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 .
Claim Rejections - 35 USC § 101
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.
Claims 9-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because they are directed a computer program without a physical form, i.e., software per se.
Claims 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas in the form of mathematical concepts without significantly more. The claim(s) recite the abstract idea of calculating the operating parameters of a device based of previously collected data. See Parker v. Flook, 437 U.S. 584 (1978)).
This judicial exception is not integrated into a practical application because the only recitation that is directed to anything other than an abstract idea is an extremely generic setting step. Such a step cannot be reasonably considered a practical application, and mirrors the “adjusting” step in Parker v. Flook which was also not enough of a practical application to make those claims patent eligible subject matter.
Further, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only other elements in the claims are a generic controller, which is not significantly more than the abstract idea itself. Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2359 (2014), and a charged particle microscope in claims 1-4 that is claimed with such a degree of generality that it is anticipated by the art described in the background section of the instant application. Such a generic recitation does no more than limit the abstract idea to a field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Likewise, in the instant claims, specifying that the abstract idea is only used in the century old field of charged particle microscopy is insufficient to make the abstract idea patent eligible.
The dependent claims do not obviate these issues. Rather, they provide further specificity to the calculations and generally describe manipulations of data, e.g., the maps of claims 2, 6, and 10; the inputs of claims 3, 7, and 11; and simulations of claims 4, 8, and 12. None of these additions is significantly more than an abstract idea, and none can be credibly considered an application of the abstract idea, let alone a practical application.
In sum, the claims recite an abstract ideas, namely a mathematical calculation, and a generic setting step. Considered as an order combination, claims 1-12 of the instant application are not significantly more than the abstract ideas themselves, and have no recited practical application.
Claim Rejections - 35 USC § 112
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.
Claims 1-12 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. The independent claims recite, “calculate[ing] an irradiation period, a scanning speed, and a pulse width of the pulsed charged particle beam and a detection timing of the signal of the emitted electron based on a current of the charged particle beam emitted from the particle source and an electrostatic capacity and an electrical resistance of the sample.” The inconsistent use of conjunctions and punctuation raises a question of the scope of the claims. In particular, it is unclear whether the claims require
a first case of:
1) calculating an irradiation period, a scanning speed, and a pulse width of the pulsed charged particle beam; and
2) calculating a detection timing of the signal of the emitted electron based on a current of the charged particle beam emitted from the particle source, an electrostatic capacity, and an electrical resistance of the sample; or
a second case of:
1) calculating an irradiation period, a scanning speed, a pulse width of the pulsed charged particle beam, and a detection timing of the signal of the emitted electron; and
2) said calculating based on a current of the charged particle beam emitted from the particle source, an electrostatic capacity, and an electrical resistance of the sample.
For the purposes of examination, the claims will be interpreted consistent with the second option.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2021/0027455 A1 appears to teach much of the claimed invention, but fails to calculate an irradiation period, a scanning speed, a pulse width of the pulsed charged particle beam, and a detection timing of the signal of the emitted electron, wherein all of the above calculations are based on a current of the charged particle beam emitted from the particle source, an electrostatic capacity, and an electrical resistance of the sample.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ROBERT KIM can be reached at 571 272 2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
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