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 .
Drawings
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 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: an x-ray beam 120.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 521.
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 title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: HANDHELD X-RAY SYSTEM INCLUDING A CAMERA, A SET OF LINE LASERS, AND A STAND-ALONE DETECTOR PANEL.
Claim Objections
Claims 1-8, 18, and 19 are objected to because of the following informalities:
(Proposed Amendments) An x-ray system employed for x-ray scanning of an object, the x- ray system comprising:
a detector panel configured to capture an x-ray image of the object being scanned; and
a handheld x-ray instrument including:
a housing including a first handle and a second handle located on opposite sides of the housing from one another;
an x-ray source located in the housing, the x-ray source providing a high energy x-ray output centered on a projection axis;
a collimator located in the housing, the collimator configured to receive the high energy x-ray output and project a cone-shaped x-ray beam along the projection axis, the cone-shaped x-ray beam having a diameter that increases as a distance from the handheld x-ray instrument increases along the projection axis;
a first line laser and a second line [[laser]] laser, each located in the housing, the first line laser oriented to project a first laser line at a first angle relative to the projection axis,[[a]]the second line laser oriented to project a second laser line at a second angle relative to the projection axis, the first angle and the second angle, respectively, selected to provide a separation distance between the first laser line and the second laser line that is substantially equal to the diameter at any distance along the projection axis;
a camera located in the housing, the camera substantially aligned with the projection axis and configured to capture a digital image of the object being scanned by the x-ray source, the digital image including a camera image of a surface area of the object that faces the x-ray source;
a display housed in the housing and visible from an exterior of the housing, the display configured to display the digital image of the object being scanned by the x-ray source; and
a wireless communication system located in the housing, the wireless communication system configured to receive, from the detector panel, the x-ray image of the object being scanned.
Appropriate correction is required.
Claim 3 is objected to because of the following informalities:
3. (Proposed Amendments) The x-ray system of claim 1, wherein the surface area of the object includes a surface sized to encompass the diameter of the cone-shaped x-ray beam at the distance from the handheld x-ray instrument at which the object is located.
Appropriate correction is required.
Claims 4-6 are objected to because of the following informalities:
4. (Proposed Amendments) The x-ray system of claim 1,
wherein the first laser line is an upper laser line,
wherein the second laser line is a lower laser line that is projected parallel to the first laser line,
wherein the handheld x-ray instrument further includes a third line laser oriented to project a third laser line at a third angle relative to the projection axis,
wherein the handheld x-ray instrument further includes a fourth line laser oriented to project a fourth laser line at a fourth angle relative to the projection axis,
wherein the third angle and the fourth angle are selected to provide a separation distance between the third laser line and the fourth laser line that is substantially equal to the diameter at any distance along the projection axis, and
wherein the third laser line and the fourth laser line are projected parallel to one another and perpendicular to each of the first laser line and the second laser line.
Appropriate correction is required.
Claims 5 and 6 are objected to because of the following informalities:
5. (Proposed Amendments) The x-ray system of claim 4,
wherein the first laser line, the second laser line, the third laser [[line]] line, and the fourth laser line combine to define a parallelogram when displayed on [[the]] a surface (a lack of an antecedent basis) of the object being scanned, and
wherein the x-ray image (a previously recited limitation in claim 1) of the object being scanned by the x-ray source includes an entirety of a region of the surface of the object being scanned upon which the parallelogram is displayed.
Appropriate correction is required.
Claim 6 is objected to because of the following informalities:
6. (Proposed Amendments) The x-ray system of claim 5, wherein the digital image of the object being scanned by the x-ray source (a previously recited limitation in claim 1) captured by the camera is rendered for display in the display in combination with the x-ray image of the object being scanned captured by the detector panel when the object is scanned using the high energy x-ray output.
Appropriate correction is required.
Claim 7 is objected to because of the following informalities:
7. (Proposed Amendments) The x-ray system of claim 1, wherein the digital image of the object being scanned by the x-ray source (a previously recited limitation in claim 1) provided by the camera includes a video image.
Appropriate correction is required.
Claim 8 is objected to because of the following informalities:
8. (Proposed Amendments) The x-ray system of claim 1,
wherein the camera includes a camera sensor, and
wherein the camera is positioned in a substantial alignment (a lack of an antecedent basis) distance of two inches .
Appropriate correction is required.
Claims 18 and 19 are objected to because of the following informalities:
18. (Proposed Amendments) The x-ray system of claim 1, wherein the housing is configured to provide an enclosure to protect [[the]] internal components (a lack of an antecedent basis) housed in the housing.
Appropriate correction is required.
Claim 19 is objected to because of the following informalities:
19. (Proposed Amendments) The x-ray system of claim 19, wherein the housing includes ABS plastic.
Appropriate correction is required.
Claims 9-11 and 20-24 are objected to because of the following informalities:
9. (Proposed Amendments) An x-ray system employed for x-ray scanning of an object, the x- ray system comprising:
a detector panel configured to capture an x-ray image of the object being scanned; and
a handheld x-ray instrument including:
a housing configured to provide an enclosure to protect internal components of the handheld x-ray instrument housed in the housing;
an x-ray source located in the housing, the x-ray source providing a high energy x-ray output centered on a projection axis;
a collimator located in the housing, the collimator configured to receive the high energy x-ray output and project a cone-shaped x-ray beam along the projection axis, the cone-shaped x-ray beam having a diameter that increases as a distance from the handheld x-ray instrument increases along the projection axis;
a first pair of line lasers located in the housing, the first pair of line lasers including an upper line laser oriented to project a first laser line at a first angle relative to the projection axis, and a lower line laser oriented to project a second laser line at a second angle relative to the projection axis, the second laser line projected parallel to the first laser line, the first angle and the second angle, respectively, selected to provide afirst separation distance between the first laser line and the second laser line that is substantially equal to the diameter at any distance along the projection axis, the first pair of line lasers configured to project a parallel set of lines displayed on a surface of the object being scanned;
a camera located in the housing, the camera substantially aligned with the projection axis, the camera configured to capture a digital image of the object being scanned by the x-ray source, the camera configured to capture video imaging of the surface of the object being scanned with the parallel set of lines displayed thereon;
a display housed in the housing, the display configured to display together both the x-ray image of the object being scanned captured by the detector panel and the digital image of the object being scanned, respectively, the digital image of the object being scanned captured during a period in which the x-ray source is providing (as recited in claim 9) the high energy x-ray output; and
a wireless communication system located in the housing, the wireless communication system configured to receive, from the detector panel, the x-ray image of the object being scanned,
wherein the detector panel and the handheld x-ray instrument are free of any mechanical interconnection between one another such that the detector panel can be moved freely and located on a side of the object opposite a side of the object from which the high energy x-ray output is provided by the source, independent of a position at which the handheld x-ray instrument is located on the side of the object from which the high energy x-ray output is provided by the x-ray source.
Appropriate correction is required.
Claim 10 is objected to because of the following informalities:
10. (Proposed Amendments) The x-ray system of claim 9, wherein the detector panel can be moved freely and located on the side of the object opposite the side of the object from which the high energy x-ray output is provided by the source, independent of the position [[of]] at which the handheld x-ray instrument is located (previously recited in claim 9), with the handheld x-ray instrument in position to begin [[the]] an x-ray scan (a lack of an antecedent basis).
Appropriate correction is required.
Claim 11 is objected to because of the following informalities:
11. (Proposed Amendments) The x-ray system of claim 9, wherein the digital image of the object being scanned by the x-ray source (a previously recited limitation in claim 9) captured by the camera is rendered for display in the display in combination with the x-ray image of the object being scanned captured by the detector panel when the object is scanned using the high energy x-ray output.
Appropriate correction is required.
Claims 20-23 are objected to because of the following informalities:
20. (Proposed Amendments) The x-ray system of claim 9, further comprising:
a second pair of line lasers located in the housing, the second pair of line lasers including a first-side line laser oriented to project a third laser line at a third angle relative to the projection axis, and a second- side line laser oriented to project a fourth laser line at a fourth angle relative to the projection axis, the fourth laser line projected parallel to the third laser line,
the third angle and the fourth angle, respectively, selected to provide a second separation distance between the third laser line and the fourth laser line that is substantially equal to the first separation distance,
each of the third laser line and the fourth laser line, respectively, projected perpendicular to each of the first laser line and the second laser line, respectively, and
the first laser line, the second laser line, the third laser [[line]] line, and the fourth laser line combining to define a parallelogram when displayed on a surface of the object being scanned.
Appropriate correction is required.
Claim 21 is objected to because of the following informalities:
21. (Proposed Amendments) The x-ray system of claim 20, wherein the detector panel can be moved freely and located on the side of the object opposite the side of the object from which the high energy x-ray output is provided by the source, independent of the position [[of]] at which the handheld x-ray instrument is located, (previously recited in claim 9) with the handheld x-ray instrument in position to begin [[the]] an x-ray scan (a lack of an antecedent basis).
Appropriate correction is required.
Claims 22 and 23 are objected to because of the following informalities:
22. (Proposed Amendments) The x-ray system of claim 20, wherein the digital image of the object being scanned by the x-ray source (a previously recited limitation in claim 9) captured by the camera is rendered for display in the display in combination with the x-ray image of the object being scanned captured by the detector panel when the object is scanned using the high energy x-ray output.
Appropriate correction is required.
Claim 23 is objected to because of the following informalities:
23. (Proposed Amendments) The x-ray system of claim 22, wherein the display includes a graphical user interface with icon-based inputs [[are]] is rendered in the display in combination with the digital image of the object captured .
Appropriate correction is required.
Claim 24 is objected to because of the following informalities:
24.(Proposed Amendments) The x-ray system of claim 9, wherein the housing includes
wherein the first handle is positioned on a first side of the housing, and
wherein the second handle is positioned on a second side of the housing, the second side of the housing being a different side of the housing than the first side of the housing.
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 a 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 a 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 application 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 uses a generic placeholder (i.e., a wireless communication system) 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 limitation is: a wireless communication system in claims 1-11 and 18-24.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover a corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this limitation 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 to avoid it 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 recites sufficient structure to perform the claimed function so as to avoid it 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.
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.
Claims 1-11 and 18-24 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, 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.
Claim 1 recites a limitation “a wireless communication system located in the housing, the wireless communication system configured to receive, from the detector panel, the x-ray image of the object being scanned” in lines 26-28. However, the specification does not describe electronic components of the wireless communication system. Therefore, the claim 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.
Claim 9 recites a limitation “a wireless communication system located in the housing, the wireless communication system configured to receive, from the detector panel, the x-ray image of the object being scanned” in lines 40-42. However, the specification does not describe electronic components of the wireless communication system. Therefore, the claim 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.
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 pre-AIA 35 U.S.C. 112, 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 6, 9-11, and 18-24 are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, 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 6, 11, and 22 recite a functional limitation “the digital image captured by the camera is rendered for display in the display in combination with the x-ray image of the object captured by the detector panel when the object is scanned using the high energy x-ray output” in lines 1-3, which renders the claim indefinite because the claim does not provide a discernable boundary on which structure performs the function.
During examination, claims are given their broadest reasonable interpretation (BRI) in light of the specification as it would be interpreted by one of ordinary skill in the art. It is a best practice to make the record clear during prosecution by explaining the BRI of claim terms, as necessary, including explaining the BRI of any functional language. When 35 U.S.C. 112(f) is invoked, the BRI of the “means-plus-function” limitation is restricted to a corresponding structure in the supporting disclosure, and its equivalents (a corresponding specification that identifies and links a structure, material, or act to the function recited in the claim is considered to be part of the claim limitation). When 35 U.S.C. 112(f) is not invoked and an element is recited along with a function, that element is construed as being capable of performing the function – in other words, the BRI of that element is limited by the function.
It should be kept in mind, however, that there is a distinction between reciting a function compared to reciting an intended use or result. A functional limitation can provide a patentable distinction (limit the claim scope) by imposing limits on the function of a structure, material, or action. Typically, no patentable distinction (no limit on the claim scope) is made by an intended use or result unless some structural difference is imposed by the use or result on the structure or material recited in the claim, or some manipulative difference is imposed by the use or result on the action recited in the claim.
While functional limitations may be properly used in claims, the boundaries imposed by a functional limitation must be clearly defined to be definite under 35 U.S.C. 112(b). Claim language that merely states a result to be obtained without providing boundaries on the claim scope (e.g., by not specifying any way to achieve those results) is unclear. Consider the following to determine whether a claim limitation expressed in functional language has clear boundaries: whether one of ordinary skill in the art can determine what structure, material, or act in the claim performs this function; whether the limitation has well defined boundaries or only expresses a problem solved or intended result; and what an anticipatory reference would need to disclose in order to satisfy this claim limitation. These considerations are not all-inclusive or limiting.
When 35 U.S.C. 112(f) is invoked, the specification must adequately disclose a corresponding structure, material, or act that performs the function. For “means”-type claims, an adequate disclosure requires that a corresponding structure or material is: (a) disclosed in a way that one of ordinary skill in the art will understand what specific structure or material the inventor has identified to perform the recited function; (b) sufficient to perform the entire function recited in the claim limitation; and (c) clearly linked to the function in the written description.
When the examiner determines that the boundaries of a claim are not reasonably clear, a rejection under 35 U.S.C. 112(b) should be made. Such a rejection puts the applicant on notice that it must fulfill its statutory duty under 35 U.S.C. 112(b) to ensure that claim language clearly defines the boundaries of the claim scope sought. In making a rejection, the examiner must identify the specific claim language that is indefinite, and explain why that language renders the boundaries of the claim unclear. When possible, the examiner should suggest how the indefiniteness issues may be resolved.
The boundaries of the functional language are unclear because the claim does not provide a discernable boundary on which structure performs the function. The recited function does not follow from the structure recited in the claim, i.e., a detector panel, a handheld x-ray instrument, a housing, an x-ray source, a collimator, a first line laser, a second line laser, a camera, a display, and a wireless communication system, so it is unclear whether the function requires some other structure or is simply a result of operating the x-ray system in a certain manner. Thus, one of ordinary skill in the art would not be able to draw a clear boundary between what is and is not covered by the claim. See MPEP 2173.05(g) for more information.
The limitation is unclear because it merely states a function (“the digital image captured by the camera is rendered for display in the display in combination with the x-ray image of the object captured by the detector panel when the object is scanned using the high energy x-ray output”) without providing any indication about how the function is performed. The recited function does not follow from the structure recited in the claim, i.e., a detector panel, a handheld x-ray instrument, a housing, an x-ray source, a collimator, a first line laser, a second line laser, a camera, a display, and a wireless communication system, so it is unclear whether the function requires some other structure or is simply a result of operating the x-ray system in a certain manner.
Claim 18 recites a limitation “the internal components” in line 2, which renders the claim indefinite. There is insufficient antecedent basis for the limitation in the claim. It is unclear whether the limitation refers to the x-ray source, the collimator, the first line laser, the second line laser, the camera, the display, and the wireless communication system recited in claim 1.
Claim 19 depends on itself, which renders the claim indefinite.
Claim 9 recites a limitation “internal components” in line 5, which renders the claim indefinite. It is unclear whether the handheld x-ray instrument includes internal components other than an x-ray source, a collimator, a first pair of line lasers, a camera, a display, and a wireless communication system.
Claim 23 recites a functional limitation “a graphical user interface with icon-based inputs is rendered in the display in combination with the image provided by the camera and the x-ray image of the object captured by the detector panel” in lines 1-3, which renders the claim indefinite because the claim does not provide a discernable boundary on which structure performs the function.
While functional limitations may be properly used in claims, the boundaries imposed by a functional limitation must be clearly defined to be definite under 35 U.S.C. 112(b). Claim language that merely states a result to be obtained without providing boundaries on the claim scope (e.g., by not specifying any way to achieve those results) is unclear. Consider the following to determine whether a claim limitation expressed in functional language has clear boundaries: whether one of ordinary skill in the art can determine what structure, material, or act in the claim performs this function; whether the limitation has well defined boundaries or only expresses a problem solved or intended result; and what an anticipatory reference would need to disclose in order to satisfy this claim limitation. These considerations are not all-inclusive or limiting.
When 35 U.S.C. 112(f) is invoked, the specification must adequately disclose a corresponding structure, material, or act that performs the function. For “means”-type claims, an adequate disclosure requires that a corresponding structure or material is: (a) disclosed in a way that one of ordinary skill in the art will understand what specific structure or material the inventor has identified to perform the recited function; (b) sufficient to perform the entire function recited in the claim limitation; and (c) clearly linked to the function in the written description.
When the examiner determines that the boundaries of a claim are not reasonably clear, a rejection under 35 U.S.C. 112(b) should be made. Such a rejection puts the applicant on notice that it must fulfill its statutory duty under 35 U.S.C. 112(b) to ensure that claim language clearly defines the boundaries of the claim scope sought. In making a rejection, the examiner must identify the specific claim language that is indefinite, and explain why that language renders the boundaries of the claim unclear. When possible, the examiner should suggest how the indefiniteness issues may be resolved.
The boundaries of the functional language are unclear because the claim does not provide a discernable boundary on which structure performs the function. The recited function does not follow from the structure recited in the claim, i.e., a detector panel, a handheld x-ray instrument, a housing, an x-ray source, a collimator, a first pair of line lasers, a camera, a display, and a wireless communication system, so it is unclear whether the function requires some other structure or is simply a result of operating the x-ray system in a certain manner. Thus, one of ordinary skill in the art would not be able to draw a clear boundary between what is and is not covered by the claim. See MPEP 2173.05(g) for more information.
The limitation is unclear because it merely states a function (“a graphical user interface with icon-based inputs is rendered in the display in combination with the image provided by the camera and the x-ray image of the object captured by the detector panel”) without providing any indication about how the function is performed. The recited function does not follow from the structure recited in the claim, i.e., a detector panel, a handheld x-ray instrument, a housing, an x-ray source, a collimator, a first pair of line lasers, a camera, a display, and a wireless communication system, so it is unclear whether the function requires some other structure or is simply a result of operating the x-ray system in a certain manner.
Claim limitation “a wireless communication system configured to receive, from the detector panel, the x-ray image of the object being scanned” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose a corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the 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 a 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 a 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 a 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.
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,422,384 B2 in view of Nariyuki et al. (U. S. Patent No. 9,931,089 B2).
With respect to claim 1, claim 1 of U.S. Patent No. 12,422,384 B2 claims an x-ray system employed for x-ray scanning of an object, the x-ray system comprising:
a detector panel configured to capture an x-ray image of the object being scanned; and
a handheld x-ray instrument including:
an x-ray source providing a high energy x-ray output centered on a projection axis;
a collimator configured to receive the high energy x-ray output and project a cone-shaped x-ray beam along the projection axis, the cone-shaped x-ray beam having a diameter that increases as a distance from the handheld x-ray instrument increases along the projection axis;
a first line laser and a second line laser, the first line laser oriented to project a first laser line at a first angle relative to the projection axis, the second line laser oriented to project a second laser line at a second angle relative to the projection axis, the first angle and the second angle, respectively, selected to provide a separation distance between the first laser line and the second laser line that is substantially equal to the diameter at any distance along the projection axis;
a camera substantially aligned with the projection axis and configured to capture a digital image of the object being scanned by the x-ray source, the digital image including a camera image of a surface area of the object that faces the x-ray source;
a display configured to display the digital image of the object being scanned by the x-ray source; and
a wireless communication system configured to receive, from the detector panel, the x-ray image of the object being scanned.
However, claim 1 of U.S. Patent No. 12,422,384 B2 does not claim that the x-ray system further comprising:
a handheld x-ray instrument further including:
a housing including a first handle and a second handle located on opposite sides of the housing from one another.
Nariyuki et al. disclosed an X-ray system, comprising:
a handheld x-ray instrument (10) including:
a housing (11) including a first handle (16) and a second handle (17) located on opposite sides of the housing from one another.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include a housing including a first handle and a second handle located on opposite sides of the housing from one another, since a person would be motivated to maintain a functionality of interior components by providing a physical barrier and a protection to the internal components from an external environment, and to achieve a stable orientation of the handheld x-ray instrument by providing mechanical structures for grasping the handheld x-ray instrument.
With respect to claim 9, claim 9 of U.S. Patent No. 12,422,384 B2 claims an x-ray system employed for x-ray scanning of an object, the x- ray system comprising:
a detector panel configured to capture an x-ray image of the object being scanned; and
a handheld x-ray instrument including:
an x-ray source providing a high energy x-ray output centered on a projection axis;
a collimator configured to receive the high energy x-ray output and project a cone-shaped x-ray beam along the projection axis, the cone-shaped x-ray beam having a diameter that increases as a distance from the handheld x-ray instrument increases along the projection axis;
a first pair of line lasers including an upper line laser oriented to project a first laser line at a first angle relative to the projection axis, and a lower line laser oriented to project a second laser line at a second angle relative to the projection axis, the second laser line projected parallel to the first laser line, the first angle and the second angle, respectively, selected to provide a first separation distance between the first laser line and the second laser line that is substantially equal to the diameter at any distance along the projection axis, the first pair of line lasers configured to project a parallel set of lines displayed on a surface of the object being scanned;
a camera substantially aligned with the projection axis, the camera configured to capture a digital image of the object being scanned by the x-ray source, the camera configured to capture video imaging of the surface of the object being scanned with the parallel set of lines displayed thereon;
a display configured to display together both the x-ray image of the object being scanned captured by the detector panel and the digital image of the object being scanned, respectively, the digital image of the object being scanned captured during a period in which the x-ray source is providing the high energy x-ray output; and
a wireless communication system configured to receive, from the detector panel, the x-ray image of the object being scanned,
wherein the detector panel and the handheld x-ray instrument are free of any mechanical interconnection between one another such that the detector panel can be moved freely and located on a side of the object opposite a side of the object from which the high energy x-ray output is provided by the x-ray source, independent of a position at which the handheld x-ray instrument is located on the side of the object from which the high energy x-ray output is provided by the x-ray source.
However, claim 9 of U.S. Patent No. 12,422,384 B2 does not claim that the x-ray system, further comprising:
a handheld x-ray instrument further including:
a housing configured to provide an enclosure to protect internal components of the handheld x-ray instrument housed in the housing.
Nariyuki et al. disclosed an x-ray system, comprising:
a handheld x-ray instrument (10) further including:
a housing (11) configured to provide an enclosure to protect internal components of the handheld x-ray instrument housed in the housing.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to include a housing, since a person would be motivated to maintain a functionality of interior components by providing a physical barrier and a protection to the internal components from an external environment.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bradshaw (U. S. Patent No. 12,422,384 B2) disclosed a handheld X-ray system including a stand-alone detector panel.
Couture et al. (U. S. Patent No. 11,340,361 B1) disclosed an X-ray scanner comprising a wireless transmission detector panel.
Pospisil et al. (U. S. Patent No. 11,235,396 B2) disclosed a system and a method for a self-contained through sensor for determining an actuation position for a machine.
Nakamura et al. (U. S. Patent No. 11,202,361 B2) disclosed an X-ray tube device.
Pospisil et al. (U. S. Patent No. 11,036,201 B2) disclosed a system and a method for an automation of sensing and an actuation of a machine in a manufacturing environment.
Pospisil et al. (U. S. Patent No. 11,003,156 B2) disclosed a system and a method for an automated alignment of an aperture in a response to detecting an object.
Diaz Carmena et al. (U. S. Patent No. 10,842,449 B2) disclosed a portable X-ray device comprising a side handle and a rear handle.
Tkaczyk et al. (U. S. Patent No. 10,568,602 B2) disclosed a virtual positioning image in imaging.
Wang et al. (U. S. Patent No. 10,285,656 B2) disclosed an X-ray imaging system and a method.
Geier et al. (U. S. Patent No. 10,078,060 B2) disclosed a handheld instrument and a mobile device for an X-ray fluorescence analysis.
Nariyuki et al. (U. S. Patent No. 9,931,089 B2) disclosed a radiation irradiation apparatus comprising two handles.
Kuwabara (U. S. Patent No. 9,050,059 B2) disclosed a system comprising a radiation imaging apparatus.
Laws et al. (U. S. Patent No. 9,028,145 B2) disclosed an apparatus and methods for a collimation of X-rays.
Piorek et al. (U. S. Patent No. 7,916,834 B2) disclosed a small-spot X-ray fluorescence (XRF) analyzer.
He et al. (U. S. Patent No. 7,646,847 B2) disclosed a handheld two-dimensional X-ray diffractometer.
Kuramoto et al. (U. S. Patent No. 6,805,484 B2) disclosed a digital radiography panel comprising a handle.
Mueller et al. (U. S. Patent No. 6,697,453 B1) disclosed a portable X-ray diffractometer.
Miles (U. S. Patent No. 5,631,943 A) disclosed a portable X-ray device.
Polichar et al. (U. S. Patent No. 5,608,774 A) disclosed an X-ray portable digital apparatus comprising an imager.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Allen C. Ho, whose telephone number is (571) 272-2491. The examiner can normally be reached Monday - Friday 10AM - 6PM.
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Allen C. Ho, Ph.D.
Primary Examiner
Art Unit 2884
/Allen C. Ho/Primary Examiner, Art Unit 2884 Allen.Ho@uspto.gov