DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 22 is objected to because of the following informalities: in line 3, it appears that “shield” should perhaps be “shielded”. Appropriate correction is required.
Claim 33 is objected to because of the following informalities: in line 3, it appears that “shield” should perhaps be “shielded”. Appropriate correction is required.
Claim 40 is objected to because of the following informalities: in line 1, it appears that “structure” should be inserted after “X-ray beam former”. Appropriate correction is required.
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.
Claims 21-22, 24-30, 32-33, and 35-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9, 21, 24-28, and 30-31 of U.S. Patent No. 10,607,802 B2 (‘802) in view of claim 1 of U.S. Patent No. 11,521,820 B2 (‘820). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-7, 9, 21, 24-28, and 30-31 of the ‘802 patent recite all of the elements recited in claims 21-22, 24-30, 32-33, and 35-40 of the instant application, except for:
“transferring thermal energy away from the target element structure via the substrate layer when the electron beam strikes the layer of target material”
“using a beam shield comprising a plurality of shielded compartments which are each semi-circular in profile to produce a narrower X-ray beam when the electron beam strikes the target element structure closer to a centerline of the beam shield and produce wider X-ray beams as the electron beam moves radially outward from the centerline of the beam shield.”
Claim 1 of the ‘820 patent recites transferring thermal energy away from the target element structure via the substrate layer when the electron beam strikes the layer of target material. It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the claims of the ‘802 patent to include this feature, for the obvious reason of preventing overheating of the target.
The claims of the ‘802 patent recite “using at least one shield wall of the beam-former structure to at least partially divide the target element into a plurality of target element sectors”. It would have been an obvious matter of design choice to have the shielded compartments semi-circular in profile, since such a modification would have involved a mere change in the shape of a component. A change in shape is generally recognized as being within the level of ordinary skill in the art. In this configuration, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the claims of the patent to include that a narrower X-ray beam is produced when the electron beam strikes the target element structure closer to a centerline of the beam shield and a wider X-ray beam is produced as the electron beam moves radially outward from the centerline of the beam shield, as this is analagous to the way a collimator collimates beams.
Claim 23 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9, 21, 24-28, and 30-31 of U.S. Patent No. 10,607,802 B2 (‘802) in view of claim 1 of U.S. Patent No. 11,521,820 B2 (‘820) as applied to claims 21-22, 24-30, 32-33, and 35-40 above.
With respect to claim 23, it would have been obvious to one of ordinary skill in the art at the time the invention was made to further modify the claims of the ‘802 patent to include varying a direction of the X-ray beam by rotating the electron beam around a periphery of one of the plurality of shielded compartments, because this is obvious when the shielded compartments are semi-circular in profile.
Claims 31 and 34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9, 21, 24-28, and 30-31 of U.S. Patent No. 10,607,802 B2 (‘802) in view of claim 1 of U.S. Patent No. 11,521,820 B2 (‘820) as applied to claims 21-22, 24-30, 32-33, and 35-40 above, and further in view of claims 13 and 18 of the ‘820 patent.
With respect to claims 31 and 34, claims 13 and 18 of the ‘820 patent recite wherein the target material comprises metal with an atomic number of at least 21. It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the claims of the ‘802 patent to include wherein the target material comprises metal with an atomic number of at least 21, as a matter of design choice.
Claims 21-23, 26, 31-33, and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8, 11-13, and 18 of U.S. Patent No. 11,521,820 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 8, 11-13, and 18 of U.S. Patent No. 11,521,820 B2 recite all of the elements recited in claims 21-23, 26, 31-33, and 35 of the instant application, except for:
“using a beam shield comprising a plurality of shielded compartments which are each semi-circular in profile to produce a narrower X-ray beam when the electron beam strikes the target element structure closer to a centerline of the beam shield and produce wider X-ray beams as the electron beam moves radially outward from the centerline of the beam shield.”
The claims of the patent recite “causing the X-ray radiation to interact with a beam shield comprising a plurality of wall elements extending transversely from a face of the target element wafer”. It would have been an obvious matter of design choice to have the shielded compartments semi-circular in profile, since such a modification would have involved a mere change in the shape of a component. A change in shape is generally recognized as being within the level of ordinary skill in the art. In this configuration, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the claims of the patent to include that a narrower X-ray beam is produced when the electron beam strikes the target element structure closer to a centerline of the beam shield and a wider X-ray beam is produced as the electron beam moves radially outward from the centerline of the beam shield, as this is analagous to the way a collimator collimates beams.
Conclusion
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/JURIE YUN/Primary Examiner, Art Unit 2884
August 26, 2026
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