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 .
Election/Restrictions
Claims 8-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 1, 2026.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,130,228. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim is anticipated.
12,130,228 18/927,141
1. A system for deriving thermophysical properties of a sample, the system comprising: a tip suspended at a distal end of a cantilever, the tip configured to interact with the sample; a positioning laser source configured to focus a positioning laser beam at a reflective portion of the cantilever; a position-sensitive detector configured to receive the positioning laser beam reflected off of the reflective portion of the cantilever; a pump laser source configured to focus a pump laser beam at the distal end of the cantilever, thereby generating heat in the distal end of the cantilever that flows through the tip and into a region of the sample positioned adjacent to the tip; a probe laser source configured to focus a probe laser beam at a specular surface at the distal end of the cantilever, wherein at least a portion of the probe laser beam is reflected off of the specular surface; and a photodetector configured to receive the probe laser beam reflected off of the specular surface, wherein the reflected probe laser beam comprises thermoreflectance data that can be used to extract thermophysical properties of the sample.
1. (Currently Amended) A system comprising: a tip suspended at a distal end of a cantilever, the tip configured to interact with a sample; a pump laser source configured to illuminate the distal end of the cantilever with a pump laser beam, thereby generating heat in the distal end of the cantilever that flows through the tip and into a region of the sample positioned adjacent to the tip; a probe laser source configured to illuminate the distal end of the cantilever with a probe laser beam, wherein at least a portion of the probe laser beam is reflected by the distal end of the cantilever as a reflected probe laser beam; and a photodetector configured to measure a change in the reflected probe laser beam as a function of power of the pump laser beam.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2021/148632.
Claim 1
WO 2021/148632 discloses a tip (Fig. 1, Ref. 6) suspended at a distal end of a cantilever (Fig. 1, Ref. 5), the tip (Fig. 1, Ref. 6) configured to interact with a sample (Fig. 1, Ref. 3); a pump laser source (Fig. 1, Ref. 8; laser beam source) configured to illuminate the distal end of the cantilever (Fig. 1, Ref. 5) with a pump laser beam (Fig. 1, Ref. 8), thereby generating heat (See Page 10 of translation) in the distal end of the cantilever (Fig. 1, Ref. 5) that flows through the tip (Fig. 1, Ref. 6) and into a region of the sample (Fig. 1, Ref. 3) positioned adjacent to the tip (Fig. 1, Ref. 6; See Page 10); a probe laser source (Fig. 1, Ref. 10) configured to illuminate the distal end of the cantilever (Fig. 1, Ref. 5) with a probe laser beam (Fig. 1, Ref. 10), wherein at least a portion of the probe laser beam (Fig. 1, Ref. 10) is reflected (Fig. 1, Ref. 11) by the distal end of the cantilever (Fig. 1, Ref. 5) as a reflected probe laser beam (Fig. 1, Ref. 11); and a photodetector (Fig. 1, Ref. 12) configured to measure a change (reflected light intensity) in the reflected probe laser beam (Fig. 1, Ref. 11) as a function of power (P = I / E) of the pump laser beam (Fig. 1, Ref. 10).
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Claim 2
WO 2021/148632 discloses the pump laser source (Fig. 1, Ref. 8) is configured to modulate the pump laser beam (pulse light; Page 7).
Claim 3
WO 2021/148632 discloses the pump laser beam (Fig. 1, Ref. 8) and the probe laser beam (Fig. 1, Ref. 10) are arranged to illuminate the distal end of the cantilever coaxially (pump and probe coaxially illuminate at Fig. 1, Ref. 42).
Claim 5
WO 2021/148632 discloses the change in the reflected probe laser (Fig. 1, Ref. 10) beam comprises a change in magnitude and phase of the reflected probe laser beam (See Page 8).
Claim Rejections - 35 USC § 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:
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.
Claim(s) 4, 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/148632.
Claim 4
WO 2021/148632 discloses the claimed invention except for the photodetector is a balanced photodetector configured to measure a difference in intensity between the reflected probe laser beam and a portion of the probe laser beam. It would have been obvious to one having ordinary skill in the art at the effective filing date of the claimed invention was made to modify WO 2021/148632 with a balanced photodetector since it was well known in the art that a balanced photodetector ensures that the ultrasound-induced optical modulation is measured with minimal noise from the laser source, greatly improving the SNR, sensitivity, and accuracy of the subsurface imaging. The examiner takes Official Notice that the elements listed above are well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known.
Claim 6
WO 2021/148632 discloses the claimed invention except for a stage to move the sample laterally and vertically underneath an apex of the tip, thereby measuring the change in the reflected probe laser beam across a surface of the sample while either maintaining a constant force between the tip and the sample or maintaining the sample at a constant height. It would have been obvious to one having ordinary skill in the art at the effective filing date of the claimed invention was made to modify WO 2021/148632 with a movable stage since it was well known in the art that using a stage to move the sample under the apex of the tip allows for controlled, repeatable, and comprehensive subsurface imaging by enabling precise lateral and vertical positioning. This ensures the probe laser beam can scan the sample in 3D, map depth profiles, and produce high-quality, aligned images efficiently. The examiner takes Official Notice that the elements listed above are well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known.
Claim 7
WO 2021/148632 discloses the claimed invention except for a metal film disposed on the distal end of the cantilever to reflect the at least a portion of the probe laser beam as the reflected probe laser beam. It would have been obvious to one having ordinary skill in the art at the effective filing date of the claimed invention was made to modify WO 2021/148632 with a metal film on the distal end of the cantilever since it was well known in the art that the metal film on the distal end of the cantilever is used to maximize the return of the probe laser beam so that the cantilever’s deflection can be detected with high sensitivity, stability, and accuracy. The examiner takes Official Notice that the elements listed above are well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL PATRICK STAFIRA whose telephone number is (571)272-2430. The examiner can normally be reached M-F 6:30am-3pm.
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/MICHAEL P STAFIRA/Primary Examiner, Art Unit 2877 June 23, 2026
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