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 .
Election/Restrictions
Claims 1, 4, and 6-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/29/2026.
Applicant's election with traverse of species ii of Group II, claims 2 and 5, in the reply filed on 07/21/2026 is acknowledged. The traversal is on the ground(s) that “the elected and nonelected claims share a common special technical feature and there would not be an undue burden to search multiple groups or species. This is not found persuasive. Page 5 of the lack of unity requirement filed 05/29/2026 recites "Applicant is required, in reply to this action, to elect a single species to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added." and MPEP 809.02(a) describes the process of election of species that states the species are preferably identified as species of figures and "a reply to a requirement made according to this section should include a proper election along with a listing of all claims readably thereon". Here, it is the applicant's responsibility to identify the claims that read on the species. The parentheticals were merely suggestions of claims that appear to correspond to the disclosed species. However, with respect to the parenthetical (claim 5, 11) to sub species (3), it is noted that the subspecies would cover claim 5 if group II is elected or would cover 11 if group IV is elected. Since the shared technical concept of groups II and IV were known to the art as evidenced by Fuller, Groups II and IV require mutually exclusive characteristics and are properly restrictable.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 2 is objected to because of the following informalities: Claim 2 recites “an image generation step of generating an observation image of cross-section of the sample…”. Please amend to include an article before the noun “cross-section.” Appropriate correction is required.
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.
Claim 5 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 5 recites “comprising a pre-processing step of focusing the electron beam based on the observation image of a pattern of deposits on a surface of the sample, wherein the pre-processing step is executed before the machining step that is executed initially” is indefinite because it is not clear how the pre-processing step can be executed before the machining step that is executed initially, if the pre-processing step is based on “the observation image” which is taken after the machining step is finished.
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 2 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Man, et. al. (US 20150060664 A1), hereinafter Man.
Regarding claim 2, Man teaches a machining method comprising:
a machining step of processing a cross-section of a sample in which a plurality of layers is laminated by a predetermined amount by irradiating the sample with a focused ion beam (etching by the focused ion beam 21 exposes cross-section of a sample, [0072], FIGS. );
an image generation step of generating an observation image of cross-section of the sample by irradiating the sample with an electron beam after the machining step is finished (irradiating the exposed cross-section with the electron beam 22 to acquire an observation image, [0072], FIGS. ); and
a specific layer determination step of determining whether a specific layer among the plurality of layers is exposed based on the observation image (determining whether end condition is met, [0102] teaches determining whether the end condition is met involves determining if observation targets M11 to M14 are not detected anymore. This is based on the observation image (i.e., contrast of the SEM image), FIGS. 9A and 9B),
wherein, with the machining step (cross-section processing part of S2 in Fig. 11), the image generation step (observation part of S2 in Fig. 11), and the specific layer determination step (steps S3 and S4 in Fig. 11) being a set, the set is repeatedly executed until exposure of the specific layer is detected in the specific layer determination step (FIG. 11 ).
Regarding claim 5, Man teaches further comprising a pre-processing step of focusing the electron beam based on the observation image of a pattern of deposits on a surface of the sample, wherein the pre-processing step is executed before the machining step that is executed initially (condition setting of the cross-sectional image acquisition step includes focusing the electron beam, [0079]. This is done in the cross-section where the preset specific material (interpreted to be the pattern of deposits on a surface of the sample since these materials are deposited on the sample)) is detected and based on the observation image, [0079], Fig. 11).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Rhinow, et. al. (US 20210110996 A1).
Teaches focusing of an electron beam
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LAURA E TANDY
Examiner
Art Unit 2881
/WYATT A STOFFA/ Primary Examiner, Art Unit 2881
