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 .
Specification
The use of the terms Zerodur and ULE, which are trade names or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Claim Objections
Claims 1, 4, and 10 are objected to because of the following informalities:
As for claims 1 and 10, the phrase “measurements arms” (see line 17 in claim 1 and line 16 in claim 10) should be amended to read “measurement arm”.
As for claim 4, the article “a” should be added before “carriage translator” in line 1 of the claim.
Appropriate correction is required.
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.
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:
“Attachment devices configured to secure the reference object” in claims 3 and 12.
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.
The examiner notes that while the limitation “computing device” nominally meets the three prong test for a 35 USC 112(f) interpretation, the examiner considers that limitation to denote known structure to one having ordinary skill in the art; therefore, the limitation avoids a 35 USC 112(f) interpretation.
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.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over May et al (2017/0082521) in view of Michelt et al (2014/0368830) and in further view of Nahum (2020/0003544) and Vogt et al (2017/0261304).
Regarding claims 1 and 10, May (Figs. 1, 3, 5, 7, and 8) discloses a system for measuring the topography of a surface (claim 1) and a corresponding method for making a surface topography measurement system (claim 10), the system and method comprising a carriage assembly 26 comprising a plurality of displacement measuring probes 34, 36 coupled to a carriage support structure 32; and a base assembly 12 positioned adjacent to the carriage assembly (see Fig. 1 and 3, for instance), the base assembly comprising at least one reference object (the reference object is object holder 100; this holder includes a circumferential upper reference structure 108) with an opening 124 sized to receive a target object 14 (see Fig. 7 and 8); wherein at least one of the carriage assembly or the base assembly is configured to translate with respect to the other in at least two directions (see paragraph 0011, for instance) to enable at least one of the displacement-measuring probes 70 to measure a displacement to a target surface of the target object whose topography is measured (see Fig. 8 and paragraphs 0093-0094).
May, however, fails to disclose that at least one of the displacement-measuring probes measures a displacement of the reference surface of the reference object, with another probe measuring a displacement to a target surface of the target object. As seen in Fig. 8 of May, the same probe measures both the reference surface and the measurement surface. Additionally, May fails to disclose that the base assembly and the reference object have a thermal coefficient of expansion of less than 0.1 µm/m/°C, and wherein at least one of the displacement-measurement probes comprises an interferometric probe configured with a beam splitter to form reference and measurement arms and provided with at least one fiber optic through which interferometric light exits the probe.
Regarding the displacement-measuring probes, Michelt teaches an optical displacement measurement device (Figs. 1, 2, and 4), featuring a pair of measuring heads 140, 141 on a measuring guide device 20 that measures the topography of an object 12 being measured. Probe 140 measures the distance to the surface 54 of support 8 on which the object being measured sits as a reference measurement, and probe 141 simultaneously measures a distance to surface 10 of the object 12 being measured (see paragraph 0060). Probe 141 is an interferometric probe featuring a reference mirror and a beam splitter cube (not shown in the figures, but see paragraph 0069), and it is provided with a fiber 36 through which interferometric light exits the probe (see paragraph 0057).
Regarding the base assembly and the reference object having a thermal coefficient of expansion of less than 0.1 µm/m/°C, Nahum discloses a surface profilometer (see Fig. 1). This profilometer features a base in the form of workpiece support 130WS (see paragraph 0016), with the workpiece support featuring a reference surface configuration RSC that comprises a plurality of reference regions (see paragraph 0017). The workpiece support and the reference surface are formed from the same block of material (see paragraph 0023); as they are the same material, this means that they have a matching thermal coefficient of expansion. While Nahum is silent regarding the specific thermal coefficient of expansion for the base assembly and the reference object, Vogt, which, while not performing optical measurements, is concerned with solving the problem of making high accuracy position measurements (see paragraph 0004), discloses making a carrier body including a reference measuring surface (see paragraph 0052) out of a material having an extremely low coefficient of thermal expansion, this material being a glass-ceramic with the trademarks ZERODUR or ULE, with this material having a coefficient of thermal expansion of, in particular, less than or equal to 6.10-8/K (see paragraph 0052); this is less than the claimed 0.1 µm/m/°C, which is the equivalent of 10-7/K.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to add another measuring probe to the device of May as taught by Michelt so as to have one probe measure a displacement to a reference surface of the reference object and have another probe measure a displacement to a target surface of the target object, and to also have the base assembly and the reference object have a thermal coefficient of expansion of less than 0.1 µm/m/°C as taught by the combination of Nahum and Vogt, the motivation being to allow for simultaneous measurement of the reference surface and the measurement surface as a result of having multiple probes performing measurement instead of using a single probe to measure both the reference surface and the measurement surface (see paragraph 0019 of Michelt), with interferometric measurement techniques being well known for performing topography measurements with nanometer precision (this is for the addition of multiple probes, one being interferometric, as per Michelt), thereby allowing the device to measure more quickly and efficiently. Having the base assembly and reference object be made of material having an extremely low coefficient of thermal expansion ensures that any change in temperature when using the system effects base assembly and the reference object in a similar manner, thereby maintaining accurate measurements when environmental conditions change (see paragraph 0006 of Vogt). Additionally, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8, while it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
As for claims 2 and 11, May further discloses that the carriage support structure of the carriage assembly further comprises a carriage stage 208 coupled to each of the displacement-measuring probes, and two or more carriage legs 205, 206 coupled at one end of the carriage stage and at the other end to a carriage bearing (see Fig. 1 – the carriage bearing are the screws that attach the carriage legs).
As for claims 3 and 12, May further discloses a platform 11 with a planar platform surface (see Fig. 1); and a base structure (this is the cylindrical element seen in Fig. 1 extending up from the platform) of the base assembly having one surface seated on the platform surface (see Fig. 1) and having another surface with one or more attachment mechanisms 13 configured to secure the reference object (see paragraph 0092).
As for claims 4 and 13, May further discloses a carriage translator (inherent – see paragraph 0016) coupled to translate the carriage assembly in the at least two direction sin response to one or more carriage position commands from a computing device 60 (see paragraph 0016 for a description of the scanning, and paragraphs 0050 and 0051 for a description of commands from a computing device).
As for claims 5 and 14, May further discloses a probe translation actuator (inherent – see paragraph 0016) coupled to translate the at least another one of the displacement measuring-probes (as would be taught by the combination of Michelt and Nahum with May set forth above regarding claims 1 and 10) in a direction substantially along a measurement axis in response to one or more probe position commands from a computing device 60 (see paragraph 0016 for a description of the scanning – three dimensional scanning would lead to translation of a probe in a direction substantially along a measurement axis as seen in Fig. 2 of Michelt, for example, or the Z axis in Figs. 8 and 9 of May, and paragraphs 0050 and 0051 for a description of commands from a computing device).
As for claims 6 and 15, the combination of May, Michelt, and Nahum discloses that the displacement-measuring probes each have a measurement axis and wherein each of the measurement axes are substantially parallel with each other (see Fig. 2 of Michelt, showing that probes 140, 141 have measurement axes which are parallel to each other, indicated in the figure by beam guide 15).
As for claims 7 and 16, the combination of May, Michelt, Nahum, and Vogt discloses the claimed invention as set forth above regarding claims 1 and 10. However, the combination fails to disclose that the at least one of the displacement-measuring probes to measure the displacement to the reference surface of the reference object further comprises at least three of the displacement-measuring probes to each measure a displacement to the reference surface of the reference object.
As seen in Fig. 5 of Michelt, Michelt suggests the idea of using a plurality of displacement-measuring probes to measure a plurality of reference surfaces. Since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (St. Regis Paper Co. v. Bemis Co., 193 USPQ 8), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use at least three displacement-measuring probes to measure a displacement to the reference surface of the reference object in the combination of May, Michelt, Nahum, and Vogt, the motivation being to allow for redundant measurements of the reference surface, with the redundant measurements providing additional data to allow for a more accurate measurement of the topography of the test object.
As for claims 8 and 17, the combination of May, Michelt, Nahum, and Vogt discloses the claimed invention as set forth above regarding claims 1 and 11. However, the combination fails to disclose that the at least one of the displacement-measuring probes to measure the displacement to the test surface of the test object further comprises at least three of the displacement-measuring probes to each measure a displacement to the target surface of the target object.
As seen in Fig. 5 of Michelt, Michelt suggests the idea of using a plurality of displacement-measuring probes to measure a plurality of test surfaces. Since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (St. Regis Paper Co. v. Bemis Co., 193 USPQ 8), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use at least three displacement-measuring probes to measure a displacement to the target surface of the target object in the combination of May, Michelt, Nahum, and Vogt, the motivation being to allow for redundant measurements of the test surface, with the redundant measurements providing additional data to allow for a more accurate measurement of the topography of the test object.
As for claims 9 and 18, May discloses a computing device 60 coupled to the displacement-measuring probes, the computing device comprising memory (see paragraphs 0050-0051, for instance) comprising programmed instructions stored thereon and one or more processors configured to be capable of executing the stored programmed instructions to: determine residual flatness errors of the reference surface from displacement data from the at least one of the displacement-measuring probes from prior measurements; and adjust displacement measurements to the target surface of the target object from the at least another one of the displacement-measuring probes based on the determined residual flatness errors (for both functions of the computing device, see paragraph 0087 of May, which discloses that the actually measured distance value can be compared to a reference value to perform a length correction for the measured distance).
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-18 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-11, and 13-20 of U.S. Patent No. 12,123,701 in view of Vogt et al (2017/0261304).
Regarding claims 1 and 10, claims 1 and 11 of the ‘701 patent discloses a system for measuring the topography of a surface (claim 1) and a corresponding method for making a surface topography measurement system (claim 11), the system and method comprising a carriage assembly comprising a plurality of displacement-measuring probes coupled to a carriage support structure (see lines 3-5 of claim 1 and lines 3-5 of claim 11); and a base assembly positioned adjacent to the carriage assembly, the base assembly comprising at least one reference object with an opening sized to receive a target object (see lines 6-9 of claim 1 and lines 6-8 of claim 11); wherein at least one of the carriage assembly or the base assembly is configured to translate with respect to the other in at least two directions to enable at least one of the displacement-measuring probes to measure a displacement to a reference surface of the reference object and at least another one of the displacement-measuring probes to measure a displacement to a target surface of the target object whose topography is measured (see lines 10-17 of claim 1 and lines 9-16 of claim 11), and wherein at least one of the displacement-measurement probes comprises an interferometric probe configured with a beam splitter to form reference and measurements arms and provided with at least one fiber optic through which interferometric light exits the probe (see lines 20-23 of claim 1 and lines 19-22 of claim 11).
While claims 1 and 11 of the ‘701 patent disclose that the base assembly and the reference object have a matching thermal coefficient of expansion (see lines 18-19 of claim 1 and lines 17-18 of claim 11), those claims fail to disclose that the base assembly and the reference object have thermal coefficient of expansion of less than 0.1 µm/m/ºC.
Vogt, while not performing optical measurements, is concerned with solving the problem of making high accuracy position measurements (see paragraph 0004). Vogt discloses making a carrier body including a reference measuring surface (see paragraph 0052) out of a material having an extremely low coefficient of thermal expansion, this material being a glass-ceramic with the trademarks ZERODUR or ULE, with this material having a coefficient of thermal expansion of, in particular, less than or equal to 6.10-8/K (see paragraph 0052); this is less than the claimed 0.1 µm/m/°C, which is the equivalent of 10-7/K.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the base assembly and the reference object of claims 1 and 11 of the ’701 patent have thermal coefficient of expansion of less than 0.1 µm/m/ºC as per Vogt, the motivation being that having the base assembly and reference object be made of material having an extremely low coefficient of thermal expansion ensures that any change in temperature when using the system effects base assembly and the reference object in a similar manner, thereby maintaining accurate measurements when environmental conditions change (see paragraph 0006 of Vogt). Additionally, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Further claim correspondence is as follows:
Claims 2 and 11 of the instant application with claims 3 and 13 of the ‘701 patent.
Claims 3 and 12 of the instant application with claims 3 and 13 of the ‘701 patent.
Claims 4 and 13 of the instant application with claims 3 and 13 of the ‘701 patent.
Claims 5 and 14 of the instant application with claims 3 and 13 of the ‘701 patent.
Claims 6 and 15 of the instant application with claims 3 and 13 of the ‘701 patent.
Claims 7 and 16 of the instant application with claims 3 and 13 of the ‘701 patent.
Claims 8 and 17 of the instant application with claims 3 and 13 of the ‘701 patent.
Claims 9 and 18 of the instant application with claims 3 and 13 of the ‘701 patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2021/0285096 to Shinada et al. teaches a film thickness measuring apparatus where reference member 120 is made of the same material as the base portion of the substrate W; this would lead these elements to have a matching thermal coefficient of expansion (see paragraph 0059).
US 2017/0089683 to Yokoyama et al. teaches a coefficient of thermal expansion measurement method and apparatus.
JP 2011-526735 to Freimann et al. teaches an imaging device for determining imaging errors teaching reference element 140 with a low coefficient of thermal expansion.
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/Michael A Lyons/Primary Examiner, Art Unit 2877 January 30, 2026