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
The amendments filed 08/26/2026 have been entered. Claims 1-15 remain pending in the application.
Response to Arguments
Applicant’s amendments to the drawings and specification have overcome each and every objection previously set forth in the Non-Final Office Action dated 06/02/2026, hereinafter NFOA0602.
Applicant’s amendments to the claims have overcome each and every objection and 35 U.S.C. 112(b) rejection previously set forth in NFOA0602.
Applicant's arguments filed 08/26/2026 with respect to the previously presented 35 U.S.C. 101 rejection of claims 1-13 and 15 have been fully considered but they are not persuasive.
Applicant argues that claim 1 does not recite an abstract idea, which Examiner respectfully disagrees with for at least the reasons previously discussed in NFOA0602 wherein the abstract idea was identified.
Applicant refers to the specific field of endeavor in which the abstract idea is applied. A mere implementation of the abstract idea to a field of endeavor does not alone make the claim patent eligible.
Applicant argues that the specific implementation of simulation integrates the judicial exception into a practical application. Examiner respectfully disagrees, as sub-sampling via use of a sparse set is part of the judicial exception itself, and thus cannot integrate the judicial exception into a practical application. These are mere mathematical calculations capable of being performed on a generic computer, recited at a high level of generality.
Applicant’s arguments that the claims are consistent with example 38 is not convincing, because in the present case an ordinarily skilled artisan would understand the claim as clearly claiming mathematical concepts as identified in NFOA0602, which have not been specifically refuted by Applicant’s response.
As discussed in 2106.04(d), “The courts have also identified limitations that did not integrate a judicial exception into a practical application:
• Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
• Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
• Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).”
As discussed in MPEP 2106.05, “Limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include:
i. Adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f));
ii. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d));
iii. Adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea such as a step of obtaining information about credit card transactions so that the information can be analyzed by an abstract mental process, as discussed in CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (see MPEP § 2106.05(g)); or
iv. Generally linking the use of the judicial exception to a particular technological environment or field of use, e.g., a claim describing how the abstract idea of hedging could be used in the commodities and energy markets, as discussed in Bilski v. Kappos, 561 U.S. 593, 595, 95 USPQ2d 1001, 1010 (2010) or a claim limiting the use of a mathematical formula to the petrochemical and oil-refining fields, as discussed in Parker v. Flook, 437 U.S. 584, 588-90, 198 USPQ 193, 197-98 (1978) (MPEP § 2106.05(h)).”
Accordingly, Applicant’s arguments are not convincing, and the previously presented 35 U.S.C. 101 rejection of claims 1-13 and 15 is maintained as proper.
Applicant’s arguments, see Remarks p. 8-11, filed 08/26/2026, with respect to the amended limitations of claim 1 as they pertain to the previously presented prior art rejection of claim 1 in view of Stevens have been fully considered and are persuasive. In particular, Stevens lacks the combination of limitations now required by amended claim 1. Accordingly, the previously presented prior art rejection of claims 1-12 have been overcome by amendment. However, claims 13 and 14 have not been similarly amended, and thus the previously presented rejections have not been overcome via similar amendments, despite applicant’s assertion to the contrary (see Remarks p. 10). Accordingly, these claims have not overcome the previously presented prior art rejection.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-13 and 15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea judicial exception without significantly more.
Claim 1 recites “A method of simulating an electron microscopy image of a sample, the method implemented by a computer comprising a processor and a memory, the method comprising: obtaining electron microscopy parameters, attributes of the sample, and respective thresholds of one or more target properties of the simulated electron microscopy image; and computing, via sub-sampling, the simulated electron microscopy image, wherein the simulated electron microscopy images has a size
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pixels, of the sample using the obtained electron microscopy parameters and the obtained attributes of the sample, according to the obtained respective thresholds of the one or more target properties of the simulated electron microscopy image, by: calculating a sparse set of S simulated sub-images, including a first sub-image of size
a
×
b
pixels of the sample; and reconstructing the simulated electron microscopy image of size
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pixels of the sample using the sparse set of S simulated sub-images of the sample; wherein the simulated electron microscopy image represents a simulated interaction of electrons with the sample, as defined by the obtained electron microscopy parameters and the obtained attributes of the sample.” (Emphasis added by Examiner). The underlined elements recite the key method step requirements, while the elements that are not underlined represent details of the underlined elements.
Under the BRI, this requires that a method of simulating an electron microscopy image of a sample be performed by taking in data (i.e., obtaining parameters, attributes, and thresholds), and performing computations on the obtained data to create additional data (i.e., computing the simulated image using the obtained data). In other words, the claim requires obtaining data, and using this data to create additional data.
Under step 1 (see MPEP 2106.03) of the subject matter eligibility test, this claim falls into the category of ‘processes’, as it requires a method.
Under step 2A, prong one (see MPEP 2106.04, in particular MPEP 2106.04.II.A) of the subject matter eligibility test, this claim recites an abstract idea judicial exception in at least the computing and calculating steps. See MPEP 2106.04(a).
Under step 2A, prong two, the judicial exception is not integrated into a practical application, because the claim first generally links the use of the judicial exception to a particular technological environment, the ‘obtaining data’ step amounts to insignificant extra-solution activity in the form of mere data gathering, and the claim recites no additional method steps.
Under step 2B (see MPEP 2106.05, and in particular MPEP 2106.05(b)), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because it recites only that the method is performed by a generic computer having a generic processor and memory, which is recited in high generality, such that no particular machine is required by the claim, and additional details of the computing step (i.e., the size of the image and a further recitation that the simulated image is formed via simulation according to the obtained data).
Accordingly, claim 1 is not patent eligible, because it is directed to an abstract idea judicial exception without significantly more.
Claims 2-12 recite details of the computing method step, or additional sub-steps of the computing step, which also recite abstract idea judicial exceptions for substantially similar reasons to those discussed above.
Claim 13 is not patent eligible for substantially similar reasons to claim 1, as discussed above. However, claim 13 additionally recites that the method is directed toward ‘controlling an electron microscope’, recites that the ‘obtaining’ and ‘computing’ steps are a part of a ‘simulating’ step, and recites an additional method step beyond those required by claim 1.
The claim reciting “A method of controlling an electron microscope” does not ameliorate the subject matter eligibility issue in the claim, as the claim still recites the judicial exception without significantly more (see below for further discussion of additional elements).
The ‘obtaining’ and ‘computing’ steps being sub-steps of a ‘simulating’ step also does not ameliorate the subject matter eligibility issue in the claim, as those sub-steps still amount to insignificant extra-solution activity (i.e., data gathering) and a recitation of the judicial exception, respectively.
Claim 13 additionally recites “…acquiring an acquired image of the sample comprising controlling the electron microscope using the parameters of the electron microscopy used for the simulated image.” This step amounts to insignificant extra-solution activity. The acquiring of the electron microscope image is unrelated to the calculating step in the claim, and the two steps are not linked, in that, the calculating step has no bearing whatsoever on the outcome of the standard electron microscope image acquiring. The claim requires taking in data (i.e., parameters, attributes, and thresholds), subsequently performing calculations on this data, and separately taking an electron microscopy image with this data. The obtained data is not manipulated in any way prior to being used to acquire the electron microscope image, and the step of acquiring an electron microscope image using input parameters is generally known in the art. Accordingly, these additional recitations do not amount to significantly more than the judicial exception, and thus claim 13 is not patent eligible because it is directed to an abstract idea judicial exception without significantly more.
As previously discussed, claim 14 is patent eligible. Claim 14 clearly belongs to a process. Claim 14 recites a judicial, exception, however, it is Examiner’s opinion that this judicial exception is integrated into a practical application.
Claim 15, however, does not integrate its recited judicial exceptions into a practical application, as the comparing step is not used to take tangible action in the way claim 14 is, and merely comparing data (i.e. the images) includes an additional judicial exception (mental processes: comparing images can be performed in the human). As such, claim 15 is directed to a judicial exception without significantly more, and is not patent eligible.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stevens (US 20190043690 A1).
Examiner notes that Stevens is Applicant provided prior art via the IDS dated 04/05/2024.
Regarding claim 13, Stevens teaches a method of controlling an electron microscope (Abstract; [0008]; [0034]; [0037]), the method implemented, at least in part, by a computer comprising a processor and a memory ([0044]; [0046]), the method comprising:
simulating a simulated electron microscopy image of a sample (See Fig. 2; [0012]-[0013]; [0046]-[0047]) by:
obtaining electron microscopy parameters ([0046]; Examiner notes that the STEM parameters must be obtained to simulate the images), attributes of the sample ([0046]; i.e., the reference to ZnSe, which is a known standard test sample, the attributes of which are known and must be obtained to be simulated) and respective thresholds of one or more target properties of the simulated electron microscopy image ([0034]; [0046]; e.g., dose threshold); and
computing, via sub-sampling, the simulated electron microscopy image, wherein the simulated electron microscopy image has a of size
[
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×
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pixels, of the sample using the obtained electron microscopy parameters and the obtained attributes of the sample, according to the obtained respective thresholds of the one or more target properties of the simulated electron microscopy image (See Fig. 2, showing images having plural pixels in two dimensions, obtained according to parameters, attributes, and thresholds of target properties; [0046]), wherein the simulated electron microscopy image represents a simulated interaction of electrons with the sample, as defined by the obtained electron microscopy parameters and the obtained attributes of the sample (This limitation is inherently disclosed by [0046], as the simulation simulates electrons interacting with ZnSe according to the input given to the simulation); and
acquiring an acquired image of the sample comprising controlling the electron microscope using electron microscopy parameters used for the simulated electron microscopy image (See Fig. 1; [0005]-[0008]; [0037]-[0040]).
Regarding claim 14, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Stevens teaches a method of controlling an electron microscope (Abstract; [0008]; [0034]; [0037]), the method implemented, at least in part, by a computer comprising a processor and a memory ([0044]; [0046]), the method comprising:
providing electron microscopy parameters (See Figs. 1-2; [0037]-[0040]; [0046]);
acquiring a first acquired image of a sample comprising controlling the electron microscope using the provided parameters of the electron microscopy (See Figs. 1-2; [0037]-[0040]; [0046]-[0051]);
simulating a first simulated electron microscopy image of the sample (See Fig. 2; [0012]-[0013]; [0046]-[0047]) by:
obtaining the electron microscopy parameters ([0046]; Examiner notes that the STEM parameters must be obtained to simulate the images), attributes of the sample, ([0046]; i.e., the reference to ZnSe, which is a known standard test sample, the attributes of which are known and must be obtained to be simulated) and respective thresholds of one or more target properties of the first simulated electron microscopy image ([0034]; [0046]; e.g., dose threshold); and
computing, via sub-sampling, the first simulated electron microscopy image, wherein the simulated electron microscopy image has a of size
[
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pixels of the sample using the obtained electron microscopy parameters and the obtained attributes of the sample, according to the obtained respective thresholds of the one or more target properties of the first simulated electron microscopy image (See Fig. 2, showing images having plural pixels in two dimensions, obtained according to parameters, attributes, and thresholds of target properties; [0046]), wherein the first simulated electron microscopy image represents a simulated interaction of electrons with the sample, as defined by the obtained electron microscopy parameters and the obtained attributes of the sample (This limitation is inherently disclosed by [0046], as the simulation simulates electrons interacting with ZnSe according to the input given to the simulation);
comparing the first acquired image and the first simulated electron microscopy image ([0042]);
adapting the electron microscopy parameters based on a result of the comparing ([0042]; [0046]-[0051]); and
acquiring a second acquired image of the sample comprising controlling the electron microscope using the adapted electron microscopy parameters ([0042]; [0046]-[0051]).
Regarding claim 15, Stevens teaches the method according to claim 14.
Stevens further teaches comprising:
simulating a second simulated electron microscopy image of the sample using the adapted parameters of the electron microscopy (See Figs. 1-2; [0037]-[0042]; [0046]-[0051]) by:
obtaining the adapted parameters of the electron microscopy, the attributes of the sample, and respective thresholds of one or more target properties of the second simulated electron microscopy image ([0046]-[0051]; Each iteration updates parameters to compute the subsequent simulated image);
computing, via sub-sampling, the second simulated electron microscopy image, wherein the second simulated electron microscopy image has a size
[
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pixels, of the sample using the obtained adapted parameters of the electron microscopy and the obtained attributes of the sample, according to the obtained respective thresholds of the one or more target properties of the second simulated electron microscopy image ([0046]-[0051]; Each iteration updates parameters to compute the subsequent simulated image), wherein the second simulated electron microscopy image is due to the interaction of electrons with the sample, as defined by the obtained adapted parameters of the electron microscopy and the obtained attributes of the sample (This limitation is inherently disclosed by [0046], as the simulation simulates electrons interacting with ZnSe according to the input given to the simulation);
and
comparing the first acquired image and/or the second acquired image with the
second simulated image ([0042]; [0046]-[0051]).
Remaining Claims
Examiner notes that no prior art of record or that searched, whether alone or in combination, is sufficient to teach each and every limitation of amended claim 1, absent impermissible hindsight reconstruction. Accordingly, no prior art rejection is made for claims 1-12. However, claims 1-12 stand as rejected under 35 U.S.C. 101 as discussed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J GASSEN whose telephone number is (571)272-4363. The examiner can normally be reached M-F 9-5.
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, ROBERT H KIM can be reached at (571)272-2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER J GASSEN/Examiner, Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
