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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 22, 2025 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 23 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.
The examiner notes that the applicant has not traversed the Official Notice of facts taken in the Office Action of June 25, 2025, regarding the rejection of claims 49 and 50. Therefore, the statement is taken to be admitted prior art. See In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420. MPEP 2144.03 Sec. C.
Claim Objections
Claim 23 is objected to because of the following informalities: The claim recites “the sample holder” after the second “wherein” clause. Antecedent basis only exists for “the small sample holder”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 29 and 33 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 29, the claim recites the “accessory of claim 23”. As claim 23 is a “system… comprising:… a small sample accessory”, claim 29 should recite the “system of claim 23”.
Regarding claim 33, the claim recites “wherein the small sample has a volume of no more than 200 milliliters (mL). The recitation in parent claim 23 of “small sample” is a relative term. However, the term is definite because “the specification provides examples or teachings”, in paragraph [0007], as published that “the small sample has a volume of no more than 200 mL, no more than 100 mL, no more than 50 mL, no more than 20 mL, or no more than 10 mL, or no more than 1 mL.” However, claim 33 does not further limit claim 23, as the term “small sample” is defined in the specification as “no more than 200 mL”.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 23-30, 33, 34, and 48-50 are rejected under 35 U.S.C. 103 as being unpatentable over Boyle et al. (US 2004/0129884 A1), hereinafter “Boyle”, and further in view of Freese et al. (US 2013/0284894 A1), hereinafter “Freese”.
Regarding claim 23, Boyle teaches a system for measuring a spectrum of a small sample (abstract, Figs. 1, 2, 16), comprising:
an optical spectrometer (paragraph [0004], [0059], [0063], refs 23, 25),
an illumination source (ref 19, 21, paragraph [0059]), and
a small sample accessory comprising a shell (ref 3, IRE, paragraph [0059]) and a small sample holder (paragraphs [0059], [0061], reservoir 45 can hold a “small sample”, as defined);
wherein the shell comprises a window portion (ref 9, paragraph [0059]) and a non-window portion (Fig. 16, ref 373, paragraphs [0111]-[0112]), wherein the shell is in optical communication with the illumination source (as shown in Fig. 16), wherein the non-window portion is configured to direct light emitted from the illumination source to interact with the small sample prior to interaction with the optical spectrometer (as shown in Fig. 6, light travels from source 19 to coating 373 before reaching spectrometer 23, 25), and
wherein the sample holder is configured to hold a portion of the small sample through the window portion of the shell, in optical communication with the optical spectrometer and the illumination source (as shown in Fig 2, paragraph [0061]).
Boyle is silent regarding the portion of the small sample is configured to scatter light emitted from the illumination source toward the optical spectrometer (Boyle measures absorbance).
However, Freese teaches a optical measuring device (abstract) using an integrated reflective element (Fig. 1, ref 100, paragraph [0038]), similar to Boyle’s IRE, can measure absorbance or scattering (paragraphs [0035]-[0036]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the device of Boyle with the teaching of Freese by including such that the portion of the small sample is configured to scatter light emitted from the illumination source toward the optical spectrometer as scattering offers higher sensitivity measurements.
Regarding claim 24, Boyle teaches wherein the shell is spherical (Fig. 1, paragraph [0021]).
Regarding claim 25, Boyle teaches wherein the shell is hemi-spherical (paragraph [0021]).
Regarding claim 26, Boyle teaches wherein the shell is cylindrical (Fig. 12, paragraph [0097]).
Regarding claim 27, Boyle teaches wherein the shell is tubular (Fig. 13, paragraph [0102]).
Regarding claim 28, Boyle teaches wherein the shell comprises one or more angles (Fig. 20, paragraph [0130]).
Regarding claim 29, Boyle is silent regarding wherein the shell is configured such that the optical spectrometer is substantially equidistant from a given point on a surface of the shell.
However, It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include wherein the shell is configured such that the optical spectrometer is substantially equidistant from a given point on a surface of the shell as it has been held that the particular placement of an element in a measuring device was held to be an obvious matter of design choice. In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). One would place the spectrometer substantially equidistant from a point to have a symmetric device, visually appealing and easy to manufacture.
Regarding claim 30, Boyle teaches wherein the shell is configured to reflect visible light, infrared light, ultraviolet light, or a combination thereof (paragraphs [0011], [0039]).
Regarding claim 33, Boyle teaches wherein the small sample has a volume of no more than 200 milliliters (mL) (the volume of sample does not structurally change the device, as the sample is not part of the device).
Regarding claim 34, Boyle teaches a reflective cover positioned on top of the sample holder and configured to reflect light that passes through the small sample (Fig. 16, ref 373, paragraphs [0111]-[0112]).
Regarding claim 48, Boyle teaches wherein the small sample accessory has a reflective inner surface floor (ref 11, paragraph [0061]).
Regarding claim 49, Boyle is silent regarding wherein the shell comprises a diffuse reflective material.
However, the Examiner takes official notice that the use of diffuse reflective material is common and known in the art to control and manipulate light.
it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Boyle by including wherein the shell comprises a diffuse reflective material for advantages such as uniform light distribution, reduced glare and enhanced visibility.
Regarding claim 50, Boyle is silent regarding wherein the diffuse reflective material is white.
However, the Examiner takes official notice that the use of white diffuse reflective material is common and known in the art to control and manipulate light.
it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Boyle by including wherein the diffuse reflective material is white for advantages such as uniform light distribution, reduced glare and enhanced visibility.
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Boyle and Freese as applied to claim 23 above, and further in view of Teder (US 2008/0116379A1).
Regarding claim 31, Boyle is silent regarding wherein the illumination source is configured to emit light within a light cone having a half-angle of at least 60 degrees.
However, Teder teaches an optical measurement device (abstract) including wherein the illumination source is configured to emit light within a light cone having a half-angle of at least 60 degrees (paragraph [0011]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the device of Boyle with the teaching of Goldring by including wherein the illumination source is configured to emit light within a light cone having a half-angle of at least 60 degrees in order to have a wider illumination area, giving interaction with more sample using higher intensity.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Boyle and Freese as applied to claim 23 above, and further in view of Goldring et al. (US 2018/0085003 A1), hereinafter “Goldring.
Regarding claim 32, Boyle is silent regarding wherein the illumination source is configured to emit light within a light cone having a half-angle of at most 60 degrees.
However, Goldring teaches an optical measurement device (abstract) including wherein the illumination source is configured to emit light within a light cone having a half-angle of at most 60 degrees (paragraph [0265]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the device of Boyle with the teaching of Goldring by including wherein the illumination source is configured to emit light within a light cone having a half-angle of at most 60 degrees in order to have more concentrated intensity while still covering a broad area of the sample.
Allowable Subject Matter
Claim 35 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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:
Regarding claim 35, the prior art of record, taken either alone or in combination, fails to disclose or render obvious a system for measuring a spectrum of a small sample, the system comprising, among other essential elements, a second accessory comprising: an outer surface, and an inner surface configured to partially or completely enclose the illumination source and the optical spectrometer, wherein the outer surface or the inner surface or both are in optical communication with the portion of small sample and the shell, and wherein the inner surface is configured to direct light emitted by the illumination source to achieve at least two optical interactions with the portion of the small sample or the shell, in combination with the rest of the limitations of claim 23 and the above claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Rosen (US 2018/0172510) teaches a similar spectrometry device, with cone illumination.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC J BOLOGNA whose telephone number is (571)272-9282. The examiner can normally be reached Monday - Friday 7:30am-3:30pm.
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/DOMINIC J BOLOGNA/Primary Examiner, Art Unit 2877