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
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-27, drawn to a sensor.
Group II, claim(s) 28-31, drawn to a sensor.
Group III, claim(s) 32-35, drawn to a sensor.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Group I, II, and III lack unity of invention because even though the inventions of these groups require the technical feature of a sensor comprising a printed circuit board; a detector mounted on the printed circuit board; a dome that is electrically conductive and is mounted on the printed circuit board so as to form a diffusion chamber around the detector, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Sundal et al (US 20140157864 A1; hereinafter “Sundal”). Sundal teaches a sensor (Sundal; Abstract) comprising a printed circuit board (Sundal; Fig. 6; para [57]; a first PCB 200); a detector mounted on the printed circuit board (Sundal; Fig. 6; para [57]; Photodiode 202 is provided on a first PCB 200); a dome that is electrically conductive (Sundal; Fig. 6; para [26, 69]; The inner surfaces of the first and second housing parts may be electrically conductive…the entire housing parts 102, 104 (including the integrally moulded chamber parts 106,108) of conductive material) and is mounted on the printed circuit board so as to form a diffusion chamber around the detector (Sundal; Fig. 6; para [58]; The diffusion chamber 105 is formed from a first chamber part 106 and a second chamber part 108; examiner notes Figure 6 shows that the chamber parts are positioned on the PCB 200).
During a telephone conversation with Attorney Robert Scotti on 1/15/2025 a provisional election was made without traverse to prosecute the invention of group I, claims 1-27. Affirmation of this election must be made by applicant in replying to this Office action. Claims 28-35 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 3/20/2023 and 5/29/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Status
Claims 1-35 are pending with claims 1-27 being examined and claims 28-35 are withdrawn.
Claim Objections
Claims 2-27 are objected to because of the following informalities: claims 2-27 read “A sensor” should read as “The sensor” as each of these claims are dependent on claim 1. Appropriate correction is required.
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.
Claims 8 and 24-27 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 8 recites the limitation “wherein the inner dome and the outer dome are substantially the same shape” in lines 1-2. The term “substantially” in claim 8 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 24 recites the limitation "one of the inner dome and the outer dome comprises one or more locating pins extending towards the printed circuit board" in 1-3. The limitation is unclear as to whether the Applicant is claiming that the inner dome or the outer dome comprises the one or more locating pins. Specifically, claim 24 reads “one of the” which is unclear if Applicant intends to claim additional domes, claim either the inner or outer dome comprises the one or more locating pins, or claim both the inner and outer dome comprises the one or more locating pins. For purpose of prosecution, the examiner interprets that the either the inner or the outer dome comprises the one or more locating pins. Claims 25-27 are rejected by virtue of dependency on claim 24.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-9, 11-12, 19-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sundal et al (US 20140157864 A1; hereinafter “Sundal”).
Regarding claim 1, Sundal teaches a sensor (Sundal; Abstract), comprising: a printed circuit board (Sundal; para [57]; a first PCB 200); a detector mounted on the printed circuit board (Sundal; para [57]; Photodiode 202 is provided on a first PCB 200); an inner dome that is electrically conductive and is mounted on the printed circuit board so as to form a diffusion chamber around the detector (Sundal; Fig. 3; para [58, 66]; second chamber part 108 is formed integrally with the rear housing part 104…First PCB 200 is dimensioned so that it extends substantially across the whole width of the inside of first chamber part 106); and an outer dome that is electrically conductive and is mounted on the printed circuit board, surrounding the inner dome (Sundal; Fig. 2; para [58, 65]; First chamber part 106 is formed integrally with the front housing part 102…First PCB 200 is dimensioned so that it extends substantially across the whole width of the inside of first chamber part 106).
Regarding claim 2, Sundal teaches the sensor as claimed in claim 1, wherein the sensor is arranged to apply a first voltage to the inner dome and a second voltage to the outer dome (Sundal; para [69]; the housing parts 102, 104, this is readily achieved either by forming the entire housing parts 102, 104 (including the integrally moulded chamber parts 106,108) of conductive material). The limitation “arranged to apply a first voltage to the inner dome and a second voltage to the outer dome” is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. See MPEP § 2114. The sensor disclosed by Sundal teaches all of the structural limitations of the claim and thus is arranged to and capable of performing the intended use and/or function language of applying the first voltage and the second voltage. Examiner notes that “a first voltage” and “a second voltage” are not positively recited elements of the claim, and therefore, are not elements of the claimed sensor.
Regarding claim 3, Sundal teaches the sensor as claimed in claim 2, wherein the first voltage has a magnitude greater than that of the second voltage. Examiner notes that “a first voltage” and “a second voltage” are not positively recited elements of the claim, and therefore, are not elements of the claimed sensor. See claim 2.
Regarding claim 4, Sundal teaches the sensor as claimed in claim 3, wherein the second voltage is ground. Examiner notes that “a first voltage” and “a second voltage” are not positively recited elements of the claim, and therefore, are not elements of the claimed sensor. See claim 2.
Regarding claim 5, Sundal teaches the sensor as claimed in claim 1, wherein the sensor is arranged to apply a detector bias voltage to the detector. The limitation “arranged to apply a detector bias voltage to the detector” is interpreted as intended use and/or functional language. The Courts have held that the manner in which a claimed apparatus is intended to be employed does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (BPAI 1987). A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. See MPEP § 2114. The sensor disclosed by Sundal teaches all of the structural limitations of the claim and thus is arranged to and capable of performing the intended use and/or function language of applying a detector bias voltage to the detector. Examiner notes that “a detector bias voltage” are not positively recited elements of the claim, and therefore, are not elements of the claimed sensor.
Regarding claim 6, Sundal teaches the sensor as claimed in claim 1, wherein the inner dome is connected to a first conductive layer of the printed circuit board so as to form a faraday shield around the detector (Sundal; para [69]; when the first and second chamber parts 106, 108 are mated together, they are electrically connected and form a Faraday cage around the photodiode 202).
Regarding claim 7, Sundal teaches the sensor as claimed in claim 1, wherein the outer dome is connected to a second conductive layer of the printed circuit board so as to form a faraday shield around the inner dome (Sundal; para [69]; when the first and second chamber parts 106, 108 are mated together, they are electrically connected and form a Faraday cage around the photodiode 202).
Regarding claim 8, Sundal teaches the sensor as claimed in claim 1, wherein the inner dome and the outer dome are substantially the same shape and concentrically arranged (Sundal; Fig. 2, 3). Sundal teaches that the chamber part 106 and 108 are substantially the same shape.
Regarding claim 9, Sundal teaches the sensor as claimed in claim 1, wherein the inner dome has a rounded shape (Sundal; Fig. 2, 3).
Regarding claim 11, Sundal teaches the sensor as claimed in claim 1, wherein a diffusion path for air exchange with the interior volume of the inner dome passes between the inner dome and the outer dome (Sundal; para [63]; the spacer ribs ensure a gap of at least 0.1 mm between the inner surface of the perimeter wall of the outer chamber 106 and the outer surface of the perimeter wall of the inner chamber 108. This gap provides the diffusion path by which gas may enter or leave the diffusion chamber).
Regarding claim 12, Sundal teaches the sensor as claimed in claim 11, wherein an entrance to the diffusion path is located centrally in a roof of the outer dome (Sundal; para [18]; the first and second diffusion chamber parts are each formed as a tube, open at one end and closed at the other).
Regarding claim 19, Sundal teaches the sensor as claimed in claim 1, wherein a biasing member is provided to bias the outer dome towards the printed circuit board and to ensure electrical contact of the outer dome with the printed circuit board (Sundal; para [64]; The orientation of first PCB 200 is determined by aligning projections 120 on the inside of first chamber part 106 with locating holes 204 in first PCB 200).
Regarding claim 20, Sundal teaches the sensor as claimed in claim 19, wherein the biasing member comprises one or more clips provided on the outer dome that extend through holes in the printed circuit board and engage with a side of the printed circuit board opposite the side on which the outer dome is located (Sundal; para [90]; the front and rear housing parts 102, 104 may be fixed together in any suitable way, e.g. via clips, hooks or screws).
Regarding claim 21, Sundal teaches the sensor as claimed in claim 19, wherein the outer dome is arranged to bias the inner dome into electrical contact with the printed circuit board (Sundal; para [66]; the second chamber part 108 has a number of rim projections 112 which extend from the rim 109 of second chamber part 108 towards PCB 200…the two chamber parts 106, 108 are mated together as described above, it is these rim projections 112 which contact the first PCB 200 and hold it in position.
Regarding claim 22, Sundal teaches the sensor as claimed in claim 21, wherein a spacer is provided between the outer dome and the inner dome so as to transmit a biasing force from the outer dome to the inner dome (Sundal; para [63]; twelve spacer ribs 110 are equally spaced around the perimeter wall of the first chamber part 106).
Regarding claim 23, Sundal teaches the sensor as claimed in claim 22, wherein an entrance to a diffusion path is located centrally in a roof of the outer dome (Sundal; para [18]; the first and second diffusion chamber parts are each formed as a tube, open at one end and closed at the other), and wherein the spacer forms a ring around the entrance and has one or more holes or channels formed in its side wall to allow air to flow from the entrance along the diffusion path (Sundal; para [62, 63]; these spacer ribs 110 ensure that the chamber 105 is not air tight. The spacer ribs 110 ensure that gas can still diffuse from the outside of chamber 105…twelve spacer ribs 110 are equally spaced around the perimeter wall of the first chamber part 106).
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 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.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Sundal.
Regarding claim 10, Sundal teaches the sensor as claimed in claim 9, wherein the inner dome has a rounded cuboid shape with rounded edges and corners. Sundal discloses the claimed invention except for the inner dome has a rounded cuboid shape with rounded edges and corners. It would have been an obvious matter of choice to change the shape of the inner dome, since it has been held that a mere change in shape of an element is generally recognized as being within the level of ordinary skill in the art when the change in shape is not significant to the function of the combination, MPEP 2144.04 (IV)(B). A change of shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Sundal in view of Ding (CN 101393144 A; hereinafter “Ding”; English translation attached).
Regarding claim 13, Sundal teaches the sensor as claimed in claim 1, with the printed circuit board.
Sundal does not teach wherein the sensor further comprises a gasket arranged to seal against a surface of the printed circuit board.
However, Ding teaches an analogous art of a diffusion-type accumulative alpha energy spectrum method for measuring radon gas in the soil (Ding; Abstract) comprising a printed circuit board (Ding; pp 4, para 7; circuit board 13) and a gasket (Ding; pp 4, para 7; O-shaped sealing ring 5) arranged to seal against a surface of the printed circuit board (Ding; Fig. 3; pp 6, para 2; circuit board 13 are provided with a system for circuit proof O-shaped sealing ring 5). It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the sensor of Sundal to comprise the O-ring as taught by Ding, because Ding teaches that the O-ring provides a moisture-proof sealing from electronic circuit (Ding; pp 6, para 3).
Regarding claim 14, Sundal teaches the sensor as claimed in claim 13, wherein the gasket is biased against the printed circuit board by a lip formed on at least one of the inner dome and the outer dome (Sundal; Fig. 2, 3; the examiner interprets the lip as the bottom rim as seen in the figures and the gasket taught by Ding seals the printed circuit board).
Allowable Subject Matter
Claims 15-18 are 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: claim 15 contains the allowable subject matter “wherein the gasket is located between the inner dome and the outer dome”. Claim 16 comprises the allowable subject matter based on the dependency on claim 15. Claim 17 contains the allowable subject matter “wherein the gasket seals against an outer surface of the inner dome except that one or more air channels are formed to bypass the gasket and are formed along the outer surface of the inner dome, connecting with a rim of the inner dome adjacent to the printed circuit board. Claim 18 comprises the allowable subject matter based on the dependency on claim 17. Claim 15 and 17 claim that the gasket is positioned between the inner dome and the outer dome positioned on the printed circuit board. The closest prior art being Gordon et al (US 20210364659 A1; hereinafter “Gordon”; priority filed on 5/20/2020) teaches a first sleeve and chamber parts wherein a gasket is positioned in between, but fails to disclose the printed circuit board. Thus, it would have not been obvious to modify Gordon, as Sundal is modified in view of Ding to disclose the gasket.
Claim 24 would contain allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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: claim 24 contains the allowable subject matter “wherein the one or more locating recesses are sufficiently deep that the one or more locating pins do not contact the bottom of the one or more recesses”. Claims 25-27 comprises the allowable subject matter based on the dependency on claim 24. The closest prior art being Sundal teaches that the one or more recesses are openings which the pins go through to secure the PCB to the inner dome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Austin Q Le whose telephone number is (571)272-7556. The examiner can normally be reached Monday - Friday 9am - 5pm.
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, Elizabeth Robinson can be reached at (571)272-7129. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.Q.L./Examiner, Art Unit 1796
/ELIZABETH A ROBINSON/Supervisory Patent Examiner, Art Unit 1796