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
Applicant’s election of Group I (claims 1-4 and 7-20) in the reply filed on 12/05/2025 is acknowledged. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse. MPEP 818.01(a). Applicant asserts that the claims as currently amended are all directed towards the invention of Group I because claim 21 has been amended to depend from claim 1. However, the claims of Group I (claims 1-4 and 7-20) and the claims of Group II (claims 21-24) lack unity of invention because even though the inventions of these groups require the technical feature of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Tickner in view of Segebade as discussed further below.
Claims 21-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention (Group II), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/05/2025.
Status of Claims
Claims 1-4 and 7-24 are pending in the application with claims 21-24 withdrawn.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.
This application has been transferred to a new examiner. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JINNEY KIL whose telephone number is (571) 272-3191. The examiner can normally be reached Mon - Thu 8:30 AM - 6:30 PM ET.
Claim Objections
Claims 2, 14, and 18 are objected to because of the following informalities:
Claim 2: “inactivation rate” should be amended to recite “in activation rate”
Claim 14: “a attenuation-factor” should be amended to recite “an attentuation-factor”
Claim 18: “and second reference element” should be amended to recite “and the second reference element”
Appropriate correction is required.
Analysis - 35 USC § 101
An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter”. 35 U.S.C. 101. However, the Supreme Court has long interpreted 35 U.S.C. 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Banklnt’l, 573 U.S. 208, 216(2014).
In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217—18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75—77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to”. See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk”).
Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219—20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594—95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192 (1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores” (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267—68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula”. Diehr, 450 U.S. at 176; see also id. at 192 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract ... is not accorded the protection of our patent laws, ... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment”. Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection”).
If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application”. Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]’”. Id. ((alteration in the original) quoting Mayo, 566 U.S. at 77). “[M]erely requiring] generic computer implementation fail[s] to transform that abstract idea into a patent-eligible invention”. Id.
The USPTO recently published revised guidance on the application of 35 U.S.C. 101: the USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 Guidance”). Under Step 2A of that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a practical application (see MPEP 2106.05(a)-(c), (e)-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Step 1 — Statutory Category
The claims are first evaluated to determine if they are directed towards a statutory category (i.e., a process, machine, manufacture, or composition of matter).
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
Step 2A of the 2019 Guidance is a two-prong inquiry. In Step 2A, Prong One, we evaluate whether the claim recites a judicial exception. For abstract ideas, Prong One represents a change as compared to prior guidance because we here determine whether the claim recites mathematical concepts, certain methods of organizing human activity, or mental processes.
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
If a claim recites a judicial exception, in Step 2A, Prong Two we next determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.
If the recited judicial exception is integrated into a practical application, the claim is not directed to the judicial exception. This evaluation requires an additional element or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. If the recited judicial exception is integrated into a practical application, the claim is not directed to the judicial exception.
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 “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., mere 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.
Claims 2-4, 7-13, and 19-20 specify the data gathered in the data gathering step. The claims do not impose a meaningful limit to the judicial exception as the claims merely recite the insignificant, pre-solution activity of data gathering. Claims 14-18 specify the “determining the concentration of each of the one or more target elements” step, reciting additional mathematical operations and/or mental processes. The claims do not impose a meaningful limit to the judicial exception as the claims merely recite another judicial exception of an abstract idea.
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
As noted above, for Step 2B of the analysis, we determine whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field.
The pertinent issue is, namely, whether the additional elements recited in the claim (i.e., the claim element in addition to the claim elements that recite an abstract idea) is sufficient to amount to significantly more than the abstract idea itself. This issue is explained by the Federal Circuit, as follows:
It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention “significantly more” than that ineligible concept. In Alice, the Supreme Court held that claims directed to a computer-implemented scheme for mitigating settlement risks claimed a patent-ineligible abstract idea. 134 S.Ct. at 2352, 2355—56. Some of the claims at issue covered computer systems configured to mitigate risks through various financial transactions. Id. After determining that those claims were directed to the abstract idea of intermediated settlement, the Court considered whether the recitation of a generic computer added “significantly more” to the claims. Id. at 2357. Critically, the Court did not consider whether it was well-understood, routine, and conventional to execute the claimed intermediated settlement method on a generic computer. Instead, the Court only assessed whether the claim limitations other than the invention’s use of the ineligible concept to which it was directed were well-understood, routine and conventional. Id. at 2359-60. BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (2018) (emphases added).
Apart from the limitations that recite an abstract idea, the only additional elements in claim 1 are the irradiating step, the detecting step, and the irradiated materials. As discussed above, these elements are mere insignificant extra-solution activities. Further, irradiating materials and detecting gamma-rays from irradiated materials are no more than well-understood, routine, and conventional activities previously known in the industry (see e.g., instant specification [0002]-[0003], references cited in the attached PTO-892).
As discussed above, claims 2-4, 7-13, and 19-20 are directed towards the insignificant, pre-solution activity of data gathering. Claims 14-18 are directed towards judicial exceptions. Claims 2-4 and 7-20 therefore merely recite further embellishments on the abstract idea, reciting additional mathematical operations or insignificant extra-solution activities that do not amount to anything that is significantly more than the abstract idea itself.
Accordingly, claims 1-4 and 7-20 fail to recite 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?: NO
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.
Claims 1-4 and 7-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. As shown in the above analysis, the claims are directed towards an abstract idea and lack an additional element that would amount to significantly more than the abstract idea itself. Therefore, the claims are not patent eligible.
Claim Rejections - 35 USC § 112(b)
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.
Claims 2-4, 9-10, and 12-18 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.
Claims 2 and 3 recite “wherein at least one of the reference elements exhibits a variation in activation rate over the pre-defined X-ray energy range”.
It is unclear if the “variation” is intending to refer to the same variation as one of the “variations in activation rate over a pre-defined X-ray end-point energy range” previously recited in parent claim 1 or a different variation. Claim 4, which recites “wherein at least one of the reference elements exhibits a variation in activation rate over the pre-defined X-ray end-point energy”, is similarly indefinite.
Further, there is insufficient antecedent basis for the phrase “the variation in [] activation rate of each of the one or more target elements”.
Perhaps claim 2 should be amended to recite “wherein the variation in activation rate over the pre-defined X-ray end-point energy range of at least one of the reference elements a variation in activation rate of each of the one or more target elements”.
Perhaps claim 3 should be similarly amended to recite “wherein the variation in activation rate over the pre-defined X-ray end-point energy range of at least one of the reference elements a variation in activation rate of each of the one or more target elements”.
Perhaps claim 4 should be similarly amended to recite “wherein the variation in activation rate over the pre-defined X-ray end-point energy range of at least one of the reference elements
Claim 9 recites “wherein the energies of gamma-rays emitted by the activated nuclei do not interfere with the measurement of gamma-rays emitted by the one or more target elements”.
Parent claim 1 previously recites “activated nuclei are produced in at least some of the one or more target elements” and “activated nuclei in the at least two reference elements”. It is unclear if the “activated nuclei” in claim 9 are intending to refer to the activated nuclei of the one or more target elements, the activated nuclei of the at least two reference elements, and/or different activated nuclei.
It is also unclear if “the measurement of gamma-rays emitted by the one or more target elements” is intending to refer to the previously recited “detecting deactivation gamma-rays from the irradiated sample and the irradiated reference material” or a different step.
Claim 10, which recites “wherein the energies of gamma-rays emitted by the activated nuclei do not interfere with the measurement of gamma-rays emitted by any other elements present in the sample”, is similarly indefinite.
Claim 12 recites “wherein the at least two reference elements that produce activated nuclei have a natural isotopic abundance of more than 90%”.
An “element” typically refers to a family of isotopes1. For example, carbon is an element having a variety of different isotopes (e.g., carbon-12, carbon-14, etc.). This appears to be consistent with the specification (e.g., “the element bromine”, “elements such as silver, copper and others”), which uses the term “element” to refer to chemical elements, rather than specific isotopes of an element. The “natural isotopic abundance” describes a relative percentage of a specific isotope of an element (e.g., the carbon isotope carbon-12 has a natural isotopic abundance of 98.89%)2. An element as a whole does not have a “natural abundance”. It is therefore unclear what is meant by an “element” having a specific “natural isotopic abundance”.
Additionally, parent claim 1 previously recites “simultaneously irradiating the sample and a reference material containing at least two reference elements ... to produce activated nuclei in the at least two reference elements”. Therefore, it does not appear to be the “at least two reference elements” that “produce” the activated nuclei.
Claim 13 recites, “wherein the at least two reference elements, if they occur in the sample, have a mass in the sample which is less than 10% of the mass of the respective reference element in the reference material”.
It is unclear if the claim is stating that each of the reference elements have a mass in the sample which is less than 10% of the mass of the respective reference element in the reference material, the combined mass of the at least two reference elements have a mass in the sample which is less than 10% of the mass of one of the reference elements in the reference material, or something else.
Perhaps the claim should be amended to recite “wherein the at least two reference elements, if they are present in the sample, each have a mass in the sample which is less than 10% of [[the]] a mass of the respective reference element in the reference material”.
Claim 14 recites “calculating the time-corrected activation rates of each of the one or more target elements and the at least two reference elements”.
Parent claim 1 previously refers to “variations in activation rate over a pre-defined X-ray end-point energy range” of the at least two reference elements. It is unclear the relationship between the “activation rates” recited in claim 14 and those recited in parent claim 1. Thus, the antecedent basis for the phrase “the time-corrected activation rates” is also unclear.
Claim 14 recites “correcting for attenuation of the incident X-rays and the gamma-rays in the sample by applying an attenuation factor to create a attenuation-factor corrected signal value”.
It is unclear what is being “correct[ed]” and to what the attenuation factor is “appl[ied]”.
Perhaps the claim should be amended to recite “the target element signal value to create an attenuation-factor corrected signal value in order to correct for attenuation of incident X-rays and gamma-rays in the sample”.
Claim 15 recites “wherein the attenuation factor is determined experimentally by measuring signal of the gamma-rays from samples of different masses containing known concentrations of the one or more target elements or by calculation using readily available gamma-ray attenuation coefficients”.
It is unclear if the step of “measuring signal of the gamma-rays from samples” is referring to the same step as the “detecting deactivation gamma-rays from the irradiated sample” previously recited in parent claim 1 or a different step.
It is also unclear if the “samples” are referring to or include the “sample” previously recited in parent claim 1 or different samples. If referring to different samples, the claim appears to be missing a step of, for example, irradiating these different samples in order to activate nuclei which emit gamma-rays for measuring.
Additionally, the term “readily available” is a relative term which renders the claim indefinite. The term 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 16 recites “wherein the normalisation constant is determined experimentally by comparing values of the attenuation-factor corrected signal value and the known mass of each of the one or more target elements in a plurality of samples”.
Parent claim 14 previously recites a singular “attenuation-factor corrected signal value”. There is therefore insufficient antecedent basis for the plural “values” recited in claim 16.
Further, there is insufficient antecedent basis for the phrase “the known mass”.
It is also unclear if the “plurality of samples” is referring to or includes the “sample” previously recited in parent claim 1, the “samples of different masses” previously recited in parent claim 15, or different samples.
Claim 17 recites “wherein there are two reference elements, and one target element, and the target element signal value is
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, where Rt, Rp, and Rs are the time-corrected activation rates of the target element, first reference element, and second reference element, respectively, and where f(Rs/Rp) is an experimentally determined function relating the ratio Rt/Rp to Rs/Rp”.
It is unclear the claim is intending to recite the “at least two reference elements” previously recited in parent claim 1 is two reference elements and the “one or more target elements” previously recited in parent claim 1 is one target element, or something else. It is further unclear if the “first reference element” and the “second reference element” are referring to the “two reference elements”.
Additionally, it is unclear the relationship between the features of claim 17 and the previously recited step of “determining a target element signal value” previously recited in parent claim 14. For example, it is unclear if either of “
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”, “the ratio Rt/Rp”, or “Rs/Rp” are the same as the “ratio” previously recited in parent claim 14. It is also unclear if “f(Rs/Rp) is an experimentally determined function” is the same as the “function based on the time-corrected activation rates of the reference elements” previously recited in parent claim 14.
Claim 18 is indefinite for the following reasons:
It is unclear the relationship between the steps and elements of the claim and the steps and elements recited in parent claim 1. For example, it is unclear if the “sample” and “reference material” in step (a) are referring to the same or different samples or reference materials as the “sample” and “reference material” previously recited in parent claim 1. This further renders unclear if claim 18 requires an additional step of “simultaneously irradiating a sample ... and a reference material” is intending to refer to the same step as step (i) in parent claim 1 of “simultaneously irradiating the sample and a reference material”. Similarly, it is unclear if the “irradiated sample” and the “irradiated reference material” in claim 18 are referring to the same or different samples or reference materials as the “irradiated sample” and “irradiated reference material” previously recited in parent claim 1, and, thus, the relationship between step (b) of claim 18 and step (ii) of parent claim 1. It is also unclear the relationship between step (c) of claim 18 and step (iii) of parent claim 1. Examiner notes, step (c) of claim 18 refers to “the at least two reference elements”, whereas step (a) recites “a reference material containing the first reference element and second reference element”.
The antecedent basis for the phrase “the activation rate” is also unclear. While parent claim 1 previously recites “variations in activation rate over a pre-defined X-ray end-point energy range” of the at least two reference elements and parent claim 14 previously recites “time-corrected activation rates of each of the one or more target elements and the at least two reference elements”, there does not appear to be any recitation of “the activation rate of the sample and the at least two reference elements”.
It is also unclear if the claim is intending to recite calculating the activation rate of each of the sample and the at least two reference elements, calculating a total, combined activation rate of the sample and the at least two reference elements, or something else.
Additionally, the phrase “a range large enough to encompass typical variation in end-point energy operation that is expected” is relative which renders the claim indefinite.
Any claim not explicitly addressed above is rejected because it is dependent on a rejected base claim.
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 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.
Claims 1-2, 7-13, and 19-20, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over WO Publication No. 2015/089580 (“Tickner”) in view of “The Relevance of Particle Flux Monitors In Accelerator-based Activation Analysis” (“Segebade”).
Regarding claim 1, Tickner (cited via Applicant-submitted IDS) (see FIG. 1) discloses a method to determine a concentration of one or more target elements (e.g., Au, Se, Er, Ir, Os, Pd, Pt, Rh, Ru, Cu, Zn, Pb, Sn, Ag, Ni) in a sample (155) (1:4-5, 4:21-28), the method comprising:
i. simultaneously irradiating the sample and a reference material (160) containing a reference element (see Table I) with Bremsstrahlung X-rays, such that activated nuclei are produced in at least some of the one or more target elements present in the sample, and to produce activated nuclei in the reference element (2:29-31, 8:16-17, 8:31-34, 14:1-8, 14:28-15:23);
ii. detecting deactivation gamma-rays from the irradiated sample and the irradiated reference material (2:32-33, 15:23-16:2);
iii. determining a number of detected deactivation gamma-rays from any of the one or more target elements present in the irradiated sample and the reference element (2:34-36);
iv. 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 reference element (3:1-4, 9:7-8, 18:7-12),
wherein the reference element is different from each of the one or more target elements (9:3-5).
Tickner appears to disclose the reference material comprises one reference element.
Segebade (newly cited) is similarly directed towards a method to determine a concentration (“cSm”) of a target element in a sample (“sample”, “Sm”) comprising simultaneously irradiating the sample and a reference material (“reference material”, “calibration material”, “Cal”) containing a reference element with Bremsstrahlung X-rays (p. 2: “photon activation analysis (IPAA) using bremsstrahlung produced by an electron linear accelerator”; p. 3: “the calibration and the reference material have to be exposed simultaneously”); and determining the concentration of the target element in the sample by correcting the number of detected deactivation gamma-rays from the target element present in the irradiated sample due to variances in the Bremsstrahlung X-rays based on the number of detected deactivation gamma-rays from the reference material (Equations 2-3). Segebade teaches the reference material comprises an additional reference element (“monitor element”, “I”; e.g., scandium, samarium) (p. 670: “The internal flux monitor element is a component of all items to be activated (sample(s), calibration material, reference material). Thus it undergoes the same analytical procedure as the analytes”, “Two elements have been proven to be optimal in many cases, namely scandium and samarium”), wherein correcting the number of detected deactivation gamma-rays from the target element is based on the number of detected deactivation gamma-rays from the reference element and the additional reference element (Equations 2-3, 9), wherein the additional reference element has a different variation in activation rate over a pre-defined X-ray end-point energy range from the reference element (e.g., by being a different element than the reference element) and is different from the target element (p. 670: “[The monitor element] must not be an analyte”, “Two elements have proven to be optimal in many cases, namely scandium and samarium”). Segebade further teaches the additional reference element provides the advantages of monitoring the activating flux and accounting for sources of elevated uncertainty of analytical results (p. 669: “the use of radiation monitors is the most efficient way to obtain analytical results with high quality in terms of accuracy and precision”; p. 670: “[The internal flux monitor element] spectral signal ... can be used for monitoring the activating flux”; p. 671: “using an internal monitor, many sources of elevated uncertainty of analytical results can be accounted for”). It would have therefore been obvious to a person having ordinary skill in the art before the effective filing date (“POSA”) to include an additional reference element in Tickner’s reference material, as taught by Segebade, for the benefits thereof. Thus, modification of Tickner in order to enhance measurement results, as suggested by Segebade, would have been obvious to a POSA.
Regarding claim 2, Tickner in view of Segebade teaches the method as claimed in claim 1. Tickner discloses at least one of the reference elements (e.g., bromine) exhibits a variation in activation rate over the pre-defined X-ray end-point energy range that differs by less than 3% compared to the variation inactivation rate of each of the one or more target elements (3:9-14, 16:28-32; see also instant specification, FIG. 3, [0083]).
Regarding claim 7, Tickner in view of Segebade teaches the method as claimed in claim 1. Tickner discloses one of the reference elements may be bromine (13:4-11) and Segebade teaches the other reference element may be samarium (p. 670: “Two elements have proven to be optimal in many cases, namely scandium and samarium”). The instant specification discloses the activated nuclei of bromine and samarium exhibit half-lives in the range of 1 second to 10 minutes (FIG. 2, [0074]). Thus, Tickner, modified to include the additional reference element as taught by Segebade, teaches the features of claim 7.
Regarding claim 8, Tickner in view of Segebade teaches the method as claimed in claim 1. Tickner discloses one of the reference elements may be bromine (13:4-11) and Segebade teaches the other reference element may be samarium (p. 670: “Two elements have proven to be optimal in many cases, namely scandium and samarium”). The instant specification discloses the activated nuclei of bromine and samarium emit one or more gamma-rays with an energy above 40 keV with a probability per decay of 1 % or more (FIG. 2, [0074]). Thus, Tickner, modified to include the additional reference element as taught by Segebade, teaches the features of claim 8.
Regarding claim 9, Tickner in view of Segebade teaches the method as claimed in claim 1. Tickner and Segebade disclose and teach the energies of gamma-rays emitted by the activated nuclei do not interfere with the measurement of gamma-rays emitted by the one or more target elements (Tickner, 13:4-11; Segebade, p. 670: “This signal must not interfere with others in the spectrum”). Thus, Tickner, modified to include the additional reference element as taught by Segebade, teaches the features of claim 9.
Regarding claim 10, Tickner in view of Segebade teaches the method as claimed in claim 9. Tickner and Segebade disclose and teach the energies of gamma-rays emitted by the activated nuclei do not interfere with the measurement of gamma-rays emitted by any other elements present in the sample (Tickner, 13:4-11; Segebade, p. 670: “This signal must not interfere with others in the spectrum”). Thus, Tickner, modified to include the additional reference element as taught by Segebade, teaches the features of claim 10.
Regarding claim 11, Tickner in view of Segebade teaches the method as claimed in claim 1. Tickner discloses the one or more target elements may be gold and one of the reference elements may be bromine (4:21-28, 13:4-11) and Segebade teaches the other reference element may be samarium (p. 670: “Two elements have proven to be optimal in many cases, namely scandium and samarium”). The instant specification discloses gold, bromine, and samarium have X-ray induced activation reactions with a threshold energy below 15 MeV (FIG. 2, [0074]). Thus, Tickner, modified to include the additional reference element as taught by Segebade, teaches the features of claim 11.
Regarding claim 12, Tickner in view of Segebade teaches the method as claimed in claim 1. Tickner discloses one of the reference elements may be bromine (13:4-11) and Segebade teaches the other reference element may be samarium (p. 670: “Two elements have proven to be optimal in many cases, namely scandium and samarium”). The elements of bromine3 and samarium4 both have naturally occurring isotopes. Thus, Tickner, modified to include the additional reference element as taught by Segebade, teaches the features of claim 12.
Regarding claim 13, Tickner in view of Segebade teaches the method as claimed in claim 1 and teaches the at least two reference elements, if they occur in the sample, have a mass in the sample which is less than 10% of the mass of the respective reference element in the reference material (Tickner, 4:1-5; Segebade, p. 670: “the additive monitoring element is present in the materials under study in negligible concentrations or not detectable at all”). Thus, Tickner, modified to include the additional reference element as taught by Segebade, teaches the features of claim 13.
Regarding claim 19, Tickner in view of Segebade teaches the method as claimed in claim 1. Tickner discloses the one or more target elements may be gold (4:1-5), which has an activation reaction threshold below 10 MeV (FIG. 4; see also, instant specification, FIG. 2, [0060], [0082]), and the at least two reference elements include bromine (13:4-11). The modified Tickner does not appear to disclose the at least two reference elements include terbium. However, it would have been obvious to a POSA to have a reference element including terbium since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice. See In re Leshin, 125 USPQ 416.
Regarding claim 20, Tickner in view of Segebade teaches the method as claimed in claim 1. Tickner discloses the one or more target elements may be copper (4:1-5), which has an activation reaction threshold between 10 MeV and 14 MeV (FIG. 4; see also, instant specification, FIG. 2, [0061], [0082], [0086]). The modified Tickner does not appear to disclose the at least two reference elements include terbium and one of germanium, palladium, or rubidium. However, it would have been obvious to a POSA to have the reference elements including terbium and one of germanium, palladium, or rubidium since it has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice. See In re Leshin, 125 USPQ 416.
The Applied References
For Applicant’s benefit, portions of the applied reference(s) have been cited (as examples) to aid in the review of the rejection(s). While every attempt has been made to be thorough and consistent within the rejection, it is noted that the prior art must be considered in its entirety by Applicant, including any disclosures that may teach away from the claims. See MPEP 2141.02(VI).
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Examiner Jinney Kil can be reached at (571) 272-3191, 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
1 https://www.energy.gov/science/doe-explainsisotopes
2 https://en.wikipedia.org/wiki/Natural_abundance
3 https://en.wikipedia.org/wiki/Bromine
4 https://en.wikipedia.org/wiki/Samarium