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 Arguments
Applicant’s arguments, see Page 9, filed 27 April 2026, with respect to claims 33-34 have been fully considered and are persuasive. Therefore, the objections to claims 33-34 have been withdrawn.
Applicant’s arguments, see Page 9, filed 27 April 2026, with respect to claims 24-25 and 34 have been fully considered and are persuasive. Therefore, the §112(b) rejections of claims 24-25 and 34 have been withdrawn.
Applicant’s arguments, see Pages 11-13, filed 27 April 2026, with respect to claim 31 have been fully considered, but are not persuasive. Therefore, the §102/103 rejections of claims 31-32 have been maintained.
Applicant argues that the prior art reference of Sobolev fails to disclose or suggest “preserve an illumination property of the beam such that the illumination property is invariant to the linear movement, wherein the illumination property comprises one of polarization, diffraction order, or modulation”, as recited in amended claim 31. However, Sobolev discloses the same structure as is disclosed, namely, the at least two reflective surfaces, which are configured to be in a retroreflective arrangement (see Fig. 6 of specification and elements 70a/70b in Fig. 3 of Sobolev). Applicant is silent with respect to any further specific configuration of the at least two reflective surfaces.
In reference to the claim language referring to “preserve an illumination property of the beam such that the illumination property is invariant to the linear movement, wherein the illumination property comprises one of polarization, diffraction order, or modulation”, intended use and other types of functional language must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable to performing the intended use, and then it meets the claim. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex Parte Masham, 2 USPQ F.2d 1647 (1987). In a claim drawn to a process to making, the intended use must result in a manipulative difference as compared to the prior art. In Re Casey, 152 USPQ 235 (CCPA 1967); In Re Otto, 136 USPQ 458, 459 (CCPA 1963).
Therefore, it is evident that Sobolev’s at least two reflective surfaces 70a/70b inherently “preserve an illumination property of the beam such that the illumination property is invariant to the linear movement, wherein the illumination property comprises one of polarization, diffraction order, or modulation”.
Applicant’s arguments, see Pages 13-14, filed 27 April 2026, with respect to claim 21 have been fully considered, but are not persuasive. Therefore, the §103 rejections of claim 21-30 have been maintained.
Applicant argues that the prior art reference of Sobolev fails to disclose or suggest “preserve an illumination property of the beam such that the illumination property is invariant to the linear movement… wherein the illumination property comprises one of polarization, diffraction order, or modulation”, as recited in amended claim 21. However, for the same reasons as stated above for claim 31, Sobolev inherently discloses a structure configured to “preserve an illumination property of the beam such that the illumination property is invariant to the linear movement… wherein the illumination property comprises one of polarization, diffraction order, or modulation”.
Applicant’s arguments, see Pages 13-14, filed 27 April 2026, with respect to claim 33 have been fully considered and are persuasive. Therefore, the §103 rejections of claims 33-40 have been withdrawn.
The Examiner acknowledges that the rejection of claim 40 had been inadvertently omitted. However, the limitations of claim 40 are similar to those of claim 26, which had been rejected under §103 as unpatentable over Sobolev, in view of Bogaart.
Claim Rejections - 35 USC § 102
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.
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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 31 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sobolev et al. (US 10,809,125), hereinafter Sobolev.
Claim 31: Sobolev discloses an optical element (70, Fig. 3) comprising:
at least two reflective surfaces (70a/70b) (Col. 5, Lines 24-26), configured with respect to each other to:
receive a beam (60a) of radiation along an optical axis (Col. 6, Lines 11-16);
perform reflections of the beam (60b) so as to displace the optical axis of the beam (evident from figure);
move linearly (via translation stage 68) in at least a first dimension to shift the displaced optical axis (Col. 5, Lines 21-24); and
preserve an illumination property of the beam (60b) such that the illumination property is invariant to the linear movement (this function is inherently met through the use of the same structure as claimed), wherein the illumination property comprises one of polarization, diffraction order, or modulation (inherent since the beam is being specularly reflected and no information is changed).
Claim Rejections - 35 USC § 103
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.
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 21, 26, and 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over Sobolev, in view of Bogaart et al. (US 2016/0097983), hereinafter Bogaart.
Claim 21: Sobolev discloses an inspection apparatus (50, Fig. 3) comprising:
a radiation source (52) configured to generate a beam (54) of radiation (Col. 5, Lines 6-9);
an optical system (70) configured to receive and direct the beam (54 turns into 60 after passing through beamsplitter 56, Col. 5, Lines 6-9) along an optical axis (parallel to 76) and toward a target (62) (Col. 5, Lines 21-35), the optical system (70) comprising:
a beam displacer (70) comprising two or more reflective surfaces (70a/70b) (Col. 5, Lines 24-26), wherein the beam displacer (70) is configured to:
receive the beam (60a) along the optical axis (Col. 6, Lines 11-16);
perform reflections of the beam (60b) so as to displace the optical axis of the beam (evident from figure);
move linearly (via translation stage 68) in at least a first dimension to shift the displaced optical axis (Col. 5, Lines 21-24); and
preserve an illumination property of the beam (60b) such that the illumination property is invariant to the linear movement (this function is inherently met through the use of the same structure as claimed), wherein the illumination property comprises one of polarization, diffraction order, or modulation (inherent since the beam is being specularly reflected and no information is changed).
Sobolev is silent with respect to a detector configured to receive the scattered radiation.
Bogaart, however, in the same field of endeavor of optical inspection, discloses an inspection apparatus (Fig. 3) comprising:
a radiation source (104) configured to generate a beam (102) of radiation [0064],
wherein the beam is directed toward a target (100) so as to produce scattered radiation from the target (100) [0064]; and
a detector (108) configured to receive scattered the radiation (106/110) [0064] and to generate a measurement signal (Fig. 4) based on the scattered radiation (106/110) [0070].
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 Sobolev’s apparatus with a detector configured to receive scattered radiation for the purpose of characterizing a grating structure (Bogaart [0069]).
Claim 26: Sobolev, in view of Bogaart, further discloses wherein the optical system (Fig. 9e) further comprises an objective (860) having an optical center (inherent), and the optical system is configured to collect and direct the scattered radiation (832) toward the detector (108) (Bogaart [0094]); and
two units of motion of the objective moves the beam displacer one unit of motion to allow the scattered radiation to be aligned to the optical center (evident from Fig. 3 of Sobolev since the beam path at the beam displacer 70 corresponds to double that outside of the beam displacer 70, such as at an objective lens placed just before the target 62).
Claim 29: Sobolev further discloses wherein the optical system (70) further comprises a beam splitter (56) configured to split the beam to generate a second beam (58) of radiation (Col. 5, Lines 6-9).
Claim 30: Sobolev is silent with respect to a second detector, wherein:
the optical system is configured to direct the second beam toward a second target so as to produce second scattered radiation from the second target; and
the second detector is configured to receive the second scattered radiation and to generate a second measurement signal based on the second scattered radiation.
However, given that the initial beam of radiation has been split (by beam splitter 56) to generate a second beam (Col. 5, Lines 6-9), directing this second beam toward a second target and then receiving the generated scattered radiation at a second detector to generate a second measurement signal constitutes a mere duplication of parts. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)
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 Sobolev’s apparatus with a second target and a second detector for the purpose of simultaneously characterizing two different objects.
With this modified apparatus, Sobolev further discloses wherein the beam displacer (70) is configured to adjust a separation between the beam (60a) and the second beam (58) so as to correspond to a separation between the target (62) and the second target (the adjustment of the beam displacer 70 corresponds to a change in location of the beam 60b on the detector 80; Col. 6, Lines 11-20).
Claims 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over Sobolev, in view of Bogaart as applied to claim 21 above, and further in view of Meeks (US 2007/0153273), hereinafter Meeks.
Claim 22: Sobolev is silent with respect to the beam displacer comprising a first prism and the second prism.
Meeks, however, in the same field of endeavor of optical inspection, discloses an inspection apparatus (Fig. 19) comprising:
a beam displacer (1905) comprising two or more reflective surfaces (inherent to a retroreflector [0101]), wherein the beam displacer (1905) is configured to:
receive the beam along the optical axis (inherent to a retroreflector [0101]); and
perform reflections of the beam so as to displace the optical axis of the beam (inherent to a retroreflector [0101]),
wherein the beam displacer (1905) comprises a first prism and a second prism (inherent to a Porro prism (“The retro-reflector 1905 may be a conventional retro-reflecting prism (a Porro prism)” [0101]).
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 Sobolev’s beam displacer to be comprised of a Porro prism for the purpose of creating a more compact light path so that the inspection apparatus can have a smaller construction.
With the modified apparatus, Sobolev inherently discloses (since a Porro prism has a certain, defined configuration, see figure below) wherein:
each of the first prism and the second prism have at least a respective first surface, second surface, and third surface;
the second surface and the third surface of the first prism and the second surface and the third surface of the second prism total four reflective surfaces;
the first surface of the first prism is configured to receive the beam at a substantially perpendicular direction to the first surface of the first prism;
the second and third surfaces of the first prism are configured to reflect the beam toward the first surface of the second prism; and
the first surface of second prism is configured to direct the beam toward an objective of the optical system at a substantially perpendicular direction to the first surface of the second prism.
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a Porro prism
Claim 23: Sobolev further discloses wherein the optical system (70) further comprises a reflective element (66c) configured to direct the beam (60a) toward the first surface of the first prism (Col. 5, Lines 11-15).
Claim 24: Sobolev is silent with respect to the beam displacer comprising a prism.
Meeks, however, in the same field of endeavor of optical inspection, discloses an inspection apparatus (Fig. 19) comprising:
a beam displacer (1905) comprising two or more reflective surfaces (inherent to a retroreflector [0101]), wherein the beam displacer (1905) is configured to:
receive the beam along the optical axis (inherent to a retroreflector [0101]); and
perform reflections of the beam so as to displace the optical axis of the beam (inherent to a retroreflector [0101]),
wherein the beam displacer (1905) comprises a prism (“The retro-reflector 1905 may be a conventional retro-reflecting prism (a Porro prism)” [0101]).
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 Sobolev’s beam displacer to be comprised of a Porro prism for the purpose of creating a more compact light path so that the inspection apparatus can have a smaller construction.
Sobolev further discloses wherein the optical system (70) further comprises a fold mirror (74) configured to reflect the beam (60b) toward an objective of the optical system (70) (Col. 5, Lines 32-35); and
two units of motion of the objective moves the beam displacer (70) one unit of motion (evident from Fig. 3 since the beam path at the beam displacer 70 corresponds to double that outside of the beam displacer 70, such as at an objective lens placed just before the target 62).
Claim 25: Sobolev further discloses wherein the optical system (70) further comprises:
a reflective element (66c) configured to direct the beam (60a) along the optical axis and toward the first surface of the first prism (Col. 5, Lines 11-15).
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Sobolev as applied to claim 31 above, and further in view of Meeks.
Claim 32: Sobolev is silent with respect to the at least two reflective surfaces comprising four reflective surfaces and the optical element comprising a first prism and the second prism.
Meeks, however, in the same field of endeavor of optical inspection, discloses an inspection apparatus (Fig. 19) comprising:
an optical element (1905) comprising two or more reflective surfaces (inherent to a retroreflector [0101]), wherein the optical element (1905) is configured to:
receive the beam along the optical axis (inherent to a retroreflector [0101]); and
perform reflections of the beam so as to displace the optical axis of the beam (inherent to a retroreflector [0101]),
wherein the optical element (1905) comprises a first prism and a second prism (inherent to a Porro prism (“The retro-reflector 1905 may be a conventional retro-reflecting prism (a Porro prism)” [0101]).
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 Sobolev’s optical element to be comprised of a Porro prism for the purpose of creating a more compact light path so that the inspection apparatus can have a smaller construction.
With the modified apparatus, Sobolev inherently discloses (since a Porro prism has a certain, defined configuration, see figure above) wherein:
each of the first prism and the second prism have at least a respective first surface, second surface, and third surface;
the second surface and the third surface of the first prism and the second surface and the third surface of the second prism total four reflective surfaces;
the first surface of the first prism is configured to receive the beam at a substantially perpendicular direction to the first surface of the first prism;
the second and third surfaces of the first prism are configured to reflect the beam toward the first surface of the second prism; and
the first surface of second prism is configured to direct the beam toward an objective of the optical system at a substantially perpendicular direction to the first surface of the second prism.
Allowable Subject Matter
Claims 33-40 are allowed.
The following is an Examiner’s statement of reasons for allowance:
Claims 33-40: None of the prior art of record, alone or in combination, teaches or discloses a method comprising:
preserving an illumination property of the beam (60b) such that the illumination property of the beam along the deflected optical axis is invariant to the linear movement, wherein the illumination property comprises one of polarization, diffraction order, or modulation,
in combination with the rest of the limitations of independent claim 33.
Any comments considered necessary by Applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Claims 27-28 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 27-28: None of the prior art, alone or in combination, teaches of discloses the inspection apparatus of claim 26, further comprising:
a mounting device comprising three or more flexure elements and configure to mount the beam displacer and the objective, and wherein each of the three or more flexure elements is flexible in at least two degrees of freedom.
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 HINA F AYUB whose telephone number is (571)270-3171. The Examiner can normally be reached on 9am-5pm ET Mon-Fri.
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, Tarifur Chowdhury can be reached on 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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/Hina F Ayub/
Primary Patent Examiner
Art Unit 2877
Prosecution Insights