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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/28/24; 2/7/25; and 7/18/25 have been considered by the examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claim(s) 1, 12, and 13 are is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by US Patent Application Publication 2010/0243431.
Regarding claims 1, 12, and 13, ‘431 discloses an apparatus comprising an image generation means (apparatus, section, etc.) for generating a simulated or forecasted image (Note for example, Item 520 in Fig. 17 and the accompanying discussion) where present milling conditions, or process recipe is, used to simulate or forecast damage or milling results (Additionally, note Fig. 11 and 13, indicating the general process flow and apparatus) and a display where computed image data is displayed (Note Fig. 10 showing GUI of a displayed flow of the operation of the prior art apparatus are illustrated including the computation in animation or real time). The above milling being undertaken by an ion beam source in an ion beam milling apparatus and methodology (Included in Ion-injection process section 540, [0220]).
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 are rejected under 35 U.S.C. 101 because the claimed invention is directed to the judicial exception of an abstract idea directed to mathematical calculations and mental processes without significantly more. The claim(s) recite(s) in claims 1, 12, and 13, an apparatus or method where an ion beam milling device or step is carried out and the resultant information fed into an image generation apparatus or step for generating “forecasted imagery” is undertaken. The result of this forecasting, or simulation, is additionally displayed in claim 12 for example. The underlying tool utilized to carry out the claimed method is contained in the prior art, as demonstrated above in the rejection under 35 USC 102 and in the prior art made of record. Claims 1, 12, and 13, therefore are drawn as an inventive concept towards the “forecasting” or simulation of results which is the performance of mathematical calculation on information of particular content. Additionally, the resulting processed images generated are collected, organized, and displayed, in a manner consistent with that which has been held to be a mental process.1 The disclosed process for carrying out the claimed mathematical calculations is detailed in the disclosure at pages 22-31.
This judicial exception is not integrated into a practical application because the claimed invention does not improve the underlying function of a computer, but rather utilizes known technology as a tool to carry out mathematical calculation. The claim additionally is not implanted on a “particular machine” as evidenced in the prior art of record and there is no effective transformation of an article. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claimed invention is directed to the mere implementation of mathematical calculation and/or mental process without improving the underlying function of a computer or use of a novel technological environment. To the contrary, the prior art shows all the components of the claimed apparatus and process and therefore is not novel or a new application of an abstract idea, leaving on the abstract idea itself residing in the claims.
Regarding claims 2-5, the claims are directed to details of a sample support to rotate, swing, and/or tilt a sample. As noted in the attached prior art, such a sample support means is known and used in the prior art. Note US Patent Application PGPUB 2013/0220806 detailing such an apparatus in Fig. 1 and Fig. 11, along with the relevant discussion. Implementing the prior art alongside the abstract idea of claim 1 does not transform or provide significantly more the abstract idea of claim 1 since it merely implements known technology as a tool or as post solution activity practiced in the prior art.
Regarding claim 6 and 7, these claims are directed to details regarding the particular mathematical calculation performed. Calculating direction and vector analysis are mere mathematical calculation and thus the claims recite additional post solution activity insufficient to transform the underlying abstract idea into a patent eligible one.
Regarding claims 8, 10, and 11, the claims are directed to the image produced, i.e. the resultant information of particular content. Detailing the information contained in an image produced does not add anything more and merely recites the result of the abstract idea itself.
Regarding claim 9, the claim is directed to the display of an image result and therefore overlaps with the mental process aspect of the applied judicial exception. Merely displaying a calculation result uses conventional technology and is a function/step which does not transform the underlying abstract idea into a patent eligible one. Displaying a result is tantamount to printing and displaying printed matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID A VANORE whose telephone number is (571)272-2483. The examiner can normally be reached Monday to Friday 7AM to 6 PM.
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DAVID A. VANORE
Primary Examiner
Art Unit 2881
/DAVID A VANORE/Primary Examiner, Art Unit 2878
1 MPEP 2106.04(a)(1): a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016
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