DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The rejections of claims 5, 10 are withdrawn, but new 112(b) rejections are made because the claims contain language that raises an indefiniteness issue.
Response to Arguments
Applicant’s arguments filed 2/17/2026 with respect to the rejection of claims 1 and & 7, have been fully considered and are persuasive as the existing rejections of the claims do not address all the limitations of the amended claims. The rejections are withdrawn. However, upon further consideration, new rejections are made in view of Verdegan (US 20080121026) in view of Kondo et al (US 20200124514) in view of Odajima (JP 2021092494).
Applicant argues on pages 6-7 that Verdegan’s teachings of a general concept does not make a specific formula obvious.
Examiner’s position is that the limitations of claim 1 that are directed to the determination of the particle based on refractive index are not complex, amounting to ‘compare the measurement to two points on a number line’:
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MPEP 2145(X)B recites “A person of ordinary skill has good reason to pursue the known options within his or her technical grasp.” In this case Verdegan Figure 4 shows the measured index of refraction of common contaminants, it is not a complex task to use these values to determine the type of contaminant “paragraph 0034 “the usual materials used in engine and hydraulic applications and the common contaminants can be differentiated by the real refractive index “), and it would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to use simple math (i.e. the claimed calculation) to choose ranges to distinguish between particle types.
Applicant argues on page 7 that the unexpected results of the claimed classification results makes the claim allowable.
Examiner’s position is that the applicant’s specification does not contain the words “unexpected”, “new” or “novel”, and the cited published paragraph 0067 (which the applicant uses to support the novel result) merely discusses Figure 5, and mentions filter performance but does not describe how the claimed range makes it easier to evaluate such performance. Published paragraph 0057 supports the claim limitations but makes no mention of a new result or improved calculation, and paragraph 0058 goes on to teach “The determining unit 64 may distinguish the bubble from the metallic particles by simply using the magnitude relation of the refractive index.”. As such the examiner deems there is no support for an unexpected result that contraindicates the use of the teachings of Verdegan and an obviousness rationale to read on the claimed ‘plot the measurement to a number line’ limitation.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/20/2024 has been considered. Examiner thanks the applicant for pointing out the location of the document in question.
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 5, 10 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.
Claims 5 and 10 recite the limitation "the liquid containing a quaternary amine” in lines 2 and 2. There is insufficient antecedent basis for this limitation in the claims. The claims are indefinite because respective parent claims 1 and 7 recite “a liquid” and not “a liquid containing a quaternary amine”.
For purposes of examination, examiner reads the claims as “wherein the liquid contains a quaternary amine and is”.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-5, 7, 9-12 are rejected under 35 U.S.C. 103 as being unpatentable over Verdegan (United States Patent Application Publication 20080121026) in view of Kondo et al (United States Patent Application Publication 20200124514) in view of Odajima (JP 2021092494), the combination of which is hereafter referred to as “VKO”.
As to claim 1, Verdegan teaches an evaluation apparatus (Abstract “Systems and methods used to monitor a fluid where it is important to know the size, concentration and nature of particulates in the fluid.”), comprising:
an evaluator (paragraph 0019 “FIG. 3 is a top view of a sensing system that can be used to determine particle size and nature in a fluid being sampled.”) including
a column being capable of storing a liquid containing defects (paragraph 0012 “The fluid passage can be a channel, tube, orifice, or other flow path”), the column being transparent (paragraph 0013 “The fluid passage … needs to be transparent where it encompasses the sensing volume(s)”),
the defects containing a bubble, a first particle containing metal, and a second particle being different from the bubble and the first particle (paragraph 0033 “useful classification categories might be as follows: air bubbles, water, biological material, asphaltenes, soot, abrasives, and wear metals.”),
an irradiator irradiating the liquid in the column with an irradiation light (Figure 3, paragraph 0028 “light source 52, such as a laser or light emitting diode, which shines a collimated light beam through a transparent window 54 to the fluid within a fluid passage”),
a <detector detecting> a scattered light emitted from the defects by the irradiation light (Figure 3, paragraph 0030 “The photodetector 64 detects and measures the amount of light scattered by the particle 58.”),
a calculator calculating a particle size and a refractive index of the defects (paragraph 0014 “The data obtained from the two sensors provides both the size and concentration of the particles, as well as a property of the particles, for example the refractive index.”),
a determiner determining whether the defects contain the bubble or the second particle, or the first particle (paragraph 0034 “the usual materials used in engine and hydraulic applications and the common contaminants can be differentiated by the real refractive index classification scheme shown in FIG. 4”, see also paragraph 0063 where the index of refraction is used to identify bubbles “If n=1.0, then particle is a bubble of air or fuel vapors”).
Verdegan teaches a photodetector and not an imager. However, it is known in the art as taught by Kondo. Kondo teaches an particle detecting device (Abstract “Provided is a particle measuring device and a particle measuring method for measuring a particle size with favorable accuracy.”) that uses an imager to obtain images of the scattered light (paragraph 0023 “a particle image is … captured by the imaging unit 4 based on scattered light from a particle in a detection region in the first flow passage”). It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to use an imager, in order to obtain more data than provided by a photodetector.
Verdegan as modified by Kondo above does not teach an analyzer obtaining a diffusion coefficient of the defects from the scattered light. However, it is known in the art as taught by Kondo. Kondo teaches an analyzer obtaining a diffusion coefficient of the defects from the scattered light (paragraph 0033 “the particle size specifying unit 23 specifies a diffusion coefficient D according to the following formula”). It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to have an analyzer obtaining a diffusion coefficient of the defects from the scattered light, in order to better analyze the particles (paragraph 0041 discusses the use of the diffusion coefficient).
Verdegan as modified by Kondo above does not teach a filter filtering the liquid, the filter including an inlet and an outlet; a first pipe connecting the outlet of the filter and the evaluator. However, it is known in the art as taught by Odajima. Odajima teaches a filter performance testing system that includes particle detection & analysis (paragraph 4 “a filter performance evaluation system” and “a particle counter 24 which is provided upstream and downstream of the filter 40 to be evaluated and measures the testing dust 13 in the test liquid 1”) that includes a filter (Figure 2, paragraph 92 “filter to be evaluated 40”) filtering the liquid (Figure 2, paragraph 90 “test liquid 1”), the filter including an inlet and an outlet (Figure 2, element 40 has pipes to and from it); a first pipe connecting the outlet of the filter and the evaluator (Figure 2, pipe 21 leads from the filter 40 to the evaluation unit 20, paragraph 92 “evaluation mechanism 20”). It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to have a filter filtering the liquid, the filter including an inlet and an outlet; a first pipe connecting the outlet of the filter and the evaluator, in order to better provide liquid to the filter & detector.
Verdegan as modified by Kondo and Odajima above does not explicitly teach when a refractive index of the liquid is n0, the determiner determines that the defects contain the first particle M, when the refractive index of the defects is lamer than n0+(n0-1) or the refractive index of the defects is smaller than 1, and the determiner determines that the defects contain the bubble or the second particle, when the refractive index of the defects is 1 or more and the refractive index of the defects is n0+(n0-1) or less. However, Verdegan teaches measuring a particle’s refractive index (paragraph 0031 “For photodetector 64, the amount of light scattered is a function of particle size, and the particle's real and imaginary components of its refractive index.”) and the classification of particles based on refractive index values (paragraph 0062 “Operationally Defined (Analytical) Classification* Based on Real Refractive Index”). It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to have the claimed determination of defects based on its index of refraction, in order to better analyze the particles. See MPEP 2145(X)B.
As to claim 3, VKO teaches everything claimed, as applied above in claim 1, in addition Odajima teaches a storage tank storing the liquid (Figure 2, paragraph 91 “storage tank 2”); a second pipe connecting the storage tank and the inlet of the filter (Figure 2, pipe 10 from storage tank 2 to the filter 40); a pump provided at the second pipe (Figure 2, paragraph 91 “magnet pump 11A”), the pump delivering the liquid in the storage tank to the filter (Figure 1, pipe 10 between elements 11A and 40, paragraph 72 “pump 11 that pumps up the test liquid 1 of the storage tank 2 and pushes it downstream”); and a third pipe connecting the evaluator and the storage tank (Figure 1, pipes 21, 30 from filter 40 back to storage tank 2). It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to have a storage tank storing the liquid; a second pipe connecting the storage tank and the inlet of the filter; a pump provided at the second pipe, the pump delivering the liquid in the storage tank to the filter; and a third pipe connecting the evaluator and the storage tank, in order to more efficiently circulate the liquid.
As to claims 4-5, VKO teaches everything claimed, as applied in claims 1 and 4 respectively, with the exception of the liquid is a chemical solution containing a quaternary amine, a quaternary amine and a surfactant, or water and a surfactant; or wherein the liquid containing the quaternary amine is an aqueous tetramethylammonium hydroxide solution (TMAH) or an aqueous trimethyl-2- hydroxyethylammonium hydroxide solution. However, Verdegan teaches the importance of analyzing fluids in a wide variety of applications (paragraph 0001 “this description relates to the diagnoses of contamination issues in a fluid, for example a fluid for fuel, lubrication, power transfer, heat exchange or other fluids in fluid systems where contaminants in the fluids are of concern”) and it would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to use the claimed fluids, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07. In this case, quaternary amines can be used as disinfectants, and it would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to use the claimed liquids as part of a defect detection system, in order to insure a sterile environment.
As to claims 7, 9-11, the method would flow from claims 1, 4, 5, 1 respectively.
Claims 6, 12 are rejected under 35 U.S.C. 103 as being unpatentable over VKO, and further in view of Ichihara et al (JP 2013031835).
As to claim 6, VKO teaches everything claimed, as applied above in claim1, with the exception of a pore size of the filter is 100 nm or less. However, it is known in the art as taught by Ichihara. Ichihara teaches passing a liquid containing particles through a filter and analyzing the result (Abstract “To correctly evaluate the particle removing performance of a filter by using metal particles.”) using a filter with a pore size of the filter is 100 nm or less (paragraph 61 “there is a need for a new particle removal performance evaluation method for fine particle removal filters having a particle diameter of 30 nm or less” and 133 “according to the present example, it was found that the filter can be evaluated at a level satisfying the management index (1.0E + 04 particles / mL) of 20 nm”). It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to have a pore size of the filter is 100 nm or less, in order to better analyze and manage smaller particles.
As to claim 12, the method would flow from claim 6.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JARREAS UNDERWOOD whose telephone number is (571)272-1536. The examiner can normally be reached M-F 0600-1400 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle Iacoletti can be reached at (571) 2705789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.C.U/Examiner, Art Unit 2877
/MICHELLE M IACOLETTI/Supervisory Patent Examiner, Art Unit 2877