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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 15 December 2023 and 03 May 2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 11-12 and 14-20 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.
Regarding claim 11, “an analog signal value of the detector signal” in line 2 is unclear as an analog component of the detector signal has already been mentioned previously in claim 2, on which claim 11 is dependent. Is this limitation referring to the same analog value mentioned previously or a different analog value? In light of the specification, the Examiner is interpreting this limitation to be referring to an analog signal value of the analog component of the detector signal.
Claim 12 is rejected for its dependency on claim 11.
Regarding claim 14, “a measurement value” in line 2 is unclear as this limitation has been mentioned previously in claim 2, on which claim 14 is dependent. Is this limitation referring to the same measurement value mentioned previously or a different measurement value? In light of the specification, the Examiner is interpreting this limitation to be referring to a different measurement value associated with an analog signal and a linear function. Additionally, “an analog signal value of the detector signal” in line 2 is unclear as an analog component of the detector signal has been mentioned previously in claim 2, on which claim 11 is dependent. Is this limitation referring to the same analog value mentioned previously or a different analog value? In light of the specification, the Examiner is interpreting this limitation to be referring to an analog signal value of the analog component of the detector signal.
Claims 15-19 are rejected for their dependency on claim 14.
Regarding claim 20, “the light source” in line 5 lacks proper antecedent basis and is therefore unclear.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-10, 13, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9-11, and 13-14 of U.S. Patent No. 11879851 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 2, claim 1 of U.S. Patent No. 11879851 B2 teaches a luminometer system comprising: a light detector configured to receive photons emitted from a light source (claim 1, lines 1-3); a conversion circuit configured to receive a detector signal from the light detector, the detector signal indicating a strength of the light source based on a number of photons received by the light detector (claim 1, lines 8-17); the conversion circuit further configured to generate a digitized signal from an analog component of the detector signal, the digitized signal representing the strength of the light source, and to generate a digitized photon count from a discreet component of the detector signal (claim 1, lines 8-18); and a luminometer controller configured to determine and report a measurement value of the photons emitted from the light source based on the digitized signal and/or digitized photon count (claim 1, lines 20-35).
Regarding claim 3¸ claim 13 of U.S. Patent No. 11879851 B2 teaches the luminometer system of claim 2, wherein the light detector comprises a photomultiplier tube (claim 13).
Regarding claim 4, claim 14 of U.S. Patent No. 11879851 B2 teaches the luminometer system of claim 2, the luminometer system further comprising a counter circuit configured to provide the digitized photon count (claim 14, lines 15-18).
Regarding claim 5, claim 14 of U.S. Patent No. 11879851 B2 teaches the luminometer system of claim 2, wherein the luminometer system comprises an analog circuit comprising: a current sensing resistor coupled to convert current from a photomultiplier tube of the light detector to a voltage (claim 14, lines 8-10); an amplifier configured to amplify the voltage (claim 14, line 11); and a dedicated electrical connection between a terminal of the current sensing resistor and a terminal of the amplifier (claim 14, lines 12-14).
Regarding claim 6, claim 9 of U.S. Patent No. 11879851 B2 teaches the luminometer system of claim 5, wherein a signal to noise ratio at an input to the amplifier is greater than 50 and less than 1,000,000 (claim 9).
Regarding claim 7, claim 10 of U.S. Patent No. 11879851 B2 teaches the luminometer system of claim 5, wherein a signal to noise ratio at an input to the amplifier is greater than 500 and less than 4,000 (claim 10).
Regarding claim 8, claim 11 of U.S. Patent No. 11879851 B2 teaches the luminometer system of claim 5, wherein a signal to noise ratio at an input to the amplifier is greater than 100 (claim 11).
Regarding claim 9, claim 1 of U.S. Patent No. 11879851 B2 teaches the luminometer system of claim 2, wherein the conversion circuit is configured to output the digitized signal and the digitized photon count to the luminometer controller (claim 1, lines 18-19).
Regarding claim 10, claim 1 of U.S. Patent No. 11879851 B2 teaches the luminometer system of claim 9, wherein the luminometer controller is configured to: receive the digitized photon count (claim 1, line 24); compare the digitized photon count to a discreet-analog crossover value (claim 1, lines 25-26); output the digitized photo count as a result when the digitized photon count does not exceed the discreet-analog crossover value (claim 1, lines 27-29); and in response to the digitized photon count exceeding the discreet-analog crossover value, apply a calibration function to the digitized signal to calculate an output value, and output the output value as a result (claim 1, lines 30-35).
Regarding claim 13¸ claim 14 of U.S. Patent No. 11879851 B2 teaches the luminometer system of claim 2, wherein the light detector is configured to receive the photons emitted from the light source over a period of time, and wherein the luminometer controller is configured to determine and report the measurement value of the photons emitted from the light source over the period of time (claim 14, lines 2-4 and 15-18).
Regarding claim 20, claim 1 of U.S. Patent No. 11879851 B2 teaches a tangible non-transitory computer readable medium, the computer readable medium storing one or more computer application that, when executed by one or more processors, causes the one or more processors to perform a method (claim 1, lines 21-22) comprising: generating a digitized signal from an analog component of a detector signal, the detector signal indicating a strength of the light source based on a number of photons received by a light detector (claim 1, lines 8-18); generating a digitized photon count from a discreet component of the detector signal (claim 1, lines 8-18); and determining and reporting a measurement value of the photons emitted from the light source based on the digitized signal and/or digitized photon count (claim 1, lines 20-35).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-4, 11-13, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Modlin et al. (USPGPub 20040239922 A1) in view of Hayman et al. (USPGPub 20180292257 A1).
Regarding claim 2, Modlin teaches a luminometer system comprising: a light detector (144) configured to receive photons emitted from a light source (100) (see figure 5, detector 144 and light source 100; and ¶104, Light last passes to a detector, which is used in absorbance and photoluminescence assays); a conversion circuit configured to receive a detector signal from the light detector (144), the detector signal indicating a strength of the light source (100) based on a number of photons received by the light detector (144) (¶105, detectors comprise any mechanism capable of converting energy from detected light into signals that may be processed by the apparatus, and by the processor in particular; and ¶133, Pulse counter 214 may be used as a discrete accumulator or integrator to monitor or sample the detected light by counting the number of photons in the detected light. Typically, a detector is chosen that generates an output corresponding to each detected photon. For example, photomultiplier tubes (PMTs) generate a current pulse for (at least essentially) each photon that strikes the photocathode in the PMT); the conversion circuit further configured to generate a signal from a component of the detector signal, the signal representing the strength of the light source (100), and to generate a photon count from a discreet component of the detector signal (¶105, detection modes include (1) discrete (e.g., photon-counting) modes, (2) analog (e.g., current-integration) modes); and a luminometer controller configured to determine and report a measurement value of the photons emitted from the light source (100) based on the signal and/or photon count (¶132, Output 210 may take various forms, including current and/or voltage signals. For example, depending on the intensity of the light received by the detector, the output may be discrete pulses corresponding to individual photons and/or an analog voltage or current proportional to the intensity of the incident light. In device 200, output 210 is directed through a selector switch 212, which selectively routes the output toward various detection components, including a pulse (photon) counter 214 and an analog integrator 216… selector switch may be an electronically controlled switching device such as a solid-state switch or a relay, thereby allowing automatic control of the switch to accommodate expected or measured light levels). However Modlin fails to explicitly teach wherein the signals are digitized signals generated from an analog component of the detector signal.
However, Hayman teaches wherein the signals are digitized signals generated from an analog component of the detector signal (¶10, a photon counting system comprises an analog domain, a digital domain in communication with the analog domain, a detector configured to detect photons, an analog digital converter in the digital domain, and an amplifier circuit in the analog domain configured to receive the detector's output, wherein the amplifier circuit's output is in communication with the analog digital converter).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Modlin to incorporate the teachings of Hayman to include the photon count and strength signal in an analog signal and then convert said signal into a digital signal because [t]he transition between photon counting and analog mode thus becomes seamless because it is an analog integration process (Hayman, ¶41).
Regarding claim 3, Modlin as modified by Hayman teaches the luminometer system of claim 2, wherein the light detector (Modlin 144) comprises a photomultiplier tube (Modlin, ¶133, Typically, a detector is chosen that generates an output corresponding to each detected photon. For example, photomultiplier tubes (PMTs) generate a current pulse for (at least essentially) each photon that strikes the photocathode in the PMT).
Regarding claim 4, Modlin as modified by Hayman teaches the luminometer system of claim 2, the luminometer system further comprising a counter circuit configured to provide the digitized photon count (Modlin, see figures 17-19 which show counting circuitry; see ¶¶237-238; and ¶132, output 210 is directed through a selector switch 212, which selectively routes the output toward various detection components, including a pulse (photon) counter 214; and Hayman, ¶10, a photon counting system comprises an analog domain, a digital domain in communication with the analog domain, a detector configured to detect photons, an analog digital converter in the digital domain, and an amplifier circuit in the analog domain configured to receive the detector's output, wherein the amplifier circuit's output is in communication with the analog digital converter).
Regarding claim 11, Modlin as modified by Hayman teaches the luminometer system of claim 2, wherein the luminometer controller is configured to, in response to an analog signal value of the detector signal indicating greater than a predetermined value, determine and report the measurement value of the photons emitted from the light source (Modlin 100) based on the digitized signal and/or digitized photon count (Modlin, ¶132, Output 210 may take various forms, including current and/or voltage signals. For example, depending on the intensity of the light received by the detector, the output may be discrete pulses corresponding to individual photons and/or an analog voltage or current proportional to the intensity of the incident light; and Hayman, ¶10).
Regarding claim 12, Modlin as modified by Hayman teaches the luminometer system of claim 11, wherein the luminometer controller is configured to, in response to the analog signal value of the detector signal indicating less than the predetermined value, determine and report the measurement value of the photons emitted from the light source (Modlin 100) based on the digitized signal and/or digitized photon count (Modlin, ¶132, Output 210 may take various forms, including current and/or voltage signals. For example, depending on the intensity of the light received by the detector, the output may be discrete pulses corresponding to individual photons and/or an analog voltage or current proportional to the intensity of the incident light; and Hayman, ¶10).
Regarding claim 13, Modlin as modified by Hayman teaches the luminometer system of claim 2, wherein the light detector (Modlin 144) is configured to receive the photons emitted from the light source (Modlin 100) over a period of time, and wherein the luminometer controller is configured to determine and report the measurement value of the photons emitted from the light source (Modlin 100) over the period of time (Modlin, ¶133, The discrete output from the detector may be summed over a sampling period or integration time, and the amount of detected light may be reported in units of counts, counts/second, or relative fluorescence units (RFUs), among others).
Regarding claim 20, Modlin teaches a tangible non-transitory computer readable medium, the computer readable medium storing one or more computer application that, when executed by one or more processors, causes the one or more processors to perform a method (¶122, A computer or processor controls the apparatus, including the external components) comprising: generating a signal from a component of a detector signal, the detector signal indicating a strength of the light source (100) based on a number of photons received by a light detector (144) (¶105, detectors comprise any mechanism capable of converting energy from detected light into signals that may be processed by the apparatus, and by the processor in particular …detection modes include (1) discrete (e.g., photon-counting) modes, (2) analog (e.g., current-integration) modes; and ¶133, Pulse counter 214 may be used as a discrete accumulator or integrator to monitor or sample the detected light by counting the number of photons in the detected light. Typically, a detector is chosen that generates an output corresponding to each detected photon. For example, photomultiplier tubes (PMTs) generate a current pulse for (at least essentially) each photon that strikes the photocathode in the PMT); generating a photon count from a discreet component of the detector signal (¶105, detection modes include (1) discrete (e.g., photon-counting) modes, (2) analog (e.g., current-integration) modes); and determining and reporting a measurement value of the photons emitted from the light source (100) based on the signal and/or photon count (¶132, Output 210 may take various forms, including current and/or voltage signals. For example, depending on the intensity of the light received by the detector, the output may be discrete pulses corresponding to individual photons and/or an analog voltage or current proportional to the intensity of the incident light. In device 200, output 210 is directed through a selector switch 212, which selectively routes the output toward various detection components, including a pulse (photon) counter 214 and an analog integrator 216… selector switch may be an electronically controlled switching device such as a solid-state switch or a relay, thereby allowing automatic control of the switch to accommodate expected or measured light levels). However Modlin fails to explicitly teach wherein the signals are digitized signals generated from an analog component of the detector signal.
However, Hayman teaches wherein the signals are digitized signals generated from an analog component of the detector signal (¶10, a photon counting system comprises an analog domain, a digital domain in communication with the analog domain, a detector configured to detect photons, an analog digital converter in the digital domain, and an amplifier circuit in the analog domain configured to receive the detector's output, wherein the amplifier circuit's output is in communication with the analog digital converter).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Modlin to incorporate the teachings of Hayman to include the photon count and strength signal in an analog signal and then convert said signal into a digital signal because [t]he transition between photon counting and analog mode thus becomes seamless because it is an analog integration process (Hayman, ¶41).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Modlin et al. (USPGPub 20040239922 A1) in view of Hayman et al. (USPGPub 20180292257 A1) as applied to claim 2 above, and further in view of Makuuchi et al. (USPGPub 20080278717 A1).
Regarding claim 5, Modlin as modified by Hayman teaches a circuit comprising: an element coupled to convert current from a photomultiplier tube of the light detector to a voltage (Modlin, see ¶¶133-134; and ¶144, The signal output from the PMT in FIG. 12 may be fed to a preamplifier that converts the current output from the PMT to a voltage output). However, the combination fail to explicitly teach wherein the system comprises an analog circuit comprising: a current sensing resistor coupled to convert current from a photomultiplier tube of the light detector to a voltage; an amplifier configured to amplify the voltage; and a dedicated electrical connection between a terminal of the current sensing resistor and a terminal of the amplifier.
However, Makuuchi teaches wherein the system comprises an analog circuit comprising: a current sensing resistor (4) coupled to convert current from a photomultiplier tube (1) of the light detector to a voltage (see figure 5, resistor 4 coupled to photomultiplier tube 1; and ¶5, In the detection part 10, an I-V conversion module 2 including a resistor 4 and an operational amplifier 5 converts the contamination-detection signal current into a detection voltage signal); an amplifier (6) configured to amplify the voltage (see figure 5, amplifier 6; and ¶5, Further, in the detection circuit 3, a logarithmic amplifier 6 logarithmically amplifies the detection voltage signal); and a dedicated electrical connection between a terminal of the current sensing resistor (4) and a terminal of the amplifier (6) (see figure 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Modlin and Hayman to incorporate the teachings of Makuuchi to instead include a conversion circuit comprising a resistor as it is merely an equivalent known for the same purpose (see MPEP 2144.06 II). Additionally, it would have been obvious to further provide an amplifier in order to make an input voltage 8 to the detection circuit 3 so that a minute voltage can be detected even with the minimum resolution of an analog-to-digital conversion circuit 7 (Makuuchi, ¶5).
Allowable Subject Matter
Claims 14-19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Regarding claim 14, the prior art of record individually or combined fails to teach the luminometer system of claim 2 as claimed, more specifically in combination with wherein the luminometer controller is configured to determine and report a measurement value of the photons emitted from the light source based on an analog signal value of the detector signal and a linear function, wherein the linear function is derived from a relationship established between the analog signal value of the detector signal and a photon count based on the photons emitted from the light source.
Claims 15-19 would be allowable for their dependency on claim 14.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIN R GARBER whose telephone number is (571)272-4663. The examiner can normally be reached M-F 0730-1730.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Georgia Y Epps can be reached at (571)272-2328. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIN R GARBER/Examiner, Art Unit 2878
Prosecution Insights