before the particles can self-assemble into regular arrays … use of solutions of nanoparticles with low variance in particle sizes, from which the particles can be easily deposited by pipetting a small volume of nanoparticle solution and letting the solvent evaporate off …” in paragraphs 26, 73, and 84) serves as a glossary for the newly added claim term “affixed”.
The specification (e.g., see “… To provide the excitation source for fluorescent samples, one can employ use a spark-lamp light source (High-Speed Photo-Systeme), as specified in Section (D). The spark lamp may be positioned as close as possible to the object so that a large portion of light hit the object. Alternatively, a high numerical aperture (NA) collecting lens (not shown in FIG. 1A) can be used to relay light from the source onto our sample. Alternatively or in addition, an excitation filter (e.g., the UV band pass filter) may be employed to restrict the spectrum of illumination (incident onto the object light) to a part of the spectrum where the image sensor is less sensitive …” in paragraph 76) serves as a glossary for the newly added claim term “visible light having a wavelength”.
The specification (e.g., see “… a specific embodiment of the optical imaging system of the overall lens-free optical system of the invention may be configured such that the optical detector is disposed to face the mask layer directly (that is, without any tangible component or element therebetween) …” in paragraph 93) serves as a glossary for the newly added claim term “to directly face the nano-sized elements without an optical component therebetween and to receive the light in transmission through the object”.
Claim Objections
Claim 19 is objected under 37 CFR 1.75 as being a substantial duplicate of claim 1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
The following is a quotation 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.
Claim(s) 9 is/are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
While the specification discloses a commercially available window/substrate for use in TEMs (e.g., see “… in at least one case, the nanostructured mask 120 and the sample/object 100 were attached to opposite sides of a silicon nitride (Si3N4) window/substrate (commercially available for use in transmission electron microscopes, TEMs) …” in paragraph 26), there does not appear to be any disclosure of a combination of an optical substrate and a TEM window. Therefore, there does not appear to be a written description of the combination of newly added claim limitations “affixed to an outer surface of an optical substrate” and “the mask layer located on an outer surface of a TEM window” in the application as filed.
Claim(s) dependent on the claim(s) discussed above also fail(s) to comply with the written description requirement for the same reasons.
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 pre-AIA 35 U.S.C. 112, 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.
Claim(s) 6-14 and 16-18 is/are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 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 pre-AIA the applicant regards as the invention.
Claim 6 recites the limitation “the evanescent near field” in lines 10-11 and the limitation “the evanescent optical field” in line 13. There is insufficient antecedent basis for this limitation in the claim.
Claim(s) dependent on the claim(s) discussed above is/are also indefinite for the same reasons.
Claim(s) 4, 5, 15, 18, 21, and 23-25 is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: “a chosen optical wavelength” to other recited elements such as “visible light having a wavelength”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim(s) 2, 5, 7, 10, 11, 21, 23, and 24 is/are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
The limitation “(i) a metasurface containing nano-sized material particles randomly distributed on the outer surface of the [[an]] optical substrate; and (ii) a material layer having nano-sized openings formed therethrough and distributed randomly across said material layer; and (iii) a layer of optical material having non-uniform spatial distribution of a refractive index; and (2B) when the mask layer is defined by nano-sized elements that are randomly distributed the outer surface of the optical substrate, the optical substrate is separated from the optical detector by said mask layer; and (2C) wherein, when the mask layer is defined by the nano-sized elements that are randomly distributed on the outer surface of the optical substrate, the optical substrate has a thickness that is smaller than the wavelength; and (2D) wherein, when the mask layer is defined by the nano-sized elements that are randomly distributed on the outer surface of the optical substrate, wherein, in operation, the optical substrate carries the object on said outer surface” recited in claim 2 does not appear to further limit or include the newly added limitation “a mask layer defined by nano-sized randomly affixed to an outer surface of an optical substrate” recited in claim 1. Further, the limitation “(2D) wherein, when the mask layer is defined by the nano-sized elements that are randomly distributed on the outer surface of the optical substrate, wherein, in operation, the optical substrate carries the object on said outer surface” recited in claim 2 does not appear to further limit or include the newly added limitation “an optical detector, disposed substantially parallel to the mask layer at a second optical distance exceeding the first optical distance” recited in claim 1.
The limitation “(5A) the mask layer is (i) carried and/or supported by [[an]] the optical substrate and is separated from the object by said optical substrate and (ii) faces the optical detector directly without the optical component therebetween” recited in claim 5 does not appear to further limit or include the newly added limitation “a mask layer defined by nano-sized randomly affixed to an outer surface of an optical substrate” recited in claim 1.
The limitation “(7A) the mask layer is carried and/or supported by [[an]] the optical substrate and is separated from the object by said optical substrate and from a source of the incident optical wavefront by said object” recited in claim 7 does not appear to further limit or include the newly added limitation “a mask layer that is (i) defined by nano-sized randomly distributed elements affixed to an outer surface of an optical substrate and (ii) positioned to be separated from the object by an optical distance that is shorter than the optical wavelength ” recited in claim 6.
The limitation “wherein said intersecting includes interacting the light from the incident optical wavefront with the object after said light has interacted with the mask layer” recited in claim 10 does not appear to further limit or include the newly added limitation “a mask layer that is (i) defined by nano-sized randomly distributed elements affixed to an outer surface of an optical substrate and (ii) positioned to be separated from the object by an optical distance that is shorter than the optical wavelength ” recited in claim 6.
The limitation “(11A) a metasurface containing nano-sized material particles ” recited in claim 11 does not appear to further limit or include the newly added limitation “a mask layer that is (i) defined by nano-sized randomly distributed elements affixed to an outer surface of an optical substrate and (ii) positioned to be separated from the object by an optical distance that is shorter than the optical wavelength ” recited in claim 6.
The limitation “(18A) a metasurface containing nano-sized material particles randomly distributed across an outer surface of the optical substrate; (18B) a coating layer having one or more of (i) nano-sized openings therethrough and distributed randomly across said coating layer, and(ii) nano-sized elements of a coating material of said coating layer; and (18C) a material layer having a non-uniform spatial distribution of a refractive index” recited in claim 18 does not appear to further limit or include the newly added limitation “a mask layer that is (i) defined by nano-sized randomly distributed elements affixed to an outer surface of an optical substrate and (ii) positioned to be separated from the object by an optical distance that is shorter than the optical wavelength ” recited in claim 6.
The limitation “said intersecting includes interacting the light from the incident optical wavefront with the object after said light has interacted with the mask layer” recited in claim 23 does not appear to further limit or include the newly added limitation “an optical detector, disposed substantially parallel to the mask layer at a second optical distance exceeding the first optical distance” recited in claim 1 and incorporated by reference into claim 4 (i.e., “the optical system according to claim 1” recited in claim 4).
The limitations “(24A) a metasurface containing nano-sized material particles randomly affixed to ; and (24C) a material layer having a non-uniform spatial distribution of a refractive index” recited in claim 24 does not appear to further limit or include the newly added limitation “a mask layer defined by nano-sized randomly affixed to an outer surface of an optical substrate” recited in claim 1 and incorporated by reference into claim 4 (i.e., “the optical system according to claim 1” recited in claim 4).
Claim(s) dependent on the claim(s) discussed above is/are also of improper dependent form for the same reasons. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
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 at the time any inventions covered therein were effectively filed 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 at the time a later invention was effectively filed 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.
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 of this title, 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.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kawakami (US 2009/0194418) in view of SPI Supplies (Quantifoil® datasheet, April 2016, 4 pages).
In regard to claim 20, Kawakami discloses an article of manufacture comprising a TEM window having an optical thickness (e.g., “… observation substrate 10 can be used favorably, for example, as an observation substrate for TEM observation …” in paragraph 34), and a mask layer defined by nano-sized elements randomly distributed on a surface of the TEM window (e.g., “… nanomaterial particles 18 are thereby dispersed and immobilized in a scattered state on the substrate 10 …” in paragraph 54). The article of Kawakami lacks an explicit description of details of the “… TEM …” such as thickness shorter than a wavelength of visible light. However, “… TEM …” details are known to one of ordinary skill in the art (e.g., see “… foil finds applications when nano-sized features are to be studied … carbon film thickness is closely controlled to be within the range of 10-12 nm … available on "standard, stock" grid mesh, namely 200, 300, 400, and 100x400 mesh, in Cu, Ni, Au and Rh plated Cu. Other grid meshes and other grid constructions are possible as a special order …” in the Quantifoil® datasheet of SPI Supplies). It should be noted that “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable results”. KSR International Co. v. Teleflex Inc., 550 U.S. 398 at 416, 82 USPQ2d 1385 (2007) at 1395 (citing United States v. Adams, 383 U.S. 39, 40 [148 USPQ 479] (1966)). See MPEP § 2143. In this case, one of ordinary skill in the art could have substituted a known conventional TEM window thickness (e.g., comprising details such as “10-12 nm” thickness “available on "standard, stock" grid mesh” “when nano-sized features are to be studied”) for the unspecified TEM window thickness of Kawakami and the results of the substitution would have been predictable. Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a known conventional TEM window thickness (e.g., comprising details such as optical thickness shorter than a wavelength of visible light) as the unspecified TEM window thickness of Kawakami.
Response to Arguments
Applicant’s arguments with respect to the amended claims have been fully considered but some are moot in view of the new ground(s) of rejection
Allowable Subject Matter
Claim(s) 1 and 3 is/are allowed.
The following is a statement of reasons for the indication of allowable subject matter: the instant application is deemed to be directed to a nonobvious improvement over the invention disclosed in WO 2021/041212 A1. The improvement comprises in combination with other recited elements, a mask layer defined by nano-sized elements randomly affixed to an outer surface of an optical substrate and, in operation, positioned from the object at a first optical distance that is shorter than the wavelength; and an optical detector, disposed substantially parallel to the mask layer at a second optical distance exceeding the first optical distance to directly face the nano-sized elements without an optical component therebetween and to receive the light in transmission through the object, wherein the optical imaging system does not include a lens as recited in claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2016/0357026 teaches a nanoparticle mask.
US 2022/0262087 teaches a nanoscale aperture mask.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Shun Lee whose telephone number is (571)272-2439. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uzma Alam can be reached at (571)272-3995. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SL/
Examiner, Art Unit 2884
/UZMA ALAM/Supervisory Patent Examiner, Art Unit 2884
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