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 .
Status of Claims
A reply was filed on 06/11/2026. The amendments to the claims have been entered. Claims 1-4 and 7-24 are pending in the application with claims 21-24 withdrawn. Claims 1-4 and 7-20 are examined herein.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Claim 1 is objected to over the following informalities. Appropriate correction is required.
“detecting using a gamma-ray detection system deactivation gamma-rays” should be amended to recite “detecting, using a gamma-ray detection system, deactivation gamma-rays”
“determining using a computation apparatus a number” should be amended to recite “determining, using a computation apparatus, a number”
“determining using a computation apparatus the concentration” should be amended to recite “determining, using a computation apparatus, the concentration”
Claim Rejections - 35 USC § 112(b)
Claims 1-4 and 7-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 is indefinite because it is unclear if the “computation apparatus” recited in item iii is the same as the “computation apparatus” recited in item iv. Examiner notes, the figures appear to show only a single computation apparatus (113) and the specification provides support for a single “computation apparatus” determining the number of detected deactivation gamma-rays and determining the concentration of elements ([0065]). Perhaps the claim should be amended such that the phrase “a computation apparatus” in item iv recites “[[a]] the computation apparatus.”
Claim 9 recites “wherein the energies of deactivation gamma-rays emitted by the activated nuclei of the at least two reference elements do not interfere with the determining the number of detected deactivation gamma-rays from the one or more target elements.” It is unclear what feature of the “energies of deactivation gamma-rays” enables the “energies” to not interfere with the “determining the number of detected deactivation gamma-rays from the one or more target elements.” Perhaps the claim should be amended to recite “wherein the at least two reference elements are selected such that the energies of the deactivation gamma-rays emitted by
Claim 10 recites “wherein the energies of the deactivation gamma-rays emitted by the activated nuclei of the at least two reference elements do not interfere with (i) the determining the number of detected deactivation gamma-rays from the one or more target elements, and (ii) a measurement of deactivation gamma-rays emitted by any elements other than the one or more target elements present in the sample.” As best understood by Examiner, item (i) appears to repeat the features of parent claim 9. It is unclear if the claim is intending to positively recite a step of “measur[ing] deactivation gamma-rays emitted by any elements other than the one or more target elements present in the sample.”
Claim 15 recites “wherein the attenuation factor is determined experimentally (i) by irradiating a plurality of test samples ... or (ii) by calculation using tabulated gamma-ray attenuation coefficients.” Parent claim 14 previously recites “calculating an attenuation factor.” It is unclear if the “experimental[]” determination in claim 15 is in addition to the “calculating” in parent claim 14. It is further unclear the relationship between the “calculating” in item (ii) and the “calculating” previously recited in parent claim 14. Additionally, it is unclear how the “calculating” in item (ii) constitutes an “experimental[]” determination. Perhaps claim 14 should be amended to recite “determining an attenuation factor” and claim 15 should be amended to recite “wherein the determining the attenuation factor comprises (i) irradiating a plurality of test samples of different masses containing known concentrations of the one or more target elements, detecting deactivation gamma-rays from each of the irradiated test samples, determining a number of detected deactivation gamma-rays from the one or more target elements present in the irradiated test samples or (ii) calculating the attenuation factor using tabulated gamma-ray attenuation coefficients.”
Claim 16 recites “wherein the normalisation constant is determined experimentally by comparing a value associated with the attenuation-corrected target element signal value from each of the one or more target elements present in each of the irradiated test samples with the known concentrations of each of the one or more target elements in the test samples.” Claim 16 would therefore appear to require determining the attenuation factor by item (i) in parent claim 15. However, parent claim 15 allows for the attenuation factor to be determined either by item (i) or by item (ii). Thus, there is insufficient antecedent basis for the features of the “irradiated test samples” in the claim. It is further unclear how “comparing a value” constitutes an “experimental[]” determination. Additionally, there is no prior recitation of creating an “attenuation-corrected target element signal value” for the “irradiated test samples” and it is unclear what is meant by “a value associated with the attenuation-corrected target element signal value.” It is therefore unclear if the claim is intending to require the steps recited in item (i) in parent claim 15 and further carrying out the steps recited in parent claim 14 for the “irradiated test samples” to create an “attenuation-corrected target element signal value” for the “irradiated test samples.”
Claim 17 is indefinite because it is unclear the relationship between the “calculat[ing]” step and the “determining” step previously recited in parent claim 14. It is further unclear the relationship between “the ratio Rt/Rp” and “Rs/Rp” and the “ratio of the time-corrected activation rate of each of the one or more target elements” previously recited in parent claim 14.
Claim 18 is indefinite because it is unclear the relationship between the “time-corrected activation rate of ... the first reference element and the second reference element” and the “time-corrected activation rates of each of the one or more target elements and the at least two reference elements” previously recited in parent claim 14. It is further unclear if the “repeating steps (a) to (d) over a range of different end-point energies” is referring to irradiating the first test sample and the reference element at different “particular end-point energ[ies].” It is unclear which “end-point energ[ies]” are referring to the same energies. It is further unclear the relationship between the “range of different end-point energies” and the “pre-defined X-ray end-point energy range” previously recited in parent claim 1. Additionally, it is unclear what is encompassed by “routine operation” as the term “routine” would appear to be a relative term. It is further unclear the relationship between the “source of the Bremsstrahlung X-rays” and the “X-ray source,” “electron accelerator,” and “Bremsstrahlung target” previously recited in parent claim 1. Further, it is unclear how steps (a)-(e) relate to experimentally deriving the function f. The claim therefore appears to be incomplete for omitting essential steps, such omission amounting to a gap between the steps.
Any claim not explicitly addressed above is rejected because it is dependent on a rejected base claim.
Allowable Subject Matter
Claims 1-4 and 7-20 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action. The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not reasonably teach determining a concentration of one or more target elements using a reference material containing at least two reference elements, wherein the at least two reference elements have variations in activation rate over a pre-defined X-ray end-point energy range which differ from one another and wherein the at least two reference elements are different from each of the one or more target elements as recited in claim 1. Examiner finds Applicant’s arguments dated 06/11/2026 and Declaration Under 37 CFR 1.132 dated 06/17/2026 (herein referred to as the “Tickner Declaration”) to be persuasive in overcoming the 35 U.S.C. 103 rejections over Tickner (previously cited) and Segebade (previously cited). Specifically, as stated in paragraphs 6-8 of the Tickner Declaration, Segebade does not reasonably teach two reference elements which are different from each of the one or more target elements. Rather, Segebade’s “comparator” (mapped to one of the claimed “at least two reference elements”) is the same as the one or more target elements.
Response to Arguments
Applicant’s amendments to the claims overcome the prior claim objections and some, but not all, of the prior 35 U.S.C. 112(b) rejections and have created new issues as discussed above.
The prior 35 U.S.C. 101 rejections are withdrawn in view of the Tickner Declaration and the below analysis:
Step 1 — Statutory Category
Claim 1 recites a series of steps, and, therefore, is directed towards a process.
Step 1 – is the claim to a process, machine, manufacture, or composition of matter?: YES
Step 2A, Prong One — Recitation of Judicial Exception
It is determined that claim 1 is directed to an abstract idea, and, particularly, to “[a] method to determine a concentration of one or more target elements in a sample,” the function of which is accomplished through a series of mathematical operations performed by a generic computer or mental processes. Specifically, claim 1 recites the method is accomplished by “determining .... a number of detected deactivation gamma-rays” and “determining ... the concentration of each of the one or more target elements in the sample comprising correcting the number of detected deactivation gamma-rays from any of the one or more target elements present in the irradiated sample due to variances in the Bremsstrahlung X-rays based on the number of detected deactivation gamma-rays from the at least two reference elements.” The method of claim 1 therefore relies on analyzing and manipulating data.
It is determined that “determining” limitations in claim 1 recite mathematical relationships and mathematical calculations. Under the 2019 Guidance, these mathematical formulas, mathematical relationships, and mathematical calculations fall within the “mathematical concepts” groupings. Furthermore, these limitations, as drafted, are processes that, under the broadest reasonable interpretation, cover performance of the limitations in the human mind. Thus, claim 1 also recites mental processes, which is a second one of the groupings of abstract ideas set forth in the 2019 Guidance.
Therefore claim 1 recites an abstract idea and we proceed to Step 2A, Prong Two to determine whether the claim is “directed to” the judicial exception.
Step 2A, Prong One – does the claim recite an abstract idea, law of nature, or natural phenomenon?: YES
Step 2A, Prong Two — Practical Application
Here, apart from “determining” steps, the only additional elements that are recited in claim 1 are the “simultaneously irradiating the sample and a reference material” and “detecting deactivation gamma-rays” steps and the features of “an X-ray source comprising an electron accelerator and a Bremsstrahlung target,” “a gamma-ray detection system,” “a computation apparatus,” “the at least two reference elements have variations in activation rate over a pre-defined X-ray end-point energy range which differ from one another,” and “the at least two reference elements are different from each of the one or more target elements.” These additional elements recite insignificant pre-solution activity, i.e., data gathering. As such, these features are insignificant extra-solution activity and do not integrate the judicial exception into a practical application of the exception. Further, the additional elements of the “X-ray source” and “gamma-ray detection system” do not amount to the application of the judicial exception to a particular machine. The “X-ray source” and “gamma-ray detection system” are generic and used in their ordinary capacity. They only contribute nominally to the execution of the claimed method and are merely directed towards a data gathering step/field of use. The additional element of the computer structure (“computation apparatus”) is mere instruction to implement an abstract idea on a computer. Using a computer to perform generic computer functions does not automatically overcome an eligibility rejection. Furthermore, the claim does no more than require generic, purely conventional computer elements. This feature therefore also does not integrate the judicial exception into a practical application of the exception.
Therefore, the additional elements do not integrate the judicial exception into a practical application.
Step 2A, Prong Two – does the claim recite additional elements that integrate the judicial exception into a practical application?: NO
Step 2B — Inventive Concept
Apart from the limitations that recite an abstract idea, the additional elements in claim 1 are the “irradiating” and “detecting” steps and the irradiated materials, “X-ray source,” “gamma-ray detection system,” and “computation apparatus.” When evaluated as an ordered combination of elements, it is determined that the additional elements are more than well-understood, routine, conventional activity. The claim as a whole amounts to significantly more than the judicial exception because the claim requires determining a concentration of a target element using at least two reference elements which have variations in activation rate which differ from one another and which are different from the target element. By contrast, conventional gamma-activation analysis processes utilize either a single reference element which is different from the target element (see Tickner) or multiple reference elements, at least one of which is the same as the target element (see Segebade).
Accordingly, claim 1 recites an inventive concept that transforms the claim into a patent-eligible application of the abstract idea.
Step 2B – does the claim recite additional elements that amount to significantly more than the judicial exception?: YES
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. Prosecution on the merits is closed. 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 extension fee 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 date of this final action.
RCE Eligibility
Since prosecution is closed, this application is now eligible for a request for continued examination (RCE) under 37 CFR 1.114. Filing an RCE helps to ensure entry of an amendment to the claims, specification, and/or drawings.
Interview Information
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.
Contact Information
Examiner Jinney Kil can be reached at (571) 270-5217, on Monday-Thursday from 8:30AM-6:30PM ET. Supervisor Jack Keith (SPE) can be reached at (571) 272-6878.
/JINNEY KIL/Examiner, Art Unit 3646
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