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 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a routine mental process without significantly more. In particular, the claims recite the abstract idea of selecting data of interest.
The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same). Further, the courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer").
In the instant case, the two steps of the independent claim can be performed by the human mind or be a human using pen and paper. Similar practices of selecting an image from a catalogue of images are ubiquitous.
This judicial exception is not integrated into a practical application because the claim recites no application. Rather, the data is “output” to an unspecified destination.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims include two structures: a computer for executing the method, and a charged particle microscope.
The addition of a computer and display to implement the claimed steps automatically does not change the classification of these steps as mental process type abstract ideas, since the use of a generic computer to perform generic computer functions, e.g., running an algorithm and displaying information, does not render an abstract idea patent eligible. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 223, 110 USPQ2d 1976, 1983 (2014)
The claims further describe a charged particle microscope. However, the instant application readily admits that charged particle microscopes are prior art, and further that the instant invention is directed to finding and “outputting image data of interest.” Further, it is not evident from the claims that the data to be processed is even derived from the claimed microscope, but rather requires that data from some arbitrary microscope be evaluated. As such, the recitations with respect to the charged particle microscope are data-gathering as an insignificant extra-solution activity. See PerkinElmer, Inc. v. Intema Ltd., 496 Fed. App'x 65, 73, 105 USPQ2d 1960, 1966 (Fed. Cir. 2012) (Describing assessing or measuring data derived from an ultrasound scan, to be used in a diagnosis, as insufficient to make an abstract idea patent eligible.).
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:
“imaging unit configured to acquire observation image data of the sample” in claims 1 and 14, which is interpreted to correspond to an electron gun configured to irradiate the sample with a charged particle beam, a detector, and an image constructor.
“output unit configured to digitalize an operating status of the charged particle beam device and output operating status time series data” in claims 1 and 14, which is interpreted to correspond to a processor programmed to digitize an operating status of a Scanning Electron Microscope; and
“image constructor” in claim 2, which is not described as any particular structure.
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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 1-14 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. Further. Claims 1-14 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. Claim limitation “imaging unit configured …” invokes 35 U.S.C. 112(f), and is described in the specification to correspond to the combination of a charged particle beam, a detector, and an image constructor. An “image constructor,” recited in claim 2 and defining the “imaging unit” of claims 1 and 14, also invokes 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function of the “image constructor” and to clearly link the structure, material, or acts to the function of the “image constructor”. Further, since the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function, the above noted subject matter 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. Therefore, the claims are indefinite and is rejected under 35 U.S.C. 112(b), and lacks written description support and is rejected under 35 U.S.C. 112(a).
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 8-12 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. The claim recites an apparatus and a method of its use in the same claim. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). MPEP 2173.05(p) (II); and See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). Specifically, the claim recites the step of “receiv[ing] designation” of information from a user. This limitation is a step because it recites an action to be taken outside of the claimed device. This limitation makes the claim indefinite because the step claim language makes it unclear whether infringement occurs when one creates the system that allows for the step, or whether infringement occurs when the step actually occurs.
Claims 1-2 and 4-14 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. Claims 1 and 14 recite, “automatically determining a time-point that matches a predetermined specific variation pattern.”
The courts have described the essential question to be addressed in a description requirement issue in a variety of ways. An objective standard for determining compliance with the written description requirement is, "does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Under Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and that the invention, in that context, is whatever is now claimed.
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 or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc).
In the instant case, the claim defines the invention by functional language specifying a desired result to be obtained from the processor, namely “automatically determining a time-point that matches a predetermined specific variation pattern.” However, the disclosure only explains how the result is achieved with two particular patterns, i.e., those described in claim 3. There is no description of any other patterns that for which an automatic determination may be made. That is to say, the disclosure provides no disclosure of the claimed “automatically determining a time-point that matches a predetermined specific variation pattern” for any other patterns, such as patterns wherein the stage is not stopped. As such, one of ordinary skill in the art would not recognize that the applicant had possession of a processor that could make such an automatic determination for any other patterns. Since one of ordinary skill in the art would not recognize that the applicant had possession of the claimed invention, the claims are rejected for failing the written description requirement.
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.
Claims 1-4, 6-11, 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2001/0022346 A1 [Katagami].
Regarding Claims 1 and 14:
Katagami teaches a charged particle beam device (abstract) comprising:
a sample stage configured to move a sample (Fig. 1 (9));
an imaging unit configured to acquire observation image data of the sample (Fig. 1);
an output unit configured to digitalize an operating status of the charged particle beam device and output operating status time series data (paras 43-45);
a display unit configured to display a graphical user interface for displaying the observation image data and inputting an observation setting parameter (Fig. 1 (16)); and
a computer system configured to store time series image data (Fig. 1 (15)) in which the observation image data is arranged in time series and execute arithmetic processing relating to the operating status time series data and the observation image data (para 54 describes two observation images being processed, any arrangement of two image is a “time series”), wherein
a time-point that matches a predetermined specific variation pattern is automatically determined based on the operating status time series data (paras 54-55), and
observation image data corresponding to the time-point is acquired from the time series image data and is output as image data of interest (paras 54-55).
Regarding Claim 2:
Katagami teaches the charged particle beam device according to claim 1, wherein
the imaging unit includes
an electron gun configured to irradiate the sample with a charged particle beam (Fig. 1 (1)),
a detector (Fig. 1 (6)), and
an image constructor (Fig. 1 (CPU) affects images, and as such is presumed to be an “image constructor” of some kind).
Regarding Claim 3:
Katagami teaches the charged particle beam device according to claim 1, wherein
the specific variation pattern includes at least one of
a pattern in which the sample stage is stopped for a predetermined first period of time and a magnification in the first period of time is fixed. Paras 22-23.
Regarding Claim 4:
Katagami teaches the charged particle beam device according to claim 1, wherein
the operating status time series data includes observation magnification information. Paras 22-23.
Regarding Claim 6:
Katagami teaches the charged particle beam device according to claim 1, wherein
the time series image data is moving image data. Paras 21-23.
Regarding Claim 7:
Katagami teaches the charged particle beam device according to claim 1, wherein
the time series image data is a collective data set of still image data. Paras 22-23.
Regarding Claim 8:
Katagami teaches the charged particle beam device according to claim 1, wherein
the graphical user interface displays the image data of interest (Fig. 7),
the charged particle beam device receives designation of a region of interest in an image related to the image data of interest via the graphical user interface (paras 46-51), and
the charged particle beam device stores image data of the region of interest and supplementary information of the region of interest (paras 46-51).
Regarding Claim 9:
Katagami teaches the charged particle beam device according to claim 8, wherein
the supplementary information of the region of interest includes position information of the sample stage corresponding to the region of interest. Paras 52-54.
Regarding Claim 10:
Katagami teaches the charged particle beam device according to claim 8, wherein
the supplementary information of the region of interest includes at least one of
inclination angle information of the sample stage,
rotation angle information of the sample stage, or
observation magnification information. Paras 22-23, 46-51.
Regarding Claim 11:
Katagami teaches the charged particle beam device according to claim 8, wherein
the charged particle beam device moves the sample stage to a position, at which imaging of the region of interest is possible, using the supplementary information of the region of interest (Paras 22-23, 46-51),
the charged particle beam device acquires additional image data of the region of interest in a plurality of imaging conditions (paras 51-54), and
the plurality of imaging conditions include a plurality of imaging conditions in which at least one of a magnification, an inclination angle of the sample stage, or a rotation angle of the sample stage is different (paras 49-50).
Regarding Claim 13:
Katagami teaches the charged particle beam device according to claim 1, wherein
automatic imaging processing is executed based on supplementary information of the image data of interest. Para 46-48
Conclusion
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.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
Prosecution Insights