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 .
Election/Restrictions
Claims 1 and 26 contain allowable subject matter. Claims 2-6, 14-16, 18-25, 27-31, 39-41, and 43-51 are previously withdrawn from consideration as a result of a restriction requirement, require all the limitations of an allowable claim. Pursuant to the procedures set forth in MPEP § 821.04(a), the restriction requirement among Groups I-VII, as set forth in the Office action mailed on December 16, 2025, is hereby withdrawn and claims 2-6, 14-16, 18-25, 27-31, 39-41, and 43-51 are hereby rejoined and fully examined for patentability under 37 CFR 1.104. In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Objections
Claims 1-49 are objected to because of informalities, which appear to be minor draft errors causing grammatical and/or antecedent basis issues.
As noted in the following format (location of objection: suggestion for correction), the following objections may be overcome by making the corresponding corrections: (claim 1, 2nd to last line, “having lower”: inserting the word --a -- before “lower”), (claim 7, line 1: deleting “wherein”), (claim 12, line 2, “the entrance bore”: deleting “bore”), (claim 26: adding a semi-colon to the end of line 5), (claim 26, 2nd to last line, “composed of, a”: deleting the comma), (claim 26, 2nd to last line, “having lower”: inserting the word --a -- before “lower”), (claim 32, line 1: deleting “wherein”), (claim 37, line 1, “claim claim”: deleting one instance of “claim”), and (claim 37, line 2, “the entrance bore”: deleting “bore”).
Any dependent claim of the claim(s) with the noted objections above is also objected to by virtue of its claim dependency. For purposes of examination, the claims have been treated as such with the correction(s). Appropriate correction is required.
Claim 50 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only. See MPEP § 608.01(n). Accordingly, claim 50 not been further treated on the merits, as well as claim 51, which depends on claim 50.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
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.
Claim(s) 25 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966). See also MPEP 2173.05(q).
Claim 25 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 applicant regards as the invention.
Claim 25 provides for the use of an apparatus or system, but since the claims do not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced. See MPEP 2173.05(q).
Allowable Subject Matter
Claims 1-24 and 26-49 would be allowable if rewritten or amended to overcome the claim objections set forth in this Office action. The following is a statement of reasons for the indication of allowable subject matter.
Regarding claim 1 and its dependent claim(s), if any, the prior art (e.g., EP 9946 A1) discloses a target assembly with a corresponding method for an x-ray apparatus, the target assembly comprising: a target housing (30); an entrance path (13) formed in an entrance part of the target housing for accepting an incident electron beam (11); a target member (21) for generating x-rays under electron beam illumination through the entrance path; and an exit path (20) formed in an exit part of the target housing for allowing generated x-rays to exit the target assembly, the exit path covered by an x-ray transmissive window (12), wherein the exit path comprises an exit bore formed in the exit part and configured to limit the generation of x-rays by impact of scattered electrons (p. 12:22-23: substantially reducing reback-scatter and off-focus x-ray radiation), which have been reflected from the target member, onto an inside of the bore (p. 11:29-31: the main purpose of the anode enclosure 30 is to absorb electrons back-scattered from the focal spot).
However, in corroboration with Applicant’s Arguments/Remarks filed May 15, 2026 (see p. 11), the prior art fails to disclose or fairly suggest a target assembly for an x-ray apparatus, the target assembly including: wherein the exit bore is provided with a liner predominantly composed of a material having a lower atomic number than the atomic number of the predominant material of a surface of the exit part inward of the liner, in combination with all of the other recitations in the claim.
Regarding claim 26 and its dependent claim(s), if any, the above prior art discloses a similar method.
However, in corroboration with Applicant’s Arguments/Remarks filed May 15, 2026 (see p. 11), the prior art fails to disclose or fairly suggest a method of modifying a target assembly for an x-ray apparatus, the target assembly comprising: a target housing; an entrance path formed in an entrance part of the target housing for accepting an incident electron beam a target member for generating x-rays under electron beam illumination through the entrance path; and an exit path formed in an exit part of the target housing for allowing generated x-rays to exit the target assembly, the exit path covered by an x-ray transmissive window, wherein the exit path comprises an exit bore formed in the exit part, wherein the modification includes providing the exit bore with a liner predominantly composed of a material having a lower atomic number than the atomic number of the predominant material of a surface of the exit part inward of the liner, in combination with all of the other recitations in the claim.
Response to Arguments
Applicant’s arguments, see page 11, filed May 15, 2026, with respect to the rejection(s) of claim(s) under 35 USC 102/103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made as set forth in this Office Action.
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 Chih-Cheng Kao whose telephone number is (571)272-2492. The examiner can normally be reached M-F 9-5.
Examiner interviews are available via telephone 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, David Makiya can be reached on (571) 272-2273. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Chih-Cheng Kao/Primary Examiner, Art Unit 2884
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