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 .
Claim Objections
Claims 1-17 are objected to because of the following informalities:
Regarding claim 1, the limitation “high-frequency electromagnetic imaging” should be changed to “X-radiation imaging” in order to clarify that the high-frequency imaging is conducted using X-rays as recited by the specification. Claims 2-7 are objected to by virtue of their dependency.
Regarding claim 8, the limitation “high-frequency electromagnetic imaging” should be changed to “X-radiation imaging” in order to clarify that the high-frequency imaging is conducted using X-rays as recited by the specification. Claims 9-14 are objected to by virtue of their dependency.
Regarding claim 15, the limitation “high-frequency electromagnetic imaging” should be changed to “X-radiation imaging” in order to clarify that the high-frequency imaging is conducted using X-rays as recited by the specification.
Regarding claim 16, the limitation “a device according to claim 15” should be changed to “the device according to claim 15” in order to correct the antecedence.
Regarding claim 17, the limitation “high-frequency electromagnetic imaging” should be changed to “X-radiation imaging” in order to clarify that the high-frequency imaging is conducted using X-rays as recited by the specification.
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.
The limitations interpreted under 35 U.S.C. 112(f) are “means for:- determining, from a first image obtained by high-frequency electromagnetic imaging, first positions of said particles in the glued assembly, - determining, from a second image obtained by high-frequency electromagnetic imaging, second positions of said particles in the glued assembly following the application, to said glued assembly, of a local thermal excitation, - generating said map representing mechanically altered zones by associating, with at least one zone of the glued assembly, a value of at least one parameter representing a mechanical alteration of the adhesive, said value of said at least one parameter representing a mechanical alteration of the adhesive and said corresponding glued assembly zone being determined according to said first positions and said second positions of said excitable particles and reference values” in claim 15 and “a module for moving the device on the glued assembly in order to sweep the whole of the glued assembly” in claim 16.
The Examiner has interpreted the means for determining the first and second positions, and the means for generating said map as the processor as disclosed in [0091].
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
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 1-7, and 16-17 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 1, the limitation “local thermal excitation of said glued assembly” renders the claim indefinite because limitation is not a positively recited method step. As currently, the limitation is narratively written and is not a method step. The claim fails to particularly point out whether or not the step of thermal excitation is part of the claimed invention.
Further, the limitation “at least of reference value of the movement of a particle during thermal excitation” renders the claim indefinite because a step directed to obtaining a reference value is not defined by the claim. The Examiner has interpreted the claim as “obtaining a reference value of a movement of a particle by thermally exciting said glued assembly”. Claims 2-3, and 7 are rejected by virtue of their dependency.
Regarding claim 4, the limitation “preliminary step of determining” renders the claim indefinite because the claim fails to define which step is it preliminary to. The claim fails to particularly point out whether the step occurs before the step of generating the map or before the obtaining steps. The Examiner has interpreted the limitation as “a step of determining”.
Regarding claim 5, the limitation “the glued assembly is thermally excited by the heat generated by the local application of a magnetic field to the magnetic particles” renders the claim indefinite because the limitation is not a positively recited method step. The Examiner has interpreted the limitation as “wherein the thermally exciting step includes thermally exciting said glued assembly by applying a magnetic field to the magnetic particles”. Claim 6 is rejected by virtue of its dependency.
Regarding claim 16, claim limitation “a module for moving the device on the glued assembly in order to sweep the whole of the glued assembly” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification is devoid of adequate structure that is able to perform the claimed function. In particular, the specification states that the claimed function of moving is performed by a module. The use of term “module” is not adequate structure for performing the moving of the device because it does define a specific structure. As would be recognized by those of ordinary skill in the art, the function of moving can be performed in hardware, software, or a combination of the two. The specification fails to provide sufficient details such that one of an ordinary skill in the art would understand which structure performs the claimed function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Regarding claim 17, the limitation “local thermal excitation of said glued assembly” renders the claim indefinite because the claim fails to define how program code is able to thermally excite the glued assembly. As currently written, the claim fails to recite limitations directed to a structure that is capable of performing the thermal excitation. Program code is unable to thermally excite the glued assembly without a source that is able to generate radiation. The specification discloses that the local thermal excitation is a local mechanical stressing that is applied to the glued assembly in [0074] or by using a external source of heat in [0076]. The Examiner has interpreted the limitation as “thermally exciting said glued assembly by controlling an electric element”.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 16 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 16, as described above, the disclosure does not provide adequate structure to perform the claimed function of moving the device. The specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention.
Claim Rejections - 35 USC § 102
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 8-9, and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grossnickle (U.S. 2014/0098936).
Regarding claim 8:
Grossnickle discloses a glued assembly consisting of an adhesive placed between a first substrate (Fig. 1, 112) and a second substrate (Fig. 1, 112), at least one of said substrates consisting of a composite material, said glued assembly being characterised in that the adhesive (Fig. 1, 114; [0016], particles) comprises particles visible by high-frequency electromagnetic imaging ([0017], particles scatter X-ray radiation) making it possible to determine a value of at least one parameter representing a mechanical alteration of the adhesive when the glued assembly has been thermally excited.
Regarding claim 9:
Grossnickle discloses the glued assembly according to claim 8, wherein the adhesive comprises a support comprising said particles ([0015]-[0017], adhesive having particles with piles).
Regarding claim 13:
Grossnickle discloses the glued assembly according to claim 8, wherein said particles are metal particles ([0037], copper, titanium, gild, silver, tungsten, and iron).
Regarding claim 14:
Grossnickle discloses the glued assembly according to claim 8, wherein said particles are magnetic particles ([0037], copper, titanium, gild, silver, tungsten, and iron).
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, 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.
Claims 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Grossnickle (U.S. 2014/0098936) in view of Wilenski (U.S. 9,604,403).
Regarding claim 10:
Grossnickle discloses the glued assembly according to claim 8.
However, Grossnickle fails to disclose a reference grid forming a fixed reference frame for measuring a movement of the particles.
Wilenski teaches a reference grid (Fig. 2, 126, grid) forming a fixed reference frame for measuring a movement of the particles.
It would have been obvious to one of an ordinary skill in the art before the effective filing date to combine the assembly of Grossnickle with the grid taught by Wilenski. One would have been motivated to make such combination in order to combine the assembly of Grossnickle with the grid of Wilenski in order to improve imaging accuracy for better quality testing. Therefore, it would have been obvious to combine the assembly of Grossnickle with the grid taught by Wilenski to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 11:
The combination of Grossnickle and Wilenski discloses the glued assembly according to claim 10, wherein the reference grid is deposited on at least one of said substrates constituting the glued assembly (Wilenski; Fig. 1, 126 deposited on 104).
It would have been obvious to one of an ordinary skill in the art before the effective filing date to combine the assembly of Grossnickle with the grid taught by Wilenski. One would have been motivated to make such combination in order to combine the assembly of Grossnickle with the grid of Wilenski in order to improve imaging accuracy for better quality testing. Therefore, it would have been obvious to combine the assembly of Grossnickle with the grid taught by Wilenski to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 12:
The combination of Grossnickle and Wilenski discloses the glued assembly according to claim 10, wherein the reference grid is said support comprising said particles (Wilenski; Fig. 1, 126 contains particles), said support being embedded in the adhesive (Wilenski; Fig. 1, 126).
It would have been obvious to one of an ordinary skill in the art before the effective filing date to combine the assembly of Grossnickle with the grid taught by Wilenski. One would have been motivated to make such combination in order to combine the assembly of Grossnickle with the grid of Wilenski in order to improve imaging accuracy for better quality testing. Therefore, it would have been obvious to combine the assembly of Grossnickle with the grid taught by Wilenski to yield predictable results. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Allowable Subject Matter
Claims 1-7, and 17 would be allowable if rewritten or amended 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.
Claim 15 is allowable.
Claim 16 is 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.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior arts are Grossnickle (U.S. 2014/0098936) and Wilenski (U.S. 9,604,403).
Regarding claim 1, as best understood:
Grossnickle discloses A method for generating a map representing mechanically altered zones of a so-called glued assembly consisting of an adhesive comprising particles visible by high-frequency electromagnetic imaging, said adhesive being placed between a first substrate and a second substrate, at least one of said substrates consisting of a composite material, said method comprising the following steps:
- obtaining, by high-frequency electromagnetic imaging, first positions of said particles in the glued assembly (Fig. 5, 510),
- obtaining, by high-frequency electromagnetic imaging, second positions of said particles in the glued assembly (Fig. 5, 530),
- generating said map representing mechanically altered zones by associating, with at least one glued assembly zone, a value of at least one parameter representing a mechanical alteration of the adhesive (Fig. 5, 540-550).
Wilenski teaches obtaining a reference value of a movement of a particle by thermally exciting said glued assembly (Fig. 11, 208).
However, Grossnickle and Wilenski fails to disclose said value of said at least one parameter representing a mechanical alteration of the adhesive and said corresponding glued assembly zone being determined according to said first positions and said second positions of said particles and at least one reference value of the movement of a particle during thermal excitation.
Since the prior art of record fails to teach the details above, nor is there any reason to modify or combine prior art elements absent of applicant’s disclosure, the claim is deemed patentable over the prior art of record, if rewritten to overcome the 112(b) rejection above. Claims 2-7 are allowable by virtue of their dependency.
Regarding claim 15:
Grossnickle discloses a device for generating a map representing mechanically altered zones of a glued assembly consisting of an adhesive comprising particles visible by high- frequency electromagnetic imaging placed between a first substrate and a second substrate, at least one of said substrates consisting of a composite material, said device comprising means for:
- determining, from a first image obtained by high-frequency electromagnetic imaging, first positions of said particles in the glued assembly (Fig. 5, 510),
- determining, from a second image obtained by high-frequency electromagnetic imaging, second positions of said particles in the glued assembly following the application, to said glued assembly, of a local thermal excitation (Fig. 5, 530),
- generating said map representing mechanically altered zones by associating, with at least one zone of the glued assembly (Fig. 5, 540-550), a value of at least one parameter representing a mechanical alteration of the adhesive (Fig. 5, 540-550).
However, Grossnickle fails to disclose said value of said at least one parameter representing a mechanical alteration of the adhesive and said corresponding glued assembly zone being determined according to said first positions and said second positions of said excitable particles and reference values.
Since the prior art of record fails to teach the details above, nor is there any reason to modify or combine prior art elements absent of applicant’s disclosure, the claim is deemed patentable over the prior art of record. Claims 16 is allowable by virtue of its dependency.
Regarding claim 17, as best understood:
Grossnickle discloses a non-transitory computer-readable medium comprising program code instructions for implementing a method for generating a map representing mechanically altered zones of a so-called glued assembly consisting of an adhesive comprising particles visible by high-frequency electromagnetic imaging, said adhesive being placed between a first substrate and a second substrate, at least one of said substrates consisting of a composite material, said method comprising the following steps:
obtaining, by high-frequency electromagnetic imaging, first positions of said particles in the glued assembly (Fig. 5, 510),
obtaining, by high-frequency electromagnetic imaging, second positions of said particles in the glued assembly (Fig. 5, 530),
generating said map representing mechanically altered zones by associating, with at least one glued assembly zone, a value of at least one parameter representing a mechanical alteration of the adhesive (Fig. 5, 540-550).
Wilenski teaches thermally exciting said glued assembly by controlling an electric element (Fig. 11, 208).
However, Grossnickle and Wilenski fails to disclose said value of said at least one parameter representing a mechanical alteration of the adhesive and said corresponding glued assembly zone being determined according to said first positions and said second positions of said particles and at least one reference value of the movement of a particle during thermal excitation, when said program code instructions are executed by a processor.
Since the prior art of record fails to teach the details above, nor is there any reason to modify or combine prior art elements absent of applicant’s disclosure, the claim is deemed patentable over the prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SOORENA KEFAYATI whose telephone number is (469)295-9078. The examiner can normally be reached M to F, 7:30 am to 4:30 pm.
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/S.K./Examiner, Art Unit 2884
/DAVID J MAKIYA/Supervisory Patent Examiner, Art Unit 2884