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 .
Response to Amendment
This action is in response to the remarks filed on 08/04/2025. The amendments filed on 02/05/2025 have been entered. Accordingly, claims 1-5 remain pending.
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 1-5 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.
Claim 1 recites the limitation “wherein the first dielectric material, the second dielectric material, and the third dielectric material are different dielectric material types.”. However, at no point in the specification is this mentioned nor is there a list of potential dielectric materials that could be used. The evidence supplied in the Applicants Remarks simply mentions the Dielectric components in the figures. For the purpose of the instant examination this limitation is interpreted as a cable comprising any dielectric material.
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.
Claim 5 is 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 5 recites the limitations “deciding, by the computer, whether to calculate an input impedance or to use the S parameters, measuring the input impedance via the computer” which renders the claim unclear. It is unclear whether measuring the input impedance is required by the system, as recited above the input impedance calculation is an optional path for the computer and thus not strictly required to satisfy the claim. For the purposes of the instant examination the input impedance calculation and measurement are considered optional to the method.
Claim Rejections - 35 USC § 103
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.
Claims 1-4 is rejected under 35 U.S.C. 103 as being unpatentable over Cayoren et al (US20160128602A1; hereinafter referred to as Cayoren) in view of Lieder et al (US6989679B2; hereinafter referred to as Lieder)
Regarding Claim 1, Cayoren discloses a tissue identification device developed for a diagnosis of malignant prostate tumor tissues, to be used in a healthcare sector ("The invention relates to the detection (i.e. identification) of the presence of, and border determination of cancerous tissues on the tissue surface and/or inside the tissue in open or non-open surgeries" [0001]), comprising:
a radiofrequency (RF)/ microwave cable ("means of the measurement probe (16) connected thereto via RF/Microwave cable (15)" [0073], “the tissue identification device (10) according to the invention comprises a hand tool (12), which carries the measurement probe (16)” [0069]),
a charger unit (energy module) (“Also provided herein is an energy module (20) for providing the required power for the operation of the computer (11), hand tool (12), calibration and sterilization unit (19), which are disposed in the tissue identification device (10).” [0069]),
a power cable (power distribution unit 22) connected to a back of the tissue identification device ("The energy module (20) comprises an energy supply (21), which enables the device (10) to be connected to a power source, e.g. electric supply system, battery, as well as comprising a power distribution unit (22) for distributing the energy to the components comprised by the device (10)." [0069], see Figure 1 for relation of power cable to tissue identification device, see Figure 6 For view of entire device),
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a measurement tool located at a side of the tissue identification device and connected to the tissue identification device with the RF/microwave cable ("a measurement probe having a concentric, 2 Port coaxial structure, which allows measuring 1 Port and 2 Port scattering parameters of the target tissue, an S parameter measurement unit, which is associated with said measurement probe by means of RF/Microwave cable" [0011-0012], see Figure 6 to see measurement probe 16 being on the side);
an open-ended coaxial/contact probe, located at a tip of the measurement tool ("a measurement probe (16) having a concentric, 2 Port coaxial structure" [0010], "dielectric constant can be measured using open-ended coaxial probe" [0005], see Figures 4 and 5 for tip of measurement tool),
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a first inner conductor (163) located at the center of the open-ended coaxial/contact probe configured to be employed during a dual port application of the tissue identification device, a first dielectric material (164) surrounding the first inner conductor, a first ground connection(165) surrounding the first dielectric material ("The coaxial structure forming the 1st port of the measurement probe (16) includes the port 1 conductive live end (163); the dielectric material Type 1 (164) enclosing said port 1 conductive live end (163); and Port 1 and Port 2 conductive ground connection (165) enclosing said dielectric material Type 1 (164)" [0070]),
a second dielectric material (166) surrounding the first ground connection, a second inner conductor (167) surrounding the second dielectric material (The coaxial structure forming the 2nd port thereof, on the other hand, includes said Port 1 and Port 2 conductive ground connection (165); the dielectric material Type 2 (166) enclosing the Port 1 and Port 2 conductive ground connection (165); and the port 2 conductive live end (167) enclosing said dielectric material Type 2 (166) [0070]
a computer located on the tissue identification device ("an S parameter measurement unit (17), which is connected with said measurement probe (16) and computer (11) and which measures scattering parameters (S parameters) of the tissue by means of the measurement probe (16) and transfers the measurement results to the computer (11)." [0068]).
Cayoren does not specifically disclose a third dielectric material surrounding the second inner conductor, a second ground connection surrounding the third dielectric material type.
However, in a similar field of endeavor, Lieder teaches a non-contact capacitive sensor probe including a metallic sensor having a first surface opposite a dielectric medium to be sensed and a plurality of active metallic shields adjacent to the metallic sensor [Abstract].
Lieder also teaches a third dielectric material surrounding the second inner conductor (“wherein said active shield assembly further comprises a plurality of shield layers each separated from the other by a dielectric sheet; a ground shield plate over said active shield assembly so as to sandwich the active shield assembly between the ground shield plate and the sensor plate and said ground shield plate is separated from the active shield assembly by a dielectric sheet.” [Pg. 5]),
and a second ground connection surrounding the third dielectric material type (“wherein said active shield assembly further comprises a plurality of shield layers each separated from the other by a dielectric sheet; a ground shield plate over said active shield assembly so as to sandwich the active shield assembly between the ground shield plate and the sensor plate and said ground shield plate is separated from the active shield assembly by a dielectric sheet.” [Pg. 5]).
It would have been obvious to an ordinary skilled person in the art before the effective filing date of the claimed invention to modify the system of Cayoren as outlined above with a third dielectric material having a third type surrounding the second inner conductor, a second ground connection surrounding the third dielectric material type as taught by Lieder, because there is a need for a capacitive measurement method and a non-contact capacitive measurement sensor that is less sensitive to variations in capacitance due to manufacturing variations in the sensor probe plates and cabling between the probe and a proximity circuit [Pg. 5].
Regarding Claim 2, Cayoren discloses a microwave connection point located on the tissue identification device for connecting the tissue identification device to the RF/ microwave cable ("means of the measurement probe (16) connected thereto via RF/Microwave cable (15)" [Cayoren 0073]).
Regarding Claim 3, Cayoren discloses a digital screen located at a front section of the tissue identification device ("an S parameter measurement unit (17), which is connected with said measurement probe (16) and computer (11) and which measures scattering parameters (S parameters) of the tissue by means of the measurement probe (16) and transfers the measurement results to the computer (11)." [Cayoren 0068], "the data from the computer (11) are sent to the micro-control card (123) and indicated on the hand tool (12) screen (125) by the hand tool embedded software block (124)." [Cayoren 0075], see Figure 1 for relationship between S Parameter Measurement unit and digital screen, see Figure 6 for view of the entire device).
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Regarding Claim 4, Cayoren discloses a probe cable holding arm/handle on the measurement tool and between the open-ended coaxial/contact probe (9) and the RF /microwave cable ("In addition to the above components, the tissue identification device (10) according to the invention comprises a hand tool (12), which carries the measurement probe (16) thereon and operates in association with the computer (11)." [Cayoren 0069], see Figure 6 for probe cable holding arm/ handle (122 and 121)).
Claims 5 is rejected under 35 U.S.C. 103 as being unpatentable over Cayoren in view of Lieder as applied to Claim 1, and further in view of Golnabi et al (US 20130204118 A1, hereinafter referred to as Golnabi)
Regarding Claim 5, Cayoren in view of Lieder further teaches a tissue analysis method performed by the tissue identification according to claim 1 ("The invention relates to the detection (i.e. identification) of the presence of, and border determination of cancerous tissues on the tissue surface and/or inside the tissue in open or non-open surgeries" [Cayoren 0001]) comprising:
starting a tissue identification device via an on/off button ("Said energy module (20) is activated by on/off button of the device (10)" [Cayoren 0069]),
calibrating the tissue identification device ("When supply voltage is given to the tissue identification device (10) and when the surgeon pushes the measurement button of the hand tool (12), the application software block (112) automatically starts the calibration and sterilization process of the measurement probe (16)." [Cayoren 0077]),
placing a measurement tool into a tissue to be identified and measuring S parameters ("a) contacting the measurement probe with the target tissue, b) measuring 1 port and 2 port scattering parameters of the tissue in a frequency band thanks to the concentric, 2 port coaxial structure of the measurement probe by means of S parameter measurement unit," [Cayoren 0015-0016]),
deciding to either carry out a dielectric calculation or to use the S parameters, according to a type of the measurement tool and calculating by a computer a dielectric constant ("a measurement probe (16), which operates in association with said computer (11) and is configured for determining the dielectric constant of the tissue in open and/or non-open surgeries, and an S parameter measurement unit (17), which is connected with said measurement probe (16) and computer (11) and which measures scattering parameters (S parameters) of the tissue by means of the measurement probe (16) and transfers the measurement results to the computer (11)." [Cayoren 0067-0068]),
deciding, by the computer, whether to calculate an input impedance or to use the S parameters measuring the input impedance via the computer (“an S parameter measurement unit, which is associated with said measurement probe by means of RF/Microwave cable and allows measuring S parameters of the tissues” [Cayoren 0012]),
classifying the tissue via the computer (“S parameters and the tissue images are transferred to the tissue identification software block (113) and tissue identification is made using a predetermined tissue identification algorithm," [Cayoren 0095-0105]),
shutting off the tissue identification device via the on/off button ("Said energy module (20) is activated by on/off button of the device (10)" [Cayoren 0069]).
Cayoren in view of Lieder does not specifically disclose the method uses an inverse problem approach when conducting a dielectric calculation.
However, in the similar field of endeavor, Golnabi teaches a system and method for detecting permittivity and conductivity boundaries within a high resolution spatial image of a material [Abstract].
Golnabi also teaches using an inverse problem approach when conducting a dielectric calculation (“Microwave imaging spectroscopy (MIS) mainly includes solving two problems: a forward problem and an inverse, or optimization, problem. The forward problem involves computing the output from known inputs, namely, microwave excitation, and system properties, such as dielectric property distribution of the tissue being imaged, whereas the inverse problem estimates the properties of an unknown volume, namely dielectric properties of the tissue, from known input, namely, microwave excitation, and measured field values” [0006]).
It would have been obvious to an ordinary skilled person in the art before the effective filing date of the claimed invention to modify the system of Cayoren in view of Lieder as outlined above with the system using an inverse problem approach when conducting a dielectric calculation as taught by Golnabi, because the non-ionizing and non-compressive nature of microwave imaging makes the technique potentially attractive for cancer screening [0005].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-4 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant argues the following regarding the U.S.C. rejection of Claim 5:
Moreover, the Examiner's reliance on Golnabi is likewise deficient. Golnabi is directed to external microwave-antenna arrays that cooperate with MRI data to regularize an image-reconstruction algorithm (see Golnabi Abstract, paragraphs [0009]-[0012]). It never discloses nor suggests modifying a hand-held, open-ended coaxial probe architecture, let alone one that contains dual, continuous ground connections and three distinct dielectric layers arranged concentrically. Incorporating Golnabi's tomographic post-processing concepts into Cayoren's physical probe would therefore (i) leave every structural limitation discussed above still missing, (ii) force a POSA to abandon Cayoren's real-time intra-operative use case in favor of stationary array imaging, and (iii) provide no articulated reason why such a wholesale redesign would have been undertaken. Accordingly, Golnabi cannot remedy the gaps in Cayoren and Lavy, and its-10- inclusion fails to establish a prima facie case of obviousness. All rejections predicated on Golnabi should likewise be withdrawn.
Likewise, grafting Golnabi's large, fixed-array tomography platform onto Cayoren's hand-held dual-port coax probe (or onto Lavy's low-MHz impedance needle) would destroy the very operating principles of both references. Golnabi's array for Cayoren's continuous shield would eliminate the TEM waveguide altogether, while splicing Golnabi's MRI-dependent inversion routine into Lavy would abandon the quasi-static ring-electrode concept. Either way, the resulting hybrid would be inoperable for the purposes for which Cayoren and Lavy were devised, and therefore Golnabi cannot be reasonably combined without destroying the functionality of the original art. All rejections predicated on Golnabi should likewise be withdrawn.
However, it is noted that no physical components of Golnabi have been grafted onto Cayoren and no modifications of Cayorens probe has been suggested using Golnabi.
Golnabi teaches using measured microwave field values (S-parameters) and using an inverse problem approach to solve for dielectric properties (“Microwave imaging spectroscopy (MIS) mainly includes solving two problems: a forward problem and an inverse, or optimization, problem. The forward problem involves computing the output from known inputs, namely, microwave excitation, and system properties, such as dielectric property distribution of the tissue being imaged, whereas the inverse problem estimates the properties of an unknown volume, namely dielectric properties of the tissue, from known input, namely, microwave excitation, and measured field values” [0006])
All that is being combined is using the measured S-parameters from Cayoren and the inverse problem approach of Golnabi.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN MALDONADO whose telephone number is 703-756-1421. The examiner can normally be reached 8:00 am-4:00 pm PST 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
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/Steven Maldonado/
Patent Examiner, Art Unit 3797
/CHRISTOPHER KOHARSKI/Supervisory Patent Examiner, Art Unit 3797
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