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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 17, 2025 has been entered.
Claim Rejections - 35 USC § 112
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 1-3, 6-12 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 Examiner cannot find the term “planar housing.”
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 1-3, 6-12 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.
The term “generally” in claim 1 is a relative term which renders the claim indefinite. The term “generally” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is also unclear what a planar housing is. The Examiner will interpret as housing.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3, 8-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (US 2005/0107692, hereinafter Li ‘692) in view of Spagnolini et al. (EP 2,465,428, hereinafter Spagnolini ‘428), or further in view of Zuo et al. (US 2013/0120081, hereinafter Zuo ‘081) and in view of McIntosh et al. (US 8,421,642, hereinafter McIntosh ‘642).
In re claim 1, Li ‘692 teaches a system adapted to detection of cancer in an organ of a patient, the system comprising:
a. a transmitter device structured to radiate a
b. a receiving device comprising more than one receiving antenna, a receiver (0056), supply (note this would have been inherent that a digital imaging system requires a power supply; and it is obvious a design choice of using one power supply for all device, or different power supply for different device), wherein the receiver is configured for receiving microwave signals in the range of 2.3 GHz-2.5 GHz (0035, 0041, 0056), and wherein the receiving device is adapted to be placed on the medical couch under the patient in the position corresponding to the organ to be examined (fig. 1); and
c. a data processing unit configured to run
Spagnolini ‘428 teaches a system adapted to detection of cancer in an organ of a patient, the system comprising:
a. a transmitter device structured to radiate a narrow band (0010, 0014, 0057, 0059, 0060, 0063, 0069) incident radiofrequency signal and irradiate a patient tissue, the transmitter device comprising at least one transmitting antenna, a transmitter (fig. 6, 1, and 2, 0092), and a transmitter device power supply (note this would have been inherent that a digital imaging system requires a power supply);
b. a receiving device comprising more than one receiving antenna, a receiver (0056, 0092), system requires a power supply; and it is obvious a design choice of using one power supply for all device, or different power supply for different device),; and
c. a data processing unit configured to run non-imaging (presumed, because Applicant incorporated into the Application in the entirety, see para 0025, Applicant has failed to show how the claimed “non-imaging” algorithms are different than the alogirthms disclosed in EP 2465428) algorithms which determine the presence of values below a threshold (0041, 0088) in the received signal associated with the presence of a cancer in the tissue under test, comprising a microprocessor and display (0028, 0038-0043, 0094, 0098, fig. 1 and fig. 12).
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Li ‘692 to include the features of Spagnolini ‘428 in order to separate malignant tissues from calcifications by evaluating
and characterizing the time-varying response of the scattering pattern from the specific analysis of the scattering nulls, or minima.
Still furthermore, Zuo ‘081 teaches a pre-processing module (0132).
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Li ‘692 to include the features of Spagnolini ‘428 in order to separate malignant tissues from calcifications by evaluating
and characterizing the time-varying response of the scattering pattern from the specific analysis of the scattering nulls, or minima, or further to include the features of Zuo ‘081 in order to be prepared for further manipulation by the processor.
Li ‘692 and Spagnolini ‘428 or with Zuo ‘081 fail to teach wherein receiver comprises a generally planar housing having a thickness of less than 0.03 m and a width of less than 0.30 m.
McIntosh ‘642 teaches wherein receiver comprises a generally planar housing having a thickness of less than 0.03 m and a width of less than 0.30 m (col. 3, lines 37-40, depth can be considered as a thickness).
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Li ‘692 and Spagnolini ‘428 or in further view of Zuo ‘081 to include the features of McIntosh ‘642 in order to provide portability to the device.
In re claim 2, Li ‘692 and Spagnolini ‘428 fails to teach wherein the microprocessor and the display are integrated in the transmitter device together with a Bluetooth transmitter/receiver, and wherein the receiving device also comprises a Bluetooth transmitter/receiver.
Zuo ‘081 teaches wherein the microprocessor and the display are integrated in the transmitter device together with a Bluetooth transmitter/receiver, and wherein the receiving device also comprises a Bluetooth transmitter/receiver (0132).
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Li ‘692 and Spagnolini ‘428 to include the features of Zuo ‘081 in order to wireless communicate with display device and other devices.
In re claim 3, Li ‘692 teaches wherein the operating frequency is comprised between 2.35 GHz and 2.45 GHz (0041).
In re claim 8, Zuo ‘081 teaches wherein the power supply of any one or more of the following comprises a rechargeable battery (0139): the transmitter device, the receiving device, and the data processing unit.
In re claim 9, Li ‘692 (0049-0056) / Spagnolini ‘429 (0001, 0020) teaches wherein the processor comprises a software adapted to examination of at least one of the following organs: prostate, colon, breast and thyroid.
In re claim 10, Li ‘692 teaches wherein the microprocessor is adapted to store the results of a number of examinations (0070).
In re claim 11, it would have been obvious of a design choice to have the microprocessor is adapted to store at least 100 results of examinations in order to local files faster and with ease because they are on local storage memories. Such design choice are similar to different memory cards sizes that everyone uses.
In re claim 12, Li ‘692 teaches wherein the system is adapted to transfer the stored data to an external processor (fig. 1, 160, 0047, 0055, 0070, the computer/laptop is external).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li ‘692 and Spagnolini ‘428 or in further view of Zuo ‘081 and McIntosh ‘642, and in view of Schmidt (US 5,790,032, hereinafter Schmidt ‘032).
In re claim 6, Li ‘692 fails to teach wherein the transmitter device comprises a single antenna, and a quartz oscillator to fix radio-frequency emitted by the system.
But Spagnolini ‘428 teaches wherein the transmitter device comprises a single antenna, and a
Schmidt ‘032 teaches wherein the transmitter device comprises a single antenna, and a quartz oscillator to fix radio-frequency emitted by the system (col. 7, lines 51-53; col. 3, lines 51-55).
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Li ‘692 and Spagnolini ‘428 or in further view of Zuo ‘081 and McIntosh ‘642 to include the features of Schmidt ‘032 in order to reduce antenna size.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li ‘692 and Spagnolini ‘428 or in further view of Zuo ‘081 and McIntosh ‘642, and in view of C.W. Hansell (US 2,017,047, hereinafter Hansell ‘047).
In re claim 7, Li ‘692 and Spagnolini ‘428 fails to teach wherein the transmitting antenna is a directional antenna which irradiates with an angle comprised between 10° and 30°.
Hansell ‘047 teaches wherein the transmitting antenna is a directional antenna which irradiates with an angle comprised between 10° and 30° (page 2, col. right, lines 29-45).
It would have been prima facie obvious to one of ordinary skills in the art at the time of invention to modify the method/device of Li ‘692 and Spagnolini ‘428 or in further view of Zuo ‘081 and McIntosh ‘642 to include the features of Hansell ‘047 in order to radiate maximum energy.
Response to Arguments
Applicant's arguments filed December 17, 2025 have been fully considered but they are not persuasive.
In response to Applicant’s argument that “in Li the antenna emits a microwave, the microwave produces the emission of a thermoacoustic wave and the receiver measures the thermoacoustic wave. In the present invention as defined in Claim 1, the receiver measures THE SAME microwave emitted by the transmitter and the presence of a tumor is indicated by the presence of a minimum in the measure of the wave,” the Examiner disagrees. Applicant never claimed the receiver measures THE SAME microwave emitted by the transmitter and the presence of a tumor is indicated by the presence of a minimum in the measure of the wave.” Applicant only claims the frequence which is taught by Li as shown above. Applicant also failed to distinguish a thermoacoustic wave and “the measured” microwave that is “claimed” to be not thermoacoustic wave.
In response to Applicant’s argument that:
“In general, at the time the invention was made, there was a prejudice against using such high frequencies in devices like the one taught by Spagnolini, the assumption being that waves at 2.4GHz did not have enough penetration in view of the size of the human body and it would have been impossible to put the transmitter above the organ and the receiver under it and detect a relevant signal. It is worth noting, that the shape of the device of Li somehow reflects this prejudice,”
The Examiner disagrees. This is merely Applicant’s opinion. It is without any factual evidence. Furthermore, Applicant even said “in general … a prejudice ….” Hence, Applicant knowledges that there were evidence support that waves at 2.4GHz did have enough penetration in view of the size of the human body.
In response to Applicant’s argument that “This has been reflected in the definition of the invention stating that '...the receiving device comprises a generally planar housing having a thickness of less than 0.03 m and a width of less than 0.30 m ...'.
It is also noted that in Li, the transmitter and receiver are connected and are operated together as one unit. To the contrary, the receiving device defined in Claim 1 of the present application is entirely independent, and can be moved and placed in accordance with the position of the transmitter, in close proximity to the desired organ,” the Examiner has shown above that the size has been rejected in view of McIntosh ‘642.
Furthermore, Applicant has never claimed “the transmitter and receiver are connected and are operated together as one unit.” Still furthermore, what is the scope of “operated together as one unit.” Housing as one unit is different than “operated together as one unit.” Even if they are within the same housing, it would have been obvious to put transmitter device and receiving device in one housing. Such design has been done in tons of devices such as ultrasound probe.
In response to Applicant’s argument that “with regards to Spagnolini, the system of Spagnolini, due to the larger size of receiving and transmitting antennas operating at 350-550 MHz, cannot be configured as a portable system, contrary to the system of Claim 1 of the present application,” the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BO JOSEPH PENG whose telephone number is (571)270-1792. The examiner can normally be reached Monday thru Friday: 8:00 AM-5:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ANNE M KOZAK can be reached at (571) 270-0552. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BO JOSEPH PENG/Primary Examiner, Art Unit 3797
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