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 .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
each of the first port and the second port is located in a different one of: the projection assembly region, the first lens region and the second lens region
Species I. A TEM wherein each of the first port and the second port is located in a different one of: the projection assembly region, the second lens region
Species II. A TEM wherein each of the first port and the second port is located in a different one of: the projection assembly region, the first lens region
Species III. A TEM wherein each of the first port and the second port is located in a different one of: the first lens region, the second lens region
The species are independent or distinct because they are separate products having distinct functions, structures, and properties that may require separate searches of the prior art (subject to clarification of the extent of each “region” as discussed in the 112(b) rejection below). In addition, these species are not obvious variants of each other based on the current record.
The subject matter of claim 1 appears to be directed to Species I, but as discussed in the 112(b) section below, this is unclear, and dependent claims 9-11 are simultaneously directed to species II or III.
The species are independent or distinct because they each have a patentable difference as laid out above and there would be a serious search burden on the examiner if restriction was not required. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, no claim is held generic.
There is a search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention; (e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Status of the Application
Claim(s) 1-22 is/are pending.
Claim(s) 1-22 is/are rejected.
Claim Rejections – 35 U.S.C. § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
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The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
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Claim(s) 1-22 is/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 pre-AIA the applicant regards as the invention
Claim 1 recites “each of the first port and the second port is located in a different one of: the projection assembly region, the first lens region and the second lens region”. This amounts to the following possible configurations.
First lens region
Second lens region
Projection assembly region
Above L1
Below or at L1
Above L2
Below or at L2
1st port
2nd port
2nd port
1st port
1st port
2nd port
2nd port
1st port
1st port
2nd port
2nd port
1st port
1st port
2nd port
2nd port
1st port
1st port
2nd port
2nd port
1st port
1st port
2nd port
2nd port
1st port
1st port
2nd port
2nd port
1st port
1st port
2nd port
2nd port
1st port
1st port
2nd port
2nd port
1st port
However, the claims also recite “in a first mode the controller is configured to control the first lens and the second lens to direct the diffraction pattern into a second diffraction plane wherein the second diffraction plane is coincident with the first port plane; and in a second mode the controller is configured to control the first lens and the second lens to direct the diffraction pattern into a third diffraction plane wherein the third diffraction plane is coincident with the second port plane.” Since a skilled artisan would have understood downstream lens parameters would not be manipulated to control an upstream diffraction plane*, this appears to preclude configurations where the second and third diffraction planes (and the 1st and 2nd ports) are above one or both of first and second lenses—i.e. the ports/planes must be at or below the second lens, and cannot be in the first lens region.
* This is notwithstanding that every electromagnetic lens affects every other component in the system (and across the universe) to some degree. But this interpretation is not what PHOSITA would have understood, otherwise the “configured to” language in the claims would no longer be directed at the causal relationship between the lens control and the desired diffraction plane focusing, and could read on e.g. normally operating any microscope with more than 2 lenses, e.g. not cranking voltage up on any one lens as to cause arcing, etc.
The geometric locations/extents of the regions, lenses, and planes should be clarified.
Claims 2-22 are rejected due to their dependency from claim 1.
Claim 7 recites “the primary lens is configured to immerse the sample holder in a magnetic field” and claim 8 recites “the secondary lens is configured not to immerse the sample holder in a magnetic field” but it is unclear what degree the magnetic field constitutes “immersing” a sample holder or not.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
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The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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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 for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that 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.
Claim limitation “wave front manipulating device” has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “device” coupled with functional language “wave front manipulating” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim(s) 1-5, 7-22 has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
wave front manipulating device
(claim 6) [0045] laser phase plate
[0046] a biprism using a port having only and inlet and no outlet
(claim 6) [0053] phase plate
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
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, 12-22 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Bischoff et al. (US 20210272767 A1) [hereinafter Bischoff] in view of Janssen et al. (US 20150170876 A1) [hereinafter Janssen] and Axelrod et al. (US 20220319803 A1) [hereinafter Axelrod].
Regarding claim 1, Bischoff teaches a transmission electron microscope (TEM) comprising:
a sample holder (required for operation of system, see e.g. fig 3: 2) configured to hold a sample (see [0246]);
an electron source (see 4) configured to provide a beam of electrons (12) towards the sample holder;
a primary lens (see lower objective lens, not labeled in fig 3, see [0042]) configured to receive the beam of electrons after leaving the sample holder and to produce a diffraction pattern in a first diffraction plane (see e.g. 30, e.g. [0053]);
an intermediate lens assembly (see e.g. 10, 8) configured to receive the beam of electrons after leaving the primary lens and to form an image of a sample present in the sample holder (see image plane, 32), wherein the intermediate lens assembly comprises, in sequence, a first lens occupying a first lens region (e.g. 10)
a projection assembly (see components downstream of 32) configured to receive the image of the sample, the projection assembly occupying a projection assembly region (downstream of 32);
a controller (required for operation of system) configured to control excitation of the first lens and the second lens wherein:
in a first mode (e.g. TEM mode) the controller is configured to control the first lens and the second lens to direct the diffraction pattern into a second diffraction plane (see new diffraction plane, e.g. [0110])
in a second mode (e.g. STEM mode) the controller is configured to control the first lens and the second lens to direct the diffraction pattern into a third diffraction plane (e.g. old diffraction plane, note [0113])
Bischoff may fail to explicitly disclose the first and second mode in the same microscope. However, Bischoff explains that the additional lens and deflectors are added to enable de-tilting in TEM mode, which is otherwise not possible using the coils in STEM mode (see [0109,110]). 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 embodiments to try to enable the ability to provide the new TEM mode in addition to the traditional STEM mode, to enable further flexibility to provide all the traditional known effective STEM analysis modes in addition to the new TEM modes, in the manner taught by Bischoff.
Bischoff may fail to explicitly disclose a projection assembly; and a second lens occupying a second lens region. However, there appears to be some optics downstream of the imaging plane (see projector system, Bischoff, [0053], additional lenses for magnifying/focusing the image beam/modified image beam, [0249]). It would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to provide additional lenses to provide further control over beam magnification/focusing, in the manner taught by Bischoff. Additionally, the use of further projection optics was well known in the art. For example, Janssen teaches using additional projection optics below an imaging plane to enable the additional ability to switch between use of a fluorescent screen or other detector systems (see Janssen, [0075], fig 10: 24c). 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 Janssen in the system of the prior art to try to enable the intended operation of directing the beam towards different detector systems.
Bischoff may fail to explicitly disclose a first port in a first port plane and a second port in a second port plane, each of the first port and the second port being configured to receive the wave front manipulating device; each of the first port and the second port is located in a different one of: the projection assembly region, the first lens region and the second lens region; and wherein the second diffraction plane is coincident with the first port plane; wherein the third diffraction plane is coincident with the second port plane.
However, some kind of holding mechanism would have been required for the intended operation of holding the components in place. Further, the use of ports to provide removable wave front manipulating devices (phase plates) was well known in the art. For example, Axelrod teaches a compact phase plate system that enables installation into a TEM column via a plurality of standard access ports (see Axelrod, [0136]) which also enables easier access to the diffraction planes (see [0146]). 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 Axelrod in the system of the prior art, because a skilled artisan would have been motivated to look for ways to enable the intended operation of the system, while also enabling the improved access and/or compact and/or laser phase plate system, in the manner taught by Axelrod (alternately note the ports in Axelrod can be mapped as the ports in the claim).
Regarding claim 2, the combined teaching of Bischoff, Janssen, and Axelrod teaches a wave front manipulating device (phase plate, see Bischoff, [0053]) configured to be received in the first port and configured to be received in the second port (see different positions for TEM and STEM, Bischoff, [0109,110]; alternately mapping the ports as different ports in Axelrod, [0146]).
Regarding claim 3, the combined teaching of Bischoff, Janssen, and Axelrod teaches the first port and the second port each comprise an inlet and an outlet (see e.g. ports in Axelrod, [0146]; alternately reading as, per port, the inlet side and the outlet side, opposing and facing the TEM vacuum respectively).
Regarding claim 4, the combined teaching of Bischoff, Janssen, and Axelrod teaches at least one of the first port and the second port is between the first lens and the second lens (additional lenses for focusing image beam and/or modified image beam, see Bischoff, [0249]; thus the diffraction plane will be between at least two of those lenses, see fig 3).
Regarding claim 5, the combined teaching of Bischoff, Janssen, and Axelrod teaches the wave front manipulating device comprises a phase manipulating device (see Bischoff, [0053]).
Regarding claim 6, the combined teaching of Bischoff, Janssen, and Axelrod teaches the phase manipulating device comprises a phase plate or a laser phase plate (see Bischoff, [0053]; Axelrod, [0146]).
Regarding claim 7, the combined teaching of Bischoff, Janssen, and Axelrod teaches the primary lens is configured to immerse the sample holder in a magnetic field (natural result of operating with electromagnetic lenses, see e.g. Bischoff, [0089,100]; Janssen, [0073]; note additionally the well known obviousness of selecting use of electromagnetic lenses as a routine skill in the art).
Regarding claim 8, the combined teaching of Bischoff, Janssen, and Axelrod teaches a secondary lens (note additional lenses for focusing image beam and/or modified image beam, see Bischoff, [0249]) between the primary lens and the intermediate lens assembly, wherein the secondary lens is configured not to immerse the sample holder in a magnetic field (provides less magnetic field than the primary/objective lens, and defining that contribution as not immersing the sample holder).
Regarding claim 12, the combined teaching of Bischoff, Janssen, and Axelrod teaches the first port is located in the second lens region (see Bischoff, new diffraction plane, [0110]; note use of additional lenses, [0249], defining as part of the second lens region).
Regarding claim 13, the combined teaching of Bischoff, Janssen, and Axelrod teaches the first port is located between the first lens of the intermediate lens assembly and the second lens of the intermediate lens assembly (note additional lenses for focusing image beam and/or modified image beam, see Bischoff, [0249]; thus the diffraction plane will be between at least two of those lenses, see fig 3).
Regarding claim 14, the combined teaching of Bischoff, Janssen, and Axelrod teaches the first port is located between the second lens of the intermediate lens assembly and the projection assembly (note additional lenses for focusing image beam and/or modified image beam, see Bischoff, [0249]; thus the diffraction plane will be between at least two of those lenses, see fig 3).
Regarding claim 15, the combined teaching of Bischoff, Janssen, and Axelrod teaches the second port is located in the projection assembly region (see Bischoff, old diffraction plane [0109]; alternately note alternate port in Axelrod, [0146]; note use of additional lenses, Bischoff, [0249], part of the projection assembly).
Regarding claim 16, the combined teaching of Bischoff, Janssen, and Axelrod teaches the second port is located between the second lens of the intermediate lens assembly and the projection assembly (note additional lenses for focusing image beam and/or modified image beam, see Bischoff, [0249]; thus the diffraction plane will be between at least two of those lenses, see fig 3).
Regarding claim 17, the combined teaching of Bischoff, Janssen, and Axelrod teaches a corrective optics assembly (see e.g. Bischoff, fig 3: 8).
Regarding claim 18, the combined teaching of Bischoff, Janssen, and Axelrod teaches the corrective optics assembly is located between the first lens of the intermediate lens assembly and the second lens of the intermediate lens assembly (note additional lenses for focusing image beam and/or modified image beam, see Bischoff, [0249]; thus the corrective optics will be between at least two of those lenses).
Regarding claim 19, the combined teaching of Bischoff, Janssen, and Axelrod teaches the first port is located in the second lens region and the second port is located in the projection assembly region (note additional lenses for focusing image beam and/or modified image beam, see Bischoff, [0249]; thus the second port will be between at least two of those lenses).
Regarding claim 20, the combined teaching of Bischoff, Janssen, and Axelrod teaches the first port is located between the corrective optics assembly and the second lens of the intermediate lens assembly (note additional lenses for focusing image beam and/or modified image beam, see Bischoff, [0249]; thus the first port will be between at least two of those lenses).
Regarding claim 21, the combined teaching of Bischoff, Janssen, and Axelrod teaches the second port is located between the second lens of the intermediate lens assembly and the projection assembly (note additional lenses for focusing image beam and/or modified image beam, see Bischoff, [0249]; thus the second port will be between at least two of those lenses).
Regarding claim 22, the combined teaching of Bischoff, Janssen, and Axelrod teaches the projection assembly comprises a first projection assembly lens and wherein the projection assembly region is a region of the first projection assembly lens (note additional lenses for focusing image beam and/or modified image beam, see Bischoff, [0249]).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Georgia Epps can be reached on (571) 272 – 2328. The fax phone number for the organization where this application or proceeding is assigned is (571) 273 – 8300.
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/JAMES CHOI/Examiner, Art Unit 2878
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