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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: item number 422 (See [0086]-[0088], regarding Figs. 3B and 3C). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The abstract of the disclosure is objected to because it uses ‘phrases that can be implied’ (see below). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The disclosure is objected to because of the following informalities:
[0008] recites “extend”, which should read ‘extent’.
Appropriate correction is required.
Claim Objections
Claims 12, 16, and 20 are objected to because of the following informalities:
Claim 12 recites “…wherein the predetermined energy range is adjustable, thereby allowing tailoring a value thereof.”, however, a range would typically be understood to have multiple values, and thus, this limitation should read ‘…wherein the predetermined energy range is adjustable, thereby allowing tailoring values thereof.’;
Claim 16 recites “…a band-stop filter configured to allow transmission…and inhibiting…”, which should read ‘…a band-stop filter configured to allow transmission…and to inhibit…’ to match grammatically;
Claim 20 recites “…wherein the predetermined energy is…”; While Examiner believes the limitation is definite in context, ‘the predetermined energy’ lacks antecedent basis, and should read ‘..wherein the predetermined energy range is…’.
Appropriate correction is required.
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.
Claim 12 is 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 12 recites “…wherein the predetermined energy range is adjustable, thereby allowing tailoring a value thereof.”, which is not adequately described in the specification. Such a limitation would be understood by an ordinarily skilled artisan as requiring the filter be capable of having its transmission energy range for x-ray photons adjusted, without any particular limitation on how the range is adjusted. The filter is the ‘band-stop filter’, required by claim 1 ‘to allow transmission of photons having a predetermined energy range’, and thus, adjusting the ‘transmission energy range’ amounts to changing the transmission properties of the filter to x-ray photons. The specification’s only instruction regarding the control of the energy range is via change in the material choices for the filter elements (i.e., [0013], tailoring energy range via in-situ replacement of elements), however, this is not disclosed as providing control of the energy range in any active sense. Tailoring the energy range by predetermined material choices does not adequately describe ‘adjusting’ the predetermined energy range for a device having such a filter, because in fact, it appears that the only disclosure would require a physical replacement of the filter (or a filter element to change the filter transmission properties as a whole), rather than any sort of active adjustment thereof. The specification provides no disclose of any active control of the transmission properties of the filter as a whole, except by replacement with alternative materials with alternative properties.
The claim is clearly broad enough to allow for any means to change the transmission properties, while the specification clearly only discloses replacing part all or part of the filter elements in-situ to modify the transmission energy range. Accordingly, the specification clearly supports the filter element being configured to have its predetermined (i.e., depending inherently on material choice) transmission energy range adjusted by changing the materials thereof to thereby tailor the values of the range, it does not adequately describe adjusting the range in general, or any sort of control of the properties in-situ, or during operation.
Accordingly, claim 12 is rejected for failing to comply with the 35 U.S.C. 112(a) written description requirement.
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 1-15 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.
Claim 1 recites “…a band-stop filter configured to allow transmission therethrough of information-carrying X-ray photons having a predetermined energy range and attenuating irrelevant photons having an energy range different from the predetermined energy range from reaching the EDX…”. First, ‘attenuating’ does not grammatically match ‘a band-stop filter configured (to)’. The phrasing ‘attenuating’ is an active phrasing (i.e., not a capability/functionality), such as in a method claim. However, this limitation does not appear to be requiring a method step, and rather, as further discussed in the following, the phrasing itself is unclear. To this point, ‘attenuating irrelevant photons…from reaching the EDX’ does not make sense upon plain reading. As ordinarily understood, ‘to attenuate’ means ‘to lessen the amount, degree, force, magnitude, or value of’. Accordingly, it is unclear what ‘attenuate from reaching’ requires, as ‘attenuating’ and ‘from reaching’ would appear to disagree, as ‘from reaching’ would appear to indicate ‘preventing’, rather than ‘attenuating’. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘“…a band-stop filter configured to allow transmission therethrough of information-carrying X-ray photons having a predetermined energy range and to attenuate irrelevant photons having an energy range different from the predetermined energy range…’.
Claim 3 recites “wherein each of the one or more additional band-stop filters is configured to filter out X-ray photons having a different respective predetermined energy of X-ray photons”. It is unclear whether ‘filter out’ is an additional functionality requirement solely for the one or more additional filters (i.e., that is not required of the filter of claim 1, which is at no point required to have the functionality to ‘filter out’ elements, and rather to ‘allow transmission’ and ‘attenuate’ photons according to their energies), and if so, what structural requirements would be required to be different of the one or more additional filters beyond that of the initial filter to ‘filter out’ photons having different energies; or, whether this limitation is merely intended to require the same functionality as the initial filter from claim 1. Additionally, the previously recited filter of claim 1 is required to attenuate or allow transmission according to an energy range rather than a particular energy, and it is not clear what would be required of the one or more additional filters to allow for ‘filtering out’ a particular energy of photon. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘wherein each of the one or more additional band-stop filters is configured to attenuate X-ray photons having a different respective predetermined energy range of X-ray photons’.
Claim 12 recites “…wherein the predetermined energy range is adjustable, thereby allowing tailoring a value thereof.” It is unclear what is required of the system/filter by this limitation. Claim 1 requires “…the filter assembly comprising a band-stop filter configured to allow transmission therethrough of information-carrying X-ray photons having a predetermined energy range…”, in other words, requires ‘a filter capable of allowing transmission therethrough of x-ray photons having a predetermined energy range’ (and attenuate photons having different energies from the predetermined range). It is unclear what is physically or functionally required of the filter for it to be configured to have its energy range be adjustable, and the claim makes no such limitation. It would appear (see above 112(a) and [0013] of specification) that this limitation is intended to allow for the filter to be replaceable (or partially replaceable). The specification does not explicitly disclose what would make such a filter replaceable to adjust the predetermined energy range, and thus, one of ordinarily skill in the art would understand the filter disclosed therein of being generally capable of being replaced in whole or in part from the system as a whole, such as, e.g., during routine maintenance, between operational runs, etc. The claim does not recite such a limitation, and thus, an ordinarily skilled artisan would not be reasonably apprised of the protection sought by such a claim limitation. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…wherein the band-stop filter is configured to be replaceable, thereby allowing tailoring of the predetermined energy range.’.
Claim 14 recites “the EDX” in several instances, however, no EDX was previously required by the claim, and thus, these instances each lack antecedent basis. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this claim is interpreted as if it recites ‘…between the tested sample and an EDX’, in the first such instance, such that the remaining instance do not have such issues.
Claims that depend on the above rejected claims are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 8 requires only “The system of claim 1, wherein the band-stop filter is a notch filter.” The claim provides no limitations on what is required by ‘notch filter’. The specification provides no specific instruction of what is required by ‘notch filter’. Accordingly, the term must be understood as taking on its customary meaning, as would be understood by one of ordinary skill in the art. A ‘notch filter’ is typically understood as a filter that removes a specific frequency/wavelength/energy range, while not attenuating other frequencies/wavelengths/energies, and is often synonymous with ‘band-stop filter’ or ‘band-rejection filter’. While often understood to be relatively narrow in rejection range, such a heuristic cannot provide a well-defined or reasonable boundary on the metes and bounds of the claim without specific indication by the Applicant. The claim provides no boundary on how narrow such a range must be, nor does the specification provide any particular instruction. Accordingly, ‘notch filter’ is understood as requiring a filter that removes a frequency/wavelength/energy range, while not attenuating other frequencies/wavelengths/energies.
However, claim 1 requires “a band-stop filter configured to allow transmission therethrough of information-carrying X-ray photons having a predetermined energy range and attenuating irrelevant photons having an energy range different from the predetermined energy range from reaching the EDX”. This limitation already requires the band-stop filter to attenuate an energy range, while not attenuating another energy range. Accordingly, claim 1 requires all of the limitations that would be understood by an ordinarily skilled artisan to be required of a ‘notch filter’, under the BRI.
Thus, claim 8 does not further limit the claim upon which it depends, and is rejected under 35 U.S.C. 112(d).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-4, 6, and 8-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cossio (DOI: 10.1007/s00604-007-0890-0).
Regarding claim 1, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Cossio teaches a sample characterization system comprising:
a characterization tool configured to generate an electron beam directed toward a tested sample (Abstract; Introduction, paragraph 3; i.e., SEM-EDS, or ‘FEDS’);
an X-ray photon energy dispersive detector (EDX) configured to collect X-ray photons emitted from the tested sample (Abstract; Introduction, paragraph 3; i.e., EDS, or ‘FEDS’); and
a filter assembly positioned in the characterization tool between the tested sample and the EDX (Abstract; Introduction, paragraph 3; i.e. Al filters and mechanism thereof interposed between sample and EDS), the filter assembly comprising a band-stop filter configured to allow transmission therethrough of information-carrying X-ray photons having a predetermined energy range and attenuating irrelevant photons having an energy range different from the predetermined energy range from reaching the EDX (See above 112(b) interpretation; Abstract; Introduction, paragraph 3; Figs. 1-2, 4-5; Examiner notes that the BRI of such a ‘band-stop filter’ is a filter capable of allowing transmission of photons having a predetermined energy range and of attenuating photons having an energy range different from, i.e., not identical to, but not necessarily non-overlapping, the allowed energy range; The Al filters of Cossio allow transmission of photons having an energy range depending on the material properties of the filters, which would be predetermined, and attenuate photons having a different energy range from those allowed to transmit therethrough), whereby a ratio between a count of information-carrying X-ray photons reaching the EDX and an overall photon count reaching the EDX is increased, as compared to a sample characterization system without the filter assembly (Abstract; Introduction, paragraph 3; Figs. 1-2, 4-5, and in particular Fig. 2; See also, Experimental, paragraph 1 Examiner interprets this limitation as inherently disclosed by Cossio, as removing the Al filters would allow through more ‘irrelevant photons’, i.e., all of them, and thus would inherently have such a ratio increased, see Experimental, paragraph 1).
Regarding claim 3, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Cossio teaches the system of claim 1.
Cossio further teaches wherein the filter assembly further comprises one or more additional band-stop filters (Introduction, paragraph 3; i.e., “a multi-thick Al-filters interposed between the sample and the ED detector”, which is interpreted as a plurality of filters, as a plurality of Al filters are used; See also: Experimental, paragraph 2, disclosing applying different thicknesses of Al filter), wherein each of the one or more additional band-stop filters is configured to filter out X-ray photons having a different respective predetermined energy of X-ray photons (See above 112(b) interpretation; See Figs. 1, 4-5, indicating different energy profiles of different filters; Introduction, paragraph 3; i.e., “a multi-thick Al-filters interposed between the sample and the ED detector”; Examiner notes that in the multi-thick Al filters of Cossio, all photons reaching an arbitrary downstream filter, i.e., relative to an arbitrary upstream filter, would inherently filter photons not filtered by the upstream, i.e., previous, layer, and would thus read on being configured to filter out x-ray photons of different ranges; Examiner additionally notes that disclosure of applying different thicknesses, and those thicknesses having different filtering characteristics, and applying multiple thickness Al filters would be understood by an ordinarily skilled artisan to at least disclose a plurality of filters capable of filtering different energy range photon).
Regarding claim 4, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Cossio teaches the system of claim 1.
Cossio further teaches wherein at least a portion of the band-stop filter is made of or comprises a plurality of thin films (See Fig. 1, showing thicknesses, which read on ‘thin film’; Introduction, paragraph 3; i.e., “a multi-thick Al-filters interposed between the sample and the ED detector”, which is interpreted as reading on ‘a plurality of thin films’).
Regarding claim 6, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Cossio teaches the system of claim 4.
Cossio further teaches wherein at least a portion of the plurality of thin films comprises: Hf, Al, BN, TiN, Si3N4, V, Ti, Teflon, Mn, Cr, Fe, Al2O3 or any combination thereof (Abstract; Introduction, paragraph 3, i.e., Al).
Regarding claim 8, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Cossio teaches the system of claim 1.
Cossio further teaches wherein the band-stop filter is a notch filter (See above 112(d) discussion; Abstract; Introduction, paragraph 3; Figs. 1-2, 4-5).
Regarding claim 9, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Cossio teaches the system of claim 1,.
Cossio does not explicitly teach wherein the filter assembly or parts thereof are replaceable in-situ.
However, the claim has no limitations on what defines ‘replaceable in-situ’, nor does the specification provide any additional instruction, and thus, under the BRI, this merely requires that the filter assembly or parts thereof can be removed and replaced in the same location. Additionally, Cossio states in Experimental, paragraphs 1-2, “This is not a drawback, because major elements can be easily determined by conventional EDS electron microprobe analysis, simply removing the applied Al-Filter. Different thicknesses of Al filter may be used depending on the sample matrix.” This clearly indicates that the Al filter is removable, and that such a removal can be readily performed. Cossio additionally discloses using different thicknesses for the Al filters depending on the sample matrix, which would require removal and replacement of the filter, which would occur where the filter is within the system, i.e., between the sample and the detector. Accordingly, while not explicitly disclosed by Cassio, one of ordinary skill in the art would understand Cassio to teach equivalent limitations to ‘replaceable in-situ’, under the BRI.
Regarding claim 10, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Cassio teaches the system of claim 1.
Cassio does not explicitly teach wherein the ratio is increased by a factor of 8 or more.
However, such a limitation is a limitation on the capabilities of band-stop filter, and the equivalent filter of Cossio would be understood by one of ordinary skill in the art to achieve such a ratio given a particular desired energy range. In particular, see Figs. 1-2, 4-5, and in particular the transmission shown in Fig. 1. For example, for any of the disclosed thicknesses, were the photons of interest those with energies above ~10-12 keV, such a ratio would clearly be satisfied by Cossio’s filter. Accordingly, Cossio’s filter achieves the necessary functionality and would be understood by an ordinarily skilled artisan to teach the limitation.
Regarding claim 11, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Cossio teaches the system of claim 1.
Cossio further teaches wherein the predetermined energy range is about 50 eV to 15 KeV (See Fig. 1, wherein the Al filters are capable of allowing energies within the range).
Regarding claim 12, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Cossio teaches the system of claim 1.
Cassio does not explicitly teach wherein the predetermined energy range is adjustable, thereby allowing tailoring a value thereof, however, similar to claim 9 (and in view of the above adopted 35 U.S.C. 112(b) interpretation), the filter assembly of Cassio is capable of having the filters removed and replaced, and chosen according to their properties and the sample under test, and thus reads on the claim requirements.
Regarding claim 13, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Cossio teaches the system of claim 1.
Cossio further teaches wherein the characterization tool comprises an electron microprobe, a scanning electron microscope (SEM), a transmission electron microscope (TEM), or a scanning TEM (STEM) (Abstract; Introduction, paragraph 3; i.e., SEM).
Regarding claim 14, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Cossio teaches a method for filtering photons by energy, comprising:
directing a primary electron beam onto a tested sample, thereby initiating emission of X-ray photons and of electrons from the tested sample (Abstract; Introduction, paragraph 3; i.e., SEM directed to sample);
attenuating X-ray photons having an energy different than a predetermined energy range of information-carrying X-ray photons by using a band-stop filter positioned between the tested sample and the EDX (See Figs. 1-2, 4-5; Abstract; Introduction, paragraph 3; i.e., attenuated by Al filters positioned between sample and EDS, the range attenuated predetermined, by material conditions of particular filters used);
detecting, by the EDX, the information-carrying X-ray photons (Abstract; Introduction; i.e., those photons not attenuated by the Al filters), thereby a ratio between a count of information-carrying X-ray photons reaching the EDX and an overall photon count reaching the EDX is increased as compared to a sample characterization system without the filter assembly (Abstract; Introduction, paragraph 3; Figs. 1-2, 4-5, and in particular Fig. 2; See also, Experimental, paragraph 1 Examiner interprets this limitation as inherently disclosed by Cossio, as removing the Al filters would allow through more ‘irrelevant photons’, i.e., all of them, and thus would inherently have such a ratio increased, see Experimental, paragraph 1); and
outputting signals indicative of the information-carrying X-ray photons detected by the EDX (Abstract; Introduction; Experimental, Analytical Conditions subsection; Examiner notes that to analyze the elements, signals of the measured photons must be sent from the detector to the analysis system, and in the disclosed systems in the Experimental section, a computer is typically coupled to control via a software and analyze data measured therein; Accordingly, the limitation is implicitly disclosed).
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 2 and 15 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Cossio (DOI: 10.1007/s00604-007-0890-0) or, in the alternative, under 35 U.S.C. 103 as obvious over Cossio in view of Statham (U.S. PGPub. No. US 20160233051 A1).
Regarding claim 2, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Cossio teaches the system of claim 1.
Cossio does not explicitly teach wherein the filter assembly further comprises an electron filter configured to attenuate back-scattered electrons emitted from the tested sample; and/or wherein the filter assembly further comprises a deflector configured to deflect electrons away from the filter assembly.
However, Examiner notes that in the field of charged particle microscopy and spectroscopy, an ordinarily skilled artisan would likely have an advanced degree in a physical science/engineering and/or equivalent experience and knowledge, and thus, would have a relatively high level of ordinary skill.
Such an ordinarily skilled artisan would understand the typical energy ranges of backscattered electrons in such an application, and would recognize that Al filters of the disclosed thicknesses would be sufficient to block at least a majority of backscattered electrons, and thus could reasonably be interpreted as an electron filter configured to attenuate back-scattered electrons emitted from the tested sample.
Accordingly, while not explicitly disclosed by Cossio as a BSE filter, the Al filters disclosed therein would be understood to have sufficient structure to perform the claimed functionality, and thus read on the limitation.
For completeness:
Examiner first notes a generic electron deflector would be generally known by such an ordinarily skilled artisan, as deflectors are present in some form in nearly all charged particle beam systems, and could be readily applied within such a system as necessary. Various forms of electron deflectors are generally known to such an ordinarily artisan. Additionally, the general use of electron filters in such systems would also be generally known to such an ordinarily skilled artisan. Furthermore, placing such elements between a sample and an x-ray photon detector (which are disclosed in the prior art, and disclosed to have a filter therebetween) would be obvious to an ordinarily skilled artisan, who would readily recognize unwanted electrons as detrimental to an EDX/EDS measurement. However, this is not relied upon for the rejection herein.
Examiner additionally notes, in the alternative:
Statham teaches wherein the filter assembly further comprises an electron filter configured to attenuate back-scattered electrons emitted from the tested sample ([0036]); and/or wherein the filter assembly further comprises a deflector configured to deflect electrons away from the filter assembly.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Cossio to include wherein the filter assembly further comprises an electron filter configured to attenuate back-scattered electrons emitted from the tested sample; and/or wherein the filter assembly further comprises a deflector configured to deflect electrons away from the filter assembly, as taught by Statham.
Doing so represents combining known prior art elements according to known methods in order to obtain predictable results, as Statham discloses such a prior art filter, and such a filter could be readily adapted to the disclosure of Cossio by an ordinarily skilled artisan with a reasonable expectation of success, and would allow one to, as taught by Statham, attenuate undesirable background.
Regarding claim 15, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Cossio teaches the method of claim 14.
Cossio does not explicitly teach further comprising attenuating back-scattered and/or secondary electrons emitted from the tested sample; and/or further comprising deflecting backscattered and/or secondary electrons away from the filter assembly.
However, Examiner notes that in the field of charged particle microscopy and spectroscopy, an ordinarily skilled artisan would likely have an advanced degree in a physical science/engineering and/or equivalent experience and knowledge, and thus, would have a relatively high level of ordinary skill.
Such an ordinarily skilled artisan would understand the typical energy ranges of backscattered electrons in such an application, and would recognize that Al filters of the disclosed thicknesses would be sufficient to block at least a majority of backscattered electrons, and thus could reasonably be interpreted as an electron filter configured to attenuate back-scattered electrons emitted from the tested sample.
Accordingly, while not explicitly disclosed by Cossio as a BSE filter, the Al filters disclosed therein would be understood to have sufficient structure to perform the claimed functionality, and thus read on the limitation.
For completeness:
Examiner first notes a generic electron deflector would be generally known by such an ordinarily skilled artisan, as deflectors are present in some form in nearly all charged particle beam systems, and could be readily applied within such a system as necessary. Various forms of electron deflectors are generally known to such an ordinarily artisan. Additionally, the general use of electron filters in such systems would also be generally known to such an ordinarily skilled artisan. Furthermore, placing such elements between a sample and an x-ray photon detector (which are disclosed in the prior art, and disclosed to have a filter therebetween) would be obvious to an ordinarily skilled artisan, who would readily recognize unwanted electrons as detrimental to an EDX/EDS measurement. However, this is not relied upon for the rejection herein.
Examiner additionally notes, in the alternative:
Statham teaches further comprising attenuating back-scattered and/or secondary electrons emitted from the tested sample; and/or further comprising deflecting backscattered and/or secondary electrons away from the filter assembly.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Cossio to include further comprising attenuating back-scattered and/or secondary electrons emitted from the tested sample; and/or further comprising deflecting backscattered and/or secondary electrons away from the filter assembly, as taught by Statham.
Doing so represents combining known prior art elements according to known methods in order to obtain predictable results, as Statham discloses such a prior art filter, and such a filter could be readily adapted to the disclosure of Cossio by an ordinarily skilled artisan with a reasonable expectation of success, and would allow one to, as taught by Statham, attenuate undesirable background.
Claims 5, 16-17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Cossio (DOI: 10.1007/s00604-007-0890-0) in view of Stattin (ISSN: 0281-2762) and Aleksandrov (DOI: 10.1134/S1063780X22700313).
Regarding claim 5, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Cossio teaches the system of claim 4.
Cossio does not explicitly teach wherein a thickness of each of the plurality of thin films is in a range of 50 nm to 5 µm.
However, Cossio teaches a range of thicknesses between 50 and 300 µm, and does not specifically teach thicknesses for individual layers or how many layers.
Additionally, one of ordinary skill in the art would know that Al foils are readily commercially available down to tens of microns, and would be reasonably apprised of various thin film deposition techniques (e.g., molecular beam epitaxy, magnetron sputtering, e-beam layer deposition, etc.; See Stattin below for example) that could be performed using Al in such a range.
Nevertheless, so as not to rely on such knowledge alone:
Aleksandrov teaches the use of mylar filters for x-rays, having thicknesses between 600 nm and 2.97 µm (See Fig. 7, items 2-4; Section 2.2, p. 989, right column), while Stattin discloses the use of vanadium or titanium (among other less preferable options) filters for x-rays with thicknesses on the order of hundreds of nm (See Fig. 10; Section 4.3; Sections 7.2.1-4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Cossio to explicitly include wherein a thickness of each of the plurality of thin films is in a range of 50 nm to 5 µm, as taught by Stattin and/or Aleksandrov.
Doing so represents applying known prior art techniques according to known methods in order to achieve predictable results, as Stattin and/or Aleksandrov disclose the use of thin film filters within the required range to achieve specific x-ray photon filtering characteristics (and in the case of Stattin, explicit direction to deposit arbitrary thin films of various thicknesses and materials), which one of ordinarily skill in the art could apply to the filter arrangement of Cossio with a reasonable expectation for the known range of such prior art disclosed filters, which would allow one to follow the instruction of Cossio to modify the thickness of filter layers according to the sample matrix, allowing for additional filtering ranges to be achieve via control of the thickness (e.g., see Aleksandrov and Stattin for transmissive ranges of respective thin film filters).
Regarding claim 16, Cossio teaches a filter assembly for filtering photons by energy, the filter assembly comprising a band-stop filter configured to allow transmission therethrough of information carrying X-ray photons having a predetermined energy range and inhibiting irrelevant photons from reaching an energy dispersive detector (EDX) (See Figs. 1-2, 4-5; Abstract; Introduction, paragraph 3; i.e., Al filters positioned between sample and EDS, the range allowed predetermined, by material conditions of particular filters used, attenuates other photons, i.e., not of interest), whereby a ratio between a count of information-carrying X-ray photons reaching the EDX and an overall photon count reaching the EDX is increased as compared to a sample characterization system without the filter assembly (Abstract; Introduction, paragraph 3; Figs. 1-2, 4-5, and in particular Fig. 2; See also, Experimental, paragraph 1 Examiner interprets this limitation as inherently disclosed by Cossio, as removing the Al filters would allow through more ‘irrelevant photons’, i.e., all of them, and thus would inherently have such a ratio increased, see Experimental, paragraph 1);
wherein at least a portion of the band-stop filter is made of or comprises a plurality of thin films (See Fig. 1, showing thicknesses, which read on ‘thin film’; Introduction, paragraph 3; i.e., “a multi-thick Al-filters interposed between the sample and the ED detector”, which is interpreted as reading on ‘a plurality of thin films’)
wherein at least a portion of the plurality of thin films comprises a material selected from: Hf, Al, BN, TiN, Si3N4, V, Ti, Teflon, Mn, Cr, Fe or Al2O3 (Abstract; Introduction, paragraph 3; i.e., Al filters).
Cossio does not explicitly teach wherein at least a portion of the band-stop filter is made of or comprises a plurality of thin films having a thickness of about 50 nm to 5 µm (Emphasis added by Examiner).
However, Cossio teaches a range of thicknesses between 50 and 300 µm, and does not specifically teach thicknesses for individual layers or how many layers.
Additionally, one of ordinary skill in the art would know that Al foils are readily commercially available down to tens of microns, and would be reasonably apprised of various thin film deposition techniques (e.g., molecular beam epitaxy, magnetron sputtering, e-beam layer deposition, etc.; See Stattin below for example) that could be performed using Al in such a range.
Nevertheless, so as not to rely on such knowledge alone:
Aleksandrov teaches the use of mylar filters for x-rays, having thicknesses between 600 nm and 2.97 µm (See Fig. 7, items 2-4; Section 2.2, p. 989, right column), while Stattin discloses the use of vanadium or titanium (among other less preferable options) filters for x-rays with thicknesses on the order of hundreds of nm (See Fig. 10; Section 4.3; Sections 7.2.1-4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Cossio to explicitly include wherein a thickness of each of the plurality of thin films is in a range of 50 nm to 5 µm, as taught by Stattin and/or Aleksandrov.
Doing so represents applying known prior art techniques according to known methods in order to achieve predictable results, as Stattin and/or Aleksandrov disclose the use of thin film filters within the required range to achieve specific x-ray photon filtering characteristics (and in the case of Stattin, explicit direction to deposit arbitrary thin films of various thicknesses and materials), which one of ordinarily skill in the art could apply to the filter arrangement of Cossio with a reasonable expectation for the known range of such prior art disclosed filters, which would allow one to follow the instruction of Cossio to modify the thickness of filter layers according to the sample matrix, allowing for additional filtering ranges to be achieve via control of the thickness (e.g., see Aleksandrov and Stattin for transmissive ranges of respective thin film filters).
Regarding claim 17, Cossio, in view of Stattin and Aleksandrov, teaches the filter assembly of claim 16.
Cassio does not explicitly teach wherein the ratio is increased by a factor of 8 or more.
However, such a limitation is a limitation on the capabilities of band-stop filter, which directly determines the relative number of photons reaching the EDX, and the equivalent filter of Cossio would be understood by one of ordinary skill in the art to achieve such a ratio given a particular desired energy range. In particular, see Figs. 1-2, 4-5, and in particular the transmission shown in Fig. 1. For example, for any of the disclosed thicknesses, were the photons of interest those with energies above ~10-12 keV, such a ratio would clearly be satisfied by Cossio’s filter. Accordingly, Cossio’s filter achieves the necessary functionality and would be understood by an ordinarily skilled artisan to teach the limitation.
Regarding claim 20, Cossio, in view of Stattin and Aleksandrov, teaches the filter system of claim 16.
Cossio further teaches wherein the predetermined energy is in a range of 50 eV to 15 KeV (See Fig. 1, wherein the Al filters are capable of allowing energies within the range).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Cossio (DOI: 10.1007/s00604-007-0890-0) in view of Satake (WIPO Doc. No. WO 2011102320 A1).
Regarding claim 7, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Cossio teaches the system of claim 4.
Cossio does not explicitly teach wherein at least a portion of the plurality of thin films comprises:
a. Mylar and Hf,
b. Mylar and Fe,
c. Mylar and Al2O3, or
d. Al and Mg.
However, Cossio discloses the use of Al, and the use of a plurality of thin films.
Satake teaches a filter element being formed of Al and Mg to attenuate primarily silicon (i.e., a predetermined energy range) x-ray photons to improve the signal of analyte elements ([0016]-[0020]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Cossio to include the teachings of Satake to use Mg in addition to Al.
Doing so represents combining known prior art elements according to known methods in order to achieve predictable results, and would allow one to use a prior art disclosed material combination of Satake in the prior art disclosed filter elements of Cassio to achieve the filtering disclosed by Satake, which an ordinarily skilled artisan could apply with a reasonable expectation of success.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Cossio (DOI: 10.1007/s00604-007-0890-0), in view of Stattin (ISSN: 0281-2762) and Aleksandrov (DOI: 10.1134/S1063780X22700313), or, in the alternative, over Cossio, in view of Stattin and Aleksandrov and Statham (U.S. PGPub. No. US 20160233051 A1).
Regarding claim 18, Cossio, in view of Stattin and Aleksandrov teaches the filter assembly of claim 16.
Cossio does not explicitly teach further comprising an electron filter configured to attenuate back-scattered electrons and/or secondary electrons emitted from the tested sample; and/or further comprising a deflector configured to deflect electrons away from the filter assembly.
However, Examiner notes that in the field of charged particle microscopy and spectroscopy, an ordinarily skilled artisan would likely have an advanced degree in a physical science/engineering and/or equivalent experience and knowledge, and thus, would have a relatively high level of ordinary skill.
Such an ordinarily skilled artisan would understand the typical energy ranges of backscattered electrons in such an application, and would recognize that Al filters of the disclosed thicknesses would be sufficient to block at least a majority of backscattered electrons, and thus could reasonably be interpreted as an electron filter configured to attenuate back-scattered electrons emitted from the tested sample.
Accordingly, while not explicitly disclosed by Cossio as a BSE filter, the Al filters disclosed therein would be understood to have sufficient structure to perform the claimed functionality, and thus read on the limitation.
For completeness:
Examiner first notes a generic electron deflector would be generally known by such an ordinarily skilled artisan, as deflectors are present in some form in nearly all charged particle beam systems, and could be readily applied within such a system as necessary. Various forms of electron deflectors are generally known to such an ordinarily artisan. Additionally, the general use of electron filters in such systems would also be generally known to such an ordinarily skilled artisan. Furthermore, placing such elements between a sample and an x-ray photon detector (which are disclosed in the prior art, and disclosed to have a filter therebetween) would be obvious to an ordinarily skilled artisan, who would readily recognize unwanted electrons as detrimental to an EDX/EDS measurement. However, this is not relied upon for the rejection herein.
Examiner additionally notes, in the alternative:
Statham teaches further comprising an electron filter configured to attenuate back-scattered electrons and/or secondary electrons emitted from the tested sample; and/or further comprising a deflector configured to deflect electrons away from the filter assembly.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Cossio to include further comprising an electron filter configured to attenuate back-scattered electrons and/or secondary electrons emitted from the tested sample; and/or further comprising a deflector configured to deflect electrons away from the filter assembly, as taught by Statham.
Doing so represents combining known prior art elements according to known methods in order to obtain predictable results, as Statham discloses such a prior art filter, and such a filter could be readily adapted to the disclosure of Cossio by an ordinarily skilled artisan with a reasonable expectation of success, and would allow one to, as taught by Statham, attenuate undesirable background.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Cossio (DOI: 10.1007/s00604-007-0890-0), in view of Stattin (ISSN: 0281-2762) and Aleksandrov (DOI: 10.1134/S1063780X22700313) and Satake (WIPO Doc. No. WO 2011102320 A1)
Regarding claim 19, Cossio, in view of Stattin and Aleksandrov, teaches the filter assembly of claim 16.
Cossio does not explicitly teach wherein at least a portion of the plurality of thin films comprises:
a. Mylar and Hf,
b. Mylar and Fe,
c. Mylar and Al2O3, or
d. Al and Mg.
However, Cossio discloses the use of Al, and the use of a plurality of thin films.
Satake teaches a filter element being formed of Al and Mg to attenuate primarily silicon (i.e., a predetermined energy range) x-ray photons to improve the signal of analyte elements ([0016]-[0020]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Cossio to include the teachings of Satake to use Mg in addition to Al.
Doing so represents combining known prior art elements according to known methods in order to achieve predictable results, and would allow one to use a prior art disclosed material combination of Satake in the prior art disclosed filter elements of Cassio to achieve the filtering disclosed by Satake, which an ordinarily skilled artisan could apply with a reasonable expectation of success.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Ulrich (DOI: 10.1109/9780471754503.ch18);
Tur’yanskii (DOI: 10.1134/S0021364016180120);
Yoshida (U.S. PGPub. No. US 20170199131 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J GASSEN whose telephone number is (571)272-4363. The examiner can normally be reached M-F 9-5.
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/CHRISTOPHER J GASSEN/Examiner, Art Unit 2881
/ROBERT H KIM/Supervisory Patent Examiner, Art Unit 2881
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