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 .
Information Disclosure Statement
The information disclosure statement filed on 03/19/2025 fails to comply with 37 C.F.R. § 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 C.F.R. § 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. Specifically, the English-language publications indicated for the submitted foreign patent documents do not fulfill the concise-explanation requirement. MPEP § 609.04(a)(III) states, “An English-language equivalent application may be submitted to fulfill this requirement if it is, in fact, a translation of a foreign language application being listed” (emphasis added). Applicant makes no statement that the English-language publications are actually translations of the listed foreign patent references. Patent application publications may differ from their so-called foreign counterpart applications because subject matter is commonly added, modified, or deleted, including entirely different abstracts and claims, and therefore, are not necessarily translations of the foreign counterpart applications. Further, if the submitted English-language publications are actually translations of the listed foreign patent references, then there should not be any need to submit the foreign patent references. 37 C.F.R. § 1.56(b) (“Under this section, information is material to patentability when it is not cumulative to information already of record or being made of record in the application”). Examiner suggests providing an actual translation of the relevant portions. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Objections
Claim 3 is objected to under 37 C.F.R. § 1.75 as being a substantial duplicate of claim 1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. MPEP § 608.01(m).
Claim Rejections – 35 U.S.C. § 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 7-9, 26, and 38 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 7 recites the limitation “wherein the measuring of the one or more capacitance values comprises supplying a sensing signal to one of the electrode pair and measuring a current flowing through the electrode pair.” Claim 9 recites the limitation “wherein the measuring of the one or more capacitance values comprises coupling an amplifier to the other of the electrode pair and measuring the current flowing through the electrode pair.” These limitations are indefinite because they are unclear and appear to conflict with the “measuring” step of claim 1. Specifically, claim 1 recites “measuring one or more capacitance values associated with the electrode pair according to a first voltage level provided to the first node and a current level provided at the second node”, which requires a measurement of the current level at the second node. It is unclear if claim 7 requires another measurement of current (and may result in a § 112(a) issue), or if claim 7 is referring to the same measurement of current in claim 1, in which case the additional recitation would be redundant. Similarly, it is unclear if claim 9 requires another measurement of current of if it is referring to the same measurement of current as claim 1 and/or claim 7. For examination purposes, these limitations are interpreted as best understood. Claims 8-9 are rejected on the basis they incorporate the limitation of claim 7.
Claim 26 recites the limitation “further comprising connecting the first capacitance sensor to an amplifier and a resistor in parallel and measuring the first capacitance value according to an output value of the amplifier.” This limitation is indefinite because it is unclear if “a resistor” refers to the same “resistor” recited in claim 21, or if this refers to a different resistor (which may result in a § 112(a) issue). For examination purposes, this limitation is interpreted as best understood.
The following is a quotation 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.
Claim 38 is 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.
Claim 38 recites the limitation “determining whether examination of the slurry permittivity is exhausted across a network through which the slurry is delivered in response to the slurry permittivity failing to meet the specification.” The specification does not appear to describe this method step. Instead, the specification (¶ 0087) discusses the “examination of all of the piping network of the delivery system”, and whether that examination is exhausted (see Spec. ¶¶ 0086-0087, discussing that if the examination of the entire piping network is completed (“exhausted”), then that means the slurry deterioration is not caused by a problem with the piping network). In other words, the “examination” and the “exhaustion” of the examination as described in the specification at ¶ 0087 is of the piping network and not of the “slurry permittivity”, which is currently recited in claim 38.
Allowable Subject Matter
Independent claims 1, 21, and 35 are allowable. Claims 2-10, 22-26, and 36-38 are allowable for depending from claims 1, 21, or 35, subject to overcoming the objections and/or rejections under 35 U.S.C. § 112 as set forth in this Office action (where relevant). As allowable subject matter has been indicated, Applicant’s reply must either comply with all formal requirements or specifically traverse each requirement not complied with. 37 C.F.R. § 1.111(b) and MPEP § 707.07(a).
The following is Examiner’s statement of reasons for allowance (similar to the reasons for allowance stated in the 08/19/2025 Office Action):
Regarding claim 1, the prior art of record does not anticipate or render obvious the limitations of claim 1 in the recited combination as claimed, in particular the limitations:
coupling an electrode pair to an outer wall of a pipe of the piping network;
electrically coupling a signal generator and a first voltmeter to a first node of the first capacitance sensor;
electrically coupling a second voltmeter to a second node of the first capacitance sensor through a resistor and an amperemeter;
measuring one or more capacitance values associated with the electrode pair according to a first voltage level provided to the first node and a current level provided at the second node with the slurry being an insulating layer between the electrode pair (Examiner interprets this limitation to require the use of “a first voltage level provided to the first node” and “a current provided at the second node” to derive “one or more capacitance values”; in other words, the term “measuring” is given the connotation of deriving or determining and is directly based on the recited voltage and current levels);
deriving a quality metric, comprising a slurry permittivity, of the slurry according to the one or more capacitance values;
determining a removal rate of the slurry through a mapping between the slurry permittivity and the removal rate of the slurry.
Based on the prior art of record, it would appear that one of ordinary skill in the art before the effective filing date of this application would not have arrived at the recited method of claim 1 without hindsight based on Applicant’s disclosure. In view of the prior art of record and its deficiencies, Applicant’s invention is novel, non-obvious, and allowable as claimed.
Claim 21 is allowable on the same basis as claim 1. Claim 35 is allowable on the same basis as claim 1, except without the use of (and implicit measurement of) “a current level provided at the second node” in the “measuring” step.
Response to Amendment
Applicant’s Amendment and remarks have been considered. Claims 11-20 and 27-34 have been canceled. Claims 1-10, 21-26, and 35-38 are pending. Claims 1-2, 4-6, 10, 21-25, and 35-37 are allowed. Claim 3 is objected to. Claims 7-9, 26, and 38 are rejected.
Claims – The objection to claim 37 is withdrawn in view of Applicant’s amendment.
Response to Arguments
Applicant’s remarks have been fully considered. Examiner notes that despite Applicant’s representations (Reply at 1), none of independent claims 1, 21, and 35 incorporate all of the features recited in the previous instance of claim 38. Further, Applicant’s amendment of independent claims 1 and 21 with some of the limitations of claim 38 has resulted in patentability issues under 35 U.S.C. § 112 addressed above. Applicant does not present any arguments concerning the patentability of the pending claims.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 C.F.R. § 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
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, MONICA S CARTER can be reached at (571)272-4475. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723
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