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 .
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.
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.
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.
Claims 2 and 12 are 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.
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.
Regarding claims 2 and 12, the particulars of the sample cannot reasonably be construed as a limitation on an inspection apparatus/method.
Regarding claims 5 and 15, claims 5 and 15 cannot further limit claims 4 or 14 because the Raman scattering channel and the photoluminescence channel have already been split by the half-silvered mirror, and cannot then be separated by a secondary dichroic. For the purposes of examination it is assumed that a dichroic mirror, which is itself usually half-silvered, may satisfy the claim by performing both functions in a single component. Claims 5 and 15 are also indefinite for the same reason.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jung et al. (2019/0302025).
Regarding claim 1, Jung discloses an inspection apparatus comprising: pulsed light generation unit (Jung, ring-shaped light 21); light focusing unit configured to include an objective lens (Jung, objective lens 40), to focus the pulsed light on the sample through the objective lens (Jung, sample 100 on sample stage 50), and to pass, through the objective lens, light including photoluminescence light (Jung, photoluminescence 2) and Raman scattered light (Jung, scattered light 3) produced from the sample by irradiation with the pulsed light; first detection unit configured to detect the photoluminescence light passed through the objective lens (Jung, photoluminescence detecting unit 400); and second detection unit configured to detect the Raman scattered light passed through the objective lens (Jung, scattered light detecting unit 300).
Jung lacks explicit teaching of the pulsed light generation unit being configured to generate pulsed light having a wavelength longer than a wavelength of light corresponding to a bandgap of a sample, the pulsed light subjecting the sample to multiphoton excitation.
However, the relationship between the excitation light and the bandgap of the sample (resulting in multiphoton excitation) cannot reasonably limit the inspection apparatus because the sample is an independent item and an inspection system cannot become novel or non-obvious based only on what it inspects.
Regarding claim 2, the particularities of the sample cannot reasonably be considered properly limiting with respect to the inspection apparatus.
Regarding claim 3, Jung further teaches the light focusing unit further includes a half-silvered mirror located between the objective lens and the second detection unit (Jung, dichroic mirror 80) on an optical path of the pulsed light and configured to pass either one of the pulsed light and the Raman scattered light and reflect the other one (Jung, Fig. 4, note dichroic mirror 80 separates photoluminescence channel 400 from scattered channel 300), a first pin hole located between the half-silvered mirror and the pulsed light generation unit (Jung, diaphragm 75), and a second pin hole located between the second detection unit and the half-silvered mirror, and at least the second detection unit detects the Raman scattered light produced from a portion of the sample where the pulsed light is brought into focus. (Scattered light detection channel 300 naturally includes Raman process scattering)
Regarding claim 4, Jung further teaches the half-silvered mirror reflects the pulsed light and passes the Raman scattered light and the photoluminescence light, or passes the pulsed light and reflects the Raman scattered light and the photoluminescence light. (Jung, Fig. 3)
Regarding claim 5, Jung further teaches the light focusing unit further includes a dichroic mirror located between the half-silvered mirror and both the first detection unit and the second detection unit, and the dichroic mirror passes either one of the photoluminescence light and the Raman scattered light and reflects the other one. (Jung, dichroic mirror 80 performing both functions)
Regarding claim 6, the particular wavelength sensitivity of dichroic mirror 80 is not disclosed in Jung. However, selection of an appropriate passband to separate the channels effectively is assumed.
Regarding claim 7, Jung further teaches the light focusing unit further includes a first filter located between the dichroic mirror and the first detection unit (Jung, photoluminescence filter 410). The particular bandpass features of the filter are not disclosed, however the selection of a reasonable wavelength passband to effectively separate the respective channels is assumed to be within the skill of one of ordinary skill in the art.
Regarding claim 8, Jung further teaches the light focusing unit further includes a second filter located between the dichroic mirror and the second detection unit, and the second detection unit detects the Raman scattered light passed through the second filter. (Jung, scattered light filter 310) The particular wavelength features of the scattered light filter are not disclosed, however the selection of a reasonable wavelength passband to effectively separate the respective channels is assumed to be within the skill of one of ordinary skill in the art.
Regarding claim 9, Jung lacks explicit teaching of the second filter includes a filter configured to block light of less than or equal to the central wavelength of the pulsed light or more than or equal to the central wavelength of the pulsed light. However the selection of a reasonable wavelength passband to effectively separate the respective channels is assumed to be within the skill of one of ordinary skill in the art.
Regarding claim 10, Jung further teaches a wavelength of the pulsed light includes a wavelength in a visible light region. (Jung, implied language, “ring shaped light” absent any modifiers to indicate specifically non-visible wavelengths, usually identifies visible light, and such modifiers are not present in Jung)
Claims 11-20 are rejected on the same grounds as claims 1-10 as they have the same substantive limitations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWIN C GUNBERG whose telephone number is (571)270-3107. The examiner can normally be reached Monday-Friday, 8:30AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uzma Alam can be reached at 571-272-2995. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWIN C GUNBERG/ Primary Examiner, Art Unit 2884
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