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 Arguments
Applicant’s arguments with respect to claim(s) 32 and 43 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.
Claim Objections
Claim 37 is objected to because of the following informalities: the claim recites “according to claims 33”, when it should be “according to claim 33”. The examiner notes that “s” in claims was deleted with strikethrough in the claims of the preliminary amendment dated November 27, 2023. 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 41, 42, and 45-60 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 41 recites “an integrated probe for coupling to the spectrometer of the apparatus according to claim 32”. It is unclear what applicant seeks to claim. Claim 32 already recites a spectrometer and “an integrated probe for coupling to the spectrometer”. It appears that claim 41 is an attempt to claim the probe for coupling to the spectrometer of claim 32. However, this would interpretation would be improper under 35 USC 112(d) for failing to further limit the subject matter of claim 32 upon which it depends, as the probe is already recited in claim 32.
Regarding claim 46, the claim recites “a slit”. Antecedent basis for “a slit” appears in parent claim 32. Is this a second slit or the same slit? The claim is interpreted as the same slit.
Claims 42 and 45-60 are rejected based upon their dependency on claim 41.
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 41 is 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.
Claim 41 recites “an integrated probe for coupling to the spectrometer of the apparatus according to claim 32”. Claim 32 already recites a spectrometer and “an integrated probe for coupling to the spectrometer”. The recitation of claim 41 merely repeats limitations in claim 32. Therefore claim 41 does not further limit the subject matter of claim 32.
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 32-43, 45, and 50-59 are rejected under 35 U.S.C. 103 as being unpatentable over Zilkie et al. (US 2023/0003938 A1), hereinafter “Zilkie”, and further in view of Niemczuk et al. (US 2023/0148312 A1), hereinafter “Niemczuk”.
Regarding claim 32, Zilkie teaches an apparatus for non-invasive in vivo measurement by Raman spectroscopy of analyte presence and/or concentration in the skin of a subject (abstract, Figs. 1-2B, 9, 13-14, 19, 47-56), the apparatus comprising;
a spectrometer (paragraph [0043], [0166], [0169], Fig. 9) having a slit (Fig 13, ref 402, paragraph [0074]) for receiving a Raman spectrum from a sample (paragraph [0043], The recitation following “for receiving” does not structurally differentiate the device from the prior art. See MPEP 2114 Sec. II); and
an integrated probe for coupling to the spectrometer (Figs. 1A, 2B, The recitation following “for coupling” does not structurally differentiate the device from the prior art), wherein the probe is of planar configuration (as shown in Figs. 1-2), wherein the planar probe is arranged for engagement in use with a subject’s skin (As shown in Fig. 2A, The recitation following “is arranged” does not structurally differentiate the device from the prior art. See MPEP 2114 Sec. II) and wherein the integrated probe comprises a substrate having arranged thereon plural optical sources (Fig. 2B, ref 5a, paragraph [0145]).
Zilkie is silent regarding wherein the substrate having arranged thereon plural optical sources is a PCB.
However, Niemczuk teaches an optical probe for in vivo measurement (abstract, Fig. 3) including a PCB (ref 39, paragraph [0091]) having arranged thereon plural optical sources (ref 33, paragraph [0088]).
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 Zilkie with the teaching of Niemczuk by including wherein the substrate having arranged thereon plural optical sources is a PCB as Niemczuk recognizes that a PCB is a common substrate for light sources to be arranged for an optical measuring device.
Regarding claim 33, Zilkie is silent regarding in which plural optical sources are arranged around the slit of the spectrometer (Zilkie teaches light sources 5 around the detector, Fig. 1A).
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 in which plural optical sources are arranged around the slit of the spectrometer, 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 arrange the sources around the slit of the spectrometer in order to have even light scattering from the sample into the spectrometer.
Regarding claim 34, Zilkie teaches in which the plural optical sources are VCSELs (paragraph [0150]).
Regarding claim 35, Zilkie teaches in which the PCB comprises a window (Fig 13, ref 402, paragraph [0074]; a slit is a window) but is silent regarding the optical sources are arranged around the window.
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 the optical sources are arranged around the window, 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 arrange the sources around the window in order to have even light scattering from the sample into the spectrometer.
Regarding claim 36, Zilkie teaches in which plural rows (Fig. 1A, ref 5,) of VCSELs (paragraph [0150]) are provided on either side of the window (ref 6).
Regarding claim 37, Zilkie teaches directing optics (Fig. 3C, 3D, lens, paragraphs [0063]-[0064]) to control a distance of a focal point of the plural optical sources from a plane of the planar integrated probe (The recitation following “to control” does not structurally differentiate the device from the prior art. See MPEP 2114 Sec. II).
Regarding claim 38, Zilkie teaches source optics (Fig. 3C, 3D, lens) arranged for controlling a transmission of light from the plural optical sources (paragraphs [0063]-[0064]) The recitation following “arranged for” does not structurally differentiate the device from the prior art. See MPEP 2114 Sec. II).
Regarding claim 39, Zilkie teaches in which the source optics comprises a micro lens array (paragraph [0050])
Regarding claim 40, Zilkie teaches wherein the apparatus is for non-invasive in vivo measurement by Raman spectroscopy (paragraphs [0006], [0047]) .
Regarding claim 41, Zilkie teaches an integrated probe for coupling to a detector the spectrometer of the apparatus according to claim 32, for non-invasive in vivo measurement by Raman spectroscopy of analyte presence and/or concentration in the subject's skin (supra), wherein the integrated probe is of planar configuration (as shown in Figs. 1-2), and arranged for engagement in use with a subject’s skin (As shown in Fig. 2A, The recitation following “arranged for” does not structurally differentiate the device from the prior art. See MPEP 2114 Sec. II) and wherein the integrated probe comprises a substrate having arranged thereon plural optical sources (Fig. 2B, ref 5a, paragraph [0145]).
Zilkie is silent regarding wherein the substrate having arranged thereon plural optical sources is a PCB.
However, Niemczuk teaches an optical probe for in vivo measurement (abstract, Fig. 3) including a PCB (ref 39, paragraph [0091]) having arranged thereon plural optical sources (ref 33, paragraph [0088]).
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 Zilkie with the teaching of Niemczuk by including wherein the substrate having arranged thereon plural optical sources is a PCB as Niemczuk recognizes that a PCB is a common substrate for light sources to be arranged for an optical measuring device.
Regarding claim 42, Zilkie teaches in which the probe is for non-invasive in vivo measurement by Raman spectroscopy of analyte presence and/or concentration (paragraph [0172], The recitation following “is for” does not structurally differentiate the device from the prior art. See MPEP 2114 Sec. II).
Regarding claim 43, Zilkie teaches an apparatus for Raman spectroscopy (abstract, Figs. 1-2B, 9, 13-14, 19, 47-56), the apparatus comprising:
a detector (paragraph [0043], [0166], [0169], Fig. 9) having a slit (Fig 13, ref 402, paragraph [0074]) for receiving a Raman spectrum from a sample under test (paragraph [0043], The recitation following “for receiving” does not structurally differentiate the device from the prior art. See MPEP 2114 Sec. II);
an integrated probe for coupling to the detector (Figs. 1A, 2B, The recitation following “for coupling” does not structurally differentiate the device from the prior art), wherein the probe is of planar configuration (as shown in Figs. 1-2), wherein the planar probe is arranged for engagement in use with a subject's skin (As shown in Fig. 2A, The recitation following “is arranged” does not structurally differentiate the device from the prior art. See MPEP 2114 Sec. II) and wherein the integrated probe comprises a substrate having arranged thereon plural optical sources (Fig. 2B, ref 5a, paragraph [0145]).
Zilkie is silent regarding wherein the substrate having arranged thereon plural optical sources is a PCB.
However, Niemczuk teaches an optical probe for in vivo measurement (abstract, Fig. 3) including a PCB (ref 39, paragraph [0091]) having arranged thereon plural optical sources (ref 33, paragraph [0088]).
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 Zilkie with the teaching of Niemczuk by including wherein the substrate having arranged thereon plural optical sources is a PCB as Niemczuk recognizes that a PCB is a common substrate for light sources to be arranged for an optical measuring device.
Regarding claim 45, Zilkie teaches in which the plural optical sources are VCSELs
Regarding claim 50, Zilkie is silent regarding in which planar probe has a thickness between 0.5 and 10mm.
However, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this case, one would chose the claimed dimensions in order to make a compact device
Regarding claim 51, Zilkie is silent regarding in which planar probe has a thickness between 1 and 3mm.
However, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this case, one would chose the claimed dimensions in order to make a compact device
Regarding claim 52, Zilkie teaches illumination source optics (Fig. 3C, 3D, lens) for controlling a transmission of light from the optical sources (paragraphs [0063]-[0064], The recitation following “for controlling” does not structurally differentiate the device from the prior art. See MPEP 2114 Sec. II).
Regarding claim 53, Zilkie teaches in which the illumination source optics comprises microlenses (paragraph [0050]).
Regarding claim 54, Zilkie teaches light collection optics (paragraph [0211]).
Regarding claim 55, Zilkie teaches in which the light collection optics is selected from refractive optics, reflective optics, a mirror, a light blocking coating, a group of interconnected mirrors, an array of collection optics, or a combination of mirrors and collection optics, and filters (paragraphs [0015], [0050], [0051], [0133], [0211]).
Regarding claim 56, Zilkie teaches in which the light collection optics include one or more filters selected from the group consisting of a bandpass filter, a notch filter, a Rayleigh filter and a long-pass filter (paragraphs [0166], [0212], [0310], [0327]).
Regarding claim 57, Zilkie teaches in which the plural optical sources are arranged and controlled to support Raman spectroscopic techniques including one or more of stimulated Raman scattering (SRS), coherent anti-stokes Raman scattering (CARS), shift excitation Raman difference spectroscopy (SERDS) and swept source Raman (SSR) spectroscopy (paragraphs [0139], [0301], The recitation following “arranged and controlled to” does not structurally differentiate the device from the prior art. See MPEP 2114 Sec. II)
Regarding claim 58, Zilkie teaches a method for non-invasive in vivo measurement, by Raman spectroscopy, of analyte presence and/or concentration, in the skin of a subject, the method comprising:
using the integrated probe of claim 41 (supra) to detect and measure the spectrum of Raman scattered radiation from a sample in the skin of the subject (paragraphs [0176], [0287], [0310]); and
analysing the spectrum of the detected Raman scattered radiation to determine the presence and/or concentration of analyte in the skin of the subject (paragraphs [0172], [0187]).
Regarding claim 59, Zilkie teaches controlling vertical-cavity surface-emitting lasers to vary collection depth of the Raman scattered radiation (paragraphs [0150], [0174], [0176]).
Claims 46-49 are rejected under 35 U.S.C. 103 as being unpatentable over Zilkie and Niemczuk as applied to claims 32, 41, and 45 above, and further in view of Grubisic (US 2002/0041166 A1).
Regarding claim 46, Zilkie is silent regarding a slit plate having a slit.
However, Grubisic teaches a device for optical measurement (abstract, Fig. 6) including a slit plate having a slit (PCB 65 is effectively a slit plate and aperture 73 is a slit; paragraph [0065], ref 73, 65).
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 Zilkie with the teaching of Grubisic by including a slit plate having a slit in order to have an aperture for the light to travel through, while cutting down on ambient light.
Regarding claim 47, Zilkie is silent regarding in which the optical sources are arranged on the slit plate.
However, Grubisic teaches a device for optical measurement (abstract, Fig. 6) in which the optical sources are arranged on the slit plate (Figs 4-6, ref 10, paragraph [0064]).
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 Zilkie with the teaching of Grubisic by including the optical sources are arranged on the slit plate in order to shorten the light path from the source to the detector, allowing higher intensity to reach the sample and the detector.
Regarding claim 48, Zilkie is silent regarding in which the optical sources are arranged around the slit on the slit plate.
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 in which the optical sources are arranged around the slit on the slit plate, 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 arrange the sources around the window in order to have even light scattering from the sample into the spectrometer.
Regarding claim 49, Zilkie is silent regarding in which the dimensions of the slit are between 10 and 200 micrometres wide and between 800 and 1600 micrometres long.
However, it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In this case, one would chose the claimed dimensions in order to make a compact device
Claim 60 is rejected under 35 U.S.C. 103 as being unpatentable over Zilkie and Niemczuk as applied to claims 32, 41, 58, and 59 above, and further in view White et al. (US 2014/0171759 A1), hereinafter “White”.
Regarding claim 60, Zilkie is silent regarding executing an algorithm to determine the Raman spectrum in dependence on the respective positions of the radiation sources.
However, White teaches optical measurement (abstract) including executing an algorithm to determine the Raman spectrum in dependence on the respective positions of the radiation sources (Fig. 54, paragraphs [0369]-[0373]).
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 method of Zilkie with the teaching of White by including executing an algorithm to determine the Raman spectrum in dependence on the respective positions of the radiation sources in order to normalize to a given path length and then used to remove that signal from the measurements obtained from other channels White paragraph [0396].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chang (US 2021/0181019 A1) teaches a planar sensor and appears in combination with prior art of record to render obvious at least the independent claims.
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 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