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 .
This action is responsive to the initial filing of 3/18/2025.
Specification
The disclosure is objected to because of the following informalities: in paragraph 63, “Shutters” does not need to be capitalized.
Appropriate correction is required.
Claim Objections
Claim 3 is objected to because of the following informalities:
In claim 3, “Shutters” does not need to be capitalized.
Appropriate correction is required.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
the reference pattern display unit of claim 1, interpreted as being of a type as would be made by engraving or depositing the reference pattern on a surface of a substrate (paragraph 14) or by depositing on a mounting surface of the stage or a substrate (paragraph 49);
the image capturing unit of claim 1, which paragraph 16 discloses as “an imaging means for capturing images of the measurement target and the reference pattern, which are the subject of the image”, which does disclose a particular structure to perform the claimed functions;
the distortion information generation unit of claim 1, which is not disclosed as any particular structure, so is interpreted broadly;
the correction unit of claim 1, which is not disclosed as any particular structure, so is interpreted broadly;
the subject switching unit of claim 2, interpreted as including a beam splitter that emits incident light from the reference pattern display unit and incident light from the measurement target toward the image capturing unit, a shutter provided between the reference pattern display unit and the beam splitter, and a shutter provided between the measurement target and the beam splitter (paragraph 18, first sentence. Note that claim 3 introduces a beam splitter and shutters as part of the subject switching unit and places certain limitations on those components. The beam splitter and shutters introduced in claim 3 are interpreted as not necessarily distinct from the respective components required by this interpretation under 35 U.S.C. § 112(f)); and
the “reference pattern extraction unit” of claim 6, which is not disclosed as any particular structure, so is interpreted broadly.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 1-7 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 limitations “image capturing unit”, “distortion information generation unit”, “correction unit”, and “reference pattern extraction unit” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
The image capturing unit is merely disclosed as a “means” for performing the relevant functions. The distortion information generation unit, correction unit, and reference pattern extraction unit are only disclosed in purely functional terms with no disclosed structure. The figures depict each unit as a rectangular box, which is insufficient structure to perform the claimed functions.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claim 7, the claim recites only a non-transitory recording medium storing a program for causing a computer to function as the apparatus of claim 1, without specifying the operations performed by the program. The claim appears to rely on functional language rather than reciting concrete program steps, and it is unclear what limitations are intended to be imported from claim 1. As a result, the scope of the claimed medium is unclear and the metes and bounds of the claim are not reasonably certain.
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.
Claims 1-7 are 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. The claimed invention lacks written description as required by 35 U.S.C. § 112(a) because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention. See MPEP 2163.03 VI.
Regarding claim 1, the disclosure lacks written description necessary to support the terms “image capturing unit”, “distortion information generation unit”, and “correction unit”.
Regarding claim 6, the disclosure lacks written description necessary to support the term “reference pattern extraction unit”.
Claim 7 is directed to a medium storing a program causing a computer to function as the apparatus from claim 1. Claim 1 recites functions that typically require particular types of additional hardware to accomplish. It is unclear how the claimed program on the claimed medium would cause a generic computer to accomplish all the functions of the image measuring apparatus according to claim 1, and the written description fails to clarify.
Claims 2-7 are indefinite and lack adequate written description due to depending on at least one claim that is indefinite and lacks adequate written description.
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 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Komatsu (foreign patent publication JP 2005004391).
Regarding claim 1, Komatsu teaches an image measuring apparatus comprising:
a stage on which a measurement target is placed (FIG. 1, stage 111);
a reference pattern display unit (FIG. 2, reference scale 18, which is engraved with scale markings 181 (third sentence of paragraph 34)) on which a reference pattern is displayed (FIG. 2, scale markings 181, engraved into the reference scale 18 (paragraph 34));
an image capturing unit that captures images of a subject (FIG. 2, CCD camera 17);
a distortion information generation unit (FIG. 1, host computer 2) that generates distortion information based on an image of the reference pattern captured by the image capturing unit (FIG. 9, pattern with distortion) and design information of the reference pattern (FIG. 8, undistorted calibration scale 6); and
a correction unit that corrects an image of the measurement target captured by the image capturing unit using the distortion information (paragraph 52, penultimate sentence).
Regarding claim 7, Komatsu teaches a non-transitory recording medium recording a program for causing a computer to function as the image measuring apparatus (paragraph 1) according to claim 1 (as described above).
Allowable Subject Matter
Claims 2-6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) and (b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
As described in more detail above and below, the closest prior of record is Komatsu (foreign patent publication JP 2005004391), which is generally directed to an image measuring apparatus that corrects for distortion in images of a measurement target by imaging a known pattern that has been subjected to that distortion, determining the nature of the distortion, and correcting the images of the distortion. While there are notable similarities between the imaging of reference patterns as taught by Komatsu and as generically recited in claim 1, specific embodiments of the disclosure display the reference patterns in ways that are materially different from the manner of Komatsu, as reflected in dependent claims 2-6, addressed individually below.
Another prior art reference, Kato (US patent publication 20130105675), generally discloses a photoelectric encoder shining a light through a pattern on a substrate to a photodiode array (PDA) and compensating for distortion using a distortion compensation circuit, which places the pattern itself in front of the photodetector, not just light projected through the pattern as with Komatsu. On the other hand, Kato appears to be using the pattern and light projected through the pattern to measure the position of the substrate rather than to determine an amount of distortion in an image of a measurement target on the substrate.
Takahama (US patent publication 20190113333) discloses an image measuring apparatus that has a beam splitter arranged to direct light from two surfaces to a detector with a pattern on one of the surfaces, but does so in an interferometric context. The disclosed invention does not appear to be an interferometer, and the other surface of Takahama is disclosed as a mirror rather than a measurement object. While claims to an apparatus are generally not limited by recitations of an article or material worked upon (MPEP 2115), placing a measurement object in the way of one of the mirrors of a Michelson interferometer would substantially change the device.
Regarding claim 2, Komatsu teaches the image measuring apparatus according to claim 1 (as described above); however, the prior art, taken individually or in combination, fails to teach or render obvious the claimed subject switching unit (which, as described above, is interpreted under 35 U.S.C. § 112(f) as including a beam splitter and two shutters in particular positions relative to other components) that switches the image capturing unit between imaging the measurement target and the reference pattern.
While Komatsu does include a beam splitter (FIG. 2, half mirror 193) and two separate light sources (FIG. 2, light source 13 and light source 191) that could be used to only illuminate either the sample as a whole (with light source 13 alone) or only project the pattern (with light source 191 alone), such a configuration lacks shutters in the beam paths as claimed by invoking 35 U.S.C. § 112(f), which are also absent from the other cited references.
Kato does not appear to teach any of the further limitations introduced by claim 2 and is cited due to more closely resembling the embodiments the embodiments of claims 4-6.
Takahama teaches a beam splitter (paragraph 38, half mirror configured by prism 65), but likewise fails to teach shutters in either of the beam paths. Further, it would not have been obvious to place shutters in the claimed locations as part of a subject switching unit, as an interferometer like that of Takahama relies on the use of both beam paths at the same time to produce optical interference by superimposing the beams from the two paths onto the detector.
Claim 3 depends on claim 2 and contains the allowable subject matter of claim 2.
Regarding claim 4, Komatsu teaches the image measuring apparatus according to claim 1 (as described above); however, the prior art, taken individually or in combination, fails to teach or render obvious that the stage is integrally configured with the reference pattern display unit by forming a color filter mask on a mounting surface; first and second light sources of wavelengths such that only the second light source transmits through the color filter mask; wherein the distortion information is generated based on the image with the reference pattern and the measurement target lit by the first light source and an image lit by only the second light source that does not show the reference pattern is corrected with the distortion information.
While Komatsu does teach that light source 13 may be placed in other locations than shown in FIG. 2 (paragraph 73), this does not constitute a teaching to place light source 191 below the stage 111 and make the reference scale 18 integral with the stage. Further, Komatsu does not appear to use color as a factor in distinguishing the pattern from the sample. While Kato does teach shining a light through a pattern on a substrate, Kato fails to teach placing a measurement target on the pattern and using the distortion correction to correct distortion in such a separate measurement target, nor using color in distinguishing between the measurement target and the pattern. Takahama likewise fails to teach placing a measurement object on the pattern and using color to distinguish between pattern and measurement target.
Regarding claim 5, Komatsu teaches the image measuring apparatus according to claim 1 (as described above); however, the prior art, taken individually or in combination, fails to teach or render obvious that the stage is integrally configured with the reference pattern display unit by forming the pattern on a mounting surface, finding distortion based on an image containing both the pattern and the measurement target, and correcting for distortion in that image, all in the manner claimed.
While Komatsu does teach that light source 13 may be placed in other locations than shown in FIG. 2 (paragraph 73), this does not constitute a teaching to place light source 191 below the stage 111 and make the reference scale 18 integral with the stage. While Kato does teach shining a light through a pattern on a substrate, Kato fails to teach placing a measurement target on the pattern and using the distortion correction to correct distortion in such a separate measurement target. Takahama likewise fails to teach placing a measurement object on the pattern.
Regarding claim 6, Komatsu teaches the image measuring apparatus according to claim 1 (as described above); however, the prior art, taken individually or in combination, fails to teach or render obvious that the stage is integrally configured with the reference pattern display unit by forming a half-tone mask on a mounting surface; a reference pattern extraction unit to extract the image of the reference pattern; that the distortion information is based on the extracted image of the reference pattern; and that the distortion is corrected from the image of the measurement target and the half-tone reference pattern, all in the manner claimed.
While Komatsu does teach that light source 13 may be placed in other locations than shown in FIG. 2 (paragraph 73), this does not constitute a teaching to place light source 191 below the stage 111 and make the reference scale 18 integral with the stage. While Kato does teach shining a light through a pattern on a substrate, Kato fails to teach placing a measurement target on the pattern and using the distortion correction to correct distortion in such a separate measurement target. Takahama likewise fails to teach placing a measurement object on the pattern. Further, none of the cited references teach half toning or the extraction of a half-tone reference pattern from an image.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL D SCHNASE whose telephone number is (703)756-1691. The examiner can normally be reached Monday - Friday 8:30 AM - 5:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur Chowdhury can be reached at (571) 272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL SCHNASE/Examiner, Art Unit 2877
/TARIFUR R CHOWDHURY/Supervisory Patent Examiner, Art Unit 2877
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