DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Amendment
2. No amendment filed on 04/022/2026 into this application.
CLAIM INTERPRETATION
3. 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.
4. 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.
5. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
6. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
“a control unit arranged for” in claim 20.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 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 § 103
7. 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.
8. Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over “Balanced-detection interferometric cavity-assisted photothermal spectroscopy employing an all-fiber-coupled probe laser configuration”, VIENNA UNIVERSITY OF TECHNOLOGY - TU WIEN, vol. 29, no. 5, 26 February 2021 (2021-02-26), page 7794, XPO93003483, DOL 10.1364/0E.416536 by WACLAWEK JOHANNES P. ET AL (hereinafter Waclawek) (Submitted by the Applicant in IDS).
Regarding Claim 1, Waclawek teaches a method for detecting a molecule, in particular a trace gas species, in a sample using photothermal spectroscopy (Introduction) comprising the steps of:
- providing a probe laser beam and propagating the probe laser beam to a cavity of a Fabry-Perot interferometer (Fig. 1, 3-4);
- directing the probe laser beam through the sample in the cavity (Fig. 1, 3-4);
- providing an excitation laser beam for heating the sample in the cavity (Fig. 1, 3-4);
- directing the excitation laser beam through the sample in the cavity (Fig. 1, 3-4);
- detecting the probe laser beam, which was from the cavity (Fig. 1, 4); and
- detecting the reflected probe laser beam, which was reflected from the cavity (Fig. 1, 3-4) but does not explicitly teach detecting the transmitted probe laser beam, which was transmitted from the cavity.
However, it is considered obvious to try all known solutions when there is a recognized need in the art (transmitted beam), there had been a finite number of identified, predictable solutions to the recognized need (transmitted and reflected beam), and when one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success. See MPEP § 2143, E. Furthermore, such an arrangement would imply to one of ordinary skill in the art at the time of the invention to detect the transmitted probe laser beam, which was transmitted from the cavity in order to obtain a predictable result.
Regarding Claim 2, Waclawek teaches the probe laser beam propagating to the cavity is separated from the reflected probe laser beam by an optical circulator (Fig. 3-4: Circulators).
Regarding Claim 3, Waclawek teaches the probe laser beam is propagated to the cavity at least in a section in an optical fibre (Fig. 3-4: all-fibre-coupled probe laser configuration).
Regarding Claim 4, Waclawek teaches the probe laser beam propagating to the cavity is coupled into the cavity by a fibre-coupled collimator and the reflected probe laser beam is collected by the same fibre-coupled collimator (Fig. 3-4: coupler, i.e. the collimator).
Regarding Claim 5, Waclawek teaches tuning the probe laser beam to a frequency, at which the transmitted probe laser beam and the reflected probe laser beam have the same power (Fig. 1 (b), (c): illustrate same power).
Regarding Claim 6, Waclawek teaches the step of subtracting a transmitted signal corresponding to the transmitted probe laser beam and a reflected signal corresponding to the reflected probe laser beam (Fig. 3, 4: Differential Amplifier, i.e. the subtractor).
Regarding Claim 7, Waclawek teaches the steps of:
- adjusting the transmitted probe laser beam by a first attenuator and/or the reflected probe laser beam by a second attenuator such that the transmitted probe laser beam and the reflected probe laser beam have the same power values, prior to detecting the transmitted probe laser beam and the reflected probe laser beam (Fig. 4: Attenuator).
Regarding Claim 8, Waclawek teaches the step of:
- tuning the probe laser beam to a partial-transmission or a partial reflection of one side of a resonance of the cavity (Page 7797: a probe laser that is tuned to a frequency enabling partial transmission/reflectance).
Regarding Claim 9, Waclawek teaches the steps of:
- modulating the excitation laser beam wavelength, wherein the modulated excitation laser beam is directed through the sample in the cavity (Page 7800: The sensor platform was based on photothermal sample excitation via wavelength modulation and detection of the second harmonic (2f )); and
- detecting a harmonic, in particular a second harmonic, of a modulation of the transmitted probe laser beam (Page 7800: the emission wavelength of the QCL was modulated by adding a sinusoidal function to the DC injection current input) and detecting a harmonic, in particular a second harmonic, of a modulation of the reflected probe laser beam (Page 7796: Transient generation of the photothermal signals was performed by applying wavelength modulation (WM) at reduced sample pressure via a powerful continuous wave (CW) distributed feedback (DFB) quantum cascade laser (QCL) as excitation source to target strong fundamental absorption features of the sample molecules in the mid-infrared (mid-IR) region. The photo-induced transducer signal was detected within a narrow bandwidth by a lock-in amplifier (LIA) at the second harmonic (2f ) of the modulation frequency [24]. This 2f -WM scheme is a powerful method for increasing the signal-to-noise ratio as well as the selectivity of a given measurement. Refractive index changes were detected via a CW-DFB fiber laser (FL) emitting in the vicinity of 1550 nm together with a photodiode. This near-infrared region offers mature technology and readily available high-performing optical components. The metrological figures of merit of this 2f -WM balanced-detection ICAPS sensor employing an all-fiber-coupled probe laser configuration. Also see Fig. 4).
Regarding Claim 10, Waclawek teaches the steps of:
- providing a probe laser beam and propagating the probe laser beam to a cavity of the Fabry-Perot interferometer (See Claim1 rejection);
- directing the probe laser beam through the sample in the cavity (See Claim1 rejection);
- detecting the transmitted probe laser beam, which was transmitted from the cavity (See Claim1 rejection); and
- detecting the reflected probe laser beam, which was reflected from the cavity (See Claim1 rejection) but does not explicitly teach the steps of:
- providing a further probe laser beam and propagating the further probe laser beam to a further cavity of the Fabry-Perot interferometer;
- directing the further probe laser beam through the sample in the further cavity;
- detecting the transmitted further probe laser beam, which was transmitted from the further cavity; and
- detecting the reflected further probe laser beam, which was reflected from the further cavity.
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to use a further probe laser beam, a further cavity of the Fabry-Perot interferometer such that the steps of:
- providing a further probe laser beam and propagating the further probe laser beam to a further cavity of the Fabry-Perot interferometer;
- directing the further probe laser beam through the sample in the further cavity;
- detecting the transmitted further probe laser beam, which was transmitted from the further cavity; and
- detecting the reflected further probe laser beam, which was reflected from the further cavity can be accomplished in order to obtain a predictable result, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. (Also see Claim 1 rejection. Same technique can be applied to achieve method claim 10).
Regarding Claim 11, Waclawek teaches a photothermal interferometry apparatus for detecting a molecule in a sample, in particular for detecting a trace gas species (Introduction), comprising:
- a Fabry-Perot interferometer with a first partially reflective mirror, a second partially reflective mirror and a cavity for containing the sample extending between the first mirror and the second mirror (Fig. 1, 3-4);
- a probe laser for providing a probe laser beam (Fig. 1, 3-4);
- an excitation laser for passing an excitation laser beam through the cavity such that it intersects with the probe laser beam in the cavity for exciting the molecule in the sample (Fig. 3-4);
- a first photodetector arranged for detecting probe laser beam, which was transmitted from the cavity (Fig. 3-4); and
- a second photodetector arranged for detecting a reflected transmitted probe laser beam, which was reflected from the cavity (Fig. 1, 3-4) but does not explicitly teach detecting a transmitted probe laser beam, which was transmitted from the cavity.
However, it is considered obvious to try all known solutions when there is a recognized need in the art (transmitted beam), there had been a finite number of identified, predictable solutions to the recognized need (transmitted and reflected beam), and when one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success. See MPEP § 2143, E. Furthermore, such an arrangement would imply to one of ordinary skill in the art at the time of the invention to detect a transmitted probe laser beam, which was transmitted from the cavity in order to obtain a predictable result.
Regarding Claim 12, Waclawek teaches an optical circulator arranged for directing the probe laser beam from the probe laser to the cavity and for directing the reflected probe laser beam from the cavity to the second photodetector (Fig. 1, 3-4: Circulators).
Regarding Claim 13, Waclawek teaches an optical fibre which is arranged for at least in a section propagating the probe laser beam from the probe laser to the cavity (Fig. 3-4: all-fibre-coupled probe laser configuration).
Regarding Claim 14, Waclawek teaches a fibre-coupled collimator for coupling the probe laser beam into the cavity and for collecting the reflected probe laser beam (Fig. 3-4: coupler, i.e. the collimator).
Regarding Claim 15, Waclawek teaches the Fabry-Perot interferometer comprises a sample cell for containing the sample, the first mirror and the second mirror being fixed on a first and second side of the sample cell, wherein optionally the sample cell comprises a sample inlet and a sample outlet (Fig. 4. Also see Fig. 1).
Regarding Claim 16, Waclawek teaches a subtractor, in particular a differential amplifier, for subtracting a probe laser signal detected by the first photodetector and a reflected probe laser signal detected by the second photodetector (Fig. 3, 4: Differential Amplifier, i.e. the subtractor).
Regarding Claim 17, Waclawek teaches a first attenuator arranged in the path of the transmitted probe laser beam between the cavity and the first photodetector and/or a second attenuator arranged in the path of the reflected probe laser beam between the cavity and the second photodetector, in particular arranged in the path of the reflected probe laser beam between the optical circulator and the second photodetector (Fig. 4: Attenuator).
Regarding Claim 18, Waclawek teaches the first attenuator is a variable value attenuator and/or the second attenuator is a variable value attenuator (Page 7802: the power of the individual paths was adjusted by attenuators ahead of the detectors thus teaches a variable value attenuator) but does not explicitly teach is a variable value attenuator.
However, it is considered obvious to try all known solutions when there is a recognized need in the art (a variable value attenuator), there had been a finite number of identified, predictable solutions to the recognized need (a variable value attenuator and a fixed value attenuator), and when one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success. See MPEP § 2143, E. Furthermore, such an arrangement would imply to one of ordinary skill in the art at the time of the invention to use a variable value attenuator in order to obtain a predictable result.
Regarding Claim 19, Waclawek teaches a tuner for tuning the probe laser beam over a given wavelength range (Page 7797: a probe laser that is tuned to a frequency enabling partial transmission/reflectance).
Regarding Claim 20, Waclawek teaches a modulator for modulating the wavelength of the excitation laser beam (Page 7800: The sensor platform was based on photothermal sample excitation via wavelength modulation),
- the first photodetector (Fig. 3-4: Photodiode A) being arranged for detecting a modulation of the transmitted probe laser beam,
- the second photodetector (Fig. 3-4: Photodiode A) being arranged for detecting a modulation of the reflected probe laser beam; and
- a control unit (Fig. 4: Computer) arranged for communicating with the first photodetector and the second photodetector and arranged for determining a harmonic, in particular a second harmonic, of the modulation of the transmitted probe laser beam and the reflected probe laser beam (Page 7800: the emission wavelength of the QCL was modulated by adding a sinusoidal function to the DC injection current input) and detecting a harmonic, in particular a second harmonic, of a modulation of the reflected probe laser beam (Page 7796: Transient generation of the photothermal signals was performed by applying wavelength modulation (WM) at reduced sample pressure via a powerful continuous wave (CW) distributed feedback (DFB) quantum cascade laser (QCL) as excitation source to target strong fundamental absorption features of the sample molecules in the mid-infrared (mid-IR) region. The photo-induced transducer signal was detected within a narrow bandwidth by a lock-in amplifier (LIA) at the second harmonic (2f ) of the modulation frequency [24]. This 2f -WM scheme is a powerful method for increasing the signal-to-noise ratio as well as the selectivity of a given measurement. Refractive index changes were detected via a CW-DFB fiber laser (FL) emitting in the vicinity of 1550 nm together with a photodiode. This near-infrared region offers mature technology and readily available high-performing optical components. The metrological figures of merit of this 2f -WM balanced-detection ICAPS sensor employing an all-fiber-coupled probe laser configuration. Also see Fig. 4), wherein the control unit optionally comprises a lock-in amplifier (Fig. 4: LIA).
Response to Arguments
9. Applicant's argument, filed on 04/02/2026, with respect to claims 1-20 have been fully considered but they are not persuasive.
9.1 Applicant’s arguments filed on 04/02/2026 with respect to Waclawek is not properly considered prior art with respect to the present application are not persuasive (Arguments, Page 7-8).
In response to the above arguments: 1. MPEP 717.01 (III) clearly stated that SITUATIONS WHERE 37 CFR 1.130(a) AFFIDAVITS OR DECLARATIONS ARE NOT REQUIRED
(A) A declaration under 37 CFR 1.130(a) is not required when a public disclosure, subject to the exceptions of 35 U.S.C. 102(b)(1)(A), is by one or more joint inventor(s) or the entire inventive entity of the application under examination and does not name anyone else. For example, if an application names A, B, and C as the inventive entity, a journal publication names as authors A and B, and the publication date is one year or less before the effective filing date of the claimed invention, then the publication should not be applied in a prior art rejection because it is apparent that the disclosure is a grace period disclosure. Where a disclosure involves a patent document, a declaration under 37 CFR 1.130(a) is not required where the inventive entity of the patent document, subject to the exceptions of 35 U.S.C. 102(b)(1)(A), only includes one or more joint inventor(s) or the entire inventive entity of the application under examination. For example, if the application names A, B, and C as the inventive entity, the patent document names A and B as the inventive entity, and the public availability date of the patent document is one year or less before the effective filing date of the claimed invention under examination, then the patent document should not be applied in a prior art rejection under 35 U.S.C. 102(a)(1) because it is apparent that the patent document disclosure is a grace period disclosure. Applicant also disclosed the same statement, stated in MPEP 717 (Arguments, Page 7-8).
2. The reference includes a joint inventor/authors who is not a joint inventor of the application, 102(b)(1)(A) & 102(b)(2)(A) exceptions DO NOT apply. The reference qualifies as prior art.
For example, in an application, application names A and B as the inventive entity, a journal publication names as authors A, B and C (“C” is not a joint inventor of the application), and the publication date is one year or less before the effective filing date of the claimed invention, then the publication should be applied in a prior art rejection.
In instant application, application names WACLAWEK, Johannes Paul (i.e. “A”) and LENDL, Bernhard (i.e. “B”) as the inventive entity, a journal publication names as authors WACLAWEK, Johannes Paul (i.e. “A”), LENDL, Bernhard (i.e. “B”) and MOSER Harald (i.e. “C” and “C” is not a joint inventor of the application), and the publication date is one year or less before the effective filing date of the claimed invention, then the publication should be applied in a prior art rejection.
35 U.S.C. 102 (a) & (b)
NOVELTY; PRIOR ART.—A person shall be entitled to a patent unless—
the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention; or
the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
EXCEPTIONS.—
DISCLOSURES MADE 1 YEAR OR LESS BEFORE THE EFFECTIVE FILING DATE OF THE CLAIMED INVENTION.—A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under subsection (a)(1) if—
the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor; or
the subject matter disclosed had, before such disclosure, been publicly disclosed by the inventor or a joint inventor or another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.
3. MPEP 2132 (III) stated that "BY OTHERS"
"Others" Means Any Combination of Authors or Inventors Different From the Inventive Entity
The term "others" in pre-AIA 35 U.S.C. 102(a) refers to any entity which is different from the inventive entity. The entity need only differ by one person to be "by others." This holds true for all types of references eligible as prior art under pre-AIA 35 U.S.C. 102(a) including publications as well as public knowledge and use. Any other interpretation of pre-AIA 35 U.S.C. 102(a) "would negate the one year [grace] period afforded under § 102(b)." In re Katz, 687 F.2d 450, 215 USPQ 14 (CCPA 1982).
Therefore, it is evident form the above discussion that Waclawek is properly considered prior art with respect to the present application.
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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 JAMIL AHMED whose telephone number is (571) 272-1950. The examiner can normally be reached M-F: 9:00 AM - 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kara Geisel can be reached on 571-272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAMIL AHMED/Primary Examiner, Art Unit 2877