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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/16/2025 has been entered.
Response to Amendment
It is noted that the amendment contains incorrect status identifiers for several claims, and the amendment fails to consistently show cancelled or amended text compared to the most recent version of the claims, filed 7/20/2025. Just three of the myriad errors throughout the amendment include:
Claim 5 does not appear to have changed from the amendment filed 7/20/2025; however, the status identifier is “currently amended” and the previously-cancelled text is still present in strikethrough typeface;
Claims 6 and 8 have been extensively amended over the claims filed 7/20/2025; however, the status identifier is incorrect, and none of the changes have been marked (underline, double-brackets, and/or strikethrough, as appropriate); and
Claim 20 appears unchanged from the amendment filed 7/20/2025; however, the status identifier is “new”.
Throughout all of the claims, it is unclear exactly what amendments have been made, and what text is intended to be claimed or canceled. As such, any clarifications made in response to this Office action, that necessitate new grounds of rejection, may likely result in the next action being Final.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “x-ray blocking mask has multiple different non-zero thicknesses at multiple different locations thereof” (claim 6) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 6, 8 and 9 are rejected under 35 U.S.C. 112(a) 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, at the time the application was filed, had possession of the claimed invention.
Claim 6, as amended, requires “wherein said x-ray blocking mask has multiple different non-zero thicknesses at multiple different locations thereof”, which is neither described in the specification as originally filed, nor illustrated in any of the drawings. At best, the descriptions in the originally-filed specification of having multiple apertures in the mask leaves the skilled artisan to conclude that the mask has a thickness of zero (apertures) and a non-zero thickness elsewhere. As such, it is clear that Applicant did not have possession of the claimed invention at the time of filing.
This is a new matter rejection.
Claim 8, as amended, requires “wherein said x-ray blocking mask is formed of multiple materials having different x-ray absorption characteristics”, which is neither described in the specification as originally filed, nor illustrated in any of the drawings. In fact, the specification consistently states that the mask is “made of gold”, there does not appear to be a clear statement acknowledging that the mask may be made of more than one element, and the specification even states on p.5 that “the plurality of intermediate layers 208 provide a graded transition between the … diamond substrate 210 and the pure metal of mask 202” (emphasis added). As such, it is clear that Applicant did not have possession of the claimed invention at the time of filing.
This is a new matter rejection.
Claim 9 is rejected under this paragraph by virtue of its dependence upon claim 6, thus incorporating the unsupported subject matter.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-5 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kogan (EP 1 727 185 A1).
Regarding claim 1, Kogan discloses an x-ray source (Figs.1-4), including:
a) an electron gun 16 that is configured to generate an electron beam; and
b) a patterned x-ray emitting target 18 including an x-ray blocking mask 38 having one or more openings 36, and one or more structural elements 34, 30 positioned below the x-ray blocking mask 38 and having an x-ray generating structural element 34 (Fig.3); where
c) the one or more structural elements 34, 30 having a top structural element 34 (Fig.3); where
d) the one or more openings 36 pass through an entirety of the x-ray blocking mask 38 and define one or more empty spaces 36 that terminate at the top structural element 34 (Fig.3); where
e) the x-ray generating structural element 34 is configured to receive electrons 42 of the electron beam that pass through the x-ray blocking mask 38, and reflect, through the x-ray blocking mask, the x-ray beam (Figs.1-3); and where
f) the x-ray blocking mask 38 is shaped and sized to prevent obstruction of grazing angle exit x-ray photons (linear shape, Fig.2).
With respect to claim 3, Kogan further discloses that the top structural element 34 is an active layer including W (par.0043).
With respect to claim 4, Kogan further discloses that the electron gun 18 is operative to provide an electron beam that has spatially varying intensity (inherent due to mutual repulsion, e-beams spread and form an approximately Gaussian intensity distribution in the plane perpendicular to the direction of propagation; also see the shape of the resulting x-ray emission in Fig.4).
With respect to claim 5, Kogan further discloses that the one or more openings 36 are configured to generate the x-ray having a desired x-ray pattern, where the one or more openings are configured as strip-like openings arranged in a 1D pattern (Fig.4).
With respect to claim 14, Kogan further discloses that the x-ray generating structural element 34 is an x-ray emitting overlay 34 formed on at least one surface of a thermally conductive substrate 30 (Fig.3).
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.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kogan, as applied to cliam 1 above.
With respect to claim 2, Kogan does not specifically disclose the thickness of the x-ray blocking mask 38.
However, the skilled artisan readily appreciates the fact that, for the x-ray blocking layer to be effective, it must be thick enough to prevent any x-rays generated at least in the material below the layer from escaping. The penetration depth of electrons and of x-rays are well-known from publicly-available formulas where the thickness of the mask may be optimized based on the incident electron energy and the material of the mask and of the underlying material(s).
In particular, Kogan discloses in Fig.4 the substantial effectiveness of the mask insofar as it successfully suppresses extrafocal radiation from the x-ray emission layer 34.
Further, it has been held that, when the general conditions of the claim have been met, optimizing an art-recognized, result-effective variable requires only routine experimentation in the art (MPEP 2144.05(II)(B)).
It would have been obvious to one of ordinary skill in the art at the time of the invention for Kogan to have the mask layer between 0.1 and 0.2 microns, based on the desired electron energy, mask material, and substrate material, as known in the art, with a reasonable expectation of success and without undue experimentation.
Claims 6, 8, 11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kogan, as applied to claim 1 above, in view of Newcome (US 7,359,487 B1).
With respect to claims 6 and 8, Kogan further discloses that the top structural layer 34 is an active layer (Fig.3), where the one or more structural elements 34, 30 includes a substrate 30 underlying the active layer 34 (Fig.3), the x-ray blocking mask has and where the x-ray blocking mask is formed of multiple materials having different x-ray absorption characteristics (par.0049).
Further with respect to claims 6 and 8, Kogan does not specifically disclose the composition of the substrate 30, nor a plurality of bonding layers between them.
Newcome teaches the practice of providing an x-ray anode with improved thermal cooling for greater mechanical longevity of the anode (Fig.1B), including an x-ray active layer 105 and an underlying diamond substrate 101, where the active top layer 105 is bonded to the diamond substrate 101 via a plurality of intermediate layers 104, 103 and 102. The intermediate layers improve adhesion by providing a graded transition between the active layer 105 and the diamond substrate 101 for improved mechanical resilience to the intense thermal cycling of x-ray anodes.
It would have been obvious to one of ordinary skill in the art at the time of the invention for Kogan to have the substrate formed as a diamond substrate underlying the active top layer and bonding thereto via a plurality of intermediate layers that provide a graded transition between the active layer and the diamond substrate in order to improve the service life of the x-ray tube, as taught by Newcome.
With respect to claim 11, Kogan further discloses that the one or more structural elements include a substrate 30 (Fig.3).
Kogan does not specifically disclose a heat sink and that the substrate is made of diamond.
Newcome teaches the practice of improving x-ray anode longevity by improving thermal conductivity through a diamond substrate 101 bonded to an x-ray generating substrate 105, and a heat sink 115 bonded to the diamond substrate 101 (Fig.1B), where the heat sink 115 is bonded to the diamond substrate 101 via intermediate layers 110, 111, 112, 113, 114 which may include titanium, chromium, nickel, gold, silver, aluminum, copper, any alloy thereof, and any combination thereof (col.5, line 44, through col.6, line 21).
It would have been obvious to one of ordinary skill in the art at the time of the invention for Kogan to have the substrate bonded to the x-ray generating substrate be made of diamond, and a heat sink bonded to the diamond substrate, where the heat sink is bonded to the diamond substrate via intermediate layers consisting of one or more of the above materials in order to improve thermal management of the anode for greater x-ray source longevity, as taught by Newcome.
With respect to claim 15, Kogan further discloses that the one or more structural elements includes a substrate 30 having a high thermal conductivity (Fig.3).
Kogan does not specifically disclose the composition of the substrate 30.
Newcome teaches the practice of providing an x-ray anode with improved thermal cooling for greater mechanical longevity of the anode (Fig.1B), including an x-ray active layer 105 and an underlying diamond substrate 101, where diamond and other allotropes of carbon are routinely used as high thermal conductivity substrates for the combination of optimal heat dissipation, electrical insulation, and mechanical integrity, as is widely recognized in the art.
It would have been obvious to one of ordinary skill in the art at the time of the invention for Kogan to have the substrate made of diamond for effective heat dissipation as known in the art.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kogan and Newcome, as applied to claim 6 above, in view of Zhong (US 2010/0046717 A1).
With respect to claim 9, neither Kogan nor Newcome disclose or teach that the substrate is configured to have increased heat conduction characteristics by optimizing at least one of the claimed material properties.
Zhong teaches the practice of providing regions 67, 85, 89, 94, 97 and 98 of an x-ray generating substrate having increased heat conduction characteristics by optimizing at least one of grain size and surface roughness (pars.0032 and 0042) that are adjacent to, but not including, the x-ray emission portions 86 (Fig.2). In this manner, the mechanical integrity of the x-ray tube is improved due to increased heat dissipation.
It would have been obvious to one of ordinary skill in the art at the time of the invention for the Kogan/Newcome prior art combination to have the diamond substrate be configured to have increased heat conduction characteristics by optimizing at least one of the grain size and surface roughness of the diamond portion in order to improve the longevity of the anode, as taught by Zhong.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kogan, as applied to claim 1, in view of Matsushima (US 1,953,813).
With respect to claim 7, Kogan does not specifically disclose at least one adhesion layer disposed between the x-ray generating substrate 34 and the x-ray blocking mask 38, though Kogan does disclose that the target 34 may be copper and the mask 38 may be carbon (par.0054).
Matsushima teaches the practice of providing at least one adhesion layer of nickel or iron between the copper target body 4 and the carbon x-ray mask in order to improve the longevity of the x-ray tube by increasing the adherence of the carbon mask to the copper target (p.1, lines 79-106).
It would have been obvious to one of ordinary skill in the art at the time of the invention for Kogan to include at least one adhesion layer between the x-ray generating substrate and the x-ray blocking mask in order to increase the x-ray tube longevity, as taught by Matsushima.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Kogan, as applied to claim 1 above, in view of Okumura (US 2011/0058655 A1).
With respect to claim 10, Kogan further discloses that the one or more structural elements includes a substrate 30.
Kogan does not specifically disclose that the substrate is a diamond substrate that is boron-doped to increase electrical conductivity.
Okumura teaches a patterned x-ray target (Fig.4) where a diamond layer 12 on the substrate 1 is boron-doped in order to improve the electrical conductivity for dissipating charge buildup from the electron beam (pars.0043-0044).
It would have been obvious to one of ordinary skill in the art at the time of the invention for Kogan to have a diamond substrate that is boron doped in order to dissipate charge buildup from the electron beam, as taught by Okumura.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Kogan, as applied to claim 1 above, in view of Matsushima and Newcome.
With respect to claim 13, Kogan further discloses that the x-ray generating structural element 34 is an x-ray emitting overlay 34 and that the one or more structural elements includes a substrate 30 (Fig.3).
However, Kogan does not specifically disclose that the substrate is made of diamond, nor does Kogan disclose at least one adhesion layer between the x-ray blocking mask 38 and the x-ray emitting overlay 34, nor at least one adhesion layer between the x-ray emitting overlay 34 and the substrate 30.
Matsushima teaches the practice of providing at least one adhesion layer of nickel or iron between the copper target body 4 and the carbon x-ray mask in order to improve the longevity of the x-ray tube by increasing the adherence of the carbon mask to the copper target with a graded transition (p.1, lines 79-106).
It would have been obvious to one of ordinary skill in the art at the time of the invention for Kogan to include at least one adhesion layer between the x-ray emitting overlay and the x-ray blocking mask in order to increase the x-ray tube longevity, as taught by Matsushima.
Newcome teaches the practice of providing an x-ray anode with improved thermal cooling for greater mechanical longevity of the anode (Fig.1B), including an x-ray active layer 105 and an underlying diamond substrate 101, where the active top layer 105 is bonded to the diamond substrate 101 via a plurality of intermediate layers 104, 103 and 102. The intermediate layers improve adhesion by providing a graded transition between the active layer 105 and the diamond substrate 101 for improved mechanical resilience to the intense thermal cycling of x-ray anodes.
It would have been obvious to one of ordinary skill in the art at the time of the invention for Kogan to have the substrate formed of diamond and bonded to the x-ray emission overlay via a plurality of intermediate layers in order to improve the service life of the x-ray tube, as taught by Newcome.
Claims 16, 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Kogan in view of Janik (US 2003/0086533 A1) and Yamazui (WO 2011/122020 A1; see previously-provided translation).
Regarding claim 16, Kogan discloses an x-ray system (Fig.1), including:
a) an x-ray source 20 for generating an x-ray beam;
b) a sample holder 6 for positioning a sample 14;
c) a monochromator 10; and
d) a detector 8 for collecting at least a portion of radiation produced by the sample 14; where the x-ray source 20 includes (Figs.1-4):
i) an electron gun 16 that is configured to generate an electron beam 42; and
ii) a patterned x-ray emitting target having:
iii) an x-ray blocking mask 38 that includes one or more openings 36; and
iv) one or more structural elements 34, 30 positioned below the x-ray blocking mask 38 and including an x-ray generating structural element 34, the one or more structural elements having a top structural element 34, where the one or more openings 36 pass through an entirety of the x-ray blocking mask 38 and define one or more empty spaces that terminate at the top structural element 34, where the x-ray generating structural element 34 is configured to receive electrons of the electron beam 42 that pass through the x-ray blocking mask 38, and reflect, through the x-ray blocking mask 38, the x-ray beam (Figs.2-3); and where
v) the x-ray blocking mask 38 is shaped and sized to prevent obstruction of grazing angle exit x-ray photons (linear shape, Fig.2).
Further regarding claim 16, Kogan does not specifically disclose that the monochromator is between the x-ray source and the sample. Kogan teaches the monochromator being placed in a conjugate position downstream of the sample.
Janik teaches the routine practice of providing a monochromator 120 upstream of the sample 142 in order to ensure that only the desired x-ray energy impinges upon the sample, where the monochromator filters out any stray x-ray emission from a metal mask layer 622 (Figs.1a and 6; see at least par.0041).
Since Kogan teaches that the x-ray emission from the mask layer 38 needs to be filtered out, one of ordinary skill recognizes that the reversal of the monochromator position from downstream to upstream of the sample ensures accurate and precise results of the desired x-ray analysis with a reasonable expectation of success and without undue experimentation.
It would have been obvious to one of ordinary skill in the art at the time of the invention for Kogan to have the monochromator between the x-ray source and the sample in order to ensure accurate and precise measurements of the sample, as taught by Janik and as notoriously well-known in the art.
Further regarding claim 16, Kogan does not specifically disclose that the detector is a photoelectron detector. Kogan discloses an x-ray detector.
Yamazui teaches the practice of providing a similar x-ray source to an XPS system including a photoelectron detector 15 in order to provide accurate surface composition analysis.
It would have been obvious to one of ordinary skill in the art at the time of the invention for Kogan to substitute a photoelectron detector in order to diversify the device capabilities, as suggested by Yamazui, with a reasonable expectation of success and without undue experimentation.
With respect to claim 17, Kogan does not specifically disclose the thickness of the x-ray blocking mask 38.
However, the skilled artisan readily appreciates the fact that, for the x-ray blocking layer to be effective, it must be thick enough to prevent any x-rays generated at least in the material below the layer from escaping. The penetration depth of electrons and of x-rays are well-known from publicly-available formulas where the thickness of the mask may be optimized based on the incident electron energy and the material of the mask and of the underlying material(s).
In particular, Kogan discloses in Fig.4 the substantial effectiveness of the mask insofar as it successfully suppresses extrafocal radiation from the x-ray emission layer 34.
Further, it has been held that, when the general conditions of the claim have been met, optimizing an art-recognized, result-effective variable requires only routine experimentation in the art (MPEP 2144.05(II)(B)).
It would have been obvious to one of ordinary skill in the art at the time of the invention for Kogan to have the mask layer between 0.1 and 0.2 microns, based on the desired electron energy, mask material, and substrate material, as known in the art, with a reasonable expectation of success and without undue experimentation.
With respect to claim 19, the prior art combination of Kogan and Janik results in that the one or more openings 36 are configured to direct the x-ray beam to the monochromator (120, also see par.0041), where the monochromator receives the x-ray beam and produces a monochromatic x-ray beam that is directed to the sample holder for improved sample measurement and analysis.
It would have been obvious to one of ordinary skill in the art at the time of the invention for Kogan to have the monochromator between the x-ray source and the sample in order to ensure accurate and precise measurements of the sample, as taught by Janik and as notoriously well-known in the art.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Kogan, Janik, and Yamazui, as applied to claim 16 above, in view of Newcome.
With respect to claim 18, Kogan further discloses that the top structural element 34 is an active layer 34 and the x-ray generating structural element further includes a substrate 30 underlying the active top layer 34.
However, Kogan does not specifically disclose the composition of the substrate 30, nor the presence of bonding layers.
Newcome teaches the practice of providing an x-ray anode with improved thermal cooling for greater mechanical longevity of the anode (Fig.1B), including an x-ray active layer 105 and an underlying diamond substrate 101, where the active top layer 105 is bonded to the diamond substrate 101 via a plurality of intermediate layers 104, 103 and 102. The intermediate layers improve adhesion by providing a graded transition between the active layer 105 and the diamond substrate 101 for improved mechanical resilience to the intense thermal cycling of x-ray anodes.
It would have been obvious to one of ordinary skill in the art at the time of the invention for Kogan to have the substrate underlying the active top layer formed of diamond and bonded thereto via a plurality of intermediate layers in order to improve the service life of the x-ray tube, as taught by Newcome.
Allowable Subject Matter
Claim 20 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Kogan specifically teaches throughout the disclosure that the metal of the mask layer 38 must have a lower atomic number than that of the target layer 34. Additionally, Baumann (US 2007/0153979 A1, previously made of record) teaches a mask layer 16 being made of a low-Z material compared to the x-ray emission material (Fig.6 and par.0041); and Annis (US 7,023,950 B1, previously made of record) teaches an x-ray masking layer 46 made of a low-Z material compared to the x-ray emission material (Figs.1 and 3; col.4, lines 15-29).
While Janik generally teaches that any dissimilar metal may be used as the mask 622 in order to distinguish the x-ray energy of the x-ray emission layer 621a from the extrafocal radiation from the mask 622 (Fig.6 and par.0041), there is no specific guidance or concrete examples of a metal. The only specific and preferred examples are compositions of carbon and/or silicon, which is consistent with the teachings of Kogan, Baumann and Annis.
Given the fact that gold, like all high-Z materials, has a wide array of interfering x-ray energies from L- and M-band transitions, and given the various teachings away from having x-ray masks made from elements heavier than the x-ray generating target, the prior art neither teaches nor reasonably suggests the additional limitation that the x-ray blocking mask is made of gold, as required by the combination of features as claimed in claim 20.
Response to Arguments
Applicant's arguments with respect to claims 1 and 16 have been fully considered and are persuasive. The present amendments to the claims overcome the outstanding anticipation rejections of record over Janik. However, existing prior art of record anticipates the claims, where Kogan teaches an opening as claimed within an x-ray mask material of an x-ray anode.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (see attached PTO-892 unless otherwise stated): US patent documents to Durst et al teaches the practice of providing a line or spot focus using a linear focal spot for x-ray analyses; and US patent documents to Klausz et al and to Yun et al, neither available as prior art, each teach x-ray masks, where Klausz teaches that the mask material has a substantially lower Z over that of the x-ray emission target material (at least a ratio of 6:1 (target:mask)).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS R ARTMAN whose telephone number is (571)272-2485. The examiner can normally be reached Monday-Thursday 10am-6:30pm.
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THOMAS R. ARTMAN
Primary Examiner
Art Unit 2884
/THOMAS R ARTMAN/ Primary Examiner, Art Unit 2884