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 without traverse of claims 1-3, 5, and 7-11 in the reply filed on 06/02/2026 is acknowledged. Claims 4, 6, and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/02/2026.
Drawings
The drawings are objected to because Figure 3 has no reference numerals. Figure 8 also has no reference numerals.
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.
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 absorbing rod (singular) and absorbing rods (plural) recited in claim 4 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Claim 4 is presently withdrawn, but it cannot be rejoined in a potential future notice of allowance unless its recited components are shown and labeled in the Drawings.
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.
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 positioning mechanism in claim 1 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.
Specification
The disclosure is objected to because of the following informalities: the Specification alternately refers to a single target tube as “target tube” and a plurality of target tubes as “target tube.” It is therefore unclear if the disclosed and claimed term “target tube” refers to only a single target tube. If so, then a bundle/plurality of target tubes arranged in a particular manner should be given a different name, e.g., a target tube assembly, and given a different numeral. For example, see ¶ 52 of the published application: “In some embodiments, the target tube is defined by arranging several single target tubes around the connection rod.” It does not make sense for a single target tube to be “defined” by “several single target tubes.”
Appropriate correction is required.
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 interpretation applies to the following in claim 1: means of the end plates.
This application further 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 limitations are: positioning mechanism and connection component in claim 1.
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.
Specifically:
Connection component: the only structure corresponding to the claimed “connection component” appears to be wire rope 31. Therefore, the claimed connection component may only be mapped to a “wire rope” and “equivalents thereof” in the prior art.
Positioning mechanism: no structure corresponding to the claimed “positioning mechanism” can be found in the Specification, leading to the below 112(a) rejection.
Means of the end plates: in the final two sentences of ¶ 53 of the published application, “welding, threaded connection, or snap-fit connection” are mentioned as ways to connect the target tube and the end plates, as well as ways to connect the connection rod and the end plates. However, Examiner cannot find a structure reasonably corresponding to a “means of the end plates” per se. The language “means of the end plates” implies that the end plates themselves have a separate structure responsible for “fixedly connect[ing]” the “target tube” and the “connection rod,” as recited in claim 1.
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 the first paragraph 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.
Claims 1-3, 5, and 7-11 are rejected under 35 U.S.C. 112(a) because the claim purports to invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, but fails to recite a combination of elements as required by that statutory provision and thus cannot rely on the specification to provide the structure, material or acts to support the claimed function. As such, the claim recites a function that has no limits and covers every conceivable means for achieving the stated function, while the specification discloses at most only those means known to the inventor. Accordingly, the disclosure is not commensurate with the scope of the claim. Specifically:
The Specification does not provide any example of the claimed “positioning mechanism used for positioning” in claim 1.
The Specification does not provide a clear example of a structure corresponding to the claimed “means of the end plates,” claim 1, as better detailed above in the 112(f) interpretation section.
Any claim not specifically addressed in this section that depends from a rejected claim is also rejected under 35 U.S.C. 112(a) for its dependency upon an above–rejected claim and for the same reasons.
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.
Claims 1-3, 5, and 7-11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Claim 1 recites “a target material and/or an absorber material.” It is presumed the target material is a radiation target; however, it is unclear if the absorber material is absorbing radiation as well, or if it is absorbing something else. What is the absorber material absorbing? It is additionally unclear what the relationship is between the target material and the absorber material. The phrasing “and/or” makes it unclear if the target tube is filled with (1) a target material alone, (2) an absorbing material alone [absorbing what?]), (3) a mixture of target particles and absorbing particles, (4) a distinct set of targets and absorbers, e.g., alternating target-absorber-target-absorber pellets, or (5) a single material that may be considered both a target and an absorber. (Or, some particular combination of the above.) It is still further unclear how, if the tube includes only an absorber material, the preamble recitation “for producing C-14 isotopes” could be fulfilled.
Claim 1 recites “end plates, which are arranged at two ends of the target tube.” It is unclear if this means each tube end has one end plate, or each tube end has two tube plates. This is further confused by claim 7’s recitation that “the end plates comprise inner end plates and outer end plates.” Each single end plate comprises an inner end plate and an outer end plate? That does not make sense. Still further, in claim 7, the terms “inner” and “outer” are relative terms, but no point of view is provided to orient the plates. The end plates are “inner” relative to what and “outer” relative to what?
Claim 3 recites the limitation "the single target tube" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 alternately refers to a single target tube as “target tube” and a plurality of target tubes as “target tube.” Lines 2-3 recite that “the target tube is formed by arranging a plurality of single target tubes.” This does not make sense. A single target tube cannot be a plurality of single target tubes. A plurality of target tubes would be, instead, a target tube “assembly.” Similarly, due to the above contradiction, the limitation that “each of the single target tubes comprises the cladding.” Each tube has its own cladding, or all the tubes, together, share a common cladding?
Claim 7 recites the limitation "ribs " in line 19. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the inner end plates cover ends of the first inner cladding and the second inner cladding" in lines 9-10. There is insufficient antecedent basis for this limitation in the claim. No “ends” of the first and second inner claddings have yet been introduced. This limitation is additionally indefinite because it is unclear what the structural arrangement among the inner end plates and “ends” of the first inner/second inner cladding are. Does the first inner cladding have one end plate or two end plates? Does the second inner cladding have one end plate or two end plates?
Claim 8 recites the limitation "the outer end plates cover ends of the first outer cladding and the second outer cladding" in lines 12-13. There is insufficient antecedent basis for this limitation in the claim. No “ends” of the first and second outer claddings have yet been introduced. This limitation is additionally indefinite because it is unclear what the structural arrangement among the outer end plates and “ends” of the first outer/second outer cladding are. Does the first outer cladding have one end plate or two end plates? Does the second outer cladding have one end plate or two end plates?
It is likely the above indefiniteness rejections are not exhaustive. Examiner asks for Applicant’s assistance in identifying other claims—in particular, dependent claims—with indefiniteness issues similar to those identified for other claims above.
Any claim not specifically addressed in this section that depends from a rejected claim is also rejected under 35 U.S.C. 112(b) for its dependency upon an above–rejected claim and for the same reasons.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 8-10 are each individually rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Each of claims 8-10 specifically recites the absorber material or the target material. However, the parent claims recite these as alternatives: “the target material and/or the absorber material.” Therefore, it is improper for each of claims 8-10 to presume that either the target material or the absorber material is necessarily present. These rejections may be overcome by actively reciting the claimed material prior to then delimiting it.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
For Applicant’s benefit, portions of the cited reference(s) have been cited to aid in the review of the rejection(s). While every attempt has been made to be thorough and consistent within the rejection, it is noted that the prior art must be considered in its entirety, including disclosures that teach away from the claims. See MPEP 2141.02 VI.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Reese (US20120027152) in view of “CN906” (CN11189906A1) or “CN021” (CN112117021A2).
Examiner is citing both CN documents above because it is unclear to Examiner if these are commonly owned (assignee or inventor) by Applicants. Examiner believes they are not; however, please respond in the next submission if either of these documents is commonly owned by Applicants.
The following rejections under 35 U.S.C. 103 are directed to the claims as best understood by the examiner in light of the numerous significant issues under 35 U.S.C. 112 noted above.
Regarding claim 1, Reese discloses (Fig. 9) a target used in a heavy water reactor (this recitation is treated as a non-limiting intended use recitation) for producing isotopes (“isotope production target,” ¶ 59), comprising: a target tube (95), which has a target material and/or an absorber material (“isotope production assembly 90,” ¶ 64), the target material being a solid material (e.g., uranium, ¶ 31) containing elements (id.); end plates (92, 94), which are arranged at two ends of the target tube; and a connection rod (96), which is provided with a connection component (beveled end of 96) that is connected to a positioning mechanism (not pictured but described in ¶ 59 regarding Fig. 7 whose beveled shape at the end of 77 is for “insertion of the isotope production target [] into a reactor core,” ¶ 59, which corresponds to the beveled end of 96 also being for insertion into the core) used for positioning the target (id.), wherein the connection rod passes through the target tube (“the connecting device 93 may be configured to connect the target insert 96 to … the isotope target structure 95,” ¶ 64) along an axial direction of the target tube (as shown in Fig. 9), and the target tube (95) is fixedly connected to the connection rod (96) by means of the end plates (92, 94).
Reese does not explicitly state that the target includes nitrogen and is used to produce C-14.
CN906/CN021 do. CN906/CN021 are in the same art area of isotope production within a nuclear reactor and teach irradiation of nitrogen to produce carbon-14 (CN906: 14N(n,p)14C reaction of Embodiment 2 in the paragraph bridging pages 5-6; CN021: same reaction, mid-page 3).
The skilled person’s motivation, prior to the effective filing date of the invention, for using a nitrogen target to produce carbon-14 within the apparatus of Reese would have been the well-known medical need for carbon-14, as noted by CN021, page 2, second paragraph: “Carbon 14 is … widely used in medical and biomedical industries such as breath detection, labeling compounds, and the like.”
Claim Rejections - 35 USC § 102
Claim Rejections - 35 USC § 103
It should be noted, as stated in MPEP 2173.06, “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. §103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.” Therefore, no art rejections have been made for the dependent claims due to the numerous clarity issues noted above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY C GARNER whose telephone number is (571)272-9587. The examiner can normally be reached 9-5 CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jack Keith can be reached at (571) 272-6878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LILY CRABTREE GARNER
Primary Examiner
Art Unit 3646
/LILY C GARNER/Primary Examiner, Art Unit 3646
1 See attached 15-pg foreign reference with Examiner highlights.
2 See attached 14-pg foreign reference with Examiner highlights.
Prosecution Insights