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 Arguments
Specification
The objection to the title is withdrawn.
Claim Interpretation
The deleted "probe apparatus" and "detection apparatus" and their replacement terms are not interpreted under 35 U.S.C. § 112(f).
Claim Rejections 35 U.S.C. § 112(d)
Applicant states claims 1, 4, 5, 7, and 10 have been amended, claims 8 and 9 canceled, and that the rejection should be withdrawn. The rejection has been withdrawn except for claim 10. The rejection of claim 10 is maintained because the claim further limits an element that is not a structural element of the apparatus of claim 1.
Claim Rejections 35 U.S.C. § 112(b)
The rejection of claims 20, 23, and 32 has been withdrawn. Although claim 30 was rejected as being dependent rejected claim 20, this was a typographical error and should have been claim 32 since claim 32 depends on claim 20.
Claim Rejections 35 U.S.C. § 102/New Claims
In light of the claim amendments, the rejection of claims in view of Han are withdrawn.
The rejection of claims in view of Padmanabhan are maintained. Applicant argues path 50 of Padmanabhan is not equivalent to the claimed optical element and is not in fluid communication within a gas discharge chamber. In response, the Examiner submits that the term "optical element" is not any particular structure and so long as light is transmitted, guided, or affected by it, then it is broadly but reasonably, an optical element. Furthermore, the optical element is not an element of the claimed metrology apparatus because it is not recited as such by the "comprising" of claim 1 and nor is it listed by a separate indented line. "Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation." 37 C.F.R. 1.75(i). In contrast to claim 1, see claim 20 which positively recites the gas discharge chamber as an element.
Applicant disagrees that that some of the claims are directed to intended use because the limitations are found in the body of the claim and not the preamble and cites MPEP 2111.02. The Examiner has reviewed MPEP 2111.02 and has not found any requirement that limitations in the body of the claim cannot be interpreted as intended use. The window of a gas discharge chamber and the amplified light produced therefrom are not elements of the claimed apparatus but are objects intended to be used in conjunction with the claimed apparatus or results from the operation claimed apparatus. Applicant's argument does not identify how they serve to structurally distinguish the claimed apparatus.
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:
processing apparatus in claims 1-11, 14-16, 20, 23, 32, 46, and 47 and
actuation apparatus in claim 23.
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.
Claim 3 and 4 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 3 recites that the optical assembly includes a laser. Claim 1 recites that the optical assembly includes a light source. This would indicate that the optical assembly of claim 3 has both a light source and a laser, but it appears that claim 3 is attempting to state that the light source of claim 1 is a laser. For examination purposes, claim 3 will be interpreted as such.
Claim 4 recites a limitation that is defined by a relationship to an unbounded wavelength of the light produced by the gas chamber. There is no set standard with regards to the wavelength produced by gain medium, and thus the limitation of the laser wavelength is bounded by how the metrology apparatus is used (e.g., whatever gain medium is chosen by a user), and therefore does not set forth a structural limitation on the laser itself. See MPEP 2173.05(b)(II).
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.
Claim 10 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. Claim 10 further defines the optical element recited in claim 1. The optical element, however, is not an element of claimed metrology apparatus. This optical element is recited as an object worked upon the metrology apparatus and thus does not further limit the structure of the metrology apparatus. 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
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.
Claim(s) 1, 3-7, 10, and 14-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Padmanabhan et al. (US 2005/0122522).
Padmanabhan an optical detection system as follows:
A metrology apparatus comprising:
an optical assembly including a light source and optical components (22a, 22b) that produce, in operation, a light sheet (the light produced by a linear array of lasers; para. [0054]) in a vicinity of an optical element (50), wherein the optical element is in fluid communication with a gain medium of a gas discharge chamber, is exposed to one or more particles (the limitation of "that produce, in operation, a light sheet in a vicinity of an optical element…." is a recitation of how the optical assembly is intended to be used since the optical element is not an element of the claimed metrology apparatus but rather, is an object intended to be operated on by the claimed metrology apparatus. The same applies to the gas discharge chamber. See MPEP 2115);
a light detector (24a, 24b) configured to detect light produced from an interaction between the light sheet and one or more particles (see Abstract), and to produce an output signal based on the detected interaction; and
a processing apparatus (processor 40) configured to receive the output signal and to estimate a property of the one or more particles (implicit if not inherent since the signals from the detectors 14 and 16 would need to be processed. Column 4, lines 25+;"the apparatus and method of the present invention can determine whether the quality of the carrier gas is excellent or not"; "the process for measuring the degree of the contamination").
3. The metrology apparatus of claim 1, wherein the optical assembly includes a laser configured to produce a laser light sheet as the light sheet (the light produced by a linear array of lasers; para. [0054]).
4. The metrology apparatus of claim 3, wherein the laser is configured to produce light having a wavelength that is distinct from a wavelength the amplified light beam (this claim is directed at the intended use of the apparatus relative to a non-limited wavelength and does not serve to distinguish. Furthermore, there is no reason the wavelength of the Padmanabhan lasers would be the same as an amplified light beam.
5. The metrology apparatus of claim 1, wherein the light detector includes a photodiode or a camera (see claim 8 of Padmanabhan).
6. The metrology apparatus of claim 2, wherein an imaging plane of the light detector faces the light sheet so that the extent of the light sheet is observable and imageable at the light detector (This claim describes how the apparatus is intended to be used and does not serve to structurally distinguish the apparatus. Furthermore, see para. [0054]:"Using a linear array of lasers oriented at an angle with respect to the flow axis 202 offers a number of important advantages over the single light source ").
7. The metrology apparatus of claim 6, wherein the imaging plane of the light detector faces a surface of the optical element that is in fluid communication with an interior of the gas discharge chamber (This claim is directed at the intended use of the apparatus in conjunction with the chamber and does not serve to distinguish. Furthermore, there is no reason the detectors cannot be used to face a surface of the chamber as claimed).
10. The metrology apparatus of claim 1, wherein the optical element is a
window of the gas discharge chamber disposed between an interior of the gas discharge chamber and an exterior of the gas discharge chamber, the window hermetically sealing the discharge chamber and being configured for an amplified light beam to pass therethrough (the optical element and the chamber are not elements of the claimed apparatus and thus this claim does not serve to structurally distinguish the apparatus).
14. The metrology apparatus of claim 2, wherein a probing axis of the light sheet lies in an imaging plane of the light detector and one of: a long plane of the light sheet is perpendicular with the imaging plane; or the long plane of the light sheet is arranged to be at an angle that is between parallel with and perpendicular with the imaging plane (para. [0054]:"Using a linear array of lasers oriented at an angle with respect to the flow axis 202 offers a number of important advantages over the single light source "; para. [0069]: " One array of light detectors is positioned in line with the linear array of light sources. The other two linear arrays of light detectors are placed on either side of the in-line array of light detector").
15. The metrology apparatus of claim 2, wherein a probing axis of the light sheet lies in an imaging plane of the light detector and a long plane of the light sheet is parallel with the imaging plane (para. [0054]:"Using a linear array of lasers oriented at an angle with respect to the flow axis 202 offers a number of important advantages over the single light source "; para. [0069]: " One array of light detectors is positioned in line with the linear array of light sources. The other two linear arrays of light detectors are placed on either side of the in-line array of light detector").
16. The metrology apparatus of claim 1, wherein the processing apparatus being configured to estimate a property of the one or more particles comprises the processing apparatus configured to estimate one or more of a number of the one or more particles on the light detector, a location of the one or more particles, a density of the one or more particles, and a velocity of the one or more particle (Para. [0060]:"Another advantage of using a linear array 22a of lasers rather than a single laser configuration is that the velocity of each cell may be determined using the linear array 22a.").
Allowable Subject Matter
Claims 20, 23, 32, 37, 38, 42, and 46-50 are allowed.
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 Hwa Andrew S Lee whose telephone number is (571)272-2419. The examiner can normally be reached Mon-Fri 9am-5:30pm.
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, Michelle Iacoletti can be reached at (571) 270-5789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hwa Andrew Lee/Primary Examiner, Art Unit 2877
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