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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 30, 2026, has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1-11, claim 1 recites that for each image, using image analysis software Image J, the image is binarized to distinguish between (the thermosetting resin component and a curing agent component that may be contained as necessary). Applicants’ specification as originally filed does not appear to teach that when the image is binarized, the curing agent component may be contained as necessary. Applicants’ specification at page 20 appears to teach that the curing agent component is present. Therefore, the claimed limitation constitutes new matter.
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 1-11 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 claims 1-11, the totality of the verbiage is unclear and therefore, renders the claims indefinite. For example, claim 1 recites that “(3) for each image, using image analysis software Image J, the image is binarized to distinguish between (the thermosetting resin component and a curing agent component that may be contained as necessary) and the inorganic filler particles.” The recitation of “image analysis software Image J” renders the claim indefinite, as it is unclear if the image is only attainable by image analysis software Image J, and it is unclear what Image J necessarily entails.
Additionally, the portion of the sentence reciting “the image is binarized to distinguish between (the thermosetting resin component and a curing agent component that may be contained as necessary) and the inorganic filler particles” is unclear as the punctuation and sentence structure renders the claim indefinite.
Additionally, the claim further recites that “the magnification and threshold value of the scanning electron microscope are set so that the number of counted inorganic filler particles is 1000 or more and 1200 or less, one that the particles are in contact (connected) with each other to form one mass of particles is counted as one particle.” The claim does not require any amount of filler particles. Therefore, it is unclear if the number of particles counted is arbitrary or indicative of the actual number of filler particles present.
Additionally, the portion of the sentence “one that the particles are in contact (connected) with each other to form one mass of particles is counted as one particle” is unclear and indefinite as to what exactly is claimed.
Additionally, the claim further recites “(4) the number-average value of cross-sectional areas (unit: μm2) of the particles counted above (sum of cross-sectional areas of all particles in three analysis images/number of particles) was denoted as ‘a’, and the total cross-sectional area of all particles in the three analysis images was denoted as c; for each image, particles having a cross-sectional area 7 times or more of the a are extracted, and the total cross-sectional area (unit: μm2) of all particles having a cross-sectional area 7 times or more of the a was denoted as ‘b’.” The claim does not appear to require the particles being connected. It is unclear if connected particles are necessarily required by the claim. Note that Applicants’ specification recites that “the particles are usually connected particles” but does not require connected particles.
Additionally, the claim recites for each image, connected particles having a cross-sectional area 7 times or more “of the a” are extracted, and the total cross-sectional area of all particles having a cross-sectional area 7 times or more “of the a” is denoted as “b”, and a proportion of the total cross-sectional area “b” of each connected particle having a cross-section area 7 times or more “of the a” to the total cross-sectional area “c” of all particles is calculated. The claim appears to require three analysis images but only appears to require a calculation “for each image.” It is unclear of the Expression (1) is directed to a single image or the combination of images.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-7 and 9-11 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over USPN 8,847,467 to Chaggares.
Regarding claims 1-7 and 9-11, Chaggares teaches matching layers for an ultrasonic transducer stack having a matching layer comprising a matrix material loaded with a plurality of micron-sized and nano-sized particles (Chaggares, Abstract). Chaggares teaches that the matching layer can comprise a composite material (Id., column 4 lines 4-11), wherein the particles can comprise tungsten, gold, platinum, or a mixture thereof (Id., column 8 lines 50-55, column 19 lines 45-64). Chaggares teaches that the particles can be of varying dimension within the respective nano and micron size domains, such as about 5 µm and about 800 nm (Id., column 8 lines 35-49), having a density greater than about 4.0 g/cc (Id., column 10 lines 26-44). Chaggares teaches that the particles can be loaded in the matrix material in a ratio of about 5:1 and about 1:5 parts micron-sized particles to nano-sized particles (Id., column 9 lines 1-12). Chaggares teaches that the matrix material can comprise a polymer such as an epoxy (Id., column 10 lines 45-64). Chaggares teaches that the use of a mixture of nano-particles and larger particles allows for high density loaded powders with both high volumetric fractions of the loaded powder and excellent control over settling (Id., column 13 lines 27-40). Chaggares teaches that the acoustic impedance of the matching layer is controlled almost exclusively by the volumetric fraction of the heavy powder (Id., column 14 lines 22-30).
Regarding the claimed cross-sectional observation of the material and cross-sectional area of the particles satisfying Expression 1, as set forth above, it is unclear exactly what is claimed. However, Chaggares teaches a mixture of micron-sized and nano-sized particles metal powders having similar and overlapping domains and densities as claimed. Therefore, based on the totality of the teachings of Chaggares, a cross-sectional observation of the material would appear to result in the cross-sectional area of the particles satisfying Expression 1.
Alternatively, Chaggares teaches that the use of a mixture of nano-particles and larger particles allows for high density loaded powders with both high volumetric fractions of the loaded powder and excellent control over settling. Chaggares teaches that the acoustic impedance of the matching layer is controlled almost exclusively by the volumetric fraction of the heavy powder. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the matching layers of Chaggares, and adjusting and varying the domains and cross-sectional areas of the particles and amounts and density, such as within the claimed Expression and claimed range, motivated by the desire of forming conventional matching layers having the desired acoustic impedance suitable for the intended application.
Regarding claim 5, since Chaggares teaches a matching layer comprising a matrix material loaded with particles, it is reasonable for one of ordinary skill to expect that a content of the particles is within the claimed mass percentage.
Regarding claims 9-11, Chaggares teaches matching layers for an ultrasound transducer stack (Chaggares, Abstract). Additionally, a preamble is generally not accorded any patentable weight where it merely recites the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). Since Chaggares teaches a substantially similar structure and composition as claimed, the invention of Chaggares appears capable of the claimed use.
Claim 8 is rejected under 35 U.S.C. 103 as obvious over USPN 8,847,467 to Chaggares, as applied to claims 1-7 and 9-11 above, in view of WO 2019/088148 to Nakai, with US Pub. No. 2020/0253582 cited as the English equivalent.
Regarding claim 8, Chaggares does not appear to teach the inclusion of a curing agent. However, Nakai teaches a similar resin composition for an acoustic matching layer, containing a binder including a resin and surface-treated metal particles (Nakai, Abstract). Nakai teaches that the binder includes an epoxy resin and a curing agent (Id., paragraph 0033). Nakai teaches that the curing reaction of the epoxy composition may proceed over time even under mild conditions (Id., paragraph 0063).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the matching layers of Chaggares, and including a curing agent, as taught by Nakai, motivated by the desire of forming conventional matching layers such that the curing reaction of the epoxy composition may predictably proceed over time even under mild conditions.
Response to Arguments
Applicant’s arguments have been considered but are moot based on the new ground of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PETER Y CHOI/Primary Examiner, Art Unit 1786