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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12418848. Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the chart below:
Instant Application 18/776818
Claim 1
[Wingdings font/0xFC]An inspection apparatus for inspecting an inspection target surface arranged on an inspection plane, comprising:
[Wingdings font/0xFC]an X-ray generation tube having a target including an X-ray generation portion that generates X-rays by irradiation with an electron beam, and configured to emit X-rays to the inspection plane; and
[Wingdings font/0xFC]an X-ray detector configured to detect X-rays emitted from a foreign substance existing on the inspection target surface irradiated with the X-rays from the X-ray generation portion and totally reflected by the inspection target surface.
U.S. Patent 12418848
Claim 1
[Wingdings font/0xFC]An inspection apparatus for inspecting an inspection target surface arranged on an inspection plane, comprising:
[Wingdings font/0xFC]an X-ray generation tube having a target including an X-ray generation portion that generates X-rays by irradiation with an electron beam, and configured to emit X-rays to the inspection plane; and
[Wingdings font/0xFC]an X-ray detector configured to detect X-rays emitted from a foreign substance existing on the inspection target surface irradiated with the X-rays from the X-ray generation portion and totally reflected by the inspection target surface,
[Wingdings font/0xFB]wherein the X-ray detector includes a long X-ray receiver.
[Examiner note: Instant application claim 1 is not patentably distinct from the parent claim 1, as instant application claim 1 does not contain the structural limitation of an X-ray detector including a long X-ray receiver. Examiner concludes that the removal of a limitation does not create patentable distinctness].
Claims 13-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-23 of U.S. Patent No. 12241848. Although the claims at issue are not identical, they are not patentably distinct from each other as shown in the chart below:
Instant Application 18/776818
Claim 13
[Wingdings font/0xFC]An inspection method of inspecting an inspection target surface arranged on an inspection plane, comprising:
[Wingdings font/0xFC]an X-ray detection step of emitting X-rays to the inspection plane and detecting, by an X- ray detector,
[Wingdings font/0xFC]X-rays emitted from a foreign substance existing on the inspection target surface and totally reflected by the inspection target surface; and
[Wingdings font/0xFC]a processing step of processing an output of the X-ray detector.
U.S. Patent 12241848
Claim 18
[Wingdings font/0xFC]An inspection method of inspecting an inspection target surface arranged on an inspection plane, comprising:
[Wingdings font/0xFC]an X-ray detection step of emitting X-rays to the inspection plane and detecting, by an X-ray detector including a long X-ray receiver,
[Wingdings font/0xFC]X-rays emitted from a foreign substance existing on the inspection target surface and totally reflected by the inspection target surface; and
[Wingdings font/0xFC]a processing step of processing an output of the X-ray detector.
[Examiner note: Instant application claim 13 is not patentably distinct from the parent claim 18, as instant application claim 1 does not contain the structural limitation of an X-ray detector including a long X-ray receiver. Examiner concludes that the removal of a limitation does not create patentable distinctness].
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over
claims 1-17 of U.S. Patent No. 11921059;
claims 1-12 of U.S. Patent No. 11927554;
claims 1-13 of U.S. Patent No. 11971370 and
claims 1-15 of U.S. Patent No. 11977038.
Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent Nos. 11921059; 11927554; 11971370 and 11977038 similarly claim an inspection apparatus comprising:
an X-ray generation tube;
an X-ray detector, configured to detect X-rays emitted from a foreign substance existing on an inspection target surface irradiated with X-rays from an X-ray generation portion and totally reflected by the inspection target surface.
Claims 13-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over:
claims 18-20 of U.S. Patent No. 11921059;
claims 13-18 of U.S. Patent No. 11927554;
claims 14-19 of U.S. Patent No. 11971370 and
claims 16-22 of U.S. Patent No. 11977038.
Although the claims at issue are not identical, they are not patentably distinct from each other because U.S. Patent Nos. 11921059; 11927554; 11971370 and 11977038 similarly claim an inspection method comprising:
an X-ray detection step of emitting X-rays to the inspection plane and detecting, by an X- ray detector, X-rays emitted from a foreign substance existing on the inspection target surface and totally reflected by the inspection target surface; and
a processing step of processing an output of the X-ray detector.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COURTNEY D THOMAS whose telephone number is (571)272-2496. The examiner can normally be reached M-F: 9 AM - 5 PM.
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/COURTNEY D THOMAS/Primary Examiner, Art Unit 2884