DETAILED ACTION
This Office action is in response to the amendment filed on December 17th, 2025. Claims 1-36 are pending.
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 Objections - Warning
Applicant is advised that should claim 1 be found allowable, claim 35 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. 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. In this case, with the limitations to the processing steps use slightly different wording but refer to the same action of etching the tip with plasma or an equivalent step (see applicant’s remarks, filed December 17th, 2025, page 2). See MPEP § 608.01(m).
Applicant is advised that should claim 2 be found allowable, claim 36 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. 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. In this case, the claims are identical except for the slight change in wording in the parent claims addressed above. See MPEP § 608.01(m).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the words “step for,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder “processing” that is coupled with functional language without reciting sufficient steps to perform the recited function, or recites only a function. Such claim limitation(s) is/are: “processing the first measuring tip such that, following the processing, only the at least one second measuring tip interacts with the specimen to be examined” in claims 1-22 and 29-34; “sharpening … measuring tip” in claims 10-11 and 16-17, “cleaning … measuring tip” in claims 10-11, and 16-17; and “processing the measuring tip carrier such that, following the processing, only the at least one second measuring tip interacts with the specimen to be examined” in claims 35-36.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
Specifically, “processing the first measuring tip such that, following the processing, only the at least one second measuring tip interacts with the specimen to be examined” corresponds to an etching step of etching the first tip to remove portions of the tip. “sharpening … measuring tip” and “cleaning … measuring tip” both correspond to exposing the tip to a plasma. There does not appear to be a corresponding step for “processing the measuring tip carrier such that, following the processing, only the at least one second measuring tip interacts with the specimen to be examined”
If applicant does not intend to have this/these limitation(s) 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(s) to avoid it/them 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(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses the generic placeholder “apparatus” coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “processing apparatus that is configured to irreversibly process the first measuring tip such that, following the processing, only the at least one second measuring tip interacts with the specimen to be examined.” in claim 24.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
Specifically, the corresponding structures are an electron source with etching gas supply or a plasma source.
If applicant does not intend to have this/these limitation(s) 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(s) to avoid it/them 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(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112(b)
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 1-22 and 28-36 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 steps, or in the case of claim 28, instructions for performing an essential step, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: a step of examining the sample with the first measuring tip.
The claimed method corresponds to the flow chart in fig. 20, but the independent claim recite only steps 2015 and 2045. Steps 2020, 2035, and 2040 are addressed by some of the dependent claims. However, none of the claims recite step 2030, examining the specimen with the first tip. The entire purpose of the method, as described in the original disclosure, is to provide a way to switch from examining with the first measuring tip to examining with the second measurement tip in the case that the first measuring tip is too worn or damaged from previous interactions to continue being used for examination. By examining the sample with the first measuring tip, then etching it away to allow interaction with the second tip, the time before a new tip carrier needs to be provided due to worn or damaged tips is reduced. This is explained in the specification as follows;
In order to prevent this, the previously used, worn, irreparably contaminated and/or damaged first measuring tip is modified within the scope of an irreversible processing process when a method according to the invention is carried out, the modification being to such an extent that said first measuring tip is no longer able to interact with the specimen during further examinations of the specimen(s) by the second measuring tip or further measuring tips arranged together on the measuring tip carrier. The irreversible processing process of the worn first measuring tip can be implemented within the scanning probe microscope. As a result, a worn and/or damaged measuring tip within the scope of a method according to the invention no longer automatically leads to a complicated replacement of the measuring tip carrier.
If the first tip is never used to measure the sample, it will still be pristine and there is no reason to etch it away to allow interaction with the second measuring tip. By providing two tips, the first longer, then etching the first to be shorter, nothing has been accomplished except to switch which tip is longer, and the sum total amount of useable tip is reduced, so the time before a new tip carrier is needed is shortened. The step of examining the sample with the first tip before etching it away is therefore essential to the central purpose of the invention, extending the time period before providing new tips.
Claims 1-22 and 28-34 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 steps, or in the case of claim 28, instructions for performing an essential step, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: a step of examining one or more samples with the first measuring tip one or more time.
The claims recite a step of processing the first measuring “after the first measuring tip has been used to examine one of more specimens one or more times”. However, no such examination step is claimed. Hence, if the condition for beginning the processing step is to be met, there must be an additional unrecited step of performing one or more examinations. Such a step is essential to meeting the claimed condition. While this rejection may seem identical to the one above, the requirement of meeting the new conditional does in face create a second reason the recitation of performing such a step is essential.
Claims 9-10 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 steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: any step after providing the tips and before processing them that would allow the second measuring tip to interact with the specimen.
Claim 9 recites performing processing if “the at least one second measuring tip likewise interacts with the specimen to be examined”. However, the parent recites providing the tips “in such a way that only a first measuring tip can interact with a specimen to be examined in the scanning probe microscope” and the only other claimed step is the processing that does not begin until the condition is met. If the condition is to be met, there must be an additional unrecited step that results in changing the relative length or positioning of the tips to bring about the condition. Such a step is essential to meeting the claimed condition.
Claims 9-10 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 steps.. See MPEP § 2172.01. The omitted steps are: a step of examining one or more samples with the first measuring tip one or more time.
The claims recite a step of processing the first measuring “after the first measuring tip has been used to examine one of more specimens one or more times”. However, no such examination step is claimed. Hence, if the condition for beginning the processing step is to be met, there must be an additional unrecited step of performing one or more examinations. Such a step is essential to meeting the claimed condition. While this rejection may seem identical to the one above, the requirement of meeting the new conditional does in face create a second reason the recitation of performing such a step is essential.
Claims 23-28 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.
The claims recite a scanning probe microscope “configured to process the first measuring tip in such a way that only at least one second measuring tip can interact with the specimen to be examined.” It is unclear what configuration is being claimed, since no structures for performing such a processing are recited.
Closest Prior Arts of Record
US 6,493,571 (Yasutake), US 2010/00115672 (Mirkin et al.), US 2014/0283228 (Su), US 2014/0007306 (Baur et al.), and US 2010/0218284 (Jahnke) all disclose scanning probe microscopes comprising a measuring tip carrier comprising at least two measuring tips that are arranged together on the measuring tip carrier in such a way that only a first measuring tip can interact with a specimen to be examined in the scanning probe microscope. Mirkin discloses placing both on a single cantilever. Jahnke discloses switching to a different tip when the first one is not useable. US 2008/0141764 (Takaoka) discloses a scanning probe microscope configured to process a measuring tip by etching, including an electron source and a source of etching gas.
Response to Arguments
Applicant's arguments filed December 17th, 2025 have been fully considered but they are not persuasive.
Applicant argues that the sharpening and cleaning steps should not be interpreted under 112(f) because sharpening and cleaning are not nonce words and then describes the meaning of the words. Examiner agrees these are not nonce words, however 112(f) interpretation is not restricted to only claims using nonce words. Any limitation which is purely functional requires 112(f) interpretation, whether it uses nonce words or not. The word “sharpen” means to make sharper, which is a function. Hence, the language is functional. “Clean” as a verb means to make clean, which is also a function.
Applicant goes on to say that sharpening and cleaning of the measuring tips are not limited to the use of plasma, other ways to sharpen and clean the measuring tip are within the scope of the claim.
Examiner agrees, and that is precisely why she is interpreting under 112(f). If the claim recited the specific action of exposing the tip to plasma that would be an action and not a function and 112(f) interpretation would not be necessary. But applicant is claiming the function of sharpening or cleaning, which is much broader and covers, as per 112(f) interpretation, the corresponding action described in the specification as performing the function and equivalents thereof. Without 112(f) interpretation, the claim would be limited to only the specific methods of sharpening/cleaning recited in the claim. As no specific methods are recited in the claim, this would effectively make interpretation impossible, hence the need for 112(f) in interpreting purely functional limitations.
Applicant then describes an example of the feature of "processing the measuring tip carrier such that, following the processing, only the at least one second measuring tip interacts with the specimen to be examined". Examiner is unsure how the cited passage relates to the argument.
With respect to the rejections of claims 35-36, applicant argues that the “measuring tip carrier” includes the “measuring tips” and that the claims are referring to processing the measuring tips. As examiner stated in the previous office action, the sole difference between claims 1 and 35 was the substitution of the carrier for the tip, hence it was my assumption that there was a desire to claim a different process. Since that assumption was apparently incorrect, examiner has withdrawn the rejections and added the appropriate duplicate claim warning.
Regarding the rejections based on missing essential matter related to examining the sample, applicant argues that the addition of the limitation to the step occurring "after the first measuring tip has been used to examine one or more specimens one or more times, processing the first measuring tip" overcomes the issue. There is a difference between claiming an examination step and claiming that something happens after an examination. There is still no recitation of examination step in any of the claims.
Regarding the 112(b) rejections of claims 23-28, applicant notes that they amended it to include the limitation from original claim 24, which “recites a structure for performing processing as recited.” The rejection is not based on whether the claim recites such a structure, it is based on the fact that the claim includes a limitation to a configuration and the configuration being claimed is unclear. Adding an additional limitation does not change the clarity of the original and still present limitation.
The argument with respect to claim 25 is moot because the rejection has been withdrawn in light of the amendment.
The additional argument with respect to claims 35-36 is effectively addressed above.
Conclusion
THIS ACTION IS MADE FINAL. 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 ELIZA W OSENBAUGH-STEWART whose telephone number is (571)270-5782. The examiner can normally be reached 10am - 6pm Pacific Time M-F.
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/ELIZA W OSENBAUGH-STEWART/Primary Examiner, Art Unit 2881