DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Amendment
2. The amendment filed on 01/13/2026 has been entered into this application. New claim 21 has been added.
Claim Rejections - 35 USC § 112
3. The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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.
4. Claim 21 is 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. As to Claim 21, the newly added limitation, “wherein the first light and the second light propagate simultaneously and collinearly" is not implicitly or explicitly disclosed in the instant specification. It is noted that applicant has cited portion of the specification for support for the newly added limitation (Par. [0037]) but no support found. Thus, the newly added limitation is deemed to be new matter.
5. Claim 21 is 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, Claim 21, recite, “wherein the first light and the second light propagate simultaneously and collinearly".
Examiner acknowledges that the instant specification discloses “multiple gases may be simultaneously detected by using multiple detectors with optical filters chosen for each of the gases and using a broadband light source (Par. [0037]). The predetermined gases may be CO2 and alcohol vapor which are simultaneously detected for breadth analysis (Par. [0038]). The predetermined gases may be water and alcohol vapor which are simultaneously detected for breadth analysis (Par. [0039]). The acts performed as part of the method may be ordered in any suitable way. Accordingly, embodiments may be constructed in which acts are performed in an order different than illustrated, which may include performing some acts simultaneously, even though shown as sequential acts in illustrative embodiments (Par. [0271]).
One of ordinary skill in the art can appreciate that some of light from secondary LED will travel collinearly with the primary optical measurement pathway 460 (Par. [0135]). The first light and second light propagate collinearly (Par. [0226]). Example 34 provides a method for measuring optical differential path lengths comprising collinearly producing a first and second light from a device, reflecting the first and second light into a test chamber (Par. [0239]).
However, the specification does not explain in clear and concise terms how the first light and the second light propagate simultaneously. It is noted that applicant has cited portion of the specification for support for the newly added limitation (Par. [0037]) but no support found. As such, the disclosure of the instant specification is not sufficient to support an apparatus where the first light and the second light propagate simultaneously and requires further clarification.
For examining purposes Collinearly is considered.
6. 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.
7. Claim 21 is 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 pre-AIA the applicant regards as the invention.
Regarding Claim 21, recites the limitation in line 1-2, the first light and the second light propagate simultaneously.
Examiner acknowledges that the instant specification discloses “multiple gases may be simultaneously detected by using multiple detectors with optical filters chosen for each of the gases and using a broadband light source (Par. [0037]). The predetermined gases may be CO2 and alcohol vapor which are simultaneously detected for breadth analysis (Par. [0038]). The predetermined gases may be water and alcohol vapor which are simultaneously detected for breadth analysis (Par. [0039]). The acts performed as part of the method may be ordered in any suitable way. Accordingly, embodiments may be constructed in which acts are performed in an order different than illustrated, which may include performing some acts simultaneously, even though shown as sequential acts in illustrative embodiments (Par. [0271]).
However, the specification does not explain in clear and concise terms how the first light and the second light propagate simultaneously. It is noted that applicant has cited portion of the specification for support for the newly added limitation (Par. [0037]) but no support found. As such, the disclosure of the instant specification is not sufficient to support an apparatus where the first light and the second light propagate simultaneously and requires further clarification.
For examining purposes Collinearly is considered.
CLAIM INTERPRETATION
8. 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.
9. Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
10. 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.
11. 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 limitations use 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 limitations are: “a first light source configured to”, “a second light source configured to”, “a first light reflecting element configured to”, and “means for collinearly producing” and “means for reflecting” in claim 1 and 20.
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.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 103
12. 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.
13. Claims 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Pub. No. 2020/0386677 A1 by Deliwala (hereinafter Deliwala) in view of US Patent Pub. No. 2019/0242817 A1 by Gorny (hereinafter Gorny).
Regarding Claim 1, Deliwala teaches an optical differential path length gas detector (Title, Par. [0002]) comprising:
a die (Par. [0044]) comprising:
a first light source configured to produce a first light centered at a first wavelength (Fig. 7, 8, Par. [0149-0150]); and
a second light source configured to produce a second light centered at a second wavelength (Fig. 7, 8, Par. [0149-0150]); and
a first light reflecting element configured to reflect the first light and second light (Fig. 7 @ 760, Par. [0140], Fig. 8 @ 860, Par. [0149]) into a test chamber (Par. [0003, 0005, 0049]); but does not explicitly teach wherein the first light and the second light propagate collinearly.
However, Gorny teaches the first light and the second light propagate collinearly (Fig. 1 @ 115, Abstract, Par. [0004, 0006, 0015], Par. [0018: if the light generating element is an RGB LED, the CPU may command the RGB LED to emit red light, but not green or blue light thus inherently teaches collinearly]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Deliwaw by Gorny as taught above such that the first light and the second light propagate collinearly in order to provide reliable operation (Gony, Abstract).
Regarding Claim 2, Deliwala teaches an optical filter (Fig. 7 @ 715, Par. [0139]) disposed between the die and first light reflecting element.
Regarding Claim 3, Deliwala teaches the optical filter disposed is a bandpass filter (Par. [0146]).
Regarding Claim 4, Deliwala teaches the bandpass filter is a multiband filter (Par. [0146, 0149]).
Regarding Claim 5, Deliwala as modified by Gorny teaches the first light source and the second light source are stacked light emitting diodes (LEDs) (Gorny, Fig. 1 @ 115, Abstract, Par. [0004, 0006, 0015], Par. [0018: if the light generating element is an RGB LED, the CPU may command the RGB LED to emit red light, but not green or blue light thus teaches stacked light emitting diodes]) (Note: 5-steps omitted due to same motivation).
Regarding Claim 6, Deliwala teaches the first light reflecting element has a first shape like a conic section (Fig. 8 @ 860, Par. [0150]).
Regarding Claim 7, Deliwala teaches the first light reflecting element has a second shape like a conic section (Fig. 8 @ 860, Par. [0150]).
Regarding Claim 8, Deliwala teaches a reference detector (Fig. 8 @ 840, Par. [0149]).
Regarding Claim 9, Deliwala teaches the second shape reflects (Fig. 8 @ 860, Par. [0149]) the first light and the second light toward the reference detector (Fig. 8 @ 840, Par. [0149]. Reflector 860 reflects light towards the reference detector 840).
Regarding Claim 10, Deliwala teaches a second light reflecting element (Fig. 8 @ 870, Par. [0149]).
Regarding Claim 11, Deliwala teaches the second light reflecting element is shaped like a conic section (Fig. 8 @ 870, Par. [0149], i.e. the conic section).
Regarding Claim 12, Deliwala teaches a main detector (Fig. 8 @ 850, Par. [0149]).
Regarding Claim 13, Deliwala teaches the second light reflecting element (Fig. 8 @ 870, Par. [0149]) directs the first light and the second light towards the main detector (Fig. 8 @ 850, Par. [0149]. Reflector 870 directs light towards the main detector 850).
Regarding Claim 14, Deliwala as modified by Gorny teaches a method for measuring optical differential path lengths (See Claim 1 rejection. Note: an apparatus claim can be used to implement a method claim) comprising:
collinearly producing a first light and a second light from a device (See Claim 1 rejection);
reflecting the first light and the second light into a test chamber (See Claim 1 rejection); and
detecting at a main detector at least one of the first light and the second light (See Claim 13 rejection);
wherein the first light and the second light have disparate (Deliwala, Fig. 7, 8, Par. [0149-0150]) but overlapping bandwidths (Deliwala, Par. [0004, 0181]).
Regarding Claim 15, Deliwala teaches filtering the first light and the second light (Par. [0149]).
Regarding Claim 16, Deliwala teaches the filtering is performed by a multiband filter (See Claim 4 rejection).
Regarding Claim 17, Deliwala teaches detecting at a reference detector at least one of the first light and the second light (See Claims 8, 9 rejection).
Regarding Claim 18, Deliwala teaches reflecting the first light and the second light from the test chamber towards the main detector (See Claims 12, 13 rejection).
Regarding Claim 19, Deliwala teaches calculating a ratio between the main detector and the reference detector (Par. [0025, 0077, 0084, 0172]).
Regarding Claim 20, Deliwala as modified by Gorny teaches an apparatus for measuring optical differential path lengths (See Claim 1 rejection) comprising:
means for collinearly producing a first light and a second light from a device (See Claim 1 rejection); and
means for reflecting the first light and the second light into a test chamber (See Claim 1 rejection); and
means for detecting at a main detector at least one of the first light and the second light (See Claim 13 rejection).
Regarding Claim 21, Deliwala as modified by Gorny teaches the first light and the second light propagate collinearly (See Claim 1 rejection).
Response to Arguments
14. Applicant’s argument filed on 01/13/2026 with respect to I. Claim Interpretation Under 35 U.S.C. § 112(f) (Argument, Page 23-25) has been fully considered but it is not persuasive.
The Applicant is advised to review M.P.E.P. § 2181(I): “If a claim limitation recites a term and associated functional language, the examiner should determine whether the claim limitation invokes 35 U.S.C. 112(f). Application of 35 U.S.C. 112(f) is driven by the claim language, not by applicant’s intent or mere statements to the contrary included in the specification or made during prosecution.
“Instead of using "means" in such cases, a substitute term acts as a generic placeholder for the term "means" and would not be recognized by one of ordinary skill in the art as being sufficiently definite structure for performing the claimed function. "The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure." Williamson, 792 F.3d at 1349, 115 USPQ2d at 1111; see also Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583, 39 USPQ2d 1783, 1786 (Fed. Cir. 1996)”.
Accordingly, examiners will apply 35 U.S.C. 112(f) to a claim limitation if it meets the following 3-prong analysis:
(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.
Therefore, it is evident from the above discussion that the claim language recited “a first light source configured to”, “a second light source configured to”, “a first light reflecting element configured to”, and “means for collinearly producing” and “means for reflecting” in claim 1 and 20 are not the definite structure. Definite structure would be a “laser”, “reflector” for example.
15. Applicant’s arguments filed on 01/23/2014 with respect to claims 1, 14 and 20 have been fully considered but they are not persuasive.
15.1 The Applicant argues that i) none of the cited references, either taken or in combination, teach or suggest the following features now recited in amended independent claim 1: "wherein the first light and the second light propagate collinearly." Independent claims 14 and 20 recite analogous features. ii) In Gorny, there is no disclosure on the actual arrangement of the LEDs constituting the LED module to indicate collinearity of light propagating from the module. iii) In the vacuum of disclosure relating to the arrangement of the individual LEDS in Gorny, one of ordinary skill in the art would presume side-by-side packaging of the LEDS, as known and implemented in the art at the time of filing of Gorny, and which is incapable of meeting the collinearity feature recited in amended independent claim 1 as noted in paragraph [0139] of the instant specification. (Argument, Page 6-7).
The Examiner respectfully disagrees. i) Grony teaches the first light and the second light propagate collinearly (See Claim 1 rejection, Final OA). Grony discloses the light generating element may, for example, be a red, green, and blue (RGB) light emitting diode(s) (LED(s)). The optical train may, for example, have a single/unitary molded transparent acrylic construction and internal reflective surfaces. A gas detection apparatus may standardize the optical path used by the light generating element and the primary/reference detectors, advantageously providing for reliable operation (Abstract).
Located at a top section of the optical train is a waveguide 405 (Fig. 4). As the light emitted from the light generating element travels to/from the target medium, the emitted light, without assistance of the waveguide, may decrease in amplitude. The waveguide may aid in guiding the light emitted from the light generating element to/from the target medium with low attenuation (Par. [0032]). The waveguide is contained within, or integrally formed with, the optical train. The waveguide may be, for example, a slab, (optical) fiber, or channel waveguide (Par. [0033]). Also Fig, 1-4 illustrates that LED light is going to the gas medium in one direction. Grony clearly teaches if the light generating element is an RGB LED, the CPU may command the RGB LED to emit red light, but not green or blue light (Par. [0018]). Grony also teaches a light generating element 115 (e.g., RGB LED(s)) (Fig. 1 @ 115), therefore, it is a single stacked package with red, green and blue LEDs.
Therefore, it is evident from the above discussion that the first light and the second light propagate collinearly.
The argument regarding ii) is already addressed above in sec. i).
The argument regarding iii), the Examiner respectfully points out that the above statement relied on by the Applicant solely explain the teaching of Grony and bears no relation to the teaching of Grony as applied to the current rejection.
15.2 The Applicant argues that Hence, amended independent claim 1 is patentably distinct and non-obvious over the cited references for at least the preceding reasons (Argument, Page 7).
The Examiner respectfully disagrees. Since Office Action has shown that the combination of the cited references teaches or suggests each and every element of the amended claims, therefore, a prima facie case of obviousness has been established.
15.3 The argument regarding Claim 5 (Argument, Page 7-8) is already addressed above in sec. i).
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 extension fee 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.
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/JAMIL AHMED/Primary Examiner, Art Unit 2877