DETAILED ACTION
This communication is in response to the Amendments and Arguments filed on June 30, 2026.
Claims 1 - 20 are pending and have been examined.
Claims 1, 9, 17 and 20 are amended.
Claims 1, 9 and 17 are independent.
This action is Final.
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 and Arguments filed on June 30, 2026 have been correspondingly accepted and considered in this Office Action. The Applicant amended Claims 1, 9, 17 and 20. As such, Claims 1 - 20 have been examined.
Response to Arguments
Applicant has provided the following argument (see remarks page 7):
PNG
media_image1.png
312
702
media_image1.png
Greyscale
In Reply, Examiner respectfully disagrees. Regarding the independent claims, the conflicting claims are not identical to corresponding claims (amended claims filed on 5/21/26) of the copending application because the claims of copending application ‘561 require the additional limitation, not required by the independent claims of the instant Application. However, the conflicting claims are not patentably distinct from each other. Dependent claims are also similarly analyzed and rejected over claims 1 – 20 (amended claims filed on 5/21/26) of the copending application ‘561.
.
PNG
media_image2.png
311
693
media_image2.png
Greyscale
In Reply, Examiner respectfully disagrees. Regarding the independent claims, the conflicting claims are not identical to corresponding claims (amended claims filed on 6/26/26) of the copending application because the claims of copending application ‘753 require the additional limitation, not required by the independent claims of the instant Application. However, the conflicting claims are not patentably distinct from each other. Dependent claims are also similarly analyzed and rejected over claims 1 - 20 (amended claims filed on 6/26/26) of the copending application ‘753.
In view of Applicant’s amendments, the previous rejections Claims 1 - 20 rejected under 35 U.S.C. 103 are respectfully reconsidered and withdrawn.
35 U.S.C. 112(f) 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.
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: “state component” and “model component” in Claim 1, “presenter component” in Claim 2, “access component” in Claim 4, and “context component” in Claim 6. Note the varied definition of this phrase in the supporting Specification which indicates that the “component” was intended as a generic placeholder. Based on the Specification, this refers to a large number of options: “[0151] … Note that, in various instances, the access component 322, the state component 324, the context component 326, the model component 328, and the presenter component 330 can collectively be considered as being one or more software components 321 of the system 316. In various aspects, it should be appreciated that the one or more software components 321 are described primarily herein as comprising five components (e.g., the access component 322, the state component 324, the context component 326, the model component 328, and the presenter component 330) for ease of explanation and illustration. However, the one or more software components 321 are not limited to being implemented as exactly such five components in every embodiment. Indeed, in some embodiments, the functionalities described herein of such five components can be combined in any suitable fashions, so as to be implemented in or by fewer than five components (e.g., in some cases, a single component can perform all of the functionalities that are described herein with respect to the access component 322, the state component 324, the context component 326, the model component 328, and the presenter component 330). In other embodiments, the functionalities described herein of such five components can instead be distributed, separated, split, or fragmented in any suitable fashions, so as to be implemented in or by more than five components (e.g., two or more components can facilitate the functionalities that are performable by the access component 322; two or more components can facilitate the functionalities that are performable by the state component 324; two or more components can facilitate the functionalities that are performable by the context component 326; two or more components can facilitate the functionalities that are performable by the model component 328; two or more components can facilitate the functionalities that are performable by the presenter component 330).”
These limitations are generic in the context of the art and don’t refer to any specific structure and only serve as placeholders for the structure that performs the associated function(s) without providing any information about what that structure is. MPEP 2181 I A says:
For a term to be considered a substitute for "means," and lack sufficient structure for performing the function, it must serve as a generic placeholder and thus not limit the scope of the claim to any specific manner or structure for performing the claimed function. It is important to remember that there are no absolutes in the determination of terms used as a substitute for "means" that serve as generic placeholders. The examiner must carefully consider the term in light of the specification and the commonly accepted meaning in the technological art. Every application will turn on its own facts.
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.
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.
Nonstatutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 - 2, 6, 9 -10, 15, 17 - 18, and 20 of the instant Application are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1 - 20 (amended claims filed on 5/21/26) of copending application 18/662,561 (hereinafter ‘561).
Regarding independent claims 1, 9, and 17, the conflicting claims are not identical to corresponding claims 2, 10 and 17 of the copending application because the claims of copending application ‘561 (amended claims filed on 5/21/26) require the additional limitation, not required by claims 1, 9 and 17 of the instant Application. However, the conflicting claims are not patentably distinct from each other because: (1) claims 1, 9 and 17 of the instant Application and claims 2, 10 and 17 of the copending application recite common subject matter, and (2) whereby the elements of claims 1 , 9 and 17 of instant Application are fully anticipated by claims 2, 10 and 17 of the copending application, and anticipation is “the ultimate or epitome of obviousness” (In re Kalm, 154 USPQ 10 (CCPA 1967), also In re Daily, 178 USPQ 293 (CCPA 1973) and In re Pearson, 181 USPQ 641 (CCPA 1974)). This is a provisional nonstatutory double patenting rejection.
Dependent claims 2, 6, 10, 15, 18 and 20 are also similarly analyzed and rejected over claims 1 - 20 of the copending application ‘561.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 - 3, 9 - 11, and 17 of the instant Application are provisionally rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1 - 20 (amended claims filed on 6/26/26) of copending application 18/747,753 (hereinafter ’753).
Regarding independent claims 1, 9, and 17, the conflicting claims are not identical to corresponding claims 3, 11 and 17 of the copending application because the claims of copending application ‘753 (amended claims filed on 6/26/26) require the additional limitation, not required by claims 1, 9 and 17 of the instant Application. However, the conflicting claims are not patentably distinct from each other because: (1) claims 1, 9 and 17 of the instant Application and claims 3, 11 and 17 of the copending application recite common subject matter, and (2) whereby the elements of claims 1 , 9 and 17 of instant Application are fully anticipated by claims 3, 11 and 17 of the copending application, and anticipation is “the ultimate or epitome of obviousness” (In re Kalm, 154 USPQ 10 (CCPA 1967), also In re Daily, 178 USPQ 293 (CCPA 1973) and In re Pearson, 181 USPQ 641 (CCPA 1974)). This is a provisional nonstatutory double patenting rejection.
Dependent claims 2 - 3 and 10 - 11 are also similarly analyzed and rejected over claims 1 - 20 of the copending application ‘753.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Subject Matter to be Novel and Nonobvious
Claims 1 - 20 would be allowable upon resolving rejection under the judicially created doctrine of obviousness-type double patenting and resolving 112(f) claim interpretation.
Applicant discloses increasing accessibility/user-friendliness of charged-particle microscopy using artificial intelligence based on “graphical user-interface to hide a first subset of a plurality of configurable operating settings of the charged-particle microscope that the large language model infers are at least one of inapplicable or destructive to the specimen based on the image or energy spectrum.”
Closest Prior Art
Ishikawa et al., (WO2025027758A1), on record, hereinafter referred to as Ishikawa, discloses “semiconductor evaluation tool 102 is, for example, a CD-SEM (Critical Dimension-Scanning Electron Microscope (i.e., the claimed “charged-particle microscope)), which is a device that generates an image (i.e., the claimed “captures an image”) and a luminance signal waveform (i.e., the claimed “energy spectrum”) based on the detection of secondary electrons and backscattered electrons emitted from a sample (i.e., the claimed “specimen that is currently loaded on a stage”) when the sample (i.e., the claimed “specimen that is currently loaded on a stage”) is irradiated with an electron beam” (Ishikawa, Par. 0012) and “the recipe generation module is configured to execute processes such as generating recipes and modifying generated recipes (i.e., the claimed “commands”) based on, for example, the output of the text creation module 111 (i.e., the claimed “configurable setting adjustment”) described below” (Ishikawa, Par. 0020).
Amthor et al., (U.S. Patent Application Publication 2025/0102788), on record, hereinafter referred to as Amthor, discloses “a user can tell the large language model (i.e., the claimed “natural language instruction”) whether a single cell of a particular type or a cell cluster of the sample should be imaged. The large language model uses this information to identify the appropriate magnification for capturing either a single cell or a cell cluster, while the overview image is used to navigate to an appropriate location where the desired cell(s) is (are) present. Imaging parameters (i.e., the claimed “thereby yielding a natural language response that indicates how implementing the natural language instruction would affect the specimen”) such as illumination intensity or fluorescence settings can be ascertained by the large language model as a function of the textual input (i.e., the claimed “natural language instruction”) and the overview image (i.e., the claimed “model component that executes a large language model on both the natural language instruction and the image of the specimen”) without the user having to specify the illumination intensity or fluorescence excitation or detection channels. This enables a high-quality imaging without requiring significant expertise of the user or a laborious performance of manual settings” (Amthor, Par. 0032).
However, the prior art of record, fails to teach, alone or in a combination, among other things, “graphical user-interface to hide a first subset of a plurality of configurable operating settings of the charged-particle microscope that the large language model infers are at least one of inapplicable or destructive to the specimen based on the image or energy spectrum” as recited in independent claims 1, 9 and 17.
Conclusion
THIS ACTION IS MADE FINAL. 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chandran et al., (U.S. Patent Application Publication 2025/0139342) teaches digital twins.
Lu et al., (U.S. Patent Application Publication 2024/0272926) teaches digital twins.
Robert Jose et al., (U.S. Patent 12,518,112) teaches digital plurality of previous natural language queries for a specific user.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EUNICE LEE whose telepshone number is 571-272-1886. The examiner can normally be reached M-F 8:00 AM - 5:00 PM.
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, Bhavesh Mehta can be reached on 571-272-7453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EUNICE LEE/Examiner, Art Unit 2656
/BHAVESH M MEHTA/ Supervisory Patent Examiner, Art Unit 2656
Prosecution Insights