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 .
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 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:
“a classifier configured to output, in response to input of image data of a tilt image where the sample is imaged in an inclined state with respect to the charged particle beam, positional information of one or more feature parts existing on the tilt image” in claim 1;
“a first classifier configured to output positional information of one or more first feature parts existing in the image data” in claim 17; and
“a second classifier configured to output positional information of one or more second feature parts existing in the image data” in claim 17.
The corresponding structure of the above classifiers is described in the specification as specifically trained machine learning object detection algorithms using deep neural networks or cascade classifiers.
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.
Claim Rejections - 35 USC § 112
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.
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 following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
Claims 1-16 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.
Claim 1 recites, “the classifier is trained in advance by using training data in which input is image data of the tilt image, and output is positional information of the feature part.” The limitation “the tilt image” references the previous limitation, which recites, “the computer system includes a classifier configured to output, in response to input of image data of a tilt image where the sample.” This chain of antecedent bases makes it unclear whether or not the claim requires that the classifier be trained on images from the same sample for which the classifier is processing tilt images to output positional data.
Claim 2 recites, “the sample stage is controlled so that a field of view of the imaging device is shifted to the final observation position in accordance with the relative positional information set in the first setting field.” The “relative positional information set in the first setting field” is information input by the user into the GUI. As such, he claim recites an apparatus and a method of its use in the same claim. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). MPEP 2173.05(p) (II); and See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). Specifically, the claim recites the step of “the sample stage is controlled so that….” This limitation is a step because it recites an action to be performed, i.e., shifting the field of view. Identical issues arise in claim 3 with “the sample stage is controlled to adjust…”; claim 4 with “the imaging device is controlled to acquire…”; claim 5 with “wherein the imaging device is controlled to image …”; claim 7 with “the imaging device performs, by adjustment of the sample stage or image shift, correction of the field-of-view deviation…”; claim 8 with “ wherein whether a correction amount in the field-of-view deviation correction is appropriate is determined”; and claim 9 with “wherein the imaging device is controlled to execute focus adjustment …” In all of the above scenarios, it is unclear whether claims use the steps at issue as descriptions of the programming of a computer, as steps which the system is capable of executing upon the prompting of a user, or if the execution of the steps themselves is the defining characteristic of the system. These limitations in claims 2, 3, 4, 5, 7, 9, and 9 make the claims indefinite because the step claim language makes it unclear whether infringement occurs when one creates the system that allows for the step, or whether infringement occurs when the user input data into the GUI and the step actually occurs.
Claim 12 is 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. Claim 12 contradicts claim 1, from which it depends, by replacing the training of the classifier with different training. As such, the claim is indefinite.
Claim 8 recites, “ wherein whether a correction amount in the field-of-view deviation correction is appropriate is determined.” The applicant has provided insufficient standards for determining whether a correction amount is appropriate. As such, the determination is subjective. If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate. See Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470, 28 USPQ2d 1190, 1195 (Fed. Cir. 1993).
In this case, the subjective limitation precludes one of ordinary skill in the art from determining the metes and bounds of the claim so as to understand how to avoid infringement. Accordingly, the claim is rejected as indefinite.
Claim 3 recites, “the drive shaft.” There is insufficient antecedent basis for this limitation since claim 1, from which claim 3 depends, recites two drive shafts. As such, the claim is indefinite.
Claim 6 recites, “the increased magnification.” There is insufficient antecedent basis for this limitation since claim 4, from which claim 6 depends, makes no mention of increasing magnification.
Claims 17-18 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.
Claim 17 recites, “the imaging device performs:
in a field of view including the first feature part and a field of view including the second feature part, the field of view being shifted by the sample stage, a processing to increase the field of view to be a second magnification higher than the first magnification; and
in the field of view increased to be the second magnification, a processing to radiate the charged particle beam to the first feature part or the second feature part to sequentially execute elementary analysis.”
Notably, the imaging device is described in the specification as a Scanning Electron Microscope (SEM), not a programmed computer or controller.
A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). MPEP 2173.05(p) (II); and See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). Specifically, the claim recites the step of “the imaging device performs….” This limitation is a step because it recites an actions to be performed, i.e., shifting the field of view or executing analysis. It is unclear whether the steps at issue are steps which the SEM must be capable of executing upon the prompting and manipulation by a user, or if the execution of the steps themselves is the defining characteristic of the system. This limitation the claim indefinite because the step claim language makes it unclear whether infringement occurs when one creates the system that allows for the step, or whether infringement occurs when the user manipulates the system so that the step actually occurs. Claim 18 exhibits the same issue, and is subject to the same rejection, with respect to its recitation of “he imaging device performs, by adjustment of the sample stage or image shift, correction of the field-of-view deviation.”
For the sake of compact prosecution, the above indefinite claims will be interpreted as best understood in light of the specification.
Claims 12-13 and 15-16 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. As noted above, claim 12 contradicts claim 1, from which it depends, by replacing the training of the classifier with different training. That is to say that it fails to further limit the claim from which it depends. 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 § 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 (i.e., changing from AIA to pre-AIA ) 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, 2, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2008/0224040 A1 [Nagaoki].
Regarding Claim 1:
Nagaoki teaches a charged particle beam apparatus (Fig. 1), comprising:
an imaging device configured to acquire image data of a sample at a given magnification by radiating a charged particle beam to the sample (Fig. 1, para 10);
a computer system configured to execute arithmetic processing (Fig. 1) for field-of-view search at the time of acquisition of the image data, by using the image data (paras 80-81); and
a display unit on which a graphical user interface (GUI) to input a setting parameter for the field-of-view search is displayed (see e.g., Figs. 7, 8), wherein
the imaging device is provided with a sample stage configured to be capable of transferring the sample by at least two drive shafts (Fig. 11), and shifting an imaging field of view corresponding to positional information of the sample, the positional information being obtained by the computer system (as shown in Fig. 12),
the computer system includes a classifier (Fig. 16) configured to output, in response to input of image data of a tilt image where the sample is imaged in an inclined state with respect to the charged particle beam, positional information of one or more feature parts existing on the tilt image (paras 66-67),
the classifier is trained in advance by using training data in which input is image data of the tilt image, and output is positional information of the feature part (paras 64-65), and
the computer system executes, with respect to new tilt image data inputted into the classifier, a processing to output positional information of the feature part (paras 54, 64, 65, 73).
Regarding Claim 2:
Nagaoki teaches the charged particle beam apparatus according to claim 1, wherein the GUI displays a first setting field to set relative positional information of a final observation position to the feature part (Figs. 7-8), and
the sample stage is controlled so that a field of view of the imaging device is shifted to the final observation position in accordance with the relative positional information set in the first setting field (paras 70-73).
Regarding Claim 4:
Nagaoki teaches the charged particle beam apparatus according to claim 2, wherein the GUI displays a second setting field to set a final magnification of an image to be acquired (Fig. 6 – “Change Magnification Ratio”), and
the imaging device is controlled to acquire image data at the final observation position in accordance with the final magnification set in the second setting field (see Fig. 6).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/ Primary Examiner, Art Unit 2881