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
.
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.
Response to Amendment
The amendments to specification, and drawings filed 07/09/2026 have been considered and entered. The amendments to the claims filed 07/09/2026 has been considered and determined to comprise new matter; see related rejections thereof.
Response to Arguments
Applicant's arguments filed 07/09/2026 have been fully considered.
Regarding the objection(s) to the drawings pertaining to reproducibility, shading/hatching, & legibility, Applicant argued that the amendment overcame said objection(s); the Examiner is in agreement, therefore said objection(s) has/have been withdrawn.
Regarding the objection(s) to the drawings pertaining to reference characters not properly applied in fig. 1, Applicant argued that the amendment overcame said objection(s); the Examiner is in agreement, therefore said objection(s) has/have been withdrawn.
Regarding the drawing objections pertaining to the Examiner requiring claimed subject matter to be shown, Applicant argued that the unshown claimed feature(s) do/does not require a drawing in order to be understood by a person of ordinary skill in the art, since said feature(s) is/are sufficiently described in the text of the application. 37 C.F.R. 1.83 CONTENT OF DRAWING states (bold added for emphasis)
(a) The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box). In addition, tables that are included in the specification and sequences that are included in sequence listings should not be duplicated in the drawings.
(b) When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith.
(c) Where the drawings in a nonprovisional application do not comply with the requirements of paragraphs (a) and (b) of this section, the examiner shall require such additional illustration within a time period of not less than two months from the date of the sending of a notice thereof. Such corrections are subject to the requirements of § 1.81(d)..
In the present case the Examiner is properly requiring the additional illustration—without introducing new matter—Applicant’s features of the invention specified in the claims. Therefore, regardless of the presence or absence of written description for a claimed feature, each claimed feature must be shown in the drawings or canceled from the claims. See MPEP § 608.02(D) COMPLETE ILLUSTRATION IN DRAWINGS.
Further regarding the drawing objections pertaining to the Examiner requiring claimed subject matter to be shown, Applicant argued that MPEP § 608.02 requires only that “The applicant shall furnish a drawing where necessary for the understanding of the subject matter to be patented”. The Examiner notes that as put forth above, that when the subject matter to be patented is explicitly claimed (as opposed to merely background or supporting information), 37 CFR 1.83 explicitly instructs the Examiner to require the illustration thereof. Furthermore, the Examiner states explicitly for the record that the showing of the aforementioned claimed subject matter is necessary for understanding of the subject matter to be patented. The Examiner is therefore unpersuaded by Applicant’s argument.
Yet further regarding the drawing objections pertaining to the Examiner requiring claimed subject matter to be shown, Applicant argued that the showing of the claimed feature(s) of the invention is not necessary for understanding by an ordinary artisan. However this argument is merely an assertion and lacks the necessary supporting evidence. MPEP § 2145(I) state-in-part: “Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection". Furthermore, the Examiner has determined that the aforementioned illustrations of the claimed subject matter are required for understanding. MPEP § 2141(II)(C) states: “Office personnel may rely on their own technical expertise to describe the knowledge and skills of a person of ordinary skill in the art. The Federal Circuit has stated that examiners and administrative patent judges on the Board are “persons of scientific competence in the fields in which they work” and that their findings are “informed by their scientific knowledge, as to the meaning of prior art references to persons of ordinary skill in the art.” In re Berg, 320 F.3d 1310, 1315, 65 USPQ2d 2003, 2007 (Fed. Cir. 2003). In addition, examiners “are assumed to have some expertise in interpreting the references and to be familiar from their work with the level of skill in the art.” PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 86 USPQ2d 1385 (Fed. Cir. 2008) (quoting Am. Hoist & Derrick Co. v. Sowa & Sons, 725 F.2d 1350, 1360, 220 USPQ 763, 770 (Fed. Cir. 1984). See MPEP § 2141 for a discussion of the level of ordinary skill. In the present case, the Examiner acknowledges that none of the claims lack novelty (i.e., no 102 anticipatory rejections thereof), the Examiner further notes that the claims are not structured as a Jepson claim with the unshown features in question as part of the conventional limitations, and Applicant has argued that the claimed features not illustrated are non-obviousness and contribute to reasons of allowability over the prior art. The Examiner further notes that multiple 112 rejections as well as questions regarding proper claim interpretation likewise pertain to these unshown claimed features. The Examiner is therefore unpersuaded by Applicant’s arguments that the claimed feature(s) of the invention not shown are not necessary for understanding.
Regarding the objection(s) to the Abstract, Applicant argued that the amendment overcame said objection(s); the Examiner is in agreement, therefore said objection(s) has/have been withdrawn.
Regarding the objection(s) to the Specification, Applicant argued that the amendment overcame said objection(s); the Examiner is in agreement, therefore said objection(s) has/have been withdrawn.
Regarding the objection(s) to claim(s) 1 and 4, Applicant argued that the amendment overcame said objection(s); the Examiner is in agreement, therefore said objection(s) has/have been withdrawn.
Regarding the 112(b)/2nd indefinite rejection pertaining to the variable object of the test material, Applicant argued that the amendment clarifying the claim overcame the rejection. The Examiner is in general agreement, noting that that the control unit is now configured to vary the acoustic impedance based on the test material, and therefore the Examiner withdraws said rejections. However, upon further consideration after re-reading the disclosure and reviewing again the drawings, it is not readily apparent to the Examiner how the control unit performs this feature; see related new 112 rejections.
Regarding the 112(b)/2nd indefinite rejection(s) of claim(s) 4 and 22 pertaining to antecedent basis, Applicant argued that the amendment overcame said rejection(s); the Examiner is in agreement, therefore said rejection(s) have been withdrawn.
Regarding the 112(b)/2nd indefinite rejection(s) of claim(s) 15 pertaining to an incomplete & unclear phrasing, Applicant argued that the amendment overcame said rejection(s); the Examiner is in agreement, therefore said rejection(s) have been withdrawn.
Regarding the 112(b)/2nd indefinite rejection(s) and 112(a)/1st enablement rejections of claim(s) 11 pertaining to claim interpretation and enablement thereof, Applicant argued that the amendment overcame said rejection(s). The Examiner is in partial agreement, noting that the amendment substantially changes the claim interpretation, therefore, technically the Examiner withdraws the previous rejections over the previous claim interpretation; however, upon further consideration after re-reading the disclosure and reviewing again the drawings it is not readily apparent to the Examiner how the control unit performs this feature; see related new claim interpretation & 112 rejections.
Further regarding the 112(a)/1st enablement rejection of claim(s) 11 and still pertinent to the amendment thereof, Applicant argued that the disclosure teaches that the heat exchanger of paragraph [0151] is likewise utilized for performing the exchange of the first and second couplant agents. The Examiner has looked to the disclosure for guidance and found no drawings depicting this feature, but did find the following relevant portions of the specification pertaining to the heat exchanger (bold added for convenience to identify the heat exchanger):
[0151] Glycerin water mixtures are traditionally used as anti-freeze. The addition of corrosion inhibitors such as carboxylate or other positive inorganic salt along with defoamer such as tributyl phosphate (TiBP) reduced the chances of corrosion by hindering the corrosion mechanism in metals as depriving the couplant of dissolved and entrained air. Additionally, in applications where the enclosed device was placed in a hot environment, the couplant mixture can be circulated through a heat exchanger to be cooled and recirculated due to its high heat carrying capacity. Additionally, should the device be operating at temperatures below 0°C, the antifreeze will extend the device functionality by lowering the freezing point.
[0154] Conclusion. This study investigated the possibility of an enclosure for immersion transducer with carefully selected packaging materials that may be dictated by the environment in which it is deployed, usually for protection of Piezo electric transducers or others from destructive environmental elements. By using a mixture of miscible liquid systems or solid-liquid solutions and appropriate corrosion inhibitors, the acoustic impedance of the couplant was modified to mitigate its impedance disparity with both transducer matching layer as well as the packaging material enclosing the couplant, transducer and/or the circuits. As a result, the throughput of signal is improved up to 50% at the sample-device interface. The SNR was improved by varying the couplant mixture composition. The bandwidth was improved by varying the mixture ratio of couplant in the enclosed device. The range of operation of transducer was improved by lowering the freezing point of the couplant. A safe operating condition was ensured for optimal operation of the transducer by making it possible to recirculate the couplant through a heat exchanger for cooling, extending the operating temperature range further by either heating or cooling.
The Examiner notes that while the heat exchanger is taught for recirculating a couplant for purposes of temperature control, there is neither teaching nor suggestion that the heat exchanger could somehow recirculate the second couplant agent that was applied to the distal end of the packing material and disposed at the second interface formed between the first surface of the test material and the distal end of the packaging material (i.e., applied at the outside of the device) and could somehow further exchange therewith the first couplant agent enclosed in the housing. The Examiner concludes that the lack of an explicit recitation of the claimed subject matter as well as insufficient amount of direction provided by the inventor with the dearth of existing working examples contrarily indicates to an ordinary artisan that actually the inventor did not reasonably describe the claimed invention in sufficient detail that one skilled in the art could reasonably conclude that the inventor had possession of the claimed invention of a control unit configured to cause the first and second couplant agents to be exchanged (i.e., the inventor/s did not have possession of the now claimed invention at the time of filing) and furthermore that one skilled in the art would not know how to make and use the claimed invention therefrom despite this new interpretation by the Applicant’s representative of the heat exchanger being so now useable therefor. See present rejections for details.
Regarding the prior art anticipation and obviousness rejection(s), Applicant argued that the amendment overcame said rejection(s). The Examiner is in general agreement that the amendments overcome the previous prior art rejections, therefore said rejection(s) have been withdrawn. However, upon further consideration, most of the claims (except claim 11, see preceding analysis and 112 related rejections) are rejected in further view of newly cited US 6595035 B1 “Maley” (brought in for adding a more complete housing enclosure; essentially cap/housing-cover portion) and especially newly cited US 5590653 A “Aida” which teaches a control unit (control circuit 132 with coupling adjustment agent mixing device 139 with device 131), and wherein, during testing, the control unit (control circuit 132 with coupling adjustment agent mixing device 139 with device 131) is configured to vary (via coupling adjustment agent mixing device 139 with device 131) an acoustic impedance of a couplant agent (coupling agent) to adjust an acoustic impedance mismatch (Title; Abstract “The mixing rate of the coupling fluid can be adjusted”; col. 5, ll. 28-41 “adjusting a mixing rate of a water and a coupling adjustment agent forming the coupling fluid”; col. 18, ll. 36-50 “use the coupling adjustment agent other than the sonic speed adjustment agent such as a glycerol which functions as an acoustic impedance adjustment agent for adjusting the acoustic impedance of the coupling fluid to suppress the reflection of the ultrasonic waves”; col. 16, ll. 51-57 “a coupling adjustment agent mixing device 139 is provided in conjunction with the cooling device 131 so as to change the mixing rate of the water and the coupling adjustment agent in the coupling fluid”; col. 17, ll. 8-15 “coupling adjustment agent mixing device 139 changes the mixing rate of the water and the coupling adjustment agent in a form of a sonic speed adjustment agent such as the propanol”; col. 17, ll. 16-26 “controls the coupling adjustment agent mixing device 139 to realize the determined mixing rate"; col. 18, ll. 51-54 “It is also to be noted that the propanol and the glycerol mentioned above may be replaced by any other known fluid materials having the similar functions as these”). See present rejections for more details.
Drawings
Unshown Claimed Features:
The drawing(s) is/are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims, and the Examiner asserts that these drawings are necessary for the understanding of the invention. Therefore, the following must be shown or the feature(s) canceled from the claim(s):
“housing” (at least claim 1 and 15)
inclusive of showing the proximal end, the distal end, and the enclosing of the first couplant agent and the transducer;
“control unit” (at least claim 1, 4, and 11)
inclusive of showing
the means for “electrical communication” therewith and the associated configuration “to vary an acoustic impedance of the first couplant agent” (at least claim 1),
the associated configuration “to cause a ratio of the two or more fluids, gels, or solid in liquid solutions to be varied” (at least claim 4), and
the associated configuration “to cause the first couplant agents and second couplant agents to be exchanged” (at least claim 11);
“second couplant agent applied to the distal end of the packaging material” (at least claim 5)
;
“second couplant agent at the distal end of the packaging material to form a layer of the second couplant agent at the second interface” (at least claim 19)
;
“two or more transducers” (at least claim 14)
; and
“contacting two or more testing devices” (at least claim 24)
.
No new matter should be entered. The Examiner notes that conventional features may be illustrated in the drawing in the form of a conventional graphical drawing symbol or a labeled representation (e.g., a rectangular box with a descriptive text label and a reference numeral). See MPEP § 608.02(d).
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 lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which Applicant may become aware in the specification.
Claim Objections
Claim(s) 22 is/are objected to because of the following informalities:
As to claim 22,
“second interface” already has antecedent basis in claim 15, the Examiner therefore suggesting “the second interface”.
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.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
As explained in MPEP § 2181(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 (bold for emphasis):
(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.
Note also that MPEP § 2181(I)(B) states that “In certain circumstances, it is also not necessary to use a linking word if other words used with “means”, or the generic placeholder, convey the function.”
As explained in MPEP § 2181(II)(B) Computer-Implemented Means-Plus-Function Limitations (bold for emphasis):
In cases involving a special purpose computer-implemented means-plus-function limitation, the Federal Circuit has consistently required that the structure be more than simply a general purpose computer or microprocessor and that the specification must disclose an algorithm for performing the claimed function;
Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or in any other manner that provides sufficient structure;
If it is unclear whether there is sufficient supporting structure or whether the algorithm is adequate to perform the entire claimed function, it is appropriate to reject the claim under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; and
The Examiner should determine whether one skilled in the art would know how to program the computer to perform the necessary steps described in the specification (i.e., the invention is enabled), and that the inventor was in possession of the invention (i.e., the invention meets the written description requirement).
The following claim limitations of claim(s) 1-11 and 14 are unclear as to whether these limitations should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the result of the evaluation is inconclusive:
“the control unit is configured to vary an acoustic impedance of the first couplant agent such that an acoustic impedance mismatch between the first couplant agent and the packaging material is less than or equal to an acoustic impedance mismatch between the packaging material and the test material” (claim 1),
having generic placeholder “unit” and further in this instance the “control unit” (alternatively, “control” could be functional language) coupled with transition phrases “configured to” and “such that” (analogous to “so that”) and functional language “to vary an acoustic impedance of the first couplant agent” and “an acoustic impedance mismatch between the first couplant agent and the packaging material is less than or equal to an acoustic impedance mismatch between the packaging material and the test material”, the Examiner noting that control unit appears to be a generic placeholder as a controller/processor/computer or similar calculating/signaling device and is insufficient structure for physically varying the impedance mismatch (e.g., by mixing ratios of constituents of couplant so as to affect the desired effective result of an impedance variance), yet the claim being an apparatus claim and comprising the aforementioned apparently functional language without reciting sufficient structure to perform the recited function and there being no sufficient structural modifier (is there at least one missing structural element, or is Applicant intending to include the structure for the varying into the control unit by claim interpretation?);
“the control unit is configured to cause a ratio of the two or more fluids, gels, or solid in liquid solutions to be varied” (claim 4),
having generic placeholder “unit” and further in this instance the “control unit” (alternatively, “control” could be functional language) coupled with transition phrases “configured to” and functional language “cause a ratio of the two or more fluids, gels, or solid in liquid solutions to be varied”, the Examiner noting that control unit appears to be a generic placeholder as a controller/processor/computer or similar calculating/signaling device and is insufficient structure for physically varying the ratio of couplant constituents, yet the claim being an apparatus claim and comprising the aforementioned apparently functional language without reciting sufficient structure to perform the recited function and there being no sufficient structural modifier (is there at least one missing structural element, or is Applicant intending to include the structure for the varying into the control unit by claim interpretation?); and
“wherein the control unit is configured to cause the first couplant agents and second couplant agents to be exchanged” (claim 11),
having generic placeholder “unit” and further in this instance the “control unit” (alternatively, “control” could be functional language) coupled with transition phrases “configured to” and functional language “cause the first couplant agents and second couplant agents to be exchanged“, the Examiner noting that control unit appears to be a generic placeholder as a controller/processor/computer or similar calculating/signaling device and is insufficient structure for physically exchanging the couplant agents, yet the claim being an apparatus claim and comprising the aforementioned apparently functional language without reciting sufficient structure to perform the recited function and there being no sufficient structural modifier (is there at least one missing structural element, or is Applicant intending to include the structure for the exchanging into the control unit by claim interpretation?);
whereby, to the best understanding of the Examiner, each of respective claim(s) 1, 4, 11, and dependent claims thereof has/have been interpreted to cover the corresponding structure described in the disclosure that achieves the claimed function, and equivalents thereof, said corresponding structure found in at least:
[0006] Disclosed herein are enclosed devices, such as a wheel for agility or any other enclosed device containing a couplant. Use of the closed device system closely mimics immersion testing while eliminating the need for complete immersion of the sample, which may be on site or too large to fit in a tank. The disclosed device and method are a solution to the need for the same hardware (e.g. same packaging material) to be used for a larger range of impedance by changing the couplant for varying specimen by alternating the couplant or proportions of component of the couplant to ideally match the specimen’s impedance. By varying the acoustic impedance of couplant in the ultrasound wheel equipment, signal quality can be improved, especially in closed structures. The couplant may be used inside and/or outside the equipment.
Examiner notes that description of structure therein is at best described by the function or result, namely alternating couplant or proportions of component of the couplant, but lacks adequate description of the structure to so perform the alternating couplant or proportions.
[0019] In some aspects, the first couplant agents and second couplant agents are exchangeable.
Examiner again notes the function/result of exchange, but not adequate description of the structure to so perform the exchange.
[0026] In some aspects, the method further includes varying a ratio of two or more fluids, gels, or solid in liquid solutions to achieve an acoustic impedance mismatch of 30% between an acoustic impedance of the first couplant agent and an acoustic impedance of the packaging material.
Examiner notes that description of structure therein is at best described by the function or result, namely varying a ratio of two or more fluids, gels, or solid in liquid solutions to achieve a desired result.
[0037] Fig. 4 shows results of the percentage improvement in As and Ad while varying the mass proportions of glycerin in the couplant.
Examiner notes that description of structure therein is at best described by the function or result, namely varying the mass proportions of glycerin in the couplant.
[0038] Fig. 5 shows results of noise and SNR evaluated for As in all measurements with varying glycerin proportions.
Examiner notes that description of structure therein is at best described by the function or result, namely varying glycerin proportions.
[0039] Fig. 6 shows results of gain in As and Ad as the proportion of glycerin in couplant vary (calculated with respect to Asw and Adw respectively).
Examiner notes that description of structure therein is at best described by the function or result, namely varying proportion of glycerin in the couplant.
[0041] Fig. 8 shows results of bandwidth at FQHM as the glycerin proportion in couplant vary.
Examiner notes that description of structure therein is at best described by the function or result, namely varying proportion of glycerin in the couplant.
[0111] In the state-of-the-art, the matching layer in the transducer has a characteristic acoustic impedance between that of the active element (such as a piezo electric crystal) and the couplant material of choice, usually water. The transducer matching layer in conventional immersion transducers are made by altering the density of polymers by addition of inert ceramic particle loading and then the transducer matching layer is fixed. For a given choice of transducer matching layer, the signal transmission through the packaging material of the device can be improved by raising the acoustic impedance of the couplant in the device to reduce the disparity in acoustic impedance between the matching layer and couplant as well as the couplant and packaging material. Both of these outcomes can be achieved by introducing fine-tuned couplant blends of miscible fluids for impedance matching. For sound travelling from medium 1 to medium 2, reflection (R) and transmission (T) coefficients assuming normal incidence are calculated as follows:
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Examiner again notes the function/result of introducing fine-tuned couplant blends, but not adequate description of the structure to so perform the fine-tuned blending nor introducing.
[0124] In one aspect, the couplant disposed in the housing may be exchanged with the second couplant applied to the dorsal end of the packaging material.
Examiner again notes the function/result of exchange, but not adequate description of the structure to so perform the exchange.
[0153] An additional use for this technology includes creating robust housing for transducers employed in harsh and/or corrosive environments. For instance, underwater transducers may be housed in a material, plastic or otherwise, to match the acoustic impedance of salt water at the depth of operation, By varying the proportion of couplant contained in the housing along with transducer and other components one can easily minimize the reflective losses due to the packaging material.
Examiner notes that description of structure therein is at best described by the function or result, namely varying the proportion of couplant contained in the housing.
[0154] Conclusion. This study investigated the possibility of an enclosure for immersion transducer with carefully selected packaging materials that may be dictated by the environment in which it is deployed, usually for protection of Piezo electric transducers or others from destructive environmental elements. By using a mixture of miscible liquid systems or solid-liquid solutions and appropriate corrosion inhibitors, the acoustic impedance of the couplant was modified to mitigate its impedance disparity with both transducer matching layer as well as the packaging material enclosing the couplant, transducer and/or the circuits. As a result, the throughput of signal is improved up to 50% at the sample-device interface. The SNR was improved by varying the couplant mixture composition. The bandwidth was improved by varying the mixture ratio of couplant in the enclosed device. The range of operation of transducer was improved by lowering the freezing point of the couplant. A safe operating condition was ensured for optimal operation of the transducer by making it possible to recirculate the couplant through a heat exchanger for cooling, extending the operating temperature range further by either heating or cooling.
Examiner notes that description of structure for varying therein is at best described by the function or result, namely varying the couplant mixture composition and/or varying the mixture ratio of couplant in the enclosed device. The Examiner also notes as an aside that the physical structure of heat exchanger, which according only to prior art of record cited by the Examiner, could be actively utilized to change the acoustic impedance; however, this feature is not realized by the instant invention nor utilized in such a fashion as taught by the prior art and the Examiner does not read/import this unrealized feature into the disclosure as the disclosure fails to clearly link the heat exchanger to the claimed function.
[0155] The use of glycerin as an adulterant is illustrated herein. Any other set of miscible liquids may be used to achieve an improvement in transmitted signal. For example, suspension or colloidal dispersion such as slilica fume, polycarboxylate, xantan gum or starch may be used instead of two miscible liquids. It is contemplated that a suitable suspension includes particles that are much smaller than the wavelength of propagation of sound in the couplant, preventing losses due to scattering and the attenuative losses do not deteriorate the signal strength or quality. In some aspects, the couplant blend used inside the device can also be applied to the exterior of packaging material when the sample of interest was in a solid phase.
[0180] Exemplary aspect 15: The testing device of any example herein, particularly examples 1-14, wherein the first and/or second couplant agents are exchangeable.
Examiner notes the function/result of exchange, but not adequate description of the structure to so perform the exchange, nor to perform the adulteration, nor to so blend, nor to apply to the exterior.
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Examiner notes the absence of any showing of structure for the couplant(s) to vary, blend, mix, adulterate, introduce, exchange, etc.
The Examiner’s best understanding for interpretation of the corresponding structure of the aforementioned claim limitations in view of the disclosure is that the control unit comprises a controller portion for signaling/controlling, but there doesn’t appear to be any disclosed structure for what is signalled/controlled to actually effectuate the “vary an acoustic impedance of the first couplant agent such that an acoustic impedance mismatch between the first couplant agent and the packaging material is less than or equal to an acoustic impedance mismatch between the packaging material and the test material”, nor “to cause a ratio of the two or more fluids, gels, or solid in liquid solutions to be varied”, nor “to cause the first couplant agents and second couplant agents to be exchanged”. The Examiner further notes that for special purpose computer-implemented mean-plus-function limitations, for which the “control unit” for the aforementioned functional limitations appears to be so analogous-to and/or comprise a special purpose computer, there does not appear to be in the disclosure an algorithm, mathematical formula, a flow chart, nor in any other manner that provides sufficient structure. For example, how does the control unit know the present couplant agent, packaging material, & test material (user input, measurements, or only usable for specific packaging material and test material preprogrammed therefor), and how does the control unit decide how to change the couplant agent (reference to table, formula, neural network pretrained on various combinations?), what triggers the control unit to so change the couplant agent (amplitude threshold(s)? automatic variance to search for optimization? user triggered?), and especially what does the control unit signal to so as to cause the change in the couplant agent(s) (does it start/stop and/or change speed of pump and/or control nozzle orifice to/from various fluid/additive containers or merely signal a user to manually change the couplant agent(s)?) See related 112 rejections.
In response hereto, applicant must clarify whether each of these limitations should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
If Applicant wishes to provide further explanation or dispute the Examiner’s interpretation including of the corresponding structure, Applicant should identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If Applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, Applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
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.
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.
MPEP § 2173.05(b)(II):
A claim may be rendered indefinite by reference to an object that is variable. See, e.g., Ex parte Miyazaki, 89 USPQ2d 1207 (Bd. Pat. App. & Inter. 2008) (precedential) and Ex parte Brummer, 12 USPQ2d 1653 (Bd. Pat. App. & Inter. 1989).
MPEP § 2173.02(I) states in part: “if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate”.
MPEP § 2163(II)(A):
With respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims. See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007) (citing MPEP § 2163.04 which provides that a “simple statement such as ‘applicant has not pointed out where the new (or amended) claim is supported, nor does there appear to be a written description of the claim limitation ‘___’ in the application as filed’ may be sufficient where the claim is a new or amended claim, the support for the limitation is not apparent, and applicant has not pointed out where the limitation is supported.”)
MPEP 2163(a):
An invention described solely in terms of a method of making and/or its function may lack written descriptive support where there is no described or art-recognized correlation between the disclosed function and the structure(s) responsible for the function.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
• (A) The breadth of the claims;
• (B) The nature of the invention;
• (C) The state of the prior art;
• (D) The level of one of ordinary skill;
• (E) The level of predictability in the art;
• (F) The amount of direction provided by the inventor;
• (G) The existence of working examples; and
• (H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
See, In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
Claim(s) 1-11 and 14 is/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 pre-AIA the applicant regards as the invention.
Regarding independent claim 1, claim 4, and claim 11,
the limitations are unclear as to whether said limitations invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, see claim interpretation. 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 Examiner emphasizes that the aforementioned claim(s) is/are directed to the statutory category of an apparatus, however, the Examiner was unable to identify the structural means to: vary an acoustic impedance of the first couplant agent; cause a ratio of the two or more fluids, gels, or solid in liquid solutions to be varied; and exchange the first & second couplant agent. To the best understanding of the Examiner, said claims are indefinite and are 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.
Further regarding independent claim 1, claim 4, and claim 11,
as put forth above the limitations each pertaining to “control unit” are unclear as to whether the claims properly invoke 112(f)/6th (see preceding rejection), and furthermore the written description does not clearly link or associate the corresponding structure, material, or acts to the claimed functions of the “control unit”. Further there is presently no evidence from general or subject matter specific dictionaries that the term “control unit” has achieved recognition as a noun denoting the structure to: (independent claim 1) “vary an acoustic impedance of the first couplant agent such that an acoustic impedance mismatch between the first couplant agent and the packaging material is less than or equal to an acoustic impedance mismatch between the packaging material and the test material”; (claim 4) “cause a ratio of the two or more fluids, gels, or solid in liquid solutions is varied to be varied”; and (claim 11) “cause the first couplant agents and second couplant agents are exchangeable to be exchanged”. Furthermore, there is presently no evidence that the prior art supports that the term “control unit” is an art-recognized structure to perform the aforementioned claimed functions. It follows therefore that Applicant’s mere restatement of function in the specification without more description of the means that accomplish the function also fails to provide adequate written description. The Examiner emphasizes that the inquiry is whether one of skill in the art would understand the specification itself to disclose a structure, not simply whether that person would be capable of implementing that structure. See MPEP § 2181(II)(A), and Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 953[, 83 USPQ2d 1118, 1123] (Fed. Cir. 2007).
Further regarding claim 11,
where claim 11 depends from claim 5 and claim 5 depends from independent claim 1, while there are plural (first and second) couplant agents, there is only one first couplant agent (introduced in independent claim 1) and only one second couplant agent (introduced in claim 5), whereas Applicant now references (emphasis added in italics) “the first couplant agents and second couplant agents” (plural of the first couplant agent and plural of a/the second couplant agent) and a person of ordinary skill in the relevant art could read the limitation with more than one reasonable interpretation including that the plurality was intentional and the lack of antecedent basis for the second couplant was intentional to distinguish &/or include further thereof, or that the plurality was unintentional and that the couplants in question are still the singular first couplant agent already introduced in independent claim 1 and still the singular second couplant agent already introduced in claim 5. The Examiner has looked to both the claims and the disclosure for guidance and to the best understanding of the Examiner and for the purpose of examination there is still only a singular first couplant agent and still only a singular second coupling agent. Therefore the Examiner suggests amending as “the first couplant agent[[s]] and the second couplant agent[[s]]” (alternatively, though much less preferred, “the first
Dependent claim(s) of rejected claim(s) is/are likewise rejected.
Claim(s) 1-11 and 14 is/are 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim(s) 1, 4, and 11,
Applicant has not adequately pointed out where the new/amended claim(s) is/are supported, nor does there appear to be a written description of the claim limitation(s) (emphasis added in italics): “wherein, during testing, the control unit is configured to vary an acoustic impedance of the first couplant agent such that an acoustic impedance mismatch between the first couplant agent and the packaging material is less than or equal to an acoustic impedance mismatch between the packaging material and the test material”; “the control unit is configured to cause a ratio of the two or more fluids, gels, or solid in liquid solutions to be varied”; and “the control unit is configured to cause the first couplant agents and second couplant agents to be exchanged”. Applicant generically stated that for all of the amendments (including amendments to claims other than 1, 4, and 11): Support for these amendments is provided throughout the specification as-filed, for example, at least by ¶¶ [0006]-[0007], [0020], [0130], [0133], [0151], [0153]-[0154], as well as by original claims 12, 17, and 18. No new matter is added by way of these amendments". See analysis already provided in Claim Interpretation section. The Examiner additionally notes with respect to both the previously discussed aforementioned analysis in the Claim Interpretation as well as the remainder of supposed support for the amendments for the control unit configuration, that none of these sections teach a configuration of the control unit to so perform the claimed functions. The only found support for the control unit is with regards to “electrical communication”, found in (italics added for emphasis):
[0020] In some aspects, the testing device is in electrical communication with a control unit.
[0118] In one aspect, the testing device comprises one or more transducers and is in electrical communication with a control unit.
[0182] Exemplary aspect 17: The testing device of any exemplary aspect herein, particularly examples 1-16, wherein the testing device is in electrical communication with a control unit.
Original claim 12 The testing device of claim 1, wherein the testing device is in electrical communication with a control unit.
See, e.g., Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007), and MPEP § 2163.04, 714.02 & 2163.06. For further consideration, Applicant’s response should specifically point out the support for the new/amended claim limitation(s) with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
Dependent claim(s) of rejected claims is/are likewise rejected.
Claim(s) 1-11 and 14 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement.
Regarding independent claim 1,
said claim contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. In this case, the aforementioned claim is directed to the statutory category of an apparatus and Applicant is claiming the functional limitation “wherein, during testing, the control unit is configured to vary an acoustic impedance of the first couplant agent such that an acoustic impedance mismatch between the first couplant agent and the packaging material is less than or equal to an acoustic impedance mismatch between the packaging material and the test material”. The Examiner has look to the specification and drawings for guidance, and notes that there is neither a shown element for determining/inputting information about the packaging material, the test material, nor the present couplant, nor is there expressed an algorithm in understandable terms by which to automatically with a control unit determine how to vary/adulterate/exchange the couplant(s) and the couplant constituents so as to result in the desired acoustic impedance mismatch between the first couplant agent and the packaging material to be less than or equal to an acoustic impedance mismatch between the packaging material and the test material. See analysis of claim interpretation and corresponding disclosure in the Claim Interpretation section. To the best understanding of the Examiner, there does not appear to be any working examples of how the control unit of the testing device is capable of varying an acoustic impedance of the first couplant agent such that an acoustic impedance mismatch between the first couplant agent and the packaging material is less than or equal to an acoustic impedance mismatch between the packaging material and the test material, the Examiner exemplary noting that there is no amount of direction explaining how the first couplant could be removed from the housing and/or new couplant/couplant-constituents properly introduced (e.g., ports/valves/pumps or proper stop/start/control signaling therefor and in the case of added adulteration of the existing couplant already present, mixing means or proper control signaling therefor; not taught). The Examiner notes that a user would be able to manually (i.e., a method step, not by means of a claimed component of the testing device): remove couplant agent from the housing (e.g., pour/scrape/wipe), the user could visually (or with a separate sensor instrument) identify the test material, and the user could personally replace the couplant with a different couplant having a different acoustic impedance mismatch, by merely conventional/routine practice (i.e., the Examiner is taking Official Notice of the conventionality of these manual tasks). The Examiner further notes that it would be conventional (i.e., Examiner previously took Official Notice of the conventionality of this task, and Applicant had not adequately traversed this assertion) to manufacture a testing device wherein the housing comprises a different couplant agent. Finally, the Examiner notes that while the instant disclosure is silent, it appears to the Examiner to be within predictable and ordinary skill to have a means (e.g., screws; not taught) by which to disassemble a housing manually (e.g., with a screw driver; not taught) and remove the first couplant (e.g., manually scrape/wipe out; not taught) and to place the different couplant agent into the housing and reassemble (again, not taught). Therefore, the Examiner respectfully concludes that it would take undue trials and errors to automate with only a control unit and no other disclosed structure to vary an acoustic impedance of the first couplant agent such that an acoustic impedance mismatch between the first couplant agent and the packaging material is less than or equal to an acoustic impedance mismatch between the packaging material and the test material. The Examiner contrasts apparatus claim 1 (specially the control unit configuration) with method claim 15 which was interpreted under the broadest reasonable interpretation in view of the disclosure wherein the Examiner found the method could be reasonably enabled by the aforementioned conventional (manual) practices.
Regarding claim 4,
said claim contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. In this case, the aforementioned claim is directed to the statutory category of an apparatus and Applicant is claiming the functional limitation “wherein the control unit is configured to cause a ratio of the two or more fluids, gels, or solid in liquid solutions to be varied”. The Examiner has look to the specification and drawings for guidance, and notes that there is neither a shown element for determining/inputting information about the packaging material, the test material, nor the present couplant, nor is there expressed an algorithm in understandable terms by which to automatically with a control unit determine how to vary/adulterate/exchange the couplant(s) and the couplant constituents so as to result in the desired acoustic impedance mismatch between the first couplant agent and the packaging material to be less than or equal to an acoustic impedance mismatch between the packaging material and the test material, and further to do said varying by specifically causing the ratio of the mixture of the couplant agent to vary. See analysis of claim interpretation and corresponding disclosure in the Claim Interpretation section. To the best understanding of the Examiner, there does not appear to be any working examples of how the control unit of the testing device is capable of varying an acoustic impedance of the ratio of the mixture of the first couplant agent such that an acoustic impedance mismatch between the first couplant agent and the packaging material is less than or equal to an acoustic impedance mismatch between the packaging material and the test material, the Examiner exemplary noting that there is no amount of direction explaining how any of the first couplant could be removed from the housing and/or how any new couplant/couplant-constituents could be properly introduced (e.g., ports/valves/pumps or proper stop/start/control signaling therefor and in the case of added adulteration of the existing couplant already present, mixing means or proper control signaling therefor; not taught). The Examiner notes that a user would be able to manually (i.e., a method step, not by means of a claimed component of the testing device): remove couplant agent from the housing (e.g., pour/scrape/wipe), the user could visually (or with a separate sensor instrument) identify the test material, and the user could personally replace the couplant or portion of a couplant with a different couplant having a different acoustic impedance mismatch or to add couplant constituent (e.g., adding more water or more glycerin), by merely conventional/routine practice (i.e., the Examiner is taking Official Notice of the conventionality of these manual tasks). The Examiner further notes that it would be conventional (i.e., Examiner previously took Official Notice of the conventionality of this task, and Applicant had not adequately traversed this assertion) to manufacture a testing device wherein the housing comprises a different couplant agent. Finally, the Examiner notes that while the instant disclosure is silent, it appears to the Examiner to be within predictable and ordinary skill to have a means (e.g., screws; not taught) by which to disassemble a housing manually (e.g., with a screw driver; not taught) and remove the first couplant (e.g., manually scrape/wipe out; not taught) and to place the different couplant agent or couplant agent constituent (e.g., diluting with more water) into the housing and reassemble (again, not taught). Therefore, the Examiner respectfully concludes that it would take undue trials and errors to automate with only a control unit and no other disclosed structure to vary an acoustic impedance of the first couplant agent by varying a mixture of the first couplant such that an acoustic impedance mismatch between the first couplant agent and the packaging material is less than or equal to an acoustic impedance mismatch between the packaging material and the test material. See also analysis of independent claim 1.
Regarding claim 11,
said claim contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. In this case, the aforementioned claim is directed to the statutory category of an apparatus and Applicant is claiming the functional limitation “wherein the control unit is configured to cause the first couplant agents and second couplant agents to be exchanged”. The Examiner has look to the specification and drawings for guidance, and notes that there is neither a shown second couplant agent, nor shown any means by which the first and second couplant agents might be exchanged, and the specification is likewise silent as to the particulars for how first couplant agent that is enclosed in the housing could be exchanged with the second couplant agent disposed at the second interface. See analysis of claim interpretation and corresponding disclosure in the Claim Interpretation section. To the best understanding of the Examiner, there does not appear to be any working examples of how the testing device is capable of exchanging the first and second couplants, the Examiner exemplary noting that there is no amount of direction explaining how the first couplant could be removed from the housing (e.g., ports/valves/pumps or controls therefor; not taught), nor any amount of direction explaining how the second couplant could be removed from the dorsal end of the packaging material (e.g., scraper, vacuum, or controls therefor; not taught), nor any amount of direction explaining the means by which the first couplant agent could be now applied to the distal end of the packaging material and the second couplant agent could now be placed into the housing. The Examiner notes that an ordinary artisan would be able to manually (i.e., a method step, not by means of a claimed component of the testing device) remove (e.g., wipe off; not taught) a second couplant agent and apply a similar type of couplant agent as the first couplant agent to said location, by merely conventional/routine practice (i.e., Examiner previously took Official Notice of the conventionality of this task, and Applicant had not adequately traversed this assertion). The Examiner further notes that it would be conventional (i.e., Examiner previously took Official Notice of the conventionality of this task, and Applicant had not adequately traversed this assertion) to manufacture a testing device wherein the housing comprises a different couplant agent (e.g., a second testing device which comprises a similar type of couplant agent as the second couplant agent of the first testing device). Finally, the Examiner notes that while the instant disclosure is silent, it appears to the Examiner to be within predictable and ordinary skill to have a means (e.g., screws; not taught) by which to disassemble a housing manually (e.g., with a screw driver; not taught) and remove the first couplant (e.g., manually scrape/wipe out; not taught) and to place a similar type of couplant agent as the second couplant agent into the housing and reassemble (again, not taught). Therefore, the Examiner respectfully concludes that it would take undue trials and errors to literally exchange the first and second couplant especially by a control unit without additional physical structure to do so, but the Examiner kindly advises that Applicant may consider instead a similar limitation as a dependent of the method claim (a) step(s) wherein (merely summarizing, not exact claim language) the first and second couplants are removed and wherein similar couplant agent types are then provided in the opposite locations.
Dependent claim(s) of rejected claim(s) is/are likewise rejected.
Consistent with office policy, Examiner has weighed all the evidence for and against enablement of this invention and has concluded based on guidance provided by the MPEP and case law (including the Wands factors) that there is not enough evidence in favor of enablement of this invention (as defined in the aforementioned claims). MPEP § 2164.05 states that “once the Examiner has weighed all the evidence and established a reasonable basis to question the enablement provided for the claimed invention, the burden falls on applicant to present persuasive arguments, supported by suitable proofs where necessary, that one skilled in the art would be able to make and use the claimed invention using the application as a guide. In re Brandstadter, 484 F.2d 1395, 1406-07, 179 USPQ 286, 294 (CCPA 1973). The evidence provided by applicant need not be conclusive but merely convincing to one skilled in the art. Applicant may submit factual affidavits under 37 CFR 1.132 or cite references to show what one skilled in the art knew at the time of filing the application. A declaration or affidavit is, itself, evidence that must be considered. The weight to give a declaration or affidavit will depend upon the amount of factual evidence the declaration or affidavit contains to support the conclusion of enablement. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991) (“expert’s opinion on the ultimate legal conclusion must be supported by something more than a conclusory statement”); cf. In re Alton, 76 F.3d 1168, 1174, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996) (declarations relating to the written description requirement should have been considered)”.
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.
Claim(s) 1, 8, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over previously cited Pfortje et al (US 20180284072 A1; hereafter “Pfortje”) in view of newly cited Maley (US 6595035 B1; hereafter “Maley”) and in further view of newly cited Aida et al (US 5590653 A; hereafter “Aida”).
Regarding independent claim 1, as best understood,
Pfortje reasonably teaches a testing device (fig. 6, ultrasonic inspection apparatus 10) for determining one or more properties of a test material (fig. 6, pipe 62) (Title “COUPLING FOR ULTRASONIC INSPECTION OF PIPES”; Abstract; [0032] “Embodiments of the pipe can include any substantially tubular structure formed by any process and material (e.g., steels, copper and copper alloys, aluminum and aluminum alloys, etc.)”), the test material (fig. 6, pipe 62) comprising:
a housing (fig. 6, probe holder 20; see also fig. 3) enclosing (surrounding) a first couplant agent (first couplant) and a transducer (fig. 6b, ultrasonic probe / transducer 30) (see additional obviousness analysis pertaining to fully enclosing transducer),
wherein the housing (fig. 6, probe holder 20) has a proximal end (proximal end of probe holder 20) and a distal end (distal end of probe holder 20); and
a packaging material (fig. 6, membrane 48) having a proximal end (proximal end of membrane 48) and a distal end (distal end of membrane 48),
wherein the proximal end (proximal end of membrane 48) of the packaging material (fig. 6, membrane 48) is coupled to the distal end (distal end of probe holder 20) of the housing (fig. 6, probe holder 20) to form a first interface (first interface formed at membrane 48);
wherein the test material (fig. 6, pipe 62) has a first surface (first surface of pipe 62) and an opposite second surface (second surface of pipe 62) ([0032] “Embodiments of the pipe can include any substantially tubular structure formed by any process and material (e.g., steels, copper and copper alloys, aluminum and aluminum alloys, etc.)”; [0031] “Embodiments of the disclosure are discussed herein with respect to ultrasonic detection of defects in pipes. However, a person skilled in the art will appreciate that the disclosed embodiments can be employed to ultrasonically detect defects in other structures and/or geometries without limit”);
wherein a second interface (interface comprising second couplant at first surface of pipe 62) is formed between the first surface (first surface of pipe 62) of the test material (fig. 6, pipe 62) and the distal end (distal end of membrane 48) of the packaging material (fig. 6, membrane 48) during testing; and
wherein an acoustic impedance mismatch between the first couplant agent (first couplant) and the packaging material (fig. 6, membrane 48) is less than or equal to (at once so envisaged, additional obviousness analysis follows) an acoustic impedance mismatch between packaging material (fig. 6, membrane 48) and test material (fig. 6, pipe 62) ([0041] “As an example, the membrane 48 can be formed from a material whose acoustic impedance is matched with ultrasonic couplant(s) in contact with the membrane 48 to minimize reflections and absorptions at interfaces between the membrane and ultrasonic couplant(s). In certain exemplary embodiments, the membrane material can be a material that is invisible or near invisible when used with a selected couplant, such that the material does not reflect ultrasound from the surface and does not absorb ultrasound when the waves pass therethrough, or at least minimizes reflection and absorption”; [0042] “By way of non-limiting example, suitable membrane materials” and “One exemplary membrane material is Aqualene™”; [0049] “At the pipe 62, ultrasonic waves 66r can be reflected from surface and/or internal boundaries of the pipe 62 back towards the ultrasonic probe 30, propagating through the second volume of ultrasonic couplant within the second chamber 50, the membrane 48, and the first volume of ultrasonic couplant within the first chamber 22. At the ultrasonic probe 30, characteristics of the reflected ultrasonic waves 66r can be measured (e.g., amplitude, propagation time, etc.) and transmitted to a computing device for storage and/or analysis for detection of defects within the pipe 62”), and
wherein the testing device (fig. 6b, ultrasonic inspection apparatus 10) is in communication with a computing device ([0049] “At the ultrasonic probe 30, characteristics of the reflected ultrasonic waves 66r can be measured (e.g., amplitude, propagation time, etc.) and transmitted to a computing device for storage and/or analysis for detection of defects within the pipe 62”).
Pfortje does not teach item 1), wherein the transducer is fully (narrower claim interpretation for compact prosecution) enclosed by the housing. Pfortje does not explicitly state item 2a): wherein an acoustic impedance mismatch between the first couplant agent and the packaging material is less than or equal to an acoustic impedance mismatch between packaging material and test material. Pfortje does not teach item 2b: wherein the testing device is in electrical communication with a control unit, and wherein, during testing, the control unit is configured to vary the acoustic impedance of the first couplant agent.
Regarding item 1), Maley teaches (see figs. 1-6) wherein a transducer (ultrasonic transducer 14) is enclosed by a housing (transducer housing 50) (col. 7, ll. 48-62 “The transducer 14 is supported in a coaxially abutting relationship with the acoustic coupling by a generally cylindrical transducer housing 50 that includes a housing cap portion 52 and a removable transducer retaining nut 54 that is supported on an upper end of the cylindrical manifold housing 50”; Title; Abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Maley’s fuller enclosing housing design for a transducer with Pfortje’s transducer housing, thereby providing the expected advantages of increased protection of the transducer including from contact/impact, extraneous noise, and/or falling out. The Examiner emphasizes that multi-part housing and/or housing with a lid are conventional in the art and only ordinary skill is required to further include additional housing portions for more fully enclosing the transducer.
Regarding item 2a):
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 and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). In the present case it is the Examiner’s position that choosing an appropriate material for the packaging material is within ordinary skill in the art. Likewise, it is the Examiner’s position that choosing a particular material for the intended use of testing is within ordinary skill in the art.
It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, see MPEP § 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present case, it is the Examiner's position that only ordinary skill in the art is required to optimize either/both minimizing the unwanted reflections/absorptions at the first interface and/or reasonably increasing the reflection at the second interface for purposes of inspection of the test surface or providing reference signal for comparison to reflections from, for example, test object internal reflections.
Choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is obvious to try, see MPEP § 2143(I)(E). The Examiner also notes that MPEP § 2145(III)(X)(B) states “An “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. “[A] person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 421,82 USPQ2d 1385, 1397 (2007).” It is the Examiner’s position that only ordinary skill in the art is required to reasonably choose appropriate couplants (e.g., conventional water) & materials (e.g., Aqualene™) for an intended inspection of a particular target material (e.g., metal), the Examiner emphasizing that Pfortje provides sufficient guidance (see citations) merely requiring common sense.
In view of the above, either one of ordinary skill in the art at the time the invention was effectively filed would at once envisaged that Pfortje reasonably teaches wherein an acoustic impedance mismatch between the first couplant agent and the packaging material is less than or equal to an acoustic impedance mismatch between packaging material and test material, or nevertheless, or in the alternative, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the inspection by appropriately choosing preferred materials/couplants for the optimization of impedance matching thereby minimizing the unwanted reflections/absorptions at the first interface and/or reasonably increasing the reflection at the second interface for purposes of inspection of the test surface or providing reference signal for comparison to reflections from, for example, test object internal reflections. The Examiner additionally notes that the determination of whether a wherein/whereby/adaptation or similar clause is a limitation in a claim depends on the specific facts of the case as put forth by MPEP § 2111.04. Additionally, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d - 164 7 (1987). In the present case, the wherein statements pertaining to the test material (a variable unclaimed object) are not directed to the structural limitations of the testing device. The Examiner further notes that the control unit is also not explicitly claimed as an element of the testing device, and is instead an external element that is placed into electrical communication with the testing device, see additional analysis thereof in item 2b).
Regarding item 2b):
It has been held that broadly providing a mechanical or automatic means to replace manual activity which has accomplished the same result involves only routine skill in the art, see MPEP § 2144.04(III) and In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958). In the present case it is the Examiner’s position that only ordinary skill is required to automate control over supplied couplant.
Furthermore, and as supporting factual evidence of the aforementioned assertion, Aida teaches a testing device (testing portion of fig. 19, including ultrasound imaging device 128 with ultrasonic wave applicator 120 comprising ultrasonic transducer 125) is in communication (see connection lines in fig. 19; at once envisaged as electrical connection, additional obviousness analysis provided) with a control unit (control circuit 132 with coupling adjustment agent mixing device 139 with device 131), and wherein, during testing, the control unit (control circuit 132 with coupling adjustment agent mixing device 139 with device 131) is configured to vary (via coupling adjustment agent mixing device 139 with device 131) an acoustic impedance of a couplant agent (coupling agent) to adjust an acoustic impedance mismatch (Title; Abstract “The mixing rate of the coupling fluid can be adjusted”; col. 5, ll. 28-41 “adjusting a mixing rate of a water and a coupling adjustment agent forming the coupling fluid”; col. 18, ll. 36-50 “use the coupling adjustment agent other than the sonic speed adjustment agent such as a glycerol which functions as an acoustic impedance adjustment agent for adjusting the acoustic impedance of the coupling fluid to suppress the reflection of the ultrasonic waves”; col. 16, ll. 51-57 “a coupling adjustment agent mixing device 139 is provided in conjunction with the cooling device 131 so as to change the mixing rate of the water and the coupling adjustment agent in the coupling fluid”; col. 17, ll. 8-15 “coupling adjustment agent mixing device 139 changes the mixing rate of the water and the coupling adjustment agent in a form of a sonic speed adjustment agent such as the propanol”; col. 17, ll. 16-26 “controls the coupling adjustment agent mixing device 139 to realize the determined mixing rate"; col. 18, ll. 51-54 “It is also to be noted that the propanol and the glycerol mentioned above may be replaced by any other known fluid materials having the similar functions as these”).
In view of the above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to automate control over Pfortje’s couplant agents for appropriate impedance adjustments thereof for the desired optimization—as factually supported by Aida’s control unit for acoustic impedance couplant adjustments—thereby providing automation means for the aforementioned automation and thus saving on manual labor & time, as well as reducing the level of skill necessary for working the apparatus and therefore increasing the marketability thereof, and furthermore reducing human error. The Examiner additionally notes that the combination with Aida has the further benefit of being able to control and compensate for temperature changes affecting the acoustic impedance, as well as being able to store tables of information to look-up and reference for the optimization of the acoustic impedance.
Pfortje as modified by Aida still does not explicitly teach electrical communication between testing device and the control unit.
However, the Examiner previously took Official Notice that electrical communication between a testing device and a controller is conventional in the art. As the Applicant had not adequately traversed this assertion, this is considered admitted prior art in accordance with MPEP § 2144.03(C).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further combine the aforementioned conventional electrical communication with the combination of Pfortje and Aida and thereby providing a well-known communication means between the testing device and the control unit, the Examiner noting that electrical communication is extremely fast, very reliable, and generally compatible with commercially available control units.
Regarding claim 8, which depends on claim 1,
Pfortje reasonably teaches wherein an acoustic reflection from the first interface (first interface formed at membrane 48) is less than about 65 percent with respect to the reflection from the second interface (interface comprising second couplant at first surface of pipe 62) ([0041] “As an example, the membrane 48 can be formed from a material whose acoustic impedance is matched with ultrasonic couplant(s) in contact with the membrane 48 to minimize reflections and absorptions at interfaces between the membrane and ultrasonic couplant(s). In certain exemplary embodiments, the membrane material can be a material that is invisible or near invisible when used with a selected couplant, such that the material does not reflect ultrasound from the surface and does not absorb ultrasound when the waves pass therethrough, or at least minimizes reflection and absorption”; [0042] “By way of non-limiting example, suitable membrane materials” and “One exemplary membrane material is Aqualene™”; [0049] “At the ultrasonic probe 30, characteristics of the reflected ultrasonic waves 66r can be measured (e.g., amplitude, propagation time, etc.) and transmitted to a computing device for storage and/or analysis for detection of defects within the pipe 62”; Examiner emphasizes that first interface is intended to be near invisible, whereas the reflection at the test surface is usefully measured).
Furthermore, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, see MPEP § 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present case, it is the Examiner's position that only ordinary skill in the art is required to optimize either/both minimizing the unwanted reflections/absorptions at the first interface and/or reasonably increasing the reflection at the second interface for purposes of inspection of the test surface or providing reference signal for comparison to reflections from, for example, test object internal reflections.
Regarding claim 10, which depends on claim 1,
Pfortje teaches wherein the packaging material (fig. 6, membrane 48) comprises polyurethane, polystyrene, polybutadiene, silicon, polyethylene, polypropylene, rubber, nylon, polycarbonate, acrylic, araldite, or any combination thereof ([0042] “By way of non-limiting example, suitable membrane materials include, but are not limited to, polymers, polymer blends, and rubber materials, such as polyethylene, polypropylene, polyvinylchloride, polystyrol, polytetrafluorethylene, polymethylmethacrylat, polyacrylnitril, polyacrylamide, aramides, polyetherketones, polyethylenglycol, polyurethane, silicons or poly(organo)siloxane, thermoplastic elastomers, melamine resin, polyacrylate rubber, ethylene-acrylate rubber, polyester urethane, bromo isobutylene isoprene, polybutadiene, chloro isobutylene isoprene, polychloroprene, chlorosulphonated polyethylene, epichlorohydrin, ethylene propylene, ethylene propylene diene monomer, polyether urethane, perfluorocarbon rubber, fluoronated hydrocarbon, fluoro silicone, fluorocarbon rubber, hydrogenated nitrile butadiene, polyisoprene, isobutylene isoprene butyl, acrylonitrile butadiene, butyl rubber, styrene butadiene, styrene ethylene butylene styrene copolymer, polysiloxane, vinyl methyl silicone, acrylonitrile butadiene carboxy monomer, styrene butadiene carboxy monomer, thermoplastic polyether-ester, styrene butadiene block copolymer, and styrene butadiene carboxy block copolymer. One exemplary membrane material is Aqualene™, manufactured by Innovation Polymers of Kitchener, Ontario, Canada”).
The Examiner additionally notes that 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 and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). In the present case it is the Examiner’s position that choosing an appropriate material for the packaging material is within ordinary skill in the art.
Claim(s) 2-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over previously cited Pfortje in view of newly cited Maley, newly cited Aida, and in further view of previously cited Roach et al (US 9121817 B1; hereafter “Roach”).
Regarding claim 2 and claim 3, where claim 2 depends on claim 1 and where claim 3 depends on claim 1,
Pfortje teaches wherein the first couplant agent (first couplant) ([0003] “ultrasonic couplant (e.g., a liquid or gel)”) comprises a liquid/gel.
Pfortje is silent to: (claim 2) wherein the first couplant agent comprises glycerin, castor oil, ethylene glycol, kerosene, honey, glycerol, propylene glycol, sugar solution, solid liquid solution system, or a combination thereof; and (claim 3) wherein the first couplant agent is a mixture of two or more fluids, gels, or solid in liquid solutions.
However:
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 and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). In the present case it is the Examiner’s position that choosing a couplant agent only requires ordinary skill in the art, and are commonly chosen based on such factors as the specific requirements of the application, including material type, surface condition, temperature, and environmental conditions.
It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, see MPEP § 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present case, it is the Examiner's position that optimizing the choice of a particular couplant for a particular inspection surface is within ordinary skill in the art.
The Examiner previously took Official Notice that water is a conventional couplant routinely utilized in the art. As the Applicant had not adequately traversed this assertion, this is considered admitted prior art in accordance with MPEP § 2144.03(C).
Furthermore, and as factually supporting the aforementioned assertions, Roach teaches wherein a first couplant agent comprises water, glycerin, castor oil, ethylene glycol, kerosene, honey, glycerol, propylene glycol, sugar solution, solid liquid solution system, or a combination thereof, and wherein the first couplant agent is a mixture of two or more fluids, gels, or solid in liquid solutions (Title “Ultrasonic Testing Device Having An Adjustable Water Column”; Abstract; col. 8, ll. 5-21 “exemplary embodiment, the fluid 300 is water” and “fluid 300 may be any type of liquid medium that produces an ultrasonic impedance match with the component being inspected, and may include additives such as, but not limited to dissolved oils and gels”; col. 5, ll. 14-22 “the UT device 100 includes a housing system 110, a transducer 120 attached to the housing system 110, a signal transmission link 130 coupled to the transducer 120, and a fluid line 140 coupled to the housing system 110. The UT device further includes an optional height control device 208. The UT device 100 is disposed or positioned upon an inspection surface 150 of a test article 160 (see FIG. 5)”; col. 8, ll. 5-21 “membrane 214 may be formed of perforated latex, nitrile, vinyl, cellophane (tape) or PTFE. The membrane 214 is preferably thin and of low acoustic impedance comparable to that of water so that the ultrasonic waves pass through the membrane 214 with little attenuation. The membrane 214 partially defines a non-contact fluid chamber 218”).
Additionally, and further factually supporting the aforementioned assertions, Aida teaches wherein a first couplant agent comprises water, glycerin, castor oil, ethylene glycol, kerosene, honey, glycerol, propylene glycol, sugar solution, solid liquid solution system, or a combination thereof, and wherein the first couplant agent is a mixture of two or more fluids, gels, or solid in liquid solutions (col. 18, ll. 36-50 “coupling adjustment agent other than the sonic speed adjustment agent such as a glycerol which functions as an acoustic impedance adjustment agent for adjusting the acoustic impedance of the coupling fluid”; col. 18, ll. 51-54 “It is also to be noted that the propanol and the glycerol mentioned above may be replaced by any other known fluid materials having the similar functions as these”; col. 5, ll. 28-41 “adjusting a mixing rate of a water and a coupling adjustment agent forming the coupling fluid”; see further details provided for independent claim).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute Roach’s use of water as a specific couplant for Pfortje’s generic couplant for the expected purpose of providing an abundantly and cheaply available couplant routinely used with widely known properties beneficial for inspection. It further would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further optimize the aforementioned water couplant by adding additives such as oils and gels—as further taught by Roach—with Pfortje’s couplant for known reasons including that gels can increase viscosity useful for improving adherence to surfaces and filling surface roughness to prevent signal-attenuating air pockets and/or that oils can be used for corrosion inhibition or to reduce evaporation, and/or for optimizing the impedance matching, and likewise it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to additionally/alternatively optimize the aforementioned water couplant by adding additive such as glycerol—as further taught by Aida—for known reasons such as increasing viscosity, slowing evaporation, and/or for (further) optimizing the impedance matching.
Regarding claim 4, which depends on claim 3, as best understood,
Pfortje as previously modified (see preceding claim analysis, especially analysis of independent claim over Aida) suggests wherein the control unit (Aida, control circuit 132) a ratio of the two or more fluids, gels, or solid in liquid solutions is varied (Aida: Abstract “The mixing rate of the coupling fluid can be adjusted”; col. 18, ll. 36-50 “use the coupling adjustment agent other than the sonic speed adjustment agent such as a glycerol which functions as an acoustic impedance adjustment agent for adjusting the acoustic impedance of the coupling fluid to suppress the reflection of the ultrasonic waves”; col. 16, ll. 51-57 “a coupling adjustment agent mixing device 139 is provided in conjunction with the cooling device 131 so as to change the mixing rate of the water and the coupling adjustment agent in the coupling fluid”; col. 17, ll. 8-15 “coupling adjustment agent mixing device 139 changes the mixing rate of the water and the coupling adjustment agent in a form of a sonic speed adjustment agent such as the propanol”; col. 17, ll. 16-26 “controls the coupling adjustment agent mixing device 139 to realize the determined mixing rate"; col. 18, ll. 51-54 “It is also to be noted that the propanol and the glycerol mentioned above may be replaced by any other known fluid materials having the similar functions as these”).
The Examiner again further emphasizes that 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 and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960), and that it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, see MPEP § 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). However, choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success is obvious to try, see MPEP § 2143(I)(E). The Examiner also adds that MPEP § 2145(III)(X)(B) states “An “obvious to try” rationale may support a conclusion that a claim would have been obvious where one skilled in the art is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. “[A] person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 421,82 USPQ2d 1385, 1397 (2007).” It is the Examiner’s position that the intended use of trying to vary the couplant ratio in an attempt to optimize for a particular application including for a particular test material merely requires common sense.
Regarding claim 5, which depends on claim 3,
Pfortje teaches further comprising a second couplant agent (second couplant) applied to the distal end (distal end of membrane 48) of the packaging material (fig. 6, membrane 48) during testing such that it is disposed at the second interface (interface comprising second couplant at first surface of pipe 62) ([0043] “The frame 42 can also be configured to receive an ultrasonic couplant and deliver the ultrasonic couplant to the second chamber 50”).
Regarding claim 6, which depends on claim 5,
Pfortje teaches wherein the second couplant agent (second couplant) comprises at least one of the two or more fluids, gels, or solid in liquid solutions present in the first couplant agent (first couplant) ([0035] “The first and second volumes of ultrasonic couplants can be the same ultrasonic couplant or different ultrasonic couplants”). The Examiner additionally exemplary notes that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specifically utilize water as one of said in common fluids for the same motivation previously provided, including being abundant and cheap, and more generally, it would likewise be convenient to reutilize components of the couplant agents instead of using only for one of the couplants and not the other.
Regarding claim 7, which depends on claim 5,
Pfortje teaches wherein the second couplant agent (second couplant) has an acoustic impedance substantially identical to an acoustic impedance of the packaging material (fig. 6, membrane 48) ([0035] “The first and second volumes of ultrasonic couplants can be the same ultrasonic couplant or different ultrasonic couplants”; [0041] “the membrane 48 can be formed from a material whose acoustic impedance is matched with ultrasonic couplant(s) in contact with the membrane 48 to minimize reflections and absorptions at interfaces between the membrane and ultrasonic couplant(s)”; “the membrane material can be a material that is invisible or near invisible when used with a selected couplant, such that the material does not reflect ultrasound from the surface and does not absorb ultrasound when the waves pass therethrough, or at least minimizes reflection and absorption”).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over previously cited Pfortje in view of newly cited Maley, newly cited Aida, and in further view of previously cited Bantz (US 4594897 A; hereafter “Bantz”).
Regarding claim 9, which depends on claim 1,
Pfortje teaches wherein the packaging material (fig. 6, membrane 48) is thin and minimizes reflections and absorptions ([0041] “membrane 48 to minimize reflections and absorptions”).
Pfortje is silent to wherein the packaging material has a thickness of about ½ to about ¼ of a transmitted wavelength or any multiple thereof.
However:
It has been held that a mere change in size is generally recognized as being within the level of ordinary skill in the art, see MPEP § 2144.04(IV)(A), In re Rose, 105 USPQ 237 (CCP A 1955), In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976), and Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). In the present case, it is the Examiner's position that only ordinary skill in the art is required to change the thickness of a layer of material.
It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, see MPEP § 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present case, it is the Examiner's position that only ordinary skill in the art is required to optimize the thickness of a layer of material to further minimize reflections and absorptions.
Furthermore, and as supporting factual evidence of the aforementioned assertions, Bantz teaches wherein a material layer has a thickness of about ½ to about ¼ of a transmitted wavelength or any multiple thereof (Title “Inspection Of The Internal Portion Of Objects Using Ultrasonics”; Abstract; col. 8, ll. 13-34 “conventional quarter wave matching layer”; col. 14, ll. 15-17 “matching layer only having a thickness equivalent to a quarter wavelength or multiple thereof”).
In view of the above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to change the size of Pfortje’s packaging material to be a conventional quarter wavelength (or multiple thereof)—as factually supported by Bantz—for the expected purpose of optimizing the acoustic transmission and minimization of reflection and/or absorptions as is known in the art.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over previously cited Pfortje in view of newly cited Maley, newly cited Aida, and in further view of previously cited Hirao et al (US 20200086347 A1; hereafter “Hirao”).
Regarding claim 14, which depends on claim 1,
Pfortje teaches the transducer (fig. 6b, ultrasonic probe / transducer 30).
Pfortje does not teach comprising two or more transducers.
However:
It has been held that mere duplication of the essential working parts of a device involves only routine skill in the art, see MPEP § 2144.04(VI)(B), St. Regis Paper Co. v. Bemis Co., 193 USPQ 8 (7th Cir. 1977), and In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). In the present case it is the Examiner's position that only ordinary skill in the art is required to provide an additional transducer.
Furthermore, and as supporting factual evidence of the aforementioned assertion, Hirao teaches a testing device (fig. 7, ultrasonic device 1) comprising a housing (fig. 7, case 8) comprising two or more transducers (fig. 7, ultrasonic transmitting-receiving elements 6) ([0047] “FIG. 7 illustrates an ultrasonic device 1 as a dual vibrator-type ultrasonic probe. In the ultrasonic device 1 as the dual vibrator-type ultrasonic probe illustrated in FIG. 7, the ultrasonic transmitting-receiving element 6 is provided”).
In view of the above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to duplicate Pfortje’s transducer to provide at least two or more transducers—as factually supported by Hirao—for the expected purposes of providing redundancy, increased area of measurement, specialization of transmitter transducer & receiver transducer (e.g., for reduced ringing noise and/or less need for delay/standoff), and/or for enabling the capability of having a single testing device wherein each portion has its own transducer such that said each portion can be specialized (e.g., different frequencies and/or different couplant pairings).
Claim(s) 15-16 and 19-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over previously cited Pfortje in view of newly cited Maley, newly cited Aida, previously cited Roach, and in further view of previously cited Business News Publishing Media Staff (NPL Quality Magazine Ultrasonic Material Analysis; hereafter “BNP”).
Regarding independent claim 15,
Pfortje teaches a method of determining one or more properties of a test material (fig. 6, pipe 62) (Title “COUPLING FOR ULTRASONIC INSPECTION OF PIPES”; Abstract; [0002] “properties of the reflected ultrasonic waves can be measured by the ultrasonic transducer and subsequently analyzed to identify characteristics of defects detected within the pipe, including location and size”; [0032] “Embodiments of the pipe can include any substantially tubular structure formed by any process and material (e.g., steels, copper and copper alloys, aluminum and aluminum alloys, etc.)”; [0031] “Embodiments of the disclosure are discussed herein with respect to ultrasonic detection of defects in pipes. However, a person skilled in the art will appreciate that the disclosed embodiments can be employed to ultrasonically detect defects in other structures and/or geometries without limit”; [0002] “Ultrasonic inspection can be used to non-destructively detect defects (e.g., cracks, inclusions, voids, etc.) in manufactured articles”; [0003] “in non-destructive testing, an ultrasonic couplant (e.g., a liquid or gel) is typically provided within a space between the transducer and the pipe to facilitate transmission”), wherein the method comprises:
contacting the test material (fig. 6, pipe 62) with a testing device (fig. 6b, ultrasonic inspection apparatus 10), the testing device (fig. 6b, ultrasonic inspection apparatus 10) comprising:
a housing (fig. 6, probe holder 20) enclosing (surrounding) comprising a first couplant agent (first couplant) and a transducer (fig. 6b, ultrasonic probe / transducer 30),
wherein the housing (fig. 6, probe holder 20) has a proximal end (proximal end of probe holder 20) and a distal end (distal end of probe holder 20);
a packaging material (fig. 6, membrane 48) having a (proximal end of membrane 48) and a distal end (distal end of membrane 48) ,
wherein the proximal end (proximal end of membrane 48) of the packaging material (fig. 6, membrane 48) is coupled to the distal end (distal end of probe holder 20) of the housing (fig. 6, probe holder 20) to form a first interface (first interface formed at membrane 48) ) ([0041] “As an example, the membrane 48 can be formed from a material whose acoustic impedance is matched with ultrasonic couplant(s) in contact with the membrane 48 to minimize reflections and absorptions at interfaces between the membrane and ultrasonic couplant(s). In certain exemplary embodiments, the membrane material can be a material that is invisible or near invisible when used with a selected couplant, such that the material does not reflect ultrasound from the surface and does not absorb ultrasound when the waves pass therethrough, or at least minimizes reflection and absorption”; [0042] “By way of non-limiting example, suitable membrane materials” and “One exemplary membrane material is Aqualene™”);
wherein the test material (fig. 6, pipe 62) has a first surface (first surface of pipe 62) and an opposite second surface (second surface of pipe 62), such that a second interface (interface comprising second couplant at first surface of pipe 62) is formed between the first surface (first surface of pipe 62) of the test material (fig. 6, pipe 62) and the distal end (distal end of probe holder 20) of the packaging material (fig. 6, membrane 48);
measuring an acoustic signal transmitted or reflected by the test material (fig. 6, pipe 62); and
analyzing (at once so envisaged as correlating; additional obviousness analysis provided) the acoustic signal to determine one or more properties of the test material (fig. 6, pipe 62) ([0049] “characteristics of the reflected ultrasonic waves 66r can be measured (e.g., amplitude, propagation time, etc.) and transmitted to a computing device for storage and/or analysis for detection of defects within the pipe 62”).
Pfortje does not teach item 1): wherein the transducer is fully (narrower claim interpretation for compact prosecution) enclosed by the housing. Pfortje does not explicitly state item 2): correlating the acoustic signal with the one or more properties of the test material. Pfortje is silent to item 3): wherein the first couplant agent is a mixture of two or more fluids, gels, or solid in liquid solutions. Pfortje does not teach items 4a): varying a ratio of the two or more fluids, gels, or solid in liquid solutions during testing to vary an acoustic impedance of the first couplant agent; and 4b) achieving an acoustic impedance mismatch of 30% or less between an acoustic impedance of the first couplant agent and an acoustic impedance of the packaging material.
Regarding item 1), Maley teaches (see figs. 1-6) wherein a transducer (ultrasonic transducer 14) is enclosed by a housing (transducer housing 50) (col. 7, ll. 48-62 “The transducer 14 is supported in a coaxially abutting relationship with the acoustic coupling by a generally cylindrical transducer housing 50 that includes a housing cap portion 52 and a removable transducer retaining nut 54 that is supported on an upper end of the cylindrical manifold housing 50”; Title; Abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Maley’s fuller enclosing housing design for a transducer with Pfortje’s transducer housing, thereby providing the expected advantages of increased protection of the transducer including from contact/impact, extraneous noise, and/or falling out. The Examiner emphasizes that multi-part housing and/or housing with a lid are conventional in the art and only ordinary skill is required to further include additional housing portions for more fully enclosing the transducer.
Regarding item 2):
The Examiner previously took Official Notice that correlation of the acoustic signal with the properties being of the test material/object being inspected is a conventional and expected activity for ultrasonic inspection apparatus. As the Applicant had not adequately traversed this assertion, this is considered admitted prior art in accordance with MPEP § 2144.03(C).
Furthermore, and as factually supporting the aforementioned assertion, BNP teaches correlating the acoustic signal with the one or more properties of the test material (Title “Ultrasonic Material Analysis”; page 1 “Ultrasonic nondestructive testing (NDT) is a versatile technique that can be applied to a variety of material analysis applications. While ultrasonic NDT is perhaps better known in its more common
applications for thickness gaging, flaw detection and acoustic imaging, high frequency sound waves
also can be used to discriminate and quantify some basic mechanical, structural or compositional
properties of solids and liquids. Ultrasonic material analysis is based on a simple principle of
physics: the motion of any wave will be affected by the medium through which it travels. Thus,
changes in one or more of four easily measurable parameters associated with the passage of a high
frequency sound wave through a material-transit time, attenuation, scattering and frequency
content-often can be correlated with changes in physical properties such as hardness, elastic
modulus, density, homogeneity or grain structure”).
In view of the above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize the conventional and expected ultrasonic NDT technique of correlating measurable parameters with physical properties—as factually supported by BNP—with Pfortje’s ultrasonic NDT for the expected advantages of conveniently utilizing well-known mathematical techniques that statistically link physical properties with measurable parameters in known manners.
Regarding item 3) and item 4a):
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 and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). In the present case it is the Examiner’s position that choosing a couplant agent only requires ordinary skill in the art, and are commonly chosen based on such factors as the specific requirements of the application, including material type, surface condition, temperature, and environmental conditions.
It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, see MPEP § 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present case, it is the Examiner's position that optimizing the choice of a particular couplant for a particular inspection surface is within ordinary skill in the art.
The Examiner previously took Official Notice that water is a conventional couplant routinely utilized in the art. As the Applicant had not adequately traversed this assertion, this is considered admitted prior art in accordance with MPEP § 2144.03(C).
Furthermore, and as factually supporting the aforementioned assertions, Roach teaches wherein a first couplant agent comprises water, glycerin, castor oil, ethylene glycol, kerosene, honey, glycerol, propylene glycol, sugar solution, solid liquid solution system, or a combination thereof, and wherein the first couplant agent is a mixture of two or more fluids, gels, or solid in liquid solutions (Title “Ultrasonic Testing Device Having An Adjustable Water Column”; Abstract; col. 8, ll. 5-21 “exemplary embodiment, the fluid 300 is water” and “fluid 300 may be any type of liquid medium that produces an ultrasonic impedance match with the component being inspected, and may include additives such as, but not limited to dissolved oils and gels”; col. 5, ll. 14-22 “the UT device 100 includes a housing system 110, a transducer 120 attached to the housing system 110, a signal transmission link 130 coupled to the transducer 120, and a fluid line 140 coupled to the housing system 110. The UT device further includes an optional height control device 208. The UT device 100 is disposed or positioned upon an inspection surface 150 of a test article 160 (see FIG. 5)”; col. 8, ll. 5-21 “membrane 214 may be formed of perforated latex, nitrile, vinyl, cellophane (tape) or PTFE. The membrane 214 is preferably thin and of low acoustic impedance comparable to that of water so that the ultrasonic waves pass through the membrane 214 with little attenuation. The membrane 214 partially defines a non-contact fluid chamber 218”).
Additionally, and further factually supporting the aforementioned assertions, Aida teaches wherein a first couplant agent comprises water, glycerin, castor oil, ethylene glycol, kerosene, honey, glycerol, propylene glycol, sugar solution, solid liquid solution system, or a combination thereof, and wherein the first couplant agent is a mixture of two or more fluids, gels, or solid in liquid solutions (col. 18, ll. 36-50 “coupling adjustment agent other than the sonic speed adjustment agent such as a glycerol which functions as an acoustic impedance adjustment agent for adjusting the acoustic impedance of the coupling fluid”; col. 18, ll. 51-54 “It is also to be noted that the propanol and the glycerol mentioned above may be replaced by any other known fluid materials having the similar functions as these”; col. 5, ll. 28-41 “adjusting a mixing rate of a water and a coupling adjustment agent forming the coupling fluid”; see further details provided for independent claim).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute Roach’s use of water as a specific couplant for Pfortje’s generic couplant for the expected purpose of providing an abundantly and cheaply available couplant routinely used with widely known properties beneficial for inspection. It further would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further optimize the aforementioned water couplant by adding additives such as oils and gels—as further taught by Roach—with Pfortje’s couplant for known reasons including that gels can increase viscosity useful for improving adherence to surfaces and filling surface roughness to prevent signal-attenuating air pockets and/or that oils can be used for corrosion inhibition or to reduce evaporation, and/or for optimizing the impedance matching, and likewise it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to additionally/alternatively optimize the aforementioned water couplant by adding additive such as glycerol—as further taught by Aida—for known reasons such as increasing viscosity, slowing evaporation, and/or for (further) optimizing the impedance matching.
Therefore, Pfortje as modified suggests varying a ratio of two or more fluids, gels, or solid in liquid solutions (Roach: col. 8, ll. 5-21 “exemplary embodiment, the fluid 300 is water” and “fluid 300 may be any type of liquid medium that produces an ultrasonic impedance match with the component being inspected, and may include additives such as, but not limited to dissolved oils and gels”), achieving a low acoustic impedance mismatch between an acoustic impedance of the first couplant agent (first couplant) and an acoustic impedance of the packaging material (fig. 6, membrane 48) (Pfortje: [0072] “By way of non-limiting example, suitable membrane materials include, but are not limited to, polymers, polymer blends, and rubber materials, such as polyethylene, polypropylene, polyvinylchloride, polystyrol, polytetrafluorethylene, polymethylmethacrylat, polyacrylnitril, polyacrylamide, aramides, polyetherketones, polyethylenglycol, polyurethane, silicons or poly(organo)siloxane, thermoplastic elastomers, melamine resin, polyacrylate rubber, ethylene-acrylate rubber, polyester urethane, bromo isobutylene isoprene, polybutadiene, chloro isobutylene isoprene, polychloroprene, chlorosulphonated polyethylene, epichlorohydrin, ethylene propylene, ethylene propylene diene monomer, polyether urethane, perfluorocarbon rubber, fluoronated hydrocarbon, fluoro silicone, fluorocarbon rubber, hydrogenated nitrile butadiene, polyisoprene, isobutylene isoprene butyl, acrylonitrile butadiene, butyl rubber, styrene butadiene, styrene ethylene butylene styrene copolymer, polysiloxane, vinyl methyl silicone, acrylonitrile butadiene carboxy monomer, styrene butadiene carboxy monomer, thermoplastic polyether-ester, styrene butadiene block copolymer, and styrene butadiene carboxy block copolymer”; [0041] “the membrane 48 can be formed from a material whose acoustic impedance is matched with ultrasonic couplant(s) in contact with the membrane 48 to minimize reflections and absorptions at interfaces between the membrane and ultrasonic couplant(s)”; the Examiner notes that a matched acoustic impedance would be reasonably inclusive of less than 30% mismatch, see additional obviousness analysis).
Further regarding item 4a), and a more narrow claim interpretation for compact prosecution:
It has been held that broadly providing a mechanical or automatic means to replace manual activity which has accomplished the same result involves only routine skill in the art, see MPEP § 2144.04(III) and In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958). In the present case it is the Examiner’s position that only ordinary skill is required to automate control over supplied couplant.
Furthermore, and as supporting factual evidence of the aforementioned assertion, Aida teaches a testing device (testing portion of fig. 19, including ultrasound imaging device 128 with ultrasonic wave applicator 120 comprising ultrasonic transducer 125) is in communication (see connection lines in fig. 19; at once envisaged as electrical connection, additional obviousness analysis provided) with a control unit (control circuit 132 with coupling adjustment agent mixing device 139 with device 131), and wherein, during testing, the control unit (control circuit 132 with coupling adjustment agent mixing device 139 with device 131) is configured to vary (via coupling adjustment agent mixing device 139 with device 131) an acoustic impedance of a couplant agent (coupling agent) to adjust an acoustic impedance mismatch (Title; Abstract “The mixing rate of the coupling fluid can be adjusted”; col. 5, ll. 28-41 “adjusting a mixing rate of a water and a coupling adjustment agent forming the coupling fluid”; col. 18, ll. 36-50 “use the coupling adjustment agent other than the sonic speed adjustment agent such as a glycerol which functions as an acoustic impedance adjustment agent for adjusting the acoustic impedance of the coupling fluid to suppress the reflection of the ultrasonic waves”; col. 16, ll. 51-57 “a coupling adjustment agent mixing device 139 is provided in conjunction with the cooling device 131 so as to change the mixing rate of the water and the coupling adjustment agent in the coupling fluid”; col. 17, ll. 8-15 “coupling adjustment agent mixing device 139 changes the mixing rate of the water and the coupling adjustment agent in a form of a sonic speed adjustment agent such as the propanol”; col. 17, ll. 16-26 “controls the coupling adjustment agent mixing device 139 to realize the determined mixing rate"; col. 18, ll. 51-54 “It is also to be noted that the propanol and the glycerol mentioned above may be replaced by any other known fluid materials having the similar functions as these”).
In view of the above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to automate control over Pfortje’s couplant agents for appropriate impedance adjustments thereof for the desired optimization—as factually supported by Aida’s control unit for acoustic impedance couplant adjustments—thereby providing automation means for the aforementioned automation and thus saving on manual labor & time, as well as reducing the level of skill necessary for working the apparatus and therefore increasing the marketability thereof, and furthermore reducing human error. The Examiner additionally notes that the combination with Aida has the further benefit of being able to control and compensate for temperature changes affecting the acoustic impedance, as well as being able to store tables of information to look-up and reference for the optimization of the acoustic impedance.
Regarding item 4b):
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 and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). In the present case it is the Examiner’s position that only ordinary skill in the art is required to choose a couplant and likewise only ordinary skill in the art is required to choose a material for the packaging/membrane. The Examiner emphasizes that the aforementioned packaging/membrane materials taught by Pfortje is inclusive of materials that would have 30% or less mismatch with the exemplary couplant of water.
It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, see MPEP § 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present case, it is the Examiner's position that choosing a particular couplant and/or particular packaging/membrane so as to have a workable matching range of acoustic impedance with a mismatch of less than or equal to 30% is within ordinary skill in the art.
Furthermore, In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP § 2144.05(I), In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The Examiner emphasizes that Pfortje teaches matching the acoustic impedance of the material and the ultrasonic couplant(s) in contact with the membrane 48 ([0041]).
Therefore, either one of ordinary skill in the art at the time the invention was effectively filed would at once envisaged that Pfortje’s matching includes a mismatch of less than or equal to 30%, or nevertheless, or in the alternative, in view of the above it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further optimize Pfortje’s potential mismatch to be closer to Pforteje’s desired relative matching and therefore explicitly inclusive of 30% or less acoustic impedance mismatch and thereby further minimizing reflections and absorptions at the interfaces between the membrane couplant and thus improving signal-to-noise ratio for increased accuracy/precision.
Regarding claim 16, which depends on claim 15,
Pfortje reasonably teaches wherein the testing device (fig. 6b, ultrasonic inspection apparatus 10) exhibits an acoustic impedance mismatch of 45 Mega Rayls or less (at once so envisaged; additional obviousness analysis follows) between an acoustic impedance of the first couplant agent (first couplant) and an acoustic impedance of the packaging material (fig. 6, membrane 48) ([0041] “As an example, the membrane 48 can be formed from a material whose acoustic impedance is matched with ultrasonic couplant(s) in contact with the membrane 48 to minimize reflections and absorptions at interfaces between the membrane and ultrasonic couplant(s). In certain exemplary embodiments, the membrane material can be a material that is invisible or near invisible when used with a selected couplant, such that the material does not reflect ultrasound from the surface and does not absorb ultrasound when the waves pass therethrough, or at least minimizes reflection and absorption”; [0042] “By way of non-limiting example, suitable membrane materials” and “One exemplary membrane material is Aqualene™”; [0049] “At the ultrasonic probe 30, characteristics of the reflected ultrasonic waves 66r can be measured (e.g., amplitude, propagation time, etc.) and transmitted to a computing device for storage and/or analysis for detection of defects within the pipe 62”; Examiner emphasizes that first interface is intended to be near invisible, whereas the reflection at the test surface is usefully measured).
The Examiner acknowledges that Pfortje does not explicitly state that the impedance mismatch is 45 Mega Rayls or less.
However:
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP § 2144.05(I), In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), and In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). In the present case, Pfortje’s taught matching of the acoustic couplant with the membrane (i.e., close to or about 0) is overlapping with the claimed range.
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 and In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). In the present case it is the Examiner’s position that choosing the particular couplant and membrane that are essentially matching takes only ordinary skill in the art, the Examiner exemplary noting conventional (i.e., Examiner previously took Official Notice of the conventionality) water as a couplant in combination with Aqualene™.
Furthermore, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, see MPEP § 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present case, it is the Examiner's position that only ordinary skill in the art is required to optimize below 45 Mega Rayls when the prior art teaches matching the impedance and minimizing reflection and absorption.
In view of the above, either one of ordinary skill in the art at the time the invention was effectively filed would at once envisaged that Pfortje teaches that the impedance mismatch is 45 Mega Rayls or less, or nevertheless, or in the alternative, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose preferred materials/couplants for the optimization of impedance matching thereby minimizing reflection and absorption and thus increasing signal-to-noise ratio in the measurements.
Regarding claim 19, which depends on claim 15,
Pfortje teaches further comprising applying a second couplant agent (second couplant) at the distal end (distal end of membrane 48) of the packaging material (fig. 6, membrane 48) to form a layer of the second couplant agent (second couplant) at the second interface (interface comprising second couplant at first surface of pipe 62) ([0043] “The frame 42 can also be configured to receive an ultrasonic couplant and deliver the ultrasonic couplant to the second chamber 50”).
Regarding claim 20, which depends on claim 19,
Pfortje teaches wherein the second couplant agent (second couplant) comprises at least one of the two or more fluids, gels, or solid in liquid solutions of the first couplant agent (first couplant) ([0035] “The first and second volumes of ultrasonic couplants can be the same ultrasonic couplant or different ultrasonic couplants”). The Examiner additionally exemplary notes that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specifically utilize water as one of said in common fluids for the same motivation previously provided, including being abundant and cheap.
Regarding claim 21, which depends on claim 19,
Pfortje teaches wherein the second couplant agent (second couplant) has an acoustic impedance substantially identical to an acoustic impedance of the packaging material (fig. 6, membrane 48) ([0035] “The first and second volumes of ultrasonic couplants can be the same ultrasonic couplant or different ultrasonic couplants”; [0041] “the membrane 48 can be formed from a material whose acoustic impedance is matched with ultrasonic couplant(s) in contact with the membrane 48 to minimize reflections and absorptions at interfaces between the membrane and ultrasonic couplant(s)”; “the membrane material can be a material that is invisible or near invisible when used with a selected couplant, such that the material does not reflect ultrasound from the surface and does not absorb ultrasound when the waves pass therethrough, or at least minimizes reflection and absorption”).
Regarding claim 22, which depends on claim 15,
Pfortje reasonably teaches wherein an acoustic reflection from the first interface (first interface formed at membrane 48) is less than about 65 percent with respect to the reflection from the second interface (interface comprising second couplant at first surface of pipe 62) ([0041] “As an example, the membrane 48 can be formed from a material whose acoustic impedance is matched with ultrasonic couplant(s) in contact with the membrane 48 to minimize reflections and absorptions at interfaces between the membrane and ultrasonic couplant(s). In certain exemplary embodiments, the membrane material can be a material that is invisible or near invisible when used with a selected couplant, such that the material does not reflect ultrasound from the surface and does not absorb ultrasound when the waves pass therethrough, or at least minimizes reflection and absorption”; [0042] “By way of non-limiting example, suitable membrane materials” and “One exemplary membrane material is Aqualene™”; [0049] “At the ultrasonic probe 30, characteristics of the reflected ultrasonic waves 66r can be measured (e.g., amplitude, propagation time, etc.) and transmitted to a computing device for storage and/or analysis for detection of defects within the pipe 62”; Examiner emphasizes that first interface is intended to be near invisible, whereas the reflection at the test surface is usefully measured), and
wherein an acoustic reflection from the second surface (second surface of pipe 62) of the test material (fig. 6, pipe 62) is greater than about 30% of a magnitude of reflection (at once so envisaged from reflection at first interface being minimized and reflection from within pipe from one side to the other being the desired signal for analysis therefrom; additional obviousness analysis follows) from acoustic reflection from the first interface (first interface formed at membrane 48) ([0041] “As an example, the membrane 48 can be formed from a material whose acoustic impedance is matched with ultrasonic couplant(s) in contact with the membrane 48 to minimize reflections and absorptions at interfaces between the membrane and ultrasonic couplant(s). In certain exemplary embodiments, the membrane material can be a material that is invisible or near invisible when used with a selected couplant, such that the material does not reflect ultrasound from the surface and does not absorb ultrasound when the waves pass therethrough, or at least minimizes reflection and absorption”; [0081] “detection of defects within the pipe 62”; [0061] “ultrasonic detection of defects within targets having the form of pipes. However, a person skilled in the art will appreciate that the disclosed embodiments can be employed to ultrasonically detect defects in other structures and/or geometries without limit. Examples can include bars, billets, rail wheels, and other structures, such as those formed from composite materials”).
Furthermore, it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, see MPEP § 2144.05 and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). In the present case, it is the Examiner's position that only ordinary skill in the art is required to optimize either/both minimizing the unwanted reflections/absorptions at the first interface and/or reasonably increasing the reflection at the second interface and later reflections for purposes of inspection of the test material including its front surface and outer boundary surface or providing reference signal(s) for comparison to reflections from, for example, test material internal reflections. The Examiner exemplary notes that thickness measurements are a conventional measurement for inspection of an object requiring sufficient signal-to-noise from each surface of the test object, and likewise measurements of defects throughout the test material including at the second surface would require measurements thereof.
Regarding claim 23, which depends on claim 15,
Pfortje as previously modified by BNP (see analysis of independent claim) suggests wherein the one or more properties comprise defects, surface roughness, density estimate, speed of sound, temperature estimate, acoustic impedance estimate, time of flight, or any combination thereof (Pfortje [0031] “ultrasonic detection of defects in pipes. However, a person skilled in the art will appreciate that the disclosed embodiments can be employed to ultrasonically detect defects in other structures and/or geometries without limit”; [0002] “Ultrasonic inspection can be used to non-destructively detect defects (e.g., cracks, inclusions, voids, etc.) in manufactured articles”. BNP page 1 “changes in physical properties such as hardness, elastic modulus, density, homogeneity or grain structure”).
Regarding claim 24, which depends on claim 15,
Pfortje teaches contacting a testing device (fig. 6b, ultrasonic inspection apparatus 10).
Pfortje does not teach contacting two or more testing devices.
However:
It has been held that mere duplication of the essential working parts of a device involves only routine skill in the art, see MPEP § 2144.04(VI)(B), St. Regis Paper Co. v. Bemis Co., 193 USPQ 8 (7th Cir. 1977), and In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). In the present case it is the Examiner's position that only ordinary skill in the art is required to utilize a duplicate testing device.
The Examiner previously took Official Notice that utilizing multiple testing devices to contact/inspect a testing material is a conventional practice. As the Applicant had not adequately traversed this assertion, this is considered admitted prior art in accordance with MPEP § 2144.03(C).
In view of the above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize at least a second testing device to inspect a test material for commonsensical reasons such as time efficiency (e.g., dividing up the inspection portions), redundancy (e.g., retaking measurements for averaging or other statistical reasons), and/or calibration (e.g., verifying that a questionable testing device records the same measurements as a known operable testing device).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. Applicant is invited to review PTO form 892 accompanying this Office Action listing Prior Art relevant to the instant invention cited by the Examiner. The Examiner notes in particular that JP H10123101 A “Maki” also teaches varying a couplant (water & glycerin) where the mixture ratio is controlled by a glycerin mixing device (51).
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 DAVID L SINGER whose telephone number is (303) 297-4317. The Examiner can normally be reached on Monday - Friday 8:00 am - 6:00pm CT, EXCEPT alternating Friday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, John Breene can be reached on 571-272-4107. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID L SINGER/Primary Examiner, Art Unit 2855 29AUG2026
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