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 remarks, filed 05/05/2025, with respect to the objection to the drawings have been fully considered. Applicant mistakenly filed the drawings as a part of the specification-not in English rather than as a separate document with the drawing’s classification. The Office has reclassified the indicated pages as the drawings; however, the drawings are still objected as they are, at least in part, in Chinese rather than English.
Applicant's arguments, filed 05/05/2025, with respect the rejections under 35 U.S.C. 112(b) have been fully considered but they are not persuasive. Regarding the claims 1-12 the applicant argues the rejection under 35 U.S.C. 112(b) is improper because:
A fixing member is an art recognized term and cites a variety of patent literature.
The term “fixing member” is definite based on the specification.
The Applicant searched the Mandarin-English dictionary and could not find a term more appropriate than “fixing member” and requests help.
The Examiner respectfully disagrees.
Regarding argument (1), mere usage of the term is not sufficient for establishing an art recognized term, the art must additionally agree on the structure of the term in order for the term to be definite. Looking at the evidence provided by the Applicant:
US 12287054 the fixing member 500 has defined structure in the specification (col. 10 ln. 12-13) as “ The fixing member 500 includes an assembly bolt 510 and a coupling part 520.”
US 12288488 the fixing member 131-2 has a defined structure in the specification (col. 6 ln 17-20) as “For example, the first fixing member 131-2 may include a space (e.g., hole) capable of receiving a protrusion part of the first bracket 131-1.”
US 12287928 the fixing member has a defined structure of several components as described in claims 1, 2, and 3 as a unique, non-standard, component of their invention.
US 12289851 the fixing member is defined in the specification as a screw bolt (col. 5 ln. 40-41).
US 12287317 the fixing member has a detailed definition in the specification (col. 6 ln. 34-47) this fixing member is also a unique component to the claimed invention.
US 12286292 the fixing member is tape (claim 2).
US 12193980 the fixing member is a unique, non-standard, component with a defined structure in the claims (claim 1).
US 12285577 the fixing member was subject to a 112(f) interpretation.
The evidence supplied by the Applicant demonstrates that a “fixing member” is not an art recognized term as the art disagrees on what a fixing member is, i.e. a bolt, a hole, tape, and is often used both as a nonce term and a generic term for unique components of an invention. The Applicants provided art demonstrates precisely why the “fixing member” is indefinite. The difference between the prior art and the matter at hand, is the prior art defined the structure of the fixing member in either the specification or the claims, not just the function.
Regarding argument (2), the specification does not define the structure of the fixing member, only the function. By Applicant’s own arguments the defined structure is defined by its function, these definitions only define what the fixing member does not what it is. This fails to define the structure of the fixing member.
Regarding argument (3), the Examiner recommends several options to resolve.
First, the Applicant can file an RCE to amend the specification and clearly define the structure of the various fixing members, then acting as their own lexicographer.
Second, based on figure 3 #8, the Examiner believes that “a flange” is an appropriate description of the first fixing member which would not add new subject matter. The second fixing member in fig. 4 # 15, the Examiner is unclear if the second fixing member is a flange, an O-ring, a bushing, or something else. The Examiner is unclear what the third fixing member in figure 8 # 16 and the fourth fixing member in figure 9 #18 is and has no recommendation. The third and fourth fixing member seems to have a unique structure, but may also be a flange.
Third, the Applicant can amend the claims such that all the fixing members invoke a 112(f) interpretation, i.e. reworded such that “a fixing member configured to [functional language].” The 112(f) interpretation would allow the figures alone to define the structure of the fixing member. Invoking a 112(f) would likely change the scope of the claims such that it would also require an RCE.
Applicant's arguments filed 02/24/2025 have been fully considered but they are not persuasive. Regarding the claims 1-12 the applicant argues the rejection under 35 U.S.C 102 and 35 U.S.C. 103 is improper over Shimono et al. JP 2008/293868 because the following amended subject matter which has been incorporated the independent claim transverses the claim 1 rejection:
1. "the shape and size of the second housing and the power input terminal being designed to match the first housing and the high-voltage power output terminal respectively”
2. "a first shielding ring, which is a metal shielding ring with a guiding member, surrounds the high-voltage power output terminal;” and
3. "the second connection unit being coated with a sufficient amount of silica gel and then inserted into the first connection unit; and by fastening the first fixing member and the second fixing member together, air between the first and second connection units is extruded, ensuring a removable connection between the high-voltage power supply and the X-ray tube".
The Examiner respectfully disagrees.
The Examiner acknowledges that the amended claims overcome the 35 U.S.C. 102 rejections; however, they fail to overcome a 35 U.S.C. 103 rejections.
Regarding the first amendment, change of shape and size has been obvious to one of ordinary skill in the art (MPEP 2144.04.IV.B). A change in size is insufficient to establish patentability over the prior art of record unless it changes the operation of the device in some unexpected way. Change of shape for modularity is an expected result and obvious motivation.
Regarding the second amendment, the amendment fails to define the structure of a guiding member, the specification is silent on the structure of the guiding member, and the guiding member is absent from the drawings. This amendment introduces an additional 112(b) rejection and an additional objection to the drawings. Additionally on the merits, in Shimono fig. 1 the center whole of the ring guides the ring around the cable passage 18b thereby acting as a guiding member.
Regarding the third amendment, silica gels are widely used in electrical connections and introduces no patentably distinct or novel material. Additionally, the amended claim language introduces a product an process in the same claim wherein the product, the connection device, and the use of the product, a user fastening the first and second connection units with sufficient silica gel, makes the claim indefinite (see MPEP 2173.05(p).
Therefore, the rejections are updated to 35 U.S.C. 103 rejections to reflect these changes.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the guiding member must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to because the drawings are, at least in part, in Chinese rather than English. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-9 and 12 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.
Regarding claim 1, where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The terms “fixing member” and “guiding member” in claim 1 is not a recognized term in the art (see Response to Arguments) and the terms are indefinite because the specification does not clearly define the terms.
For the purpose of examination, any component which attaches two or more other components in any manner is being interpreted as being a “fixing member” and any component which in any manner guides the ring will be interpreted as a “guiding member.”
Regarding claim 1, the limitation “the second connection unit being coated with a sufficient amount of silica gel and then inserted into the first connection unit; and by fastening the first fixing member and the second fixing member together, air between the first and second connection units is extruded, ensuring a removable connection between the high-voltage power supply and the X-ray tube” is indefinite because it is a product and process in the same claim (see MPEP 2173.05(p)) This limitation is unclear when infringement begins, is it when one creates a system that allows the user to fasten the fixing members together? Is it when the connection begins? Or is it only when all the air is extruded? Does a improper connection which still contains some air infringe? These ambiguities render the claim indefinite.
For the purpose of examination, only the product will be given patentable weight, “the second connection unit being coated with a sufficient amount of silica gel,” the use of the product “and then inserted into the first connection unit; and by fastening the first fixing member and the second fixing member together, air between the first and second connection units is extruded, ensuring a removable connection between the high-voltage power supply and the X-ray tube” will be ignored.
Claims 2-9 and 12 are dependent on claim 1 and are rejected for the same reason.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Shimono et al. JP 2008/293868.
Regarding claim 1, Shimono teaches a connection device of a high-voltage power supply and an X-ray tube (abstract), wherein the connection device comprises a first connection unit (figs. 1-5; pg. 4 para. 3) and a second connection unit (fig. 7-8; pg. 7 para. 2), the first connection unit for being configured to connect a high-voltage power output terminal of the high-voltage power supply (fig. 1, 5 #12; pg. 4 para 4) and the second connection unit being configured to connect a cathode of the X-ray tube (fig. 7 #35; pg. 7 para. 3) the first connection unit comprising a first housing (fig. 1 #11), one end of the first housing being provided with the high-voltage power output terminal (fig. 1 #12 is inserted in the bottom of #11), the other end of the first housing being mated to the outer side of a first fixing member of the high-voltage power supply housing (fig. 1 #17; pg. 7 para. 4); the second connection unit (fig. 7) comprising a second housing (fig. 7 #31), one end of the second housing being provided with a power input terminal (fig. 7 #37; pg. 7 para. 3), the other end of the second housing being fixed to a second fixing member of an X-ray tube housing (fig. 7 #32; pg. 7 para. 4); a first shielding ring (fig. 1 #18; pg. 5 para. 2), which is a metal shielding ring with a guiding member (fig. 1 the center whole of the ring guides the ring around the cable passage 18b thereby acting as a guiding member), surrounds the high-voltage power output terminal (fig. 1 #18; pg. 5 para. 2); the space between the first housing and the high-voltage power supply housing, and the space between the second housing and an X-ray tube insert being filled with an insulating filler (fig. 1 #13; pg. 4 para. 5; pg 7 para. 4 “the insulating container 31 a is brought into contact with the flat surface 21 portion of the flat surface 21 through, for example, silicon resin or silicon rubber”).
Shimono does not explicitly disclose the shape and size of the second housing and the power input terminal being designed to match the first housing and the high-voltage power output terminal respectively, however, it has been judiciarily determined that changing in shapes and size has been obvious to one of ordinary skill in the art (MPEP 2144.04.IV.B). A change in shape is insufficient to establish patentability over the prior art of record unless it changes the operation of the device in some unexpected way. Modularity is an expected outcome of change in shape and size and an obvious motivation for one of ordinary skill in the art prior to the filing date to change the shape and size, so the change of shape is not of patentable significance (see Response to Arguments).
Shimono also does not explicitly disclose the second connection unit being coated with a sufficient amount of silica gel (see Response to Arguments and Claim Rejections - 35 USC § 112). However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to coat the second connection unit with silica gel since it was commonly known in the art that silica gel acts as a dielectric material in an electrical connection for the purpose of preventing voltage hysteresis. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the second connection unit being coated with a sufficient amount of silica gel in the connection device of Shimono for the purpose of preventing voltage hysteresis.
Regarding claim 2, Shimono teaches wherein the X-ray tube is placed in an internal cavity of the second connection unit (fig. 7; pg. 7 para. 3-4 the x-ray tube is placed, at least in part, inside the cavity of the second connection unit).
Regarding claim 9, Shimono teaches wherein a second shielding ring (fig. 7 #37; pg. 7 para. 3), which is a metal shielding ring with a guiding member (the housing #31 guides the ring #37), surrounds the power input terminals (fig. 7 #37; pg. 7 para. 3).
Regarding claim 3, Shimono does not specifically disclose “the first connection unit comprises a third fixing member embedded in the high-voltage power supply housing, and the third fixing member is provided with a plurality of high-voltage power output terminals.” However, Shimono does disclose a fixing member provided with a high-voltage power terminal (fig. 1 #16) and it has been judiciarily determined that duplication of parts has been obvious to one of ordinary skill in the art (MPEP 2144.04.IV.B). Duplication of parts is insufficient to establish patentability over the prior art of record unless it changes the operation of the device in some unexpected way. Since this device appears to operate in a similar manner to the prior art device, the duplication of parts is not of patentable significance.
Additionally, Shimono discloses the third fixing member (fig. 1 #16) is embedded in the high-voltage power supply housing (fig. 1 #11), a first insulating filler (fig. 1 #13) is filled among the third fixing member (fig. 1 #16), a first fixing member of the high-voltage power supply housing (fig. 1 #15) and the high-voltage power supply housing (fig. 1 #11); and an outer end surface of the first insulating filler flushes with the outer end surface of the first fixing member (fig. 1 #13 is flush with #15).
Regarding claim 4, Shimono does not specifically disclose “wherein the second connection unit comprises a fourth fixing member embedded in the X-ray source housing, and the fourth fixing member is provided with a plurality of power input terminals.” However, Shimono does disclose a fixing member embedded in the X-ray source housing provided with a power input terminals (fig. 7 #37; pg. 7 para. 3) and it has been judiciarily determined that duplication of parts has been obvious to one of ordinary skill in the art (MPEP 2144.04.IV.B). Duplication of parts is insufficient to establish patentability over the prior art of record unless it changes the operation of the device in some unexpected way. Since this device appears to operate in a similar manner to the prior art device, the duplication of parts is not of patentable significance.
Additionally, although Shimono does not specifically disclose “a second insulating filler fills among the fourth fixing member, the second fixing member of the X-ray source housing and the X-ray source housing, and an outer end surface of the second insulating filler flushes with an outer end surface of the second fixing member of the X-ray source housing” Shimono does disclose, a first insulating filler (fig. 1 #13) is filled among the third fixing member (fig. 1 #16), a first fixing member of the high-voltage power supply housing (fig. 1 #15) and the high-voltage power supply housing (fig. 1 #11); and an outer end surface of the first insulating filler flushes with the outer end surface of the first fixing member (fig. 1 #13 is flush with #15). One of ordinary skill in the art is also one of ordinary creativity and not a mindless automaton, as such it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a second insulating filler fills among the fourth fixing member, the second fixing member of the X-ray source housing and the X-ray source housing, and an outer end surface of the second insulating filler flushes with an outer end surface of the second fixing member of the X-ray source housing as taught by the first connection unit of Shimono.
Regarding claim 5, Shimono does not specifically disclose “the first connection unit comprises a third fixing member embedded in the high-voltage power supply housing, and the third fixing member is provided with a plurality of high-voltage power output terminals.” However, Shimono does disclose a fixing member provided with a high-voltage power terminal (fig. 1 #16) and it has been judiciarily determined that duplication of parts has been obvious to one of ordinary skill in the art (MPEP 2144.04.IV.B). Duplication of parts is insufficient to establish patentability over the prior art of record unless it changes the operation of the device in some unexpected way. Since this device appears to operate in a similar manner to the prior art device, the duplication of parts is not of patentable significance.
Additionally, Shimono discloses the third fixing member (fig. 1 #16) is embedded in the high-voltage power supply housing (fig. 1 #11), a first insulating filler (fig. 1 #13) is filled among the third fixing member (fig. 1 #16), a first fixing member of the high-voltage power supply housing (fig. 1 #15) and the high-voltage power supply housing (fig. 1 #11); and an outer end surface of the first insulating filler extends a preset distance outwardly from an end surface of the first fixing member (fig. 1 #13 extends outwardly from #15 towards the preset distance defined by the housing 11).
Regarding claim 6, Shimono does not specifically disclose “wherein the second connection unit comprises a fourth fixing member embedded in the X-ray source housing, and the fourth fixing member is provided with a plurality of power input terminals.” However, Shimono does disclose a fixing member embedded in the X-ray source housing provided with a power input terminals (fig. 7 #37; pg. 7 para. 3) and it has been judiciarily determined that duplication of parts has been obvious to one of ordinary skill in the art (MPEP 2144.04.IV.B). Duplication of parts is insufficient to establish patentability over the prior art of record unless it changes the operation of the device in some unexpected way. Since this device appears to operate in a similar manner to the prior art device, the duplication of parts is not of patentable significance.
Additionally, although Shimono does not specifically disclose “a second insulating filler fills among the fourth fixing member, the second fixing member of the X-ray source housing and the X-ray source housing, and an outer end surface of the second insulating filler extends inside the second fixing member of the X-ray source housing, and extend a preset distance from an outer end surface of the second fixing member,” Shimono does disclose the third fixing member (fig. 1 #16) is embedded in the high-voltage power supply housing (fig. 1 #11), a first insulating filler (fig. 1 #13) is filled among the third fixing member (fig. 1 #16), a first fixing member of the high-voltage power supply housing (fig. 1 #15) and the high-voltage power supply housing (fig. 1 #11); and an outer end surface of the first insulating filler extends a preset distance outwardly from an end surface of the first fixing member (fig. 1 #13 extends outwardly from #15 towards the preset distance defined by the housing 11). One of ordinary skill in the art is also one of ordinary creativity and not a mindless automaton, as such it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a second insulating filler fills among the fourth fixing member, the second fixing member of the X-ray source housing and the X-ray source housing, and an outer end surface of the second insulating filler extends inside the second fixing member of the X-ray source housing, and extend a preset distance from an outer end surface of the second fixing member housing as taught by the first connection unit of Shimono.
Regarding claim 7, Shimono does not specifically disclose “the first connection unit comprises a third fixing member embedded in the high-voltage power supply housing, and the third fixing member is provided with a plurality of high-voltage power output terminals.” However, Shimono does disclose a fixing member provided with a high-voltage power terminal (fig. 1 #16) and it has been judiciarily determined that duplication of parts has been obvious to one of ordinary skill in the art (MPEP 2144.04.IV.B). Duplication of parts is insufficient to establish patentability over the prior art of record unless it changes the operation of the device in some unexpected way. Since this device appears to operate in a similar manner to the prior art device, the duplication of parts is not of patentable significance.
Additionally, Shimono does teach the third fixing member (fig. 1 #16) is embedded in the high-voltage power supply housing (fig. 1 #11), a first insulating filler (fig. 1 #13) is filled among the third fixing member (fig. 1 #16), a first fixing member of the high-voltage power supply housing (fig. 1 #15) and the high-voltage power supply housing (fig. 1 #11), the outer end surface of the first insulating filler extends inside an end surface of the first fixing member (fig. 1 #13 extends inside the inner end surface of #15); and the outer end surface of the first insulating filler extends a preset distance from the outer end surface of the first fixing member (fig. 1 #13 extends outwardly from #15 towards the preset distance defined by the housing 11).
Regarding claim 8, Shimono does not specifically disclose “wherein the second connection unit comprises a fourth fixing member embedded in the X-ray source housing, and the fourth fixing member is provided with a plurality of power input terminals.” However, Shimono does disclose a fixing member embedded in the X-ray source housing provided with a power input terminals (fig. 7 #37; pg. 7 para. 3) and it has been judiciarily determined that duplication of parts has been obvious to one of ordinary skill in the art (MPEP 2144.04.IV.B). Duplication of parts is insufficient to establish patentability over the prior art of record unless it changes the operation of the device in some unexpected way. Since this device appears to operate in a similar manner to the prior art device, the duplication of parts is not of patentable significance.
Additionally, although Shimono does not specifically disclose “the fourth fixing member is embedded in the X-ray source housing, a second insulating filler fills among the fourth fixing member, the second fixing member of the X-ray source housing and the X-ray source housing, and an outer end surface of the second insulating filler extends a preset distance outwardly from an end surface of the second fixing member,” Shimono does disclose the third fixing member (fig. 1 #16) is embedded in the high-voltage power supply housing (fig. 1 #11), a first insulating filler (fig. 1 #13) is filled among the third fixing member (fig. 1 #16), a first fixing member of the high-voltage power supply housing (fig. 1 #15) and the high-voltage power supply housing (fig. 1 #11); and an outer end surface of the first insulating filler extends a preset distance outwardly from an end surface of the first fixing member (fig. 1 #13 extends outwardly from #15 towards the preset distance defined by the housing 11). One of ordinary skill in the art is also one of ordinary creativity and not a mindless automaton, as such it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the fourth fixing member is embedded in the X-ray source housing, a second insulating filler fills among the fourth fixing member, the second fixing member of the X-ray source housing and the X-ray source housing, and an outer end surface of the second insulating filler extends a preset distance outwardly from an end surface of the second fixing member as taught by the first connection unit of Shimono.
Regarding claim 12, Shimono teaches wherein the high-voltage power supply and the X-ray tube are detachably connected together with the connection device of the high-voltage power supply and the X-ray tube (pg. 7 para. 4).
Conclusion
THIS ACTION IS MADE FINAL. 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 Richard Toohey whose telephone number is (703)756-5818. The examiner can normally be reached Mon-Fri: 7:30am – 5pm.
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/RICHARD O TOOHEY/Examiner, Art Unit 2884
/EDWIN C GUNBERG/ Primary Examiner, Art Unit 2884