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 .
Response to Arguments
Applicant’s arguments, filed 17 December, 2025, with respect to Claim Rejections under 35 U.S.C. 112(b) have been fully considered and are persuasive. The 35 U.S.C. 112(b) rejections of claims 98-99 and 113 has been withdrawn.
Applicant's arguments filed 17 December, 2025 have been fully considered but they are not persuasive. Regarding claims 97-103, 108-109, 112, and 114 the applicant argues the rejection under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) is improper over Ronda et al. US 2010/0276600 because Ronda fails to teach “a layer comprising metal that is spaced apart from the scintillator, wherein the layer comprising metal is configured to receive incident radiation and to provide additional radiation to the scintillator in response to the received radiation” because
(1) Ronda fails to disclose a spacing between the cover 106 and scintillator 104 based on incorporating a non-solid material, or an absence thereof, between the cover and scintillator.
(2) Office has not satisfied the initial burden of proof required to rely on a theory of inherency regarding “wherein the layer comprising metal is configured to receive incident radiation and to provide additional radiation to the scintillator in response to the received radiation”
The Examiner respectfully disagrees.
In response to applicant's argument (1) that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the spacing between the cover and the scintillator is based on incorporating a non-solid material or absence thereof) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, having a desiccant layer as a spacer between the cover and the scintillator does anticipate the claim.
Regarding argument (2), the metal layer being “configured to receive incident radiation and to provide additional radiation to the scintillator in response to the received radiation” is a material property of the metal layer. There are no additional structured which enable the metal layer to perform this function, rather the interaction of the metal layer with the incident radiation is based on the solid state structure of the metal layer. Neither the claim nor the specification describes any relevant structural differences between the claimed invention and the device of Ronda which enable this function. Ronda describes a metal layer made of nickel, which is identical to the material of the claimed invention. Ergo, the nickel layer would interact with radiation in the same manner and then have the same function.
Therefore, the examiner maintains the rejection.
Applicant's arguments filed 17 December, 2025 have been fully considered but they are not persuasive. Regarding claims 118-120 the applicant argues the rejection under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) is improper over Gendotti US 2018/0024256 because Gendotti fails to teach “wherein the casing comprises a first portion and a second portion parallel to the first portion” because Gendotti at paragraph [0082] states "[n]eutron converter membrane 47 is kept in place by a series of parallel moderating plates 46 oriented perpendicular to the longitudinal tube axis…" The Examiner respectfully disagrees.
The first and second portion are both 3-dimensional objects, which will definitionally have at least one-axis which is perpendicular if one-axis is parallel. Figures 9 and 10 show that at least one dimension of the tube 43 and plate 46 which are parallel. Applicants own figure 2 shows that the parallel section of the first and second portion are perpendicular to a perpendicular section of the same portion.
Therefore, the examiner maintains the rejection.
Applicant's arguments filed 17 December, 2025 have been fully considered but they are not persuasive. Regarding claims 105 the applicant argues the rejection under 35 U.S.C. 103 is improper over Ronda et al. US 2010/0276600 in view of Barbi et al US 2014/0042316 because the Office fails to provide sufficient reasoning to combine references.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Ronda provides a method for protecting a scintillator for a detector but is silent on the details of a complete detector assembly (fig. 5; para. 0055) and Barbi teaches that mounting a detector on a thin PCB can reduce the thickness of the detector assembly as a whole (para. 0067). Applicants argument that adding a substrate of any thickness results in a thicker device as a whole is a piecemeal analysis of the combined references.
Therefore, the examiner maintains the rejection.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 97-103, 108-109, 112, 114 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Ronda et al. US 2010/0276600.
Regarding claim 97, in at least figure 2 Ronda discloses a radiation detector (100) comprising: a silicon photomultiplier (SiPM) (108; para. 0023); a scintillator arranged to emit light towards the SiPM (104; para. 0024); and a layer comprising metal (106; para. 0025-0026; 0028) that is spaced apart from the scintillator (fig. 2b; desiccant 124 creates a space between the scintillator and the metal layer), wherein the layer comprising metal is configured to receive incident radiation and to provide additional radiation to the scintillator in response to the received incident radiation (the functional limitation “receive incident radiation and to provide additional radiation to the scintillator in response to the received incident radiation” is an inherent characteristic of the material properties of the metal layer. Ronda, by virtue of having the same structure and material properties, inherently possess the defined functionality. See MPEP 2114.I.).
Regarding claim 98, Ronda discloses wherein: the SiPM has a first response for a first range of light energies and a second response for a second range of light energies (para. 0023; standard SiPM’s have a specified wavelength range where they have a second response and outside that range they would have a first response. This feature is inherent to the SiPM); and the layer comprising metal is configured to provide, to the scintillator, additional radiation having energies to cause the scintillator to emit, to the SiPM, light in the first range of light energies (the functional limitation “to provide, to the scintillator, additional radiation having energies to cause the scintillator to emit, to the SiPM, light in the first range of light energies” is an inherent characteristic of the material properties of the metal layer. Ronda, by virtue of having the same structure and material properties, inherently possess the defined functionality. See MPEP 2114.I.).
Regarding claim 99, Ronda discloses wherein the first range of light energies is lower than the second range of light energies (para. 0023; standard SiPM’s have a specified wavelength range where they have a second response, at least below that wavelength range they would have a lower response. This feature is inherent to the SiPM).
Regarding claim 100, Ronda discloses wherein the layer comprising metal (fig. 2 106) is arranged to receive incident radiation (fig. 2 116) and to provide additional radiation to the scintillator to increase the light emitted towards the SiPM (the functional limitation “provide additional radiation to the scintillator to increase the light emitted towards the SiPM” is an inherent characteristic of the material properties of the metal layer. Ronda, by virtue of having the same structure and material properties, inherently possess the defined functionality. See MPEP 2114.I.).
Regarding claim 101, Ronda discloses wherein the layer comprising metal comprises nickel (para. 0028).
Regarding claim 102, Ronda discloses wherein the layer comprising metal comprises a metal having an atomic number of at least 15 (para. 0028).
Regarding claim 103, Ronda discloses wherein the layer comprising metal comprises a mixture of metals (para. 0026-0029; the cover can be made of aluminized Mylar or a thin layer of aluminum, zinc, tungsten or nickel. Additionally, the layer 106 may include a chemical passivation layer made from a rare earth metal, meaning a mixture of at least 2 metals).
Regarding claim 108, Ronda discloses the scintillator (fig. 2 104) is between the layer comprising metal (fig. 2 106) and the SiPM (fig. 2 108; the scintillator is between the metal layer and the SiPM in at least the vertical direction).
Regarding claim 109, Ronda discloses wherein the scintillator is on the SiPM (para. 0025; in the embodiment where the window 122 is removed the scintillator is on the SiPM).
Regarding claim 112, Ronda discloses a spacer (fig. 2 124) arranged to hold the layer comprising metal (fig. 2 106) in a position that that is spaced apart from the scintillator (fig. 2 104) wherein the spacer (fig. 2 124) defines an aperture (the aperture being the space which contains the scintillator 104) that extends between a first surface of the spacer that is adjacent to the SiPM (the inner surface of 124 is adjacent to SiPM) and a second surface of the spacer that is adjacent to the layer comprising metal (the outer surface of the 124 is adjacent to the metal layer 106).
Regarding claim 114, Ronda discloses wherein at least one of the scintillator (fig. 2 104) and the SiPM are within the aperture defined in the spacer (fig. 2 124).
Claims 118-120 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Gendotti et al. US 2018/0024256.
Regarding claim 118, Gendotti discloses a radiation detector (figs. 9-11) comprising: a SiPM (29, 41; fig. 11 50; para. 0082); a scintillator arranged to emit light towards the SiPM (19, 23, 43a); a casing (figs. 9-11 43, 46) enclosing the SiPM and the scintillator, wherein the casing comprises a first portion (the tube 43) and a second portion (plates 46) parallel to the first portion (the plates run parallel to the tube; figs. 9-12); and a flat cable (48) extending from outside the casing to inside the casing (para. 0082), wherein the flat cable is folded at least once (fig. 10) and passes between the first portion of the casing and the second portion of the casing (fig. 10 shows the cable 48 passing between the tube 43 and the plates 46).
Regarding claim 119, Gendotti discloses wherein the casing is optically reflective (fig. 6 21, 22; the reflectors 21 and 22 are a part of the casing of in the scintillator volume 43a, see figs 9-11) and is situated to reflect at least portions of the emitted light toward the SiPM (fig. 6 29).
Regarding claim 120, Gendotti discloses wherein the flat cable has a meandering structure (the specification defines meandering to be having “one or more bends” see para. 0055. Fig. 10 48 shows the cable having at least one bend).
Claim Rejections - 35 USC § 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 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 104, 110, and 113 are rejected under 35 U.S.C. 103 as being unpatentable over Ronda et al. US 2010/0276600.
Regarding claim 104, Ronda does not specifically disclose wherein the layer comprising metal has a thickness of greater than or equal to 1 x 10-6m. However, one of ordinary skill in the art would have been led to recited range (greater than or equal to 1 x 10-6m) through routine experimentation and optimization. The Applicant has not disclosed that the range is for a particular unobvious purpose, produce an unexpected/significant result, or are otherwise critical, and it appears prima facie that the process would possess utility using another range. Indeed, it has been held that mere range limitations are prima facie obvious absent a disclosure that the limitations are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the of the claimed invention to have wherein the layer comprising metal has a thickness of greater than or equal to 1 x 10-6m in the radiation detector of Ronda for the purpose of protecting the scintillator from moisture.
Regarding claim 110, Ronda does not specifically disclose a distance between the layer comprising metal and the scintillator is greater than or equal to 50 x 10-6m, i.e. the thickness of the desiccant. However, one of ordinary skill in the art would have been led to recited range (greater than or equal to 50 x 10-6m) through routine experimentation and optimization. The Applicant has not disclosed that the range is for a particular unobvious purpose, produce an unexpected/significant result, or are otherwise critical, and it appears prima facie that the process would possess utility using another range. Indeed, it has been held that mere range limitations are prima facie obvious absent a disclosure that the limitations are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the of the claimed invention to have a distance between the layer comprising metal and the scintillator is greater than or equal to 50 x 10-6m in the radiation detector of Ronda for the purpose of protecting the scintillator from moisture.
Regarding claim 113, Ronda does not explicitly disclose wherein the aperture is cylindrical, however, It has been judiciarily determined that changing in shapes has been obvious to one of ordinary skill in the art (MPEP 2144.04.IV.B). A change in shape is insufficient to establish patentability over the prior art of record unless it changes the operation of the device in some unexpected way. Since this device appears to operate in a similar manner to the prior art device, the change of shape is not of patentable significance
Claim 105 is rejected under 35 U.S.C. 103 as being unpatentable over Ronda et al. US 2010/0276600 in view of Barbi et al. US 2014/0042316.
Regarding claim 105, Ronda teaches wherein the layer comprising metal (fig. 2, 106) defined a chamber (para. 0025) wherein the scintillator (fig. 2 104) is within the chamber (para. 0025).
Ronda fails to teach wherein the SiPM is on a substrate.
Barbi teaches wherein the SiPM (fig. 2 21) is on a substrate (fig. 2 23; para. 0067) for the purpose of reducing the thickness of the device (para. 0067).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have wherein the SiPM is on a substrate as taught by Barbi in the radiation detector of Ronda for the purpose of reducing the thickness of the device.
Claim 106-107 and 111 are rejected under 35 U.S.C. 103 as being unpatentable over Ronda et al. US 2010/0276600 in view of Giannakopulos et al. US 2011/0095177.
Regarding claim 106, Ronda discloses the claim except that the scintillator is an inorganic scintillator (para. 0021) instead of an organic scintillator, Giannakopulos shows that inorganic scintillators and organic scintillators are equivalent structures known in the art (para. 0064). Therefore, because these two scintillators were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute an organic scintillator for the inorganic scintillator.
Regarding claim 107, Ronda discloses the claim except that the scintillator is an inorganic scintillator (para. 0021) instead of a plastic scintillator, Giannakopulos shows that inorganic scintillators and plastic scintillators are equivalent structures known in the art (para. 0064). Therefore, because these two scintillators were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute a plastic scintillator for the inorganic scintillator.
Regarding claim 111, Ronda discloses the claim except that the scintillator is an inorganic scintillator (para. 0021) instead of a PVT scintillator, Giannakopulos shows that inorganic scintillators and PVT scintillators are equivalent structures known in the art (para. 0064). Therefore, because these two scintillators were art-recognized equivalents at the time the invention was made, one of ordinary skill in the art would have found it obvious to substitute a PVT scintillator for the inorganic scintillator.
Allowable Subject Matter
Claims 115-117 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 115, the prior art of record does not disclose or suggest forming an aperture through the spacer material; attaching a layer comprising metal across the aperture of the spacer material, wherein the layer comprising metal is configured to receive incident radiation and to emit additional radiation in response to the received incident radiation, along with other claim limitations.
Ronda et al. US 2010/0276600; Gendotti et al. US 2018/0024256; Barbi et al. US 2014/0042316; and Giannakopulos et al. US 2011/0095177, either singularly or in combination, does not disclose or suggest "forming an aperture through the spacer material; attaching a layer comprising metal across the aperture of the spacer material, wherein the layer comprising metal is configured to receive incident radiation and to emit additional radiation in response to the received incident radiation", along with other claim limitations
Claims 116-117 are dependent on claim 115 so they are allowable for the same reason.
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard Toohey whose telephone number is (703)756-5818. The examiner can normally be reached Mon-Fri: 7:30am – 5pm.
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/RICHARD O TOOHEY/Examiner, Art Unit 2884
/EDWIN C GUNBERG/ Primary Examiner, Art Unit 2884