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
1. The amendment received on July 21, 2026, has been entered in full.
2. Applicant’s arguments with respect to claims interpretation under 35 USC 112 (f)/6th paragraph have been considered and are not persuasive, therefore, claims interpretation under 35 USC 112 (f)/6th paragraph have been maintained. Applicant argues in substance that “The claims do not use the term "means," and therefore there is a rebuttable presumption that §112(f) does not apply. The Office has not overcome that presumption because the complete terms "imaging units," "first imaging unit," and "second imaging unit" connote sufficiently definite image-acquisition structure to a person of ordinary skill in the art.”
Examiner respectfully disagrees. Claim limitations as filed uses a term “unit(s)” that is a generic placeholder (also called nonce term or a non-structural term having no specific structural meaning) that is coupled with functional language without reciting sufficient structure to perform the claimed function.
3. Applicant’s arguments with respect to claims rejected under 35 USC 112 (2nd paragraph) have been considered and are persuasive, therefore, rejection under 35 USC 112 (2nd paragraph) have been withdrawn.
4. Applicant’s arguments with respect to claims rejected under 35 USC 103 as presented in the amendment filed have been fully considered and are persuasive, therefore rejections under 35 USC 103 have been withdrawn.
5. With respect to double patenting rejection, since applicant did not address double patenting rejection issue, office still maintains double patenting rejection on the respective claims.
Double Patenting
6. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
7. Claims 1, 4, 7, 9, 13, 15 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-8, 15 and 18 of U.S. Patent No. 12,020,417 B2 (herein referred to as Buzaglo). Although the claims at issue are not identical, they are not patentably distinct from each other because
Regarding claim 1, claim 1 has been analyzed and rejected as per claim 7 of Buzaglo (claim 7 includes the subject matter of claim 7 and 1; and the citations have been made both in claim 1 and 7).
Regarding claim 1, Buzaglo discloses A method comprising:
obtaining one or more images of a defect located on a die of a semiconductor wafer (claim 1 – col. 12, lines 66-67;
applying a plurality of prediction models on the one or more images to obtain a plurality of classification decisions of the defect, each of the plurality of prediction models is configured to classify defects into one or more defect classes (claim 1 – col. 13, lines 11-20);
obtaining metrology information of the defect and utilizing the metrology information in combination with the plurality of classification decisions to determine a combined classification decision of the defect (claim 7 – col. 13, lines 38-42); and
outputting the combined classification decision (claim 1 – col. 13, line 21).
Regarding claim 4, claim 4 has been analyzed and rejected as per claim 8 of Buzaglo.
Regarding claim 7, claim 7 has been analyzed and rejected as per claim 1 of Buzaglo (col. 13, lines 1-4).
Regarding claim 9, claim 9 has been analyzed and rejected as per claim 1 of Buzaglo (col. 13, lines 1-4).
Regarding claim 13, claim 13 has been similarly analyzed and rejected as per claim 7; and further can also be rejected as per claim 18.
Regarding claim 15, claim 15 has been analyzed and rejected as per claim 8 of Buzaglo.
Regarding claim 18, claim 18 has been analyzed and rejected as per claim 1 of Buzaglo (col. 13, lines 1-4).
Claim Interpretation
8. 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.
9. 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.
10. 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 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. Such claim limitation(s) is/are: “imaging units”, “first imaging unit”, “second imaging unit” in claims 10, 13, and 20.
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.
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.
The closest prior art(s) as cited do not teach “utilizing the metrology information in combination with the plurality of classification decisions to determine a combined classification decision of the defect; and outputting the combined classification decision” as recited in claims 1 and 13.
11. Claims 2-3, 5-6, 8, 10-12, 14, 16-17 and 19-20 are objected to as being dependent upon a rejected base claim 1, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
12. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Chen et al., U.S. Patent No. 8,135,204 B1 teaches a histogram of a defect (col. 11).
Luu et al., U.S. Patent Publication No. 7,229,845 B1 teaches a histogram of a defect (figure 3).
Price et al., U.S. Patent No. 11,293,970 B2, discloses a histogram of a defect.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Manav Seth whose telephone number is (571) 272-7456. The examiner can normally be reached on Monday to Friday from 8:30 am to 5:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Sumati Lefkowitz, can be reached on (571) 272-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Manav Seth/
Primary Examiner, Art Unit 2672
September 30, 2026
