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 .
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 1-20 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. 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 term “contrast gas” in claims 1-20 is used by the claims to mean “a gas that [some means] increases contrast in the detection of the contrast from the local etching on the defect to the local etching on an element of the mask beneath the defect,” while the accepted meaning is “medical imaging uses gases like air, carbon dioxide, or perfluoropropane as negative contrast agents (lowering density for X-ray/CT) or to create microbubbles for ultrasound (like perfluorocarbons in MRI) to highlight structures like airways or blood vessels by altering X-ray absorption or sound reflection, improving visualization of organs and pathologies. These gases create distinct signals, enhancing visibility where soft tissues normally blend in, often used in CT colonography, angiography, or advanced MRI lung studies.” The term is indefinite because the specification does not clearly redefine the term. As can be seen above, the term “contrast gas” is used in medical imaging involving x-rays or MRI-type imaging; in other words, none-charged imaging methods. The instant application uses this term to increase detection capabilities when detecting backscattered or secondary particles-while it is possible for these particles to be gamma rays, as the incident is charged it is far more likely that any form of secondary particle generated will likewise be charged. The “contrast gas” rather reads like an intended gain medium as is used in, i.e., a cathode-strip detector or the like-a detector that detects charged particles while including a gas that would increase the number of particles, thus making detection somewhat simpler (an example of this is the endcap detectors located in the CMS detector at CERN). However, with the exception of the Applicant’s co-pending WIPO document WO 2022/268924 A1 the examiner can find no examples of a “contrast gas” being used as claimed in the instant application. As such, this term is undefined.
Claims 13 and 15-20 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. The independent claims in these instances are, respectively, a method and an apparatus. However, dependent claims 13 and 15-20 claim “a/the computer program”. Thus the claims are, in fact, changing their type of patent-eligible subject matter in the dependent claims. As this is improper, claims 13 and 15-20 must be rejected under 35 USC 112 second paragraph.
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 13 and 15-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the Applicant claims “a/the computer program…”. A computer program in and of itself is non-statutory subject matter. Please note that this may be corrected by re-writing the claims to include the requirement of “non-transitory computer readable medium”. However, that re-wording would not, in and of itself, correct the 112 second paragraph issues cited above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE M IPPOLITO whose telephone number is (571)270-7449. The examiner can normally be reached Monday-Thursday 6:00am-4:00pm Mountain Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert H Kim can be reached at 571-272-2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE M IPPOLITO/Primary Examiner, Art Unit 2881