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 .
Information Disclosure Statement
The information disclosure statement filed 05/17/2024 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
The applicants have provided neither explanation of relevance, nor translation of the document “Notice of Opposition for EP 20178755.9, dated May 10, 2024 [54] pages”.
The information disclosure statement filed 05/17/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
No proper copy of JP 2005-311320 has been filed.
The copy provided by the applicants does not contain recognizable text only empty squares.
See for example page 7 of the documents a copy of which is provided below.
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The information disclosure statement filed 05/17/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
No proper copy of JP 2007-27195 has been filed.
The copy provided by the applicants does not contain recognizable text only empty squares (the same deficiency as indicated above with respect to JP 2005-311320).
The information disclosure statement filed 05/17/2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
No proper copy of JP 2007-285849 has been filed.
The copy provided by the applicants does not contain recognizable text only empty squares (the same deficiency as indicated above with respect to JP 2005-311320).
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 18/093,968, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
As to claim 1 and the dependent claims the disclosure of the parent application fails to support the limitation of “the controller is configured move the SPM tip and debris from a location proximate to the substrate to a metrology location to receive a first signal from the irradiation detector, and the controller is configured to effect relative motion between the SPM tip and at least one of the irradiation detector and the irradiation source via the actuator system based on the first signal to allow detection of all debris on the SPM tip.”.
The disclosure of the parent application fails to support the recitation of a non-specified first signal from the irradiation detector in the referenced limitations.
The disclosure of the parent application supports only a first signal from the irradiation detector based on a response of the irradiation detector to the sample irradiation. No support for the non-specified first signal is provided by the disclosure of the parent application.
Thus, the disclosure of the parent application fails to provide support for the entire scope of the referenced limitations.
As to claim 8 and the dependent claims the disclosure of the parent application fails to support the limitation of “effecting relative motion between the SPM tip and at least one of the irradiation source and the irradiation detector to remove the particle from the high aspect ratio SPM tip”.
In contrast, the disclosure of the parent application teaches the removal of the particles from the SPM tip by the relative motion between the collector and the SPM tip to remove particles.
This application repeats a substantial portion of prior Application No. 18/093,968, filed 01/06/2023, and adds disclosure not presented in the prior application. Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
Specification
The disclosure is objected to because of the following informalities:
The specification states on the first page that the instant is “a US Patent Application No. 18/093,968 filed January 6, 2023”.
This is not correct.
The instant application is a US Patent Application No. 18/642,130.
Appropriate correction is required.
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 1-14 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.
As to claims 1-7:
The disclosure fails to provide adequate description for “the controller is configured move the SPM tip and debris from a location proximate to the substrate to a metrology location to receive a first signal from the irradiation detector, and the controller is configured to effect relative motion between the SPM tip and at least one of the irradiation detector and the irradiation source via the actuator system based on the first signal to allow detection of all debris on the SPM tip.”.
The disclosure fails to support the recitation of a non-specified first signal from the irradiation detector in the referenced limitations.
The disclosure supports only a first signal from the irradiation detector based on a response of the irradiation detector to the sample irradiation. No support for the non-specified first signal is provided by the disclosure.
Thus, the disclosure fails to provide support for the entire scope of the referenced limitations.
As to claims 8-14 the disclosure fails to provide adequate disclosure of “effecting relative motion between the SPM tip and at least one of the irradiation source and the irradiation detector to remove the particle from the high aspect ratio SPM tip”.
In contrast, the disclosure teaches the removal of the particles from the SPM tip by the relative motion between the collector and the SPM tip to remove particles.
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 2-3, 7-14 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.
As to claim 2:
The claim is indefinite because the term “the tip” lacks proper antecedent basis.
As to claim 3:
The claim is indefinite because it is not clear where the debris collector is “removably mounted”.
As to claim 7:
The claim is indefinite because it is not clear how “an electron beam” can be the radiation source.
As to claims 8-14:
The claims are indefinite because it is not clear how a relative motion between the SPM tip and the irradiation source/detector can remove the particle.
The claims are further indefinite because the terms “the SPM tip” and “the particle” in claim 8 lack proper antecedent basis.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The publications of the related applications and the patents issued on the related applications have been made of the record.
The documents cited during prosecution of the parent applications have been considered.
The IDSes filed 08/26/2025 and 05/17/2024 have been considered.
The documents listed on the attached PTO 892 are cited to show the state of the art with respect to devices and methods for debris collection and metrology systems.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER MARKOFF whose telephone number is (571)272-1304. The examiner can normally be reached 9:00 am - 5:30 pm.
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, Michael Barr can be reached at 571-272-1414. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALEXANDER MARKOFF/ Primary Examiner, Art Unit 1711
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