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 .
Response to Amendment and Status of Application
This notice is in response to the amendments filed 26 May 2026. Claims 1-3 and 5-14 are pending in the instant application where all pending claims have been amended and claim 4 has been cancelled. Applicant’s amendments to the drawings and specification have overcome the objection to the drawings and specification set forth in the Non-Final Office Action dated 06 March 2026, and are hereby withdrawn. Applicant’s amendments to the claims have overcome each and every objection and rejection under 35 U.S.C. 112(b) set forth in the Non-Final Action listed above and are hereby withdrawn.
Response to Arguments
Applicant's arguments filed 26 May 2026 have been fully considered but they are not persuasive.
Regarding applicant’s arguments (remarks pages 1-3 section V. 35 U.S.C. §102 Rejection) with respect to the supposed deficiencies of primary reference Kociak with respect to at least claim 1, examiner notes that the arguments are directly towards newly amended limitations including at least “at least two collection optics mounted on an arm, wherein the arm is insertable or inserted into the sample chamber through a port in the sample chamber to locate the at least two collection optics together in the sample chamber”. These and the remaining limitations of newly amended claim 1 are addressed within the rejections below.
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.
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.
Claims 1-3 and 5-14 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0076364 A1 by Mathieu Kociak et al. (herein after “Kociak”) in view of US 2003/0053048 A1 by Robert Bennett et al. (herein after “Bennett”), and further in view of US 2001/0042816 A1 by Yasushi Fujimoto et al. (herein after “Fujimoto”). Examiner notes the references Kociak and Bennett were cited by applicant in the IDS filed 15 August 2024.
Regarding claim 1, Kociak discloses an optical apparatus (Kociak title discloses a cathodoluminescence detection system [optical apparatus]) for use with an analytical apparatus (Kociak title discloses a microscope [analytical apparatus] employing the cathodoluminescence detection system [optical apparatus for use with an analytical apparatus]) arranged to project an analysis beam along an analytical axis towards a sample within a sample chamber (Kociak [0131] discloses that the microscope 100 [analytical apparatus] comprises a source 102 of emission of an electron beam 104 onto a sample 106 [project an analysis beam towards a sample]; fig. 1 shows light source 122 and electron beam 104 where the beam is projected along an axis [analytical axis]; [0140] discloses a collection system for light relative to the vacuum chamber of the microscope [i.e. collection system is within the chamber]; fig. 1 shows the collection optic 112 arranged above the sample within the chamber), the optical apparatus comprising
at least two collection optics mounted on an arm, wherein the arm is insertable or inserted into the sample chamber through a port in the sample chamber (Kociak [0108] discloses that the optical path [for the collection of light from the sample] comprises at least two optical components, a collection optic and an adjustment optic; fig. 1 and [0133] discloses collection optic 112 and means of adjusting 114; figs. 3-4 and [0147]-[0148] show collection optic 112 and adjustment means [comprising lens 316] within the sample chamber; figs. 3-4 show the optics positioned within an outer cylinder 306 [mounted on an arm] which extends into the sample chamber 302; [0144] discloses that the outer cylinder 306 enters the vacuum chamber via an opening 308 formed in a wall of the vacuum chamber [arm inserted into the sample chamber through a port of the sample chamber]), and
a sealing element for sealing the port, the sealing element comprising a window (Kociak [0146] and fig. 5 discloses a transparent window seal 312 [sealing element] which preserves the vacuum level within the vacuum chamber [seals the port]; the sealing element comprises a window), and one of the two collection optics directs light scattered or generated from a point on the sample out the window (Kociak abstract discloses that the two optical components are capable of collecting and conveying light radiation coming from the illuminated sample to an analysis device; [0131] shows the sample 106 emitting light radiation 108 which is collected by the collection optic 112 and directed through the lens 316 [second collection optic]; as with fig. 3, the optics are within the cylinder 306 [within the arm, as disclosed above], and light is directed from collection optic through window 312 to an optical fiber 116 for analysis).
Kociak is silent to wherein the arm is insertable or inserted into the sample chamber through a port in the sample chamber to locate the at least two collection optics together in the same chamber.
However, Bennett does address this limitation. Kociak and Bennett are considered to be analogous to the present invention because they are electron beam microscope apparatus with a light collection optical system comprising an arm.
Bennet discloses “wherein the arm is insertable or inserted into the sample chamber through a port in the sample chamber to locate the at least two collection optics together in the sample chamber” (Bennett discloses a similar arm assembly to that of Kociak, wherein collection optics are inserted within a sample chamber and the position of the optic is adjustable; fig. 12 and [0112] discloses two parabolic mirrors which are together within a retraction arm, such that insertion [i.e. insertion into the sample chamber])/retraction of the retraction arm moves the whole optic assembly [two collection optics located together in the sample chamber]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kociak to incorporate wherein the arm is insertable or inserted into the sample chamber through a port in the sample chamber to locate the at least two collection optics together in the same chamber as suggested by Bennett for the advantage of incorporating a matched pair of optics, so that the imaged object will be in focus for an area about the image/object planes (Bennett [0112]), and compensating and/or correcting for small inaccuracies related to placement of the retraction arm 22 comprising the collection optics through orientation of the optical system (Bennett [0120]).
Kociak when modified by Bennett is silent to a collection optic interchange device configured to change which one of the at least two collection optics is located to direct light scattered or generated from a point on the sample out the window.
However, Fujimoto does address this limitation. Kociak, Bennett, and Fujimoto are considered to be analogous to the present invention because they are microscopes with specialized light collection/redirection optics.
Fujimoto discloses a collection optic interchange device configured to change which one of the at least two collection optics is located to direct light scattered or generated from a point on the sample out the window (Fujimoto [0096]-[0097] and fig. 7 disclose a microscope device for investigation of a sample, where two at least two lenses 3a/3b [at least two collection optics] are located above a sample; a revolver motor 15 is electrically connected to a revolver 2 [collection optic interchange device] connected to the lenses 3a/3b, and electronically selects which lens 3a/3b is directed above the sample and directs light for observation [i.e. selecting which of the two collection optics is located to direct light scattered or generated from a point on the sample]; the light from Fujimoto is directed for observation [i.e. analogous to being directed out the window and to at least one detector of Kociak]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kociak in view of Bennett to incorporate a collection optic interchange device configured to change which one of the at least two collection optics is located to direct light scattered or generated from a point on the sample out the window as suggested by Fujimoto for the advantage of enabling an automatic adjustment to be made between the two collection optics, as is needed to carry out an automatic focusing of the microscope (Fujimoto [0097]).
Regarding claim 2, Kociak when modified by Bennett and Fujimoto discloses the optical apparatus according to claim 1, and Kociak further teaches the apparatus wherein one of the at least two collection optics is for directing Raman light out of the window (Kociak figs. 3-4 has disclosed the use of the collection optic 112 to direct light 108 through opening 308 [i.e. window 312 of fig. 5]; given Kociak’s ability to direct light out of the window, MPEP §2114 II. states that “apparatus claims cover what a device is and not what a device does” – in this case, directing Raman light specifically is a recitation of what the device does which does not differentiate the claimed invention from Kociak given the structural capability of Kociak to direct light out of the window).
Regarding claim 3, Kociak when modified by Bennett and Fujimoto discloses the optical apparatus according to claim 2, and Kociak further teaches the apparatus wherein another of the at least two collection optics is for imaging the sample (Kociak [0119] discloses that a camera may be used for “imaging or diffraction”, and [0134] and fig. 1 disclose analysis means 118 which can comprise at least a CCD camera [i.e. the camera for imaging of [0119] above]).
Regarding claim 5, Kociak when modified by Bennett and Fujimoto discloses the optical apparatus according to claim 1. Kociak when modified by Bennett is silent to the optical apparatus according to claim 1, wherein the collection optic interchange device comprises a holder on which the collection optics are mounted, the holder being arranged to be movable relative to the arm to change which one of the at least two collection optics is located to direct light scattered or generated from a point on the sample out of the window.
However, Fujimoto does address this limitation.
Fujimoto discloses the optical apparatus according to claim 1, “wherein the collection optic interchange device comprises a holder on which the collection optics are mounted, the holder being arranged to be movable relative to the arm to change which one of the at least two collection optics is located to direct light scattered or generated from a point on the sample out of the window” (Fujimoto fig. 7 and [0096]-[0097] discloses a revolver 2 which holds the lenses 3a/3b [holder on which the collection optics are mounted]; incorporating the revolver 2 with lenses 3a/3b into the arm, the arm being insertable into the sample chamber would result in the holder rotating to switch between lenses 3a/3b, where that rotation would occur relative to the arm holding the revolver within the chamber; see claim 1 for discussion regarding directing light out the window [holder being arranged as movable relative to the arm to change which collection optic directly light out the window]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kociak in view of Bennett to incorporate wherein the collection optic interchange device comprises a holder on which the collection optics are mounted, the holder being arranged to be movable relative to the arm to change which one of the at least two collection optics is located to direct light scattered or generated from a point on the sample out of the window as suggested by Fujimoto for the advantage of enabling an automatic adjustment to be made between the two collection optics, as is needed to carry out an automatic focusing of the microscope (Fujimoto [0097]).
Regarding claim 6, Kociak when modified by Bennett and Fujimoto discloses the optical apparatus according to claim 5. Kociak when modified by Bennett is silent to the optical apparatus according to claim 5, wherein the holder is mounted to the arm.
However, Fujimoto does address this limitation.
Fujimoto discloses the optical apparatus according to claim 5, “wherein the holder is mounted to the arm” (as discussed in claim 5 above, the combination of Fujimoto with the arms of Kociak and Bennet, wherein the revolver 2 which has mounted on it the lenses 3a/3b is within the chamber would necessitate the revolver 2 being mounted by the arm in order to be supported within the chamber).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kociak in view of Bennett to incorporate wherein the holder is mounted to the arm as suggested by Fujimoto for the advantage of enabling an automatic adjustment to be made between the two collection optics, as is needed to carry out an automatic focusing of the microscope (Fujimoto [0097]).
Regarding claim 7, Kociak when modified by Bennett and Fujimoto discloses the optical apparatus according to claim 6. Kociak when modified by Bennett is silent to the optical apparatus according to claim 6 wherein the holder is rotatably mounted on the arm such that the holder can be rotated to a plurality of different positions, each position corresponding to a different one of the at least two collection optics being located to direct light scattered or generated from a point on the sample out of the window.
However, Fujimoto does address this limitation.
Fujimoto discloses the optical apparatus according to claim 6 “wherein the holder is rotatably mounted on the arm such that the holder can be rotated to a plurality of different positions, each position corresponding to a different one of the at least two collection optics being located to direct light scattered or generated from a point on the sample out of the window” (as described within at least claim 5, the revolver 2 of Fujimoto would be rotatably mounted on the arm; the switching between lens 3a/3b results in the revolver 2 being rotated to a plurality of different positions, and placing whichever lens in the observational light beam path [each position corresponding to a different one of the at least two collection optics…]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kociak in view of Bennett to incorporate the optical apparatus according to claim 6 wherein the holder is rotatably mounted on the arm such that the holder can be rotated to a plurality of different positions, each position corresponding to a different one of the at least two collection optics being located to direct light scattered or generated from a point on the sample out of the window as suggested by Fujimoto for the advantage of enabling an automatic adjustment to be made between the two collection optics, as is needed to carry out an automatic focusing of the microscope (Fujimoto [0097]).
Regarding claim 8, Kociak when modified by Bennett and Fujimoto discloses the optical apparatus according to claim 5, and Kociak further teaches the apparatus wherein the collection optic interchange device comprises an actuator for moving the holder, the actuator arranged at a location in the optical apparatus such that the actuator is located outside the sample chamber when, in use, the holder is located in the sample chamber (Kociak fig. 6 shows a three-dimensional movement device 610 located outside the sample chamber and comprising three micrometric screws 614, 616, 618 which are used to move a cylinder 602 [analogous to the holder] within the sample chamber where the screws are actuators located outside the sample chamber; while Fujimoto has been cited to address the collection optic interchange device and holder, the functionality of the screws of Kociak to perform the function of the revolver motor 15 of Fujimoto [i.e. moving the collection optic interchange device] is obvious given the nature of their purposes being analogous; and a transmission linkage for transmitting movement of the actuator outside the sample chamber to movement of the holder within the sample chamber (Kociak [fig. 6 and [0159] show the micrometric screws 614, 616, 618 outside of the sample chamber, where the movement device 610 transmits/translates movement of the screws to movement of the holder within the chamber).
Regarding claim 9, Kociak when modified by Bennett and Fujimoto discloses the optical apparatus according to claim 1, and further teaches the apparatus wherein at least one of the collection optics has an aperture therein for allowing the analysis beam to pass therethrough (Kociak [0137] and fig. 2 discloses the collection optic 112 comprising parabolic mirror 200; the mirror 200 has a through-hole 206 which allows electron beam to pass therethrough to reach sample [aperture for allowing the analytical beam to pass therethrough]).
Regarding claim 10, Kociak when modified by Bennett and Fujimoto discloses the optical apparatus according to claim 1. Kociak is silent to the optical apparatus of claim 1 comprising a delivery optical train for delivering illumination or excitation light from a light source to a corresponding one of the at least two collection optics such that the illumination or excitation light is incident on the sample.
However, Bennett does address this limitation.
Bennett discloses the optical apparatus according to claim 1, “comprising a delivery optical train for delivering illumination or excitation light from a light source to a corresponding one of the at least two collection optics such that the illumination or excitation light is incident on the sample” (Bennett fig. 1 and [0046]-[0047] discloses an arm assembly 22 comprising a parabolic mirror 18 [collection optic] which is inserted into a sample chamber, as does Kociak; fig. 1 shows an optical path 23 [delivery optical train] which leads eventually to optical system; figs. 2 and 4 show the optical system in question, comprising at least one white light source 37 of fig. 2 [light source], or both 514nm laser and 785nm laser shown in fig 4; [0072] discloses that laser sources project an illuminated spot on the sample [illumination light is incident on the sample]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kociak to incorporate a delivery optical train for delivering illumination or excitation light from a light source to a corresponding one of the at least two collection optics such that the illumination or excitation light is incident on the sample as suggested by Bennett for the advantage of compensating and/or correcting for small inaccuracies related to the placement of the retraction arm 22 comprising the collection optics through the orientation of the optical system (Bennett [0120]).
Regarding claim 11, Kociak when modified by Bennett and Fujimoto discloses the optical apparatus according to claim 10. Kociak is silent to the optical apparatus according to claim 10, comprising a plurality of delivery optical trains, each of the delivery optical trains being configured for delivering light from a different light source to the corresponding collection optic.
However, Bennett does address this limitation.
Bennett discloses the optical apparatus according to claim 10, “comprising a plurality of delivery optical trains, each of the delivery optical trains being configured for delivering light from a different light source to the corresponding collection optic” (Bennett fig. 4 discloses two separate laser light sources, a 514nm and 785nm source respectively, which are directed each directed to a unique filter 46 (for the 514nm source) and 54 (for the 785nm source), where the filter directs the light to the actuating arm 22; at least between the source and the corresponding filters, a plurality of delivery optical trains exists, where each delivery train emits from a different light source through the actuating arm 22 to a corresponding collection optic).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kociak to incorporate a plurality of delivery optical trains, each delivery optical train for delivering light from a different light source to the corresponding collection optic as suggested by Bennett for the advantage of compensating and/or correcting for small inaccuracies related to the placement of the retraction arm 22 comprising the collection optics through the orientation of the optical system (Bennett [0120]).
Regarding claim 12, Kociak when modified by Bennett and Fujimoto discloses the optical apparatus according to claim 11 and Kociak further teaches wherein the at least two collection optics comprise a first collection optic for directing laser light on to the sample and a second collection optic for directing incoherent light onto the sample (Kociak when modified by Bennett and Fujimoto within claim 11 has disclosed a delivery optical train for delivering illumination light to the sample, and the combination within claim 11 has disclosed a plurality of different light sources [i.e. laser source and an incoherent source]; under MPEP § 2114 II., “apparatus claims cover what a device is and not what a device does” – in this case, multiple collection optics are present to direct light towards a sample within a sample chamber, whether that light is incoherent or laser is a recitation of what the device does and does not make a contribution over Kociak in view of Bennett and Fujimoto).
Regarding claim 13, Kociak when modified by Bennett and Fujimoto discloses the optical apparatus according to claim 11. Kociak is silent to the optical apparatus according to claim 11, wherein the delivery optical trains are arranged to direct light from each light source along a common optical path.
However, Bennett does address this limitation.
Bennett discloses the optical apparatus according to claim 11, “wherein the delivery optical trains are arranged to direct light from each light source along a common optical path” (Bennett fig. 1 label 23 represents an optical path from the parabolic mirror 18 within the sample chamber; [0060] discloses a plan view of optical path 23 within fig. 3 (and fig. 4, without actuating mirror 66); the light from the 514nm and 785nm laser light sources within fig. 4 along their respective delivery optical train is directed to the parabolic mirror 18 along a common optical path).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kociak to incorporate wherein the delivery optical trains are arranged to direct light from each light source along a common optical path as suggested by Bennett for the advantage of compensating and/or correcting for small inaccuracies related to the placement of the retraction arm 22 comprising the collection optics through the orientation of the optical system (Bennett [0120]).
Regarding claim 14, Kociak when modified by Bennett and Fujimoto discloses the optical apparatus according to claim 13. Kociak is silent to the optical apparatus according to claim 13, wherein the common optical path includes an optical path along the arm.
However, Bennett does address this limitation.
Bennett discloses the optical apparatus according to claim 13, “wherein the common optical path includes an optical path along the arm” (as with the preceding claim, Bennett fig. 1 label 23 represents an optical path from the parabolic mirror 18 within the sample chamber which runs the path of the arm; [0060] discloses a plan view of optical path 23 within fig. 3 (and fig. 4, without actuating mirror 66); the light from the 514nm and 785nm laser light sources within fig. 4 along their respective delivery optical train is directed to the parabolic mirror 18 along a common optical path, that path including an optical path along the arm).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kociak to incorporate wherein the common optical path includes an optical path along the arm as suggested by Bennet for the advantage of compensating and/or correcting for small inaccuracies related to the placement of the retraction arm 22 comprising the collection optics through the orientation of the optical system (Bennett [0120]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA M CARLSON whose telephone number is (571)270-0065. The examiner can normally be reached Mon-Fri. 8:00AM - 5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur R Chowdhury can be reached at (571) 272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA M CARLSON/Examiner, Art Unit 2877
/TARIFUR R CHOWDHURY/Supervisory Patent Examiner, Art Unit 2877
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