DETAILED ACTION
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 filed on 10/1/26 have been fully considered but are found not persuasive.
The remarks argue that Fuller fails to obtain XYZ coordinates representing the surface shape of the lamella at multiple surface locations. However, this is not required by the claim, only performing a calculation “based on the three-dimensional coordinate information measured by the surface shape measurement device” which can be any kind of coordinate information. This is broad enough to read on the surface shape information directly measured and z position during milling that can be inferred from the surface shape measurement device.
The remarks argue Fuller fails to teach correction information for orienting a lamella for imaging, and only teaches endpoint detection for milling. However, the orienting is not specified in the claims, and is broad enough to read on orienting the lamella during/via e.g. milling.
The remarks argue the rejection fails to disclose why PHOSITA would convert FIB endpoint measuring to 3d surface shape coordinate information, etc. However, as discussed above, the claims are broad enough to read on utilizing 3d surface shape information during FIB milling.
The remarks argue Brogden determines object position for liftout and landing, not surface shape for imaging correction. However, the claims are broad enough to read on all types of corrections, including e.g. warping corrections, not just the specific type of corrections in the specification. Brogden explicitly teaches Z height calculation (see [0097-98,127,etc]) and XY position calculation (see [0094-95,127,etc]) of the lamella.
The remarks argue Brogden teaches calculating landing vectors and not angular corrections. However, the claims are sufficiently broad to read on setting a target angle (“correcting an angle and a height”), even if the lamella is moved without changing a desired target tilt during correction. The type and manner of angular correction is not specified. Brogden requires setting a desired angular orientation of the lamella to enable the intended operation of the system, and the lamella must be moved to meet that target positional and angular orientation.
The remarks argue Brogden fails to teach a TEM/STEM that adjusts height/angle of a lamella based on surface shape measurement data, and then measures the lamella. However, surface shape measurement data is broad enough to read on any data that has some information about the surface shape, not necessarily the more detailed information described in the specification.
The remarks argue Brogden only teaches warping correction and fails to teach 3d measuring to calculate angle/height corrections for TEM imaging. However, the claims are broad enough to read on all types of corrections, including e.g. warping corrections, not just the specific type of corrections in the specification.
The remarks argue claims 5, 12 are further patentable because Brogden does not teach 3 or more lamella surface coordinates to calculate correction information for imaging. However, as discussed above, the claims do not require the specific calculation discussed in the specification. The claims are broad enough to read on e.g. reading every point on the surface shape of a lamella such as in Brogden.
The remarks note that action does not have a stated ground of rejection for claim 8. This is clearly a typographical error since the action maps (rejected claim 9) to the limitations of filed claim 8, and then omits the mapping for the limitations of filed claim 9. However, filed claim 9 is largely duplicative of filed claim 2. Therefore, it is believed that Applicant is on notice as to the scope of the rejection, in view of their familiarity with the prior art and invention. However, if Applicant wishes to assert that the level of skill in the art is so low as a skilled artisan would have been unable to ascertain the limitations of claim 8 or 9, they are invited to do so. However, it is noted that such an assertion about PHOSITA may affect determinations of enablement of the invention based on the scope of disclosure in the current specification.
Status of the Application
Claim(s) 1-14 is/are pending.
Claim(s) 1-14 is/are rejected.
Claim Rejections – 35 U.S.C. § 112 (a)
The following is a quotation of the first paragraph of 35 U.S.C. § 112(a):
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The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. § 112:
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Claim(s) 1-14 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 fails to meet the written description requirement for requiring “calculate, based on the three-dimensional coordinate information measured by the surface shape measurement device, correction information for correcting an angle and a height of the lamella during imaging of the lamella”.
MPEP 2163.03(IV) recites
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved
MPEP 2163.05(g) recites
Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc). See also Datamize LLC v. Plumtree Software Inc., 417 F.3d 1342, 75 USPQ2d 1801 (Fed. Cir. 2005) where a claim directed to a software based system for creating a customized computer interface screen recited that the screen be "aesthetically pleasing," which is an intended result and does not provide a clear cut indication of scope because it imposed no structural limits on the screen. Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167. For instance, a single means claim covering every conceivable means for achieving the stated result was held to be invalid under 35 U.S.C. 112, first paragraph because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim.
Here, the claim requires the desired result of calculating “correction information for correcting an angle and a height of the lamella during imaging of the lamella” and that calculation being “based on the three-dimensional coordinate information measured by the surface shape measurement device”. The specification discusses e.g. determining parameters for an equation to fit a plane that approximates the surface of the TEM mesh (e.g. [0052-53]) that involves sampling at least three points (see [0054-56]). The specification discusses e.g. determining angle of the TEM mesh based on the aforementioned parameters (see e.g. [0057-60]).
However, the claim language covers all and every type of correction information for correcting angle and height of a lamella during imaging, “based on” the 3D coordinate information, including e.g. different types of height determination algorithms, different approximations, different fitting methods to a planar model (or e.g. non-planar models), and information that maps every single point on the lamella. It also covers all types of corrections including corrections for surface deformations, vibrational compensation, etc.
Therefore, this amounts to a desired result without disclosure as to how the result is achieved, as well as improper unlimited functional claiming.
Because the specification is devoid of steps, prose, flow charts, algorithm, equation to how to correct every type of angle and height determination and correction, and only shows a single example of one way to perform one type of measurement and one type of correction, claim 1 fails to meet the written description requirement.
Applicant is reminded that "It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. V. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015)"
Claim 8 is rejected for similar reasons as claim 1.
Claims 2-7, 9-14 are rejected due to their dependency from claim 1 or 8.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for e.g. determining parameters for an equation to fit a plane that approximates the surface of the TEM mesh (e.g. [0052-53]) that involves sampling at least three points (see [0054-56]), does not reasonably provide enablement for the full scope of “calculate, based on the three-dimensional coordinate information measured by the surface shape measurement device, correction information for correcting an angle and a height of the lamella during imaging of the lamella”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to utilize the invention commensurate in scope with these claims. In particular, the specification fails to explain how a skilled artisan would be able to correct and angle and height of the lamella for every type of possible application where an angle and height need to be corrected for imaging.
For example, the degree of correction is also not specified, since what constitutes “correction” is not specified. The claims cover any and all types of “correction” for any reason, including e.g. correction based on any and all optimization/correction procedures, correction to arbitrary levels of precision for e.g. additional picoscale processing using AFMs, and/or e.g. obtaining a level of correction that trades processing time for precision, etc. The claims also cover general corrections for every type of lamella with every type of problem (bent, warped, too small, wrong material, etc).
Claim 8 is rejected for similar reasons as claim 1.
Claims 2-7, 9-14 are rejected due to their dependency from claim 1 or 8.
Claim Rejections – 35 U.S.C. § 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:
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Claim(s) 1, 8 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Fuller et al. (US 20160126060 A1) [hereinafter Fuller].
Regarding claims 1 and 8, Fuller teaches an imaging system comprising:
a surface shape measurement device (e.g. SEM, fig 1: 41) configured to measure three-dimensional coordinate information of a surface shape of a lamella (see e.g. dimensions, [0035]) having a laminated structure (e.g. [0033]);
a computer system (required for operation of system) configured to calculate, based on the three-dimensional coordinate information measured by the surface shape measurement device, correction information for correcting an angle and a height of the lamella during imaging of the lamella (see correction step, [0036]), and to transmit the calculated correction information (required for correction step, [0036]); and
a charged particle beam device (see fig 1) configured to receive the correction information, correct the angle and the height of the lamella based on the correction information (performs milling, see [0036]), and irradiate the lamella of which the angle and the height are corrected with a charged particle beam to image the lamella (imaged after each milling step, see [0036]).
Fuller may fail to explicitly disclose the correction information being for correcting an angle and a height of the lamella. However, given the teaching that the lamella is milled to achieve a desired thickness (see [0036]), and that the angles are adjusted to achieve a desired angle (see [0038]), under the broadest reasonable interpretation of the claims, the correction information includes this information, and/or it would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to provide this information to achieve the desired effect of providing a target lamella shape and dimensions.
The limitation reciting correction information “for correcting an angle and a height of the lamella during imaging of the lamella” specifies an intended use or field of use, and therefore is treated as non-limiting since it has been held that in device claims, intended use 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 of performing the intended use, then it meets the claims. See In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459 (CCPA 1963). In particular, the “for correcting” limitation does not necessarily map to the “based on the correction information” described in “correct the angle and the height of the lamella based on the correction information” since the correction need only be “based on” the correction information, which could be anything (e.g. pi).
Claim(s) 1, 5, 8, 12 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Brogden et al. (US 20160141147 A1) [hereinafter Brogden].
Regarding claim 1, Brogden teaches an imaging system comprising:
a surface shape measurement device (e.g. SEM, fig 1) configured to measure three-dimensional coordinate information of a surface shape of a lamella (see e.g. [0094,97]) having a laminated structure (e.g. [0057,16]);
a computer system (required for operation of system) configured to calculate, based on the three-dimensional coordinate information measured by the surface shape measurement device (see e.g. [0094,97]), correction information for correcting an angle and a height of the lamella during imaging of the lamella (see positional correction, [0096], and also taking into account angular movement, [0100], amounting to the same mathematical function even if different mathematical parameterization), and to transmit the calculated correction information (required for operation of system, see e.g. fig 21: 2116); and
a charged particle beam device (see fig 1) configured to receive the correction information, correct the angle and the height of the lamella based on the correction information (performs movement, see e.g. fig 21: 2116), and irradiate the lamella of which the angle and the height are corrected (welded with corrected welding position/angles) with a charged particle beam to image the lamella (imaged by S/TEM).
Brogden may fail to explicitly disclose the charged particle beam device irradiating the corrected lamella. However, Brogden teaches a TEM or STEM is required for the intended operation of imaging the lamella (see Brogden, [0004-8]), and it would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to provide the use of the TEM in the charged particle beam device (for example even providing a totally separate column inside the same overall device) as an ordinary skill in the art to enable the intended operation of the system. It is noted the use of a one piece construction instead of the structure disclosed in the prior art would be merely a matter of obvious engineering choice. See In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965).
The limitation reciting correction information “for correcting an angle and a height of the lamella during imaging of the lamella” specifies an intended use or field of use, and therefore is treated as non-limiting since it has been held that in device claims, intended use 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 of performing the intended use, then it meets the claims. See In re Casey, 152 USPQ 235 (CCPA 1967); In re Otto, 136 USPQ 458, 459 (CCPA 1963). In particular, the “for correcting” limitation does not necessarily map to the “based on the correction information” described in “correct the angle and the height of the lamella based on the correction information” since the correction need only be “based on” the correction information, which could be anything (e.g. pi).
Regarding claim 5, Brogden teaches wherein the surface shape measurement device obtains the three-dimensional coordinate information of at least three or more points on the lamella (uses all points on the lamella during image processing, see [0093,86,88,etc], fig 21: 2102, 2110, etc), and calculates the correction information based on the three-dimensional coordinate information of the at least three or more points (see same).
Regarding claim 8, Brogden teaches an imaging method comprising:
measuring, by a surface shape measurement device (e.g. SEM, fig 1), three-dimensional coordinate information of a surface shape of a lamella (see e.g. [0094,97]) having a laminated structure (e.g. [0057,16]);
calculating, by a computer (required for operation of system), based on the three-dimensional coordinate information measured by the surface shape measurement device (see e.g. [0094,97]), correction information for correcting an angle and a height of the lamella during imaging of the lamella (see positional correction, [0096], and also taking into account angular movement, [0100], amounting to the same mathematical function even if different mathematical parameterization), and transmitting the calculated correction information to a charged particle beam device (required for operation of system, see e.g. fig 21: 2116); and
receiving, by the charged particle beam device, the correction information, correcting the angle and the height of the lamella based on the correction information (performs movement, see e.g. fig 21: 2116), and irradiating the lamella of which the angle and the height are corrected (welded with corrected welding position/angles) with a charged particle beam to image the lamella (imaged by S/TEM).
Brogden may fail to explicitly disclose the charged particle beam device irradiating the corrected lamella. However, Brogden teaches a TEM or STEM is required for the intended operation of imaging the lamella (see Brogden, [0004-8]), and it would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to provide the use of the TEM in the charged particle beam device (for example even providing a totally separate column inside the same overall device) as an ordinary skill in the art to enable the intended operation of the system. It is noted the use of a one piece construction instead of the structure disclosed in the prior art would be merely a matter of obvious engineering choice. See In re Larson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965).
Claim 12 is rejected for similar reasons as claim 5 above.
Claim(s) 2-4, 9-11 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Brogden, as applied to claim 1, 8 above, further in view of Karlík et al. (US 20230093535 A1) [hereinafter Karlik].
Regarding claim 2, Brogden may fail to explicitly disclose the claimed limitation. However, Brodgen teaches requiring imaging the grid and all locations on the grid in three dimensions (see Brogden, e.g. [0092]), and the use of measuring and taking into account the shape of the mesh holder was well known in the art. For example, Karlik teaches a system to image the entire sample holder to assess viability of positions at which lamella can be welded (see Karlik, [0002,15]), wherein the surface shape measurement device measures three-dimensional coordinate information of a surface shape of a mesh (TEM grid, which is a form of mesh; also note well-known use of the terms TEM grid and TEM mesh interchangeably) on which a plurality of the lamellae are allowed to be placed (see coordinates, e.g. [0022,41], imaging, e.g. [0047]), and the three-dimensional coordinate information of each of the surface shapes of the lamellae placed on the mesh (e.g. [0027]), and the computer system calculates the correction information based on the three- dimensional coordinate information of the surface shape of the mesh and the three-dimensional coordinate information of the surface shape of the lamella (positions at which the welding occurs based on information about the lamella shape/position and acceptable welding location). It would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to combine the teachings of Karlik in the system of the prior art, because a skilled artisan would have been motivated to only use viable locations for welding the lamella, in the manner taught by Karlik.
Regarding claim 3, the combined teaching of Brogden and Karlik teaches the computer system calculates, based on the three-dimensional coordinate information of a surface shape of a first lamella measured by the surface shape measurement device and the three-dimensional coordinate information of the surface shape of the mesh (dimensions of the grid and the lamella), first correction information for correcting an angle and a height of the first lamella when imaging the first lamella (see moving lamella to correct 3D position during welding, Brogden, fig 21: 2114-2118), and calculates, based on the three-dimensional coordinate information of a surface shape of a second lamella different from the first lamella measured by the surface shape measurement device and the three-dimensional coordinate information of the surface shape of the mesh (during repeating the process for next lamella, see [0102]), second correction information for correcting an angle and a height of the second lamella when imaging the second lamella (see moving lamella to correct 3D position during welding).
Regarding claim 4, the combined teaching of Brogden and Karlik teaches the computer system calculates, based on the three-dimensional coordinate information of a surface shape of a first lamella measured by the surface shape measurement device and the three-dimensional coordinate information of the surface shape of the mesh at a position where the first lamella is placed (based on dimensions of the grid and lamella), first correction information for correcting an angle and a height of the first lamella when imaging the first lamella (see moving lamella to correct 3D position during welding, Brogden, fig 21: 2114-2118), and calculates, based on the three-dimensional coordinate information of a surface shape of a second lamella different from the first lamella measured by the surface shape measurement device and the three-dimensional coordinate information of the surface shape of the mesh at a position where the second lamella is placed (during repeating the process for next lamella, see [0102]), second correction information for correcting an angle and a height of the second lamella when imaging the second lamella (see moving lamella to correct 3D position during welding).
Regarding claim 9, Brogden may fail to explicitly disclose the claimed limitation(s). However, the differences would have been obvious in view of Karlik, for similar reasons as claim 2 above.
Regarding claim 10, Brogden may fail to explicitly disclose the claimed limitation(s). However, the differences would have been obvious in view of Karlik, for similar reasons as claim 3 above.
Regarding claim 11, Brogden may fail to explicitly disclose the claimed limitation(s). However, the differences would have been obvious in view of Karlik, for similar reasons as claim 4 above.
Claim(s) 6, 13 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Brogden, as applied to claim 1, 8 above, further in view of Boltje et al. (US 20240280357 A1) [hereinafter Boltje].
Regarding claim 6, Brogden may fail to explicitly disclose the surface shape measurement device is a white light interference microscope. However, Boltje teaches using white light interference microscopy to perform surface shape measurements to improve precision and reduce potential damage to the lamella (see Boltje, [0009-10,153]). It would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to combine the teachings of Boltje in the system of the prior art because a skilled artisan would have been motivated to improve control over the system, including trying to use the light interferometer in addition or instead of the SEM imaging system to improve precision and/or reduce potential damage to the final lamella, in the manner taught by Boltje.
Regarding claim 13, Brogden may fail to explicitly disclose the claimed limitation(s). However, the differences would have been obvious in view of Boltje, for similar reasons as claim 6 above.
Claim(s) 7, 14 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Brogden, as applied to claim 1, 8 above, further in view of Young et al. (US 20120187285 A1) [hereinafter Young].
Regarding claim 7, Brogden may fail to explicitly disclose the charged particle beam device further corrects the angle of the lamella by utilizing a diffraction phenomenon caused by the charged particle beam, and images the lamella after correcting the angle and the height of the lamella based on the correction information. However, Young teaches taking into account diffraction phenomenon when thinning samples to improve surface parallelization and uniformity (see e.g. Young, [0089]), comprising to further corrects the angle of the lamella by utilizing a diffraction phenomenon caused by the charged particle beam (see e.g. dark field imaging, [0043]), and images the lamella after correcting the angle and the height of the lamella based on the correction information (subsequent imaging of the final lamella and/or intervening imaging during milling). It would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to combine the teachings of Young in the system of the prior art because a skilled artisan would have been motivated to improve uniformity and parallelization of milling, in the manner taught by Young.
Regarding claim 14, Brogden may fail to explicitly disclose the claimed limitation(s). However, the differences would have been obvious in view of Young, for similar reasons as claim 7 above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James Choi whose telephone number is (571) 272 – 2689. The examiner can normally be reached on 9:30 am – 6:00 pm M-F.
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/JAMES CHOI/Examiner, Art Unit 2878
