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 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.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 18-34 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-5, 7-8, and 12-14 of prior U.S. Patent No. 12,203,874. This is a statutory double patenting rejection.
Regarding claim 18, claim 18 recites: An EUV microscope apparatus for analyzing EUV masks, the apparatus comprising: a source of EUV light (A); a means for monochromatic light generation configured to receive EUV light from the source and further configured to produce an outgoing focused EUV beam of light (B), the outgoing focused EUV beam being directed to an EUV mask for reflection therefrom as a reflected EUV beam (C); a zone-plate configured to include a central obscuration (D), the zone-plate being configured to receive the reflected EUV beam (E), and further configured to pass a certain order of the reflected EUV beam (F); and a detector configured to receive the certain order of the reflected EUV beam (G), and further configured to produce an image thereof (H).
Claim 1 of the reference patent recites: An EUV microscope apparatus for analyzing EUV masks, comprising:a source of EUV light (A’); a monochromator, said monochromator receiving EUV light from said source and producing an outgoing focused EUV beam of light (B’), said outgoing focused EUV beam being directed to bear on the mask for reflection therefrom as a reflected EUV beam (C’); a zone-plate, said zone-plate including a central obscuration (D’), said zone-plate receiving said reflected EUV beam (E’) and passing a certain order of said reflected EUV beam (F’); and a detector for receiving said certain order of said reflected EUV beams (G’) and producing an image thereof (H’).
Limitation B of examined claim 18 is interpreted under 35 U.S.C. 112(f) as being directed to the disclosed embodiment for that feature and its equivalents, which is disclosed on page 4 of the Written Description to be a monochromator. Accordingly, despite the change in wording, there is no difference in scope between limitation B and limitation B’ of the reference patent, which is directed to a monochromator performing the same function.
Any further differences in wording between corresponding limitations do not appear to affect the scope of the claim, and therefore it is concluded that claim 18 of the examined application and claim 1 of the reference patent have identical scope.
Claim 19 corresponds with claim 2 of the reference patent, having identical scope.
Claim 20 corresponds with claim 3 of the reference patent, having identical scope.
Claim 21 corresponds with claim 4 of the reference patent, having identical scope.
Claim 22 corresponds with claim 5 of the reference patent, having identical scope.
Claim 23 corresponds with claim 7 of the reference patent, having identical scope.
Claim 24 corresponds with claim 8 of the reference patent, having identical scope.
Claim 25 corresponds with claim 12 of the reference patent, having identical scope.
Claim 26 corresponds with claim 13 of the reference patent, having identical scope.
Claim 27 corresponds with claim 2 of the reference patent, having identical scope.
Claim 28 corresponds with claim 3 of the reference patent, having identical scope.
Claim 29 corresponds with claim 8 of the reference patent, having identical scope.
Claim 30 corresponds with claim 4 of the reference patent, having identical scope.
Claim 31 corresponds with claim 5 of the reference patent, having identical scope.
Claim 32 corresponds with claim 7 of the reference patent, having identical scope.
Claim 33 corresponds with claim 12 of the reference patent, having identical scope.
Claim 34 corresponds with claim 14 of the reference patent, having identical scope.
Allowable Subject Matter
Claims 35-37 are allowed.
The following is an examiner’s statement of reasons for allowance: Regarding independent claim 35, the method of claim 35 contains limitations corresponding to subject matter previously claimed in apparatus/system form and found allowable in application numbers 17/503,071 and 17/893,862. As neither of those applications contain any claims in method form, claim 35 is both allowable for the same reasons as the parent applications and also distinct from those claim sets.
Dependent claims 36 and 37 are allowed based on their dependence from allowed claim 35.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWIN C GUNBERG whose telephone number is (571)270-3107. The examiner can normally be reached Monday-Friday, 8:30AM-5:00PM.
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/EDWIN C GUNBERG/Primary Examiner, Art Unit 2884
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