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 .
Summary
This action is responsive to the Request for Continued Examination filed on 01/08/2026. The amendment has been entered. Applicant has submitted Claims 1-12 for examination.
Examiner finds the following: 1) Claims 1-12 are rejected; 2) no claims objected to; and 3) no claims allowable.
Request for Continued Examination
Receipt is acknowledged of a Request for Continued Examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on 01/08/2026.
Response to Arguments and Remarks
Examiner respectfully acknowledges Applicant' s arguments, remarks, and amendments.
Regarding Applicant’s arguments related to the lens arrangement, Examiner is not persuaded.
Applicant argues that Trainer fails to disclose:
… a lens arrangement [that] is arranged such that both the scattered light and the reference beam pass through the at least one lens of the lens arrangement.
Applicant notes that in the Advisory Action dated 11/06/2025, that Examiner acknowledges that Trainer does not explicitly disclose the above limitation. Examiner agrees that Trainer fails to explicitly disclose the above limitation.
However, as Examiner indicated, Trainer clearly shows in FIG. 12 and [0225] that Trainer’s detectors 1210 and 1211 share lens 1203. As Examiner was attempting to convey, even if Trainer did not explicitly show the above limitation, Trainer disclosed known uses of lenses in a manner that PHOSITA would reasonably be able to use such information to arrive at the above limitation.
Based on review, information, and belief, Examiner does not understand Applicant to be claiming a new or novel lens configuration not known in the art nor is Applicant claiming two beams that in the prior art could not be sent through the same lens. If Applicant is doing either of those, Examiner invites Applicant to indicate as such. However, it is Examiner’s understanding that Applicant is claiming known uses and configurations of lenses. Even if Trainer does not explicitly show the above limitation, it shows the principle claimed and that PHOSITA would reasonably understand and be able to arrive at such based-on Trainer. As such, Examiner maintains the rejection.
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:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or non-obviousness.
Claims 1, 3-6, 8-10, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Trainer (US20140152986A1) in further view of Hariharan (US5585913A).
Regarding Claim 1, Trainer discloses:
A device for scattered light measurement of particles in a gas comprising
a light source (Trainer, FIG. 1 and [0150], light source),
a beam splitter (Trainer, FIG. 1 and [150], beam splitter) which splits a light beam emitted by the light source into a measuring beam (Trainer, FIG. 1 and [0150], the beam that passes through lens 102 and the sample cell) and a reference beam (Trainer, FIG. 1 and [0151], “A portion the source beam, which was split off by a beamsplitter (the source beamsplitter), is reflected by a mirror to be expanded by a negative lens 105”),
a light receiving device (Trainer, FIG. 1 and [0151], the optical system after the sample cell, including lenses 103, 104, 105, and 106 slits 114 and 115, and detectors 110, 111, 112, and 113) arranged at a distance from the beam splitter (Trainer, FIG. 1, showing the spacing and arrangement), which light receiving device comprises a lens arrangement arranged in the reference beam and comprising at least one lens (Trainer, FIG. 1 and [0151], lens 105 and lens 106) with an optical axis aligned at an acute angle to the measuring beam (Trainer, FIG. 1, showing the reference beam axis and measurement beam axis are aligned at less than 90° ),
a first light receiver on the side of the lens arrangement facing away from the beam splitter for receiving the scattered light imaged by the lens arrangement from a measurement volume in a gas-bearing region between the beam splitter and the lens (Trainer, FIG. 1 and [0151], detectors 110 and 111), and
a second light receiver on the side of the lens arrangement facing away from the beam splitter for receiving the reference beam imaged by the lens arrangement (Trainer, FIG. 1 and [0151], detectors 112 and 113), …
Trainer discloses the above, but does not explicitly disclose “wherein the lens arrangement is arranged such that both the scattered light and the reference beam pass through the at least one lens of the lens arrangement.” However, Hariharan, in a similar field of endeavor (distance ranging systems and similar applications, and to an autocorrelation subsystem of such a ranging device), discloses:
… wherein the lens arrangement is arranged such that both the scattered light and the reference beam pass through the at least one lens of the lens arrangement (Hariharan, FIG. 2, C4, L21, lens 206, which Examiner notes receives both the reference beam and the measurement beam).
It would have been obvious to PHOSITA before the effective filing date of the claimed invention to modify Trainer with the lens arrangement of Hariharan. PHOSITA would have known about the uses of various lens arrangements as disclosed by Hariharan and how to use them to modify Trainer. PHOSITA would have been motivated to do this as a combination of prior art elements according to known methods to yield predictable results (See MPEP § 2143 (I)(A)), specifically the use of known lens arrangement when designing an optical apparatus.
Regarding Claim 3, the combination of Trainer and Hariharan discloses Claim 1 and further discloses:
… wherein a light attenuating element is arranged in the reference beam (Trainer, FIG. 1 and [0151], slit 115).
Regarding Claim 4, the combination of Trainer and Hariharan discloses Claim 1 and further discloses:
… wherein the light attenuating element is a filter (Trainer, FIG. 1 and [0151], slit 115).
Regarding Claim 5, the combination of Trainer and Hariharan discloses Claim 3 and further discloses:
… wherein the light attenuating element is a coating on a closure disc for the gas-bearing region (Trainer, FIG. 21 and [0243], “Even simple antireflection coatings on the external prism surfaces will reduce the Fresnel reflections to negligible levels.” Examiner notes that the prism discussed relates to one around the sample cell to better focus the measurement beam. Such an arrangement would be functionally the same as the closure disc claimed).
It would have been obvious to PHOSITA before the effective filing date of the claimed invention to modify the combination of Trainer and Hariharan with a closure disc as disclosed by Trainer. PHOSITA would have known about the uses of closure discs and how to use them to modify the combination of Trainer and Hariharan. PHOSITA would have been motivated to do this as a simple substitution of one known element for another to obtain predictable results (See MPEP § 2143 (I)(B)), specifically the use of an optical element to better focus the incoming light and have a coating that reflects unwanted light.
Regarding Claim 6, the combination of Trainer and Hariharan discloses Claim 5 and further discloses:
… wherein the coating is arranged on the inner side of the closure disc facing away from the gas-bearing region (Trainer, FIG. 21 and [0243], “Even simple antireflection coatings on the external prism surfaces will reduce the Fresnel reflections to negligible levels.” Examiner notes that the prism discussed relates to one around the sample cell to better focus the measurement beam. Such an arrangement would be functionally the same as the closure disc claimed).
Additionally, Examiner rejects Claim as obvious to try. Pursuant to MPEP § 2143(E):
The rationale to support a conclusion that the claim would have been obvious is that "a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103."KSR, 550 U.S. at 421, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
Examiner finds the number of possible identified, predictable solutions in this case is two: inner and outer side. One having ordinary skill in the art would have been aware of and pursued these known potential solutions with a reasonable expectation of success. As such, this case as a finite number of identified, predictable solutions, with a reasonable expectation of success for those solutions, and thus Claim 6 is rejected as obvious to try.
Regarding Claim 8, the combination of Trainer and Hariharan discloses Claim 1 and further discloses:
… wherein the first light receiver is a first photosensitive element and/or wherein the second light receiver is a second photosensitive element (Trainer, FIG. 80 and [0403], “When very small particles are measured, silicon photodetector arrays may not have sufficient signal to noise to detect the very small scattering intensities. In this case, photomultipliers or avalanche photodiodes may be used”).
Regarding Claim 9, the combination of Trainer and Hariharan discloses Claim 1 and further discloses:
… wherein the second light receiver is arranged at a distance from the first light receiver (Trainer, FIG. 1, showing the spacing and arrangement).
Regarding Claim 10, the combination of Trainer and Hariharan discloses Claim 1 and further discloses:
… comprising a measurement cell containing at least the light source, the beam splitter, the lens arrangement, the first light receiver, and the second light receiver, wherein the measured gas is directed to said measurement cell and is passed therein through the measurement volume (Trainer, FIG. 1, showing the sample cell has a volume that the particle flow passes through).
Regarding Claim 12, the combination of Trainer and Hariharan discloses Claim 10 and further discloses:
… wherein purge air flows into the device through openings (Trainer, [0342], “Then clear fluid can be introduced through the same inlet to flush and then fill the cell for background signal measurement. After the background measurement, the particle dispersion is introduced through the same inlet to fill the cell volume with particle sample for size measurement. The contents of the sample container can also be blown out by using an empty syringe (or compressed gas) to force air or gas through the container. A bypass valve may also used for flushing the sample container, without the need the pressure from a syringe”).
Claims 2 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Trainer (US20140152986A1), in view of Hariharan (US5585913A), and in further view of Spangenberg (US5745308A).
Regarding Claim 2, the combination of Trainer and Hariharan discloses Claim 1 but does not explicitly disclose “wherein the beam splitter is a prisim.” However, Spangenberg, in a similar field of endeavor (analytic instruments for performing analyses on test samples), discloses:
… wherein the beam splitter is a prism (Spangenberg, FIGS. 6-7 and C31, L50-51, “In an alternative embodiment, a faceted prism may be used in place of the split mirror to separate the high and low angle scatter portions of the light pattern,” showing that a prism may be used as a beam splitter).
It would have been obvious to PHOSITA before the effective filing date of the claimed invention to modify the combination of Trainer and Hariharan with the prism splitter as disclosed by Spangenberg. PHOSITA would have known about the uses of prism splitters and how to use them to modify the combination of Trainer and Hariharan. PHOSITA would have been motivated to do this as a simple substitution of one known element for another to obtain predictable results (See MPEP § 2143 (I)(B)), specifically the known use of a prism as a beam splitter.
Regarding Claim 11, the combination of Trainer and Hariharan discloses Claim 10 but does not explicitly disclose heating the gas. However, Spangenberg, in a similar field of endeavor (analytic instruments for performing analyses on test samples), discloses:
… wherein the measured gas is heated to vaporize condensed particles (Spangenberg, FIG. 51 and C16, L41-60, heater 611).
It would have been obvious to PHOSITA before the effective filing date of the claimed invention to modify the combination of Trainer and Hariharan with the heater as disclosed by Spangenberg. PHOSITA would have known about the uses of heaters and how to use them to modify the combination of Trainer and Hariharan. PHOSITA would have been motivated to do this as a simple substitution of one known element for another to obtain predictable results (See MPEP § 2143 (I)(B)), specifically the known use of a heater to control the temperature and state of the gas.
Additionally, pursuant to MPEP § 2115:
A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
And also:
In In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967), an apparatus claim recited "[a] taping machine comprising a supporting structure, a brush attached to said supporting structure, said brush being formed with projecting bristles which terminate in free ends to collectively define a surface to which adhesive tape will detachably adhere, and means for providing relative motion between said brush and said supporting structure while said adhesive tape is adhered to said surface." An obviousness rejection was made over a reference to Kienzle which taught a machine for perforating sheets. The court upheld the rejection stating that "the references in claim 1 to adhesive tape handling do not expressly or impliedly require any particular structure in addition to that of Kienzle." Id. at 580-81. The perforating device had the structure of the taping device as claimed, the difference was in the use of the device, and "the manner or method in which such machine is to be utilized is not germane to the issue of patentability of the machine itself." Id. at 580.
Claim 11 is also rejected under MPEP § 2115 for being an apparatus claim that is claiming a particular process without expressly or impliedly requiring any particular structure.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Trainer (US20140152986A1), in view of Hariharan (US5585913A), and in further view of Kaufmann (US20070146705A1).
Regarding Claim 7, the combination of Trainer and Hariharan discloses Claim 1 but does not explicitly disclose a light trap. However, Kaufmann, in a similar field of endeavor (measurement instrument which measures the amount of light scattered by a light beam as it traverses a gas sample from which the density of particulates in the gas sample can be established), discloses:
… wherein the light receiving device has a light trap in the beam path of the measuring beam (Kaufmann, FIG. 1 and [0025], testing space 6 and boundary 24. Examiner notes that the testing space 6 and the boundary 24 control and prevent unwanted light from entering the openings in boundary 24, thus trapping the excess light).
It would have been obvious to PHOSITA before the effective filing date of the claimed invention to modify the combination of Trainer and Hariharan with the light blocking and trapping of Kaufmann. PHOSITA would have known about the uses of light traps and how to use them to modify the combination of Trainer and Hariharan. PHOSITA would have been motivated to do this as a known technique to a known device ready for improvement to yield predictable results (See MPEP § 2143 (I)(D)), specifically the known means to prevent excess light from interfering with measurements through blocking and trapping.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHAD A REVERMAN whose telephone number is (571)270-0079. The examiner can normally be reached Mon-Fri 9-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kara Geisel can be reached at (571) 272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHAD ANDREW REVERMAN/Examiner, Art Unit 2877
/Kara E. Geisel/Supervisory Patent Examiner, Art Unit 2877