CTNF 18/771,126 CTNF 78600 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 statements filed 7/12/24 and 6/24/25 have been considered by the Examiner. 07-30-03-h AIA Claim Interpretation 07-30-03 AIA 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. 07-30-05 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: Light intensity adjusting unit in claim 1-7. The term is a nonce phrase by the inclusion of the term unit to connotate the element and is coupled to functional language via the transitional phrase “configured to”. The term corresponds to the structure described at [0107] including an ND filter, an optical attenuator, a pulse piker or the like, a pulse dispersion control optical system or the like, or a condenser lens. Absorption characteristic measuring unit in claim 6. The term is a nonce phrase defined at [0109] as a reflection light detector of the reflection light from the sample 8, a polarization plane detector of the reflection light from the sample 8, a wavelength detector of the reflection light from the sample 8, and the like can also be used. Pulse dispersion control optical system or the like as recited in claim 1-7 when the light intensity adjusting unit is interpreted to cover the disclosed pulse dispersion control optical system. The term is undefined and indefinite since it is defined at [0107] using “or the like”. 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 1 recites “wherein: a plurality of observation images of the sample is generated by using the secondary charged particles detected by the detector, and the plurality of the observation images has different contrasts by using the light intensity adjusting unit.” Regarding the first part of this wherein clause, the clause recites functions which were previously claimed as being the function of discrete device elements in the parent application. These functions are disembodied from the structure performing them and now recited as wherein clauses. Since the phrase “wherein a plurality of observation images of the sample is generated…” is now recited as being disembodied from a structure performing the act, the clause does not limit the claim to a particular structure. Therefore, in view of MPEP 2111.04, the phase is not limiting and given no weight. The second wherein clause states, wherein “the plurality of the observation images has different contrasts by using the light intensity adjusting unit”. This phrase similarly does not limit the apparatus to a particular structure since it merely states the information content of an image. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-7 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. Regarding claims 1-7, the phrase "or the like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d). Regarding this point, it pertains to instances where the light intensity adjusting unit is interpreted to read on the elements disclosed as “a pulse picker or the like” or “a pulse dispersion control optical system or the like” as described at [0107]. Similarly in claim 6, the structure of the absorption characteristic measuring unit are defined using the term “or the like” and in the instance where the structure overlaps with this definition, the use of “or the like” to define the absorption characteristic measuring unit renders the claim indefinite. Claim 1 provides for the use of secondary particles to generate an image, but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Claim 1 provides for the use a light adjusting unit to cause images to have different contrasts , but, since the claim does not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. 07-30-01 AIA The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. 07-31-03 AIA Claim 6 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA), first paragraph, because the specification, while being enabling for a light intensity adjusting unit as disclosed at for example [0107] , does not reasonably provide enablement for the function of performing a determination function as recited in claim 6 . The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with these claims. Claim 6 requires the light intensity adjusting unit to perform comparison and determination functions which are not enabled by any of the disclosed structure corresponding to the claimed light intensity adjusting unit in claims 1-7, thereby causing the scope of claim 6 to exceed that which is enabled by the disclosure . Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-12-aia AIA (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. 07-15-03-aia AIA Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(2) as being clearly anticipated by PCT/JP2018/033669 or WO2020053967 . 07-15-02-aia The applied reference has a common Assignee/Applicant with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. Regarding claim 1, ‘669 discloses a charged particle beam device comprising a charged particle beam source 2, a light source 13, a light intensity adjusting unit comprising a condenser lens meeting the requirement of the disclosure at [0107] Item 22, and a detector Item 5. The additional function ascribed to the “light intensity adjusting unit” are met by the condenser lens of ‘669 since the instant application discloses such a structure is sufficient structure to carry out the function of the claimed light intensity adjusting unit in claims 1-7. Regarding claims 2-5, the claim is directed to features of the sample worked upon by the apparatus which do not further limit the apparatus of claim 1 and further functional limitations of the light intensity adjusting unit of claim 1 which are met by the prior art condenser lens. The prior art of ‘669 anticipates the structure of the apparatus of claim 2-5. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-21-aia AIA Claim (s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2020053967 in view of US PGPUB 2002/0134936 . Regarding claim 6, ‘967 discloses all the required limitations of claim 1 pointed out above. ‘967 does not teach an energy filter on a secondary electron detector. ‘936 discloses an energy filter 13 on secondary detector 12. ‘963 modifies the prior art of ‘967 to provide an energy filter on a secondary particle detector. It would have been obvious to one having ordinary skill in the art to utilize an energy filter with a secondary particle detector to discriminate and filter desired and undesired secondary particles to control what aspects of a sample are imaged . Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 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. Claim 2, 4, and 5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to natural phenomena without significantly more. The claim(s) recite(s) the nature of the interaction of a sample with light. This is merely the natural behavior of the sample and the natural effect produced when irradiated with light. This judicial exception is not integrated into a practical application because the claim merely states the natural relationship and effect caused by irradiating a sample with light. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because merely claiming the manner in which two elements naturally interact is nothing more than reciting a natural phenomenon. This is similarly applicable to claims 4-5 which recite the nature of light absorption into the sample. 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. 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, Georgia EPPS can be reached at (571) 272-2328. 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. DAVID A. VANORE Primary Examiner Art Unit 2881 /DAVID A VANORE/ Primary Examiner, Art Unit 2878 Application/Control Number: 18/771,126 Page 2 Art Unit: 2878 Application/Control Number: 18/771,126 Page 3 Art Unit: 2878 Application/Control Number: 18/771,126 Page 4 Art Unit: 2878 Application/Control Number: 18/771,126 Page 5 Art Unit: 2878 Application/Control Number: 18/771,126 Page 6 Art Unit: 2878 Application/Control Number: 18/771,126 Page 7 Art Unit: 2878 Application/Control Number: 18/771,126 Page 9 Art Unit: 2878 Application/Control Number: 18/771,126 Page 10 Art Unit: 2878
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