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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/22/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim 11 is rejected under 35 U.S.C. 112(a) as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without establishing the link between the predicted chopper modulation frequency and what the spectrometer does with the value once it has been fed back, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).
Claim 11 requires that the modulation frequency of the chopper and the substance content analysis (the analysis being based on the electrical signals detected by the photodetector that is phase locked with the chopper modulation frequency) into a predictive computer model, where the model returns a predicted modulation frequency that is compared to a preset confidence threshold. If the predicted modulation frequency passes the threshold, then it is “fed back” into the spectrometer. This is discussed at least in par.0082 of the specification as originally filed.
The first omission is that there is no explanation of what the preset confidence threshold is or what it represents.
The second omission is that there is no explanation of what “fed back” into the spectrometer means. Is it fed back to correct the substance content analysis? Is it meant to re-run the analysis on the fruit with a different chopper modulation frequency? There is no clear result or benefit disclosed by feeding back the predicted modulation frequency of the chopper since the disclosure is silent regarding how the predicted modulation frequency is used by the spectrometer.
The only discussion of a potential result and corresponding benefit is in par.0084, where the specification states, “with the above solution…the spectroscopic detection device can quickly select and adjust a spectral band according to different trace substances…to be detected in a batch of fruits.” This does not make sense because the modulation frequency of the chopper has nothing to do with the detected spectral bands. The spectral bands detected by the spectrometer are defined by the claimed filter device placed in the optical path between the fruit and the photodetector. There is no disclosed link between the predicted chopper modulation frequency and selecting or adjusting a spectral band of the spectrometer.
For at least these reasons, the claims are not enabled such that one of ordinary skill in the art can make and/or use the 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.
Claim 11 is 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.
Claim 11 requires that, after an object is analyzed, the chopper modulation frequency and the substance content analysis are fed into a predictive computer model that returns a predicted modulation frequency that is fed back into the spectrometer when the predicted modulation frequency clears a confidence threshold.
The scope of the claim is indefinite at least because of one or more of the following:
a) the method ends prematurely. What the spectrometer does with the predicted modulation frequency of the chopper is unclear. There is no correction of the substance content analysis, nor is there any repeating of the analysis with the new chopper frequency.
b) the significance of the confidence threshold is not clear. Is the predicted modulation frequency supposed to be close to the one used to generate the substance content analysis? To what is the predicted modulation frequency being compared?
c) the inputting step is unclear at least because the N sets of data is not understood. Presumably, the prediction model would already be trained on that data. Why is the queried modulation frequency being input?
For at least these reasons, one of ordinary skill in the art cannot ascertain the meets and bounds of the claim.
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 12-15 are 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.
Claims 12-15 each recite wavelengths that are not included in the claimed ranges of their respective parent claims 2-4. As such, the claims fail to further limit their parent claims by requiring one or more wavelengths that are outside of the claimed range of their respective parent claims.
Claim 15 further appears redundant to claim 12, since both claims are verbatim identical, and each depend from claim 2. It appears as though the claim should depend from claim 5. Even if that were so, claim 15 still fails under 112(d) because the claim still requires one or more wavelengths outside of the claimed range of the parent claim (in this case, the range required by claim 5).
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 § 102
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.
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.
Claims 1-5, 7 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Islam (US 2021/0038083 A1).
Regarding claim 1, Islam discloses a spectroscopic detection method (Figs.43 and 45A), including:
a) activating a light source device 4301 to generate light;
b) providing a convergence device 4302 on an optical path of the light generated by the light source device 4301 to converge the light to obtain converged light;
c) controlling and driving a chopping device 4303 to adjust a frequency of the converged light to obtain detection light used for irradiating a product 4304 and having a modulation frequency;
d) providing a filter device (4306 and/or filter wheel: par.0291) on an optical path of the detection light to shield light of a wavelength other than a preset wavelength in the detection light passing through the product 4304 to obtain characteristic light;
e) controlling a detection device 4307 to receive the characteristic light and convert an optical signal of the characteristic light into an electrical signal; and
f) controlling a processing device to generate spectroscopic analysis data according to the electrical signal output by the detection device and output a substance content analysis result according to the spectroscopic analysis data (Fig.45A; also see par.0287); where
g) the preset wavelength of the filter device ranges from 400nm to 5000nm (Figs.39 and 45A).
With respect to claim 2, Islam further discloses that the preset wavelength of the filter device includes at least 900 nm to 1200 nm (Figs.39 and 45A).
With respect to claim 3, Islam further discloses that the preset wavelength of the filter device includes at least 1300 nm to 1500 nm (Figs.39 and 45A).
With respect to claim 4, Islam further discloses that the preset wavelength of the filter device includes at least 1600 nm to 1800 nm (Figs.39 and 45A).
With respect to claim 5, Islam further discloses that the preset wavelength of the filter device includes at least 2200 nm to 2400 nm (Figs.39 and 45A).
With respect to claim 7, Islam further discloses controlling a phase lock device 4308 to improve an SNR of the electrical signal output by the detection device 4307 to the processing device (Fig.43).
With respect to claim 8, Islam further discloses:
h) controlling the chopping device 4303 to send a frequency signal of the modulation frequency to the phase lock device 4308; and
i) demodulating, by the phase lock device 4308 according to the frequency signal of the modulation frequency, the electrical output signal by the detection device 4307 (Fig.43).
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.
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 6, 9, 10 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Islam, as applied to claim 1 above, in view of Ozanich (US 6,847,447 B2).
With respect to claims 6 and 12-15, Islam does not specifically disclose particular wavelengths for the filter device.
However, Islam does demonstrate that the disclosed embodiment of Fig.43 is sensitive in the range where the claimed wavelengths lie for analyzing vegetation (pars.0293 and 0296; pinewood spectrum 4502, Fig.45A). Islam further teaches that the spectrometer may be tuned to a variety of desired wavelengths or bands thereof (par.0291).
Ozanich teaches the practice of providing multiple spectrometers 170 (Fig.1D) or narrow band filters 130 paired with photodetectors 255 (Fig.1E) for selecting desired wavelengths from the fruit being analyzed in order to select the known portions of the NIR spectrum corresponding to the one or more compounds being detected in the fruit for improved analysis precision.
It would have been obvious to one of ordinary skill in the art at the time of the invention for Islam to have the preset wavelength of the filter device to include at least one or more of 900 nm, 1,180 nm, 1,400 nm, 1,720 nm and 2,350 nm in order to optimize detection of one or more desired compound(s) in the fruit, as taught by Ozanich. In addition, when the general condition of the claims have been met, it only requires routine experimentation to find an optimal or workable range of a result-effective variable with a reasonable expectation of success and without undue experimentation, absent a critical nature or an unexpected result (see MPEP 2144.05(II)(A) and (B)).
With respect to claim 9, Islam further discloses:
j) the light source 4301 is a broadband NIR light source (Figs.21-23; pars.0202-0203; short-wave IR and near-IR are substantially the same general range of IR wavelengths that borders the visible band); and
k) the detection device 4307 includes at least one NIR photodetector (par.0291).
Further with respect to claim 9, Islam does not specifically disclose that the source is a halogen lamp. However, Islam does state that halogen lamps may be suitable in close range applications due to their common use, simplicity and low cost (par.0196).
Ozanich teaches the practice of using tungsten halogen lamps 123 for NIR spectroscopy of fruit as a compact and cost-effective means of analyzing the NIR spectra of fruit at close range (see at least Figs.1, 2 and 5).
It would have been obvious to one of ordinary skill in the art at the time of the invention for Islam to use a halogen lamp as the light source in order to provide a compact and cost-effective broadband NIR source, as taught by Ozanich.
With respect to claim 10, Islam further discloses that the NIR photodetector is an InGaAs based photodetector (par.0301).
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 1 and 7-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 7-9, 11, 12, 14 and 17-19 of copending Application No. 18/613,198 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 is anticipated by the narrower scope of copending claim 1, where the copending claim has an additional limitation of a signal amplifier.
Claims 7 and 8 are anticipated by copending claims 7, 8, 11, 17 and 18.
Claims 9 and 10 are anticipated by copending claims 2, 4, 9, 11, 12, 14 and 19.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim 11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a)&(b) set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: while Islam teaches all aspects of the spectrometer (see the rejection of claims 1, 7 and 8 above), and Ozanich teaches the practice of having a plurality of spectrometers, each dedicated to each desired narrow wavelength band of the substance(s) to be detected in the fruit.
However, the prior art neither teaches nor reasonably suggests the querying, inputting and determining steps as required by the combination of features as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS R ARTMAN whose telephone number is (571)272-2485. The examiner can normally be reached Monday-Thursday 10am-6:30pm.
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, David Makiya can be reached on 571.272.2273. 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.
THOMAS R. ARTMAN
Primary Examiner
Art Unit 2884
/THOMAS R ARTMAN/Primary Examiner, Art Unit 2884