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 and Claim Status
1. Applicant’s election of Group I, Claims 1-11 in the reply filed on 04/23/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
2. Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
3. Accordingly, claims 1-20 are pending with claims 12-20 withdrawn. Claims 1-11 are examined herein.
Information Disclosure Statement
4. The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
5. 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 feature of claim 10 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 Rejections - 35 USC § 112
6. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
7. Claims 1-11 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.
8. Claims 1-11 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device.
9. Regarding claim 1, the recitation “forming a bulk” and the subsequent limitations “wherein the nuclear target comprises at least one precursor” and “wherein the nuclear target comprises at lease one isotope” do not clearly delineate the structural relationships required between the recited elements. At a minimum, it is not know what structure is encompassed by the phrase “forming a bulk.” Further it is not clear if the precursor and or the isotope are part of the “bulk” or are separate structures. Does the target comprise three separate materials, the bulk, the precursor, and the isotope? Are the isotope and the precursor part of the bulk? What is the relationship between the bulk and the opening? Additionally, the recitation “behind the opening” is unclear because no reference point has been defined. How can the “hollow,” which is by definition an empty space comprise or be formed by the precursor?
10. Regarding claim 2, the recitation “wherein the impinging projectile particle kas a kinetic energy, which differs over the threshold energy for induction of the nuclear reaction” does not clearly place limits on the structure of the target required to meet this limitation. At a minimum, the projectile particles are the intended use of the target and are not a positively recited structural element of the target. The same is true for the nuclear reaction. The phrase “which differs over the threshold energy” does not clearly place any metes and bounds on what energy is requires, and even if it did, this would not seem to adequately define the structure of the target itself.
11. Regarding claim 3, it is unclear what additional structural relationship is required. The claim cannot be adequately interpreted, especially in view of the issues noted above with respect to claim 1. Claim 5 is also unclear for the same reasons. Claim 1 introduces a precursor and an isotope but claim 5 requires that the precursor be a first isotope?
12. Regarding claim 4, it is unclear what is meant by “at least two same precursors.”
13. Regarding claim 6, there is unclear antecedent basis for the recitation “emitting projectile particles.” Are these the same projectile particles introduced in the intended use recitation of the target of claim 1?
14. Regarding claim 7, there is no antecedent basis for “the inner side of the hollow” and the recitation “inner” is indefinite because it lacks a reference point. There is no antecedent basis for “the material” or “the material emitting secondary particles,” and it is unclear how these materials are structurally related to the precursor and the isotope previously introduced. Further, the recitation “a projectile particle” is unclear because claim 1 introduces “projectile particles” as part of the intended use of the claimed target. There is no antecedent basis for “the interaction in the hollow.”
15. Regarding claim 9, are the isotopes referred to therein the same “at least one isotope” of claim 1? The remainder of the claim is indefinite because it is indecipherable at least due to antecedent basis issues. How can one determine what isotopes are included within the functional limitation and what are excluded therefrom? The claim language appears to be directed to a result achieved by the target rather than to the structure of the target itself. See MPEP 2173.05(g).
16. Regarding claim 11, it is unclear how the “plurality of segments” and the “single bloc” of material relate to the previously introduced “bulk.” Furthermore, the recitation “wherein the shape of the hollow is configured to…” does not place a meaningful structural limitation on the structure of the target. There is no way to ascertain what structure is encompassed by the recitation, which is solely directed to a result achieved. MPEP 2173.05(g). Additionally, the term bloc should be corrected to “block,” because the word bloc is not a structural element of a mechanical system.
17. Any claim not explicitly addressed above is rejected because it depends on a rejected claim.
Claim Interpretation
18. The claims recite limitations that are either method steps of using the claimed apparatus or statements of results desired or achieved by the claimed structure. These limitations, like statements of intended use, do not serve to patentably distinguish the claimed structure over that of the prior art reference(s) as long as the structure of the cited reference is capable of performing the recited function (MPEP 2111-2115). As stated in MPEP 2114(II): “[A]pparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
19. 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 some claims.
Claim Rejections - 35 USC § 103
20. 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.
21. For applicant's benefit, the portions of the reference(s) relied upon in the below rejections have been cited to aid in the review of the rejections. While every attempt has been made to be thorough and consistent within the rejection, it is noted that prior art must be considered in its entirety, including disclosures that teach away from the claims. See MPEP 2141.02 VI.
22. 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.
23. Claims 1-4 and 8 are rejected under 35 U.S.C. 103 as obvious over Hirschfield et al., US 3,287,592 in view of Yannopoulos et al., US 3,716,491.
24. Regarding claim 1 (as best understood), Hirschfield discloses a nuclear target (Fig 14: ) forming a bulk (25), wherein the nuclear target comprises at least one precursor capable of inducing a nuclear reaction upon interaction with a projectile particle (column 1, lines 15-25), wherein the nuclear target comprises: at least one opening for the passage of a beam of projectile particles plurality of openings 26); and a hollow in the bulk of the nuclear target located behind the opening (see Fig. 4), wherein the hollow comprises the precursor (27, 28, 29); and wherein the nuclear target comprises at least one isotope on which the projectile particle is elastically scattered (the examiner’s position is that frame 26 necessarily comprises an isotope capable of elastic scattering the incident deuterons). Although Hirschfield is silent as to the material of its frame, Yannopoulos teaches a similar nuclear target having a frame comprising tungsten, stainless steel, or copper (column 3, lines 7-8), all of which comprise isotopes (the naturally-occurring isotopes of those materials, e.g., Cu-63 and Cu-65) that are capable of elastically scattering the deuterons of the incident deuteron beam of Hirschfield (see e.g., Lee et al., attached hereto). One of ordinary skill in the art at the time of invention/filing would have found it obvious to apply the frame material taught by Yannopoulos to the target of Hirschfield as a matter of obvious design choice. It has been held to be within the general skill of a worker in the art to select known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
25. Regarding claim 2, Hirschfield as modified by Yannopoulos makes claim 1 obvious. Hirschfield as modified further teaches a target wherein the isotope on which the projectile particle is elastically scattered is different nuclei from the nuclei of the precursor (Hirschfield discloses the precursor is tritium or beryllium at column 3, lines 34-35, while Yannopoulos teaches the isotope is, e.g., Cu-63+Cu-65 at column 3, lines 7-8). One of ordinary skill in the art at the time of invention/filing would have found it obvious to apply the frame material taught by Yannopoulos to the target of Hirschfield for the reason stated above.
26. Regarding claim 3, Hirschfield as modified by Yannopoulos makes claim 1 obvious. Hirschfield further discloses a nuclear target wherein at least part of the nuclear target comprises the precursor in the hollow (see Figs. 3 and 4).
26. Regarding claim 4, Hirschfield as modified by Yannopoulos makes claim 1 obvious. Hirschfield further discloses a target wherein the nuclear target comprises at least two different precursors differently located therein (see Figs. 3, 4, and column 3, lines 34-35).
27. Regarding claim 8, Hirschfield as modified by Yannopoulos makes claim 1 obvious. Hirschfield further discloses a target wherein the nuclear target is provided with a plurality of openings and a corresponding number of hollows (see Fig. 3).
Interviews
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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHARON M DAVIS whose telephone number is (571)272-6882. The examiner can normally be reached Monday - Thursday, 7:00 - 5:00 pm ET.
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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/SHARON M DAVIS/Primary Examiner, Art Unit 3646
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