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 .
Election/Restrictions
Applicant's election with traverse of in invention group I in the reply filed on 02/09/2026 is acknowledged.
The traversal is on the ground(s) that 1) the claim 21 being properly beans plus function under 112f 2) claim 27 being amended to properly invoke 112f 3) search will not be burden since the parent case has been searched.
This is not found persuasive with following reasons.
Whether the claim 21 is properly invoking 112f or not is not a relevant subject to the restriction. Furthermore, the claim 21 invokes 112b by invoking the 112f since the specification of instant application does not support any structure/structural modification for the invoked limitation.
Even though claim 27 is depending on the claim 21 which is apparatus claim, the claim 27 itself is a process claim. The claim 27 can be understood as the way of using means for adjusting a gloss reading without defining any structural component. Otherwise, the claim 27 would be subjected to 101 or 112b rejections as failing to be categorized either product or process claim.
Furthermore, since “means” is a structure, it cannot comprises the act/steps/process rather it can perform the act/steps/process.
Therefore, the claim 27 is more proper as a process claim while it is still confusing enough to invoke 112b rejection. But since it is not elected for examination, the examiner did not invoke 112b rejection for instant office action.
Search burden is not depending on whether related cases are previously searched or not but depending on the complexity of the current claims and specification otherwise, the invention would be rejected under Double patenting. If applicant is claiming that this application is DP with the US 11965782, clearly response to this action since the examiner did not consider the application being the DP of the US 11965782 but possibly could reconsider the issue.
Therefore, the requirement is still deemed proper and is therefore made FINAL.
Claim Objection
“the means for adjusting comprising ascertaining a lightness correlation” in claim 22 should be --the means for adjusting further configured to ascertain a lightness correlation—
Typographical error in claim 24, “GUwh is the gloss value of black color and GUb1 is the gloss value of black color” should be corrected as -GUwh is the gloss value of the white color and GUb1 is the gloss value of the black color --
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 gloss measuring instrument of claim 21 (including a sized light source, a photodetector and a means for adjusting a gloss reading) 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.
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: “means for adjusting a gloss reading” in claim 21.
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 § 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 21-26 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.
AS to claim 21, the limitation “means for adjusting a gloss reading” has been understood under 112f interpretation.
However, the specification of instant application does not further define a structure or a structural combination for the means.
Therefore, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
For the examination purposes, it would be interpreted as appeared in Hino (JP 2002350355).
Further as to the claim 21, the claim recites “an incident light source sized and dimensioned”. However, sized and dimensioned has same meaning and it is not clear what the applicant tried to mean by stating sized and dimensioned.
Therefore, one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the examination purposes, it would be interpreted as appeared in FIG. 1 of Kato (US 20150153276 A1).
AS to claim 26, the claim recites GCC =(90-Ysd) X (lightness correlation).
However, lightness correlation is not clearly defined value in the art.
As a result, clear description of the lightness correlation value (how it is obtained/defined mathematically and/or experimentally) is required.
Claim 22-26 have been rejected also based upon their dependencies.
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 of this title, 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 21-23, and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Hino (JP 2002350355 A hereinafter Hino) in view of Kato (US 20150153276 A1 hereinafter Kato)
As to claim 21, Hino teaches a gloss measuring instrument to measure a gloss value of a substrate (abstract and FIG. 13) comprising:
a photodetector (102) positioned to receive a reflected light from the substrate (106 in FIG. 13).
a means for adjusting a gloss reading based on a lightness value of a color of the substrate ([0014]).
However, Hino does not explicitly disclose an incident light source being sized and dimensioned to incident on the substrate.
Kato teaches an incident light source (1) sized and dimensioned (by 2 and 31 and 41 in FIG. 1) to incident on the substrate (10).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to modify the instrument of Hino by having an incident light source being sized and dimensioned to incident on the substrate for the benefit including improving the accuracy of gloss reading by having limited area of illumination for measurement each time.
As to claim 22, Hino in view of Kato teaches the gloss measuring instrument of claim 21.
Hino further teaches the means for adjusting comprising ascertaining a lightness correlation between gloss values of a first reference color and a reference second color ([0014]) wherein the first reference color has a lower Y-value than the second reference color ([0031] y in G(x,y), is the claimed y value and [0047] four red, one green and one blue, ex. red can be the first reference color and the green can be the second reference color which has higher y, or green and blue etc.).
As to claim 23, Hino in view of Kato teaches the gloss measuring instrument of claim 22.
Hino teaches the first reference color is a black color ([0030] and [0047]), and the second reference color is a white color ([0057] using white point as a reference and [0073] white reference plate and [0004] as general knowledge of using black and white reference color).
As to claim 25, Hino in view of Kato teaches the gloss measuring instrument of claim 22.
Hino further teaches the means for adjusting further comprises determining a gloss correction coefficient (GCC) ([0005]).
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yosuke (US 20170199079 A1) teaches a gloss measurement instrument using light source with changing size target area.
Allowable Subject Matter
Claims 24 and 26 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112, 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
As to claim 24, none of the prior art alone or in combination disclose or teach of a the lightness correlation comprises a linear regression between the gloss values of the black color and the white color, GUWh = mi * GUb1 + b1 wherein GUWh is the gloss value of white color and GUbi is the gloss value of black color, and mi and bi are slope and y-intercept of said linear regression along with other limitations in the claim.
As to claim 26, none of the prior art alone or in combination disclose or teach of the GCC =(90-Ysd) X (lightness correlation), wherein Ystd is the Y-value of the color along with other limitations in the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUNGHEE Y GRAY whose telephone number is (571)270-3211. The examiner can normally be reached on T-R, 8:00 am-4:00 pm and F 8 :00 to 2:00 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kara Geisel can be reached on (571) 272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-270-4211.
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/SUNGHEE Y GRAY/
Primary Examiner, Art Unit 2886