DETAILED ACTION
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Note with respect to limitations invoking 112(f), only an irradiation unit has been amended to provide sufficient structure to perform the claimed function. Therefore, the interpretation under 112(f) stands for certain limitations discussed herein below.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a first shielding member” in claims 1 and 11 (material that shields particle beam [0039]).
“a second shielding member” in claims 1 and 11. (material that shields particle beam ([0039])).
“a support member supporting that is a single member configured to support both the first and second shielding member” in claim 3 (a material having a groove ([0040]-[0041]))
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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.
Claim 1-7 and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nonaka et al. (USPN 6,080,992) (submitted with non-Final rejection of 02 March 2026).
Regarding claim 1, Nonaka et al. teach a particle beam irradiation apparatus (fig. 2) comprising:
an accelerator (col. 5, lines 13-17 teach a proton beam, wherein the proton beam is accelerated via an accelerator, see col. 1, lines 31-36) configured to accelerate a particle so as to generate a particle beam (col. 1, lines 31-36);
an irradiation unit (120) including an electromagnet (40 is an electromagnet) and configured to irradiate an irradiation target with the particle beam (inherent to an irradiator);
a transport path provided between the accelerator and the irradiation unit and provided so as to be capable of transporting the particle beam (inherent to irradiate target with protons); and
a collimator (34 better seen in figure 3) device including
a first shielding member (34a) provided in the transport path (as seen in figures 1-3) configured to shield the particle beam (inherent to collimate the beam), and including a first opening allowing the particle beam to pass in an advancing direction of the particle beam (inherent to pass beam to 34b-34c, see also fi. 7 showing apertures in each of 34a-34c),
a second shielding member (34c) provided in the transport path (as seen in figure 3), shielding configured to shield the particle beam (inherent to a collimator), and including a second opening allowing the particle beam to pass in the advancing direction of the particle beam (pass through collimator 34c, aperture in 34c seen in figure 7), and
a support member (frame 72) that is a single member (as seen in figure 3) configured to support both the first shielding member and the second shielding member (fig. 3, 72 supports both 34a and 34c),
wherein the second shielding member is spaced from the first shielding member to a downstream side in the advancing direction of the particle beam (34c is spaced downstream in an advancing direction of the particle beam).
Regarding claim 2, Nonaka teaches a degrader (fig. 2, 26) provided on the transport path and attenuating the particle beam (inherent to a degrader), wherein the collimator device is provided on a downstream side of the degrader in the advancing direction of the particle beam (34 is downstream 26 as seen in figure 2).
Regarding claim 3, Nonaka teaches wherein the support member includes a first support surface supporting the first shielding member (73a supporting 34a) and a second support surface supporting the second shielding member (groove 73a associated and supporting 34c), and the first support surface and the second support surface are parallel to each other (as seen in figure 3).
Regarding claim 4, Nonaka teaches the first support surface and the second support surface are machined surfaces formed by drilling in the same direction perpendicular to the advancing direction of the particle beam (product by process see MPEP 2113).
Regarding claim 5, Nonaka teaches wherein the support member supports at least one of the first shielding member and the second shielding member from two directions perpendicular to the advancing direction of the particle beam (as seen in figure 3 grooves 73a support the first and second member from two directions perpendicular to the direction of the particle beam (i.e. in the plane of the page), via additional pushers 75 in figure 3).
Regarding claim 6, Nonaka teaches wherein the support member includes a particle beam passage groove portion forming a passage path for the particle beam so as not to interfere with the particle beam (between grooves 73a as seen in figure 3).
Regarding claim 7, Nonaka teaches wherein the particle beam is incident into the first opening of the first shielding member from an upstream side in the advancing direction of the particle beam (particle beam through opening in collimator 34a), passes through the particle beam passage groove portion of the support member (region where 34b is positioned), enters the second opening of the second shielding member (opening in 34c), and exits from a downstream end portion of the second opening in the advancing direction of the particle beam (exits opening in 34c).
Claim 11 is commensurate in scope and taught as discussed above in claim 1.
Regarding claim 12, Nonaka teaches wherein the first support surface is formed at one end portion of the support member, and the second support surface is formed at the other end portion of the support member (grooves 73a supporting 34a and 34c respectively).
Regarding claim 13, Nonaka teaches wherein the support member includes a first support surface supporting the first shielding member and a second support surface supporting the second shielding member, and the first support surface and the second support surface are parallel to each other (see claim 3 above).
Regarding claim 14, Nonaka teaches wherein the first support surface is formed at one end portion of the support member, and the second support surface is formed at the other end portion of the support member (see claim 12 above).
Claim Rejections - 35 USC § 103
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 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Toru (JP2014138669) (copy of publication and machine translation submitted with the IDS of 12/05/2025) in view of Nonaka or alternatively in view of Tsutsui (US pgPub 2023/0414970)1 (submitted with Non-Final rejection of 02 March 2026)..
Regarding claim 1, Toru teach a particle beam irradiation apparatus (figs. 1-2, 7 and 8) comprising:
an accelerator (fig. 1, 2 upstream of components in figure 7) configured to accelerate a particle so as to generate a particle beam (inherent to an accelerator);
an irradiation unit including an electromagnet (irradiation nozzle 18 irradiates the charged particle beam using a scanning method [0023], and paragraph [0056] teaches scanning electromagnet is the scanning means 18a) and configured to irradiate an irradiation target with the particle beam (object below nozzle);
a transport path (path through transport line 3 which transports charged particle beam from accelerator to gantry 4 ([0017]), which transports the charged particle beam to nozzle in order for irradiation from nozzle to occur as discussed in paragraph [0023]) provided between the accelerator and the irradiation unit (path through transport line 3 which transports charged particle beam from accelerator to gantry 4 ([0017]), which transports the charged particle beam to nozzle in order for irradiation from nozzle to occur as discussed in paragraph [0023]. Thus 3 between nozzle (i.e. irradiator) and accelerator) and provided so as to be capable of transporting the particle beam ([0017]); and
a collimator device (figs. 7-8, 53A/53B) including a first shielding member (53A) provided in the transport path (53 part of path 3 in figure 7), configured to shield the particle beam (best seen in figure 8, 53A shields the beam (i.e. inherent to a collimator to shape the beam)), and including a first opening (53a) allowing the particle beam to pass in an advancing direction of the particle beam (best seen in figure 8, beam passing through 53a of 53A) and
a second shielding member (53B) provided in the transport path (53 part of path 3), configured to shield the particle beam (fig. 8 shows 53B shielding the beam Ra, see paragraph [0050]), and including a second opening (53b) allowing the particle beam to pass in the advancing direction of the particle beam (beam passing through 53b as seen in figure 8),
wherein the second shielding member is spaced from the first shielding member to a downstream side in the advancing direction of the particle beam (figures 7-8 show 53B downstream of 53A in the beam direction as indicated by arrow Ra).
Toru fails to specifically disclose the means to mount 53a/53b.
However, Nonaka teaches a support member (frame 72) that is a single member (as seen in figure 3) configured to support both the first shielding member and the second shielding member (fig. 3, 72 supports both 34a and 34c),
Nonaka modifies Toru by providing a frame to mount the collimators.
Since both inventions are directed towards mounting collimators along a beam line, it would have been obvious to one of ordinary skill in the art to mount the collimators in the support suggested in Nonaka because it would facilitate a mounting structure that allows the collimators to be easily exchange the collimators when necessary for either replacement for a different size opening or when collimators have reached the end of life (see abstract). Moreover, Nonaka provide a means to facilitate the mounting of collimators of Toru, thus resolving the problem as to how to mount the collimators such that they may be axially aligned.
Alternatively, Tsutsui teaches a support member (beam duct 17, figure 3B) that is a single member (as seen in figure 3B) configured to support both the first shielding member and the second shielding member (only one collimator is shown in figure 3b, however 17 is configured to support both (i.e. the claim has not requirement that the first and second shielding elements are supported by the support)).
Tsutsui modifies Toru by suggesting how to mount the collimator within the vacuum duct.
Since both inventions are directed towards mounting elements with respect to a beam duct, it would have been obvious to one of ordinary skill in the art to mount the collimators of Toru in the manner suggested by Tsutsui because it would resolve how to mount the collimators of Toru in the vacuum duct 3 of Toru as suggested by Tsutsui.
Claim 11 is commensurate in scope and taught as discussed above in claim 1.
Claim Rejections - 35 USC § 103
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Nonaka in view of KR100309690 (herein ‘690) (copy of publication and machine translation submitted with the office action of 02 March 2026).
Regarding claim 8, Nonaka fails to disclose wherein a cooling unit is connected to the support member.
However, ‘690 teaches wherein a cooling unit is connected to the support member (figure 4 shows colling passage 11’ in holder 11 of collimator 10).
‘690 modifies Nonaka by suggesting a cooling passage for the collimator support.
Since both inventions are directed towards collimators, it would have been obvious to one of ordinary skill in the art to have the cooling member 11’ of ‘690 in the device of Toru because the cooling passage allows heat generated by the beam being incident on the collimator to be cooled (page 3, second full paragraph), thus protecting the collimator from detrimental thermal effects (thermal stress).
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Nonaka in view of KR100309690 (herein ‘690) and further in view of KR19990024031. (herein ‘031) (copy of publication and machine translation submitted herewith)..
Regarding claims 9-10, Nonaka in view of ‘690 teaches cooling passages formed in the holder 11 (see page 4, third paragraph from bottom of the page). Therefore, the combined device fails to disclose wherein the cooling unit includes an outer tube extending in an up-down direction and an inner tube disposed in the outer tube and causes a cooling medium to flow downward from above through the inner tube, wherein the cooling medium is folded back at a lower end of the inner tube and flows upward from below through a gap between the outer tube and the inner tube.
However, ‘031 teaches wherein the cooling unit (fluid moving through passages 60/56) includes an outer tube (fig. 2, hollow shaft 56) extending in an up-down direction (as seen in figure 2) and an inner tube (60) disposed in the outer tube (60 inside hollow shaft 56) and causes a cooling medium to flow downward from above through the inner tube, wherein the cooling medium is folded back at a lower end of the inner tube and flows upward from below through a gap between the outer tube and the inner tube (last paragraph on page 4).
‘031 modifies the combined device by suggesting an exterior cooling mechanism. Specifically, ‘031 teaches that machining to receive a manifold or pipe increases the cost (see paragraph bridging pages 2-3).
Since both inventions are directed towards cooling systems, it would have been obvious to one of ordinary skill in the art to substitute the embedded fluid passage of the combined device co-axial arrangement suggested in ‘031 because the coaxial arrangement would reduce the cost of the device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sasai (US pgPub 2021/0299480) would still make obvious the claimed invention as discussed in the office action of 02 March 2026 as modified by Toru and Nonaka discussed above.
Tsutsui (US pgPub 2023/0414970) teaches a passage selection unit 33 in figure 1, figure 3B shows collimator 33B supported in duct 3B.
Nonaka et al. (USPN 6,080,992) teaches a holder 72 comprising grooves 73b for quickly changing out collimator plates (34a-34c).
KR200325713 teaches a holder 51 holding a collimator 49 on one side and a plate 45 with an aperture on the other (see figure 6).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
/MICHAEL J LOGIE/ Primary Examiner, Art Unit 2881
1 Note this combination may be used to teach the remaining limitations as discussed above in view of Nonaka. However, since Nonaka already anticipates claims 1-7 and 11-14, this rejection is not applied herein.
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