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 .
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: AN X-RAY FLUORESCENCE SYSTEM COMPRISING AN X-RAY SOURCE, A CONTROLLER, AN X-RAY FLUORESCENCE DETECTOR, AND A PROCESSOR TO DETERMINE A PARTICLE SIZE CORRECTION FACTOR.
Claim Objections
Claim 18 is objected to because of the following informalities:
18. (Proposed Amendments) The X-ray fluorescence system of claim 1, wherein the controller is further configured to select the first incident radiation energy and the second incident radiation energy of the X-ray radiation incident on the sample such that the first fluorescence radiation intensity is more susceptible to a variation due to different sizes of particles in the sample than the second fluorescence radiation intensity.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4, 5, and 23 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 4 recites a limitation “the corrected fluorescence radiation intensity being corrected based on the particle size correction factor” in lines 1-4. A simple interpretation of the limitation reads the corrected fluorescence radiation intensity is corrected again based on the particle size correction factor. However, the limitation was not described in the specification. As described in paragraph [0069], at block 1050, one or more detected fluorescence radiation intensities are corrected based on the particle size correction factor determined in block 1040. There is no description of correcting the corrected fluorescence radiation intensity based on the particle size correction factor. Therefore, the claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 23 recites a limitation “the controller is further configured to determine an optimum incident radiation energy based on a ratio of a fluorescence radiation mass attenuation coefficient (m(Efluorescence)) to an incident radiation energy mass attenuation coefficient (m(Eexciting)), the ratio being a predetermined value of 0.05 or less” in lines 1-5. However, the specification does not describe a controller configured to perform the recited function. Therefore, the claim contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. —The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of pre-AIA 35 U.S.C. 112, second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 4 and 5 are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 4 recites a functional limitation “the corrected fluorescence radiation intensity being corrected based on the particle size correction factor” in lines 7-8, which renders the claim indefinite because the boundaries of the functional language are unclear.
During examination, claims are given their broadest reasonable interpretation (BRI) in light of the specification as it would be interpreted by one of ordinary skill in the art. It is a best practice to make the record clear during prosecution by explaining the BRI of claim terms, as necessary, including explaining the BRI of any functional language. When 35 U.S.C. 112(f) is invoked, the BRI of the “means-plus-function” limitation is restricted to a corresponding structure in the supporting disclosure, and its equivalents (a corresponding specification that identifies and links a structure, material, or act to the function recited in the claim is considered to be part of the claim limitation). When 35 U.S.C. 112(f) is not invoked and an element is recited along with a function, that element is construed as being capable of performing the function – in other words, the BRI of that element is limited by the function.
It should be kept in mind, however, that there is a distinction between reciting a function compared to reciting an intended use or result. A functional limitation can provide a patentable distinction (limit the claim scope) by imposing limits on the function of a structure, material, or action. Typically, no patentable distinction (no limit on the claim scope) is made by an intended use or result unless some structural difference is imposed by the use or result on the structure or material recited in the claim, or some manipulative difference is imposed by the use or result on the action recited in the claim.
While functional limitations may be properly used in claims, the boundaries imposed by a functional limitation must be clearly defined to be definite under 35 U.S.C. 112(b). Claim language that merely states a result to be obtained without providing boundaries on the claim scope (e.g., by not specifying any way to achieve those results) is unclear. Consider the following to determine whether a claim limitation expressed in functional language has clear boundaries: whether one of ordinary skill in the art can determine what structure, material, or act in the claim performs this function; whether the limitation has well defined boundaries or only expresses a problem solved or intended result; and what an anticipatory reference would need to disclose in order to satisfy this claim limitation. These considerations are not all-inclusive or limiting.
When 35 U.S.C. 112(f) is invoked, the specification must adequately disclose a corresponding structure, material, or act that performs the function. For “means”-type claims, an adequate disclosure requires that a corresponding structure or material is: (a) disclosed in a way that one of ordinary skill in the art will understand what specific structure or material the inventor has identified to perform the recited function; (b) sufficient to perform the entire function recited in the claim limitation; and (c) clearly linked to the function in the written description.
When the examiner determines that the boundaries of a claim are not reasonably clear, a rejection under 35 U.S.C. 112(b) should be made. Such a rejection puts the applicant on notice that it must fulfill its statutory duty under 35 U.S.C. 112(b) to ensure that claim language clearly defines the boundaries of the claim scope sought. In making a rejection, the examiner must identify the specific claim language that is indefinite, and explain why that language renders the boundaries of the claim unclear. When possible, the examiner should suggest how the indefiniteness issues may be resolved.
The boundaries of the functional language are unclear because the claim does not provide a discernable boundary on what performs the function. The recited function does not follow from the structure recited in the claim, i.e., an X-ray source, a controller, an X-ray fluorescence detector, and a processor, so it is unclear whether the function requires some other structure or is simply a result of operating the X-ray fluorescence system in a certain manner. Thus, one of ordinary skill in the art would not be able to draw a clear boundary between what is and is not covered by the claim. See MPEP 2173.05(g) for more information.
The limitation is unclear because it merely states a function (“the corrected fluorescence radiation intensity being corrected based on the particle size correction factor”) without providing any indication about how the function is performed. The recited function does not follow from the structure recited in the claim, i.e., an X-ray source, a controller, an X-ray fluorescence detector, and a processor, so it is unclear whether the function requires some other structure or is simply a result of operating the X-ray fluorescence system in a certain manner.
Allowable Subject Matter
Claims 1-3, 7-9, 11-13, 16, 17, 20, 25, 26, 30, and 37 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claims 1-3, 7-9, 11-13, 16, 17, and 20, the prior art failed to disclose or fairly suggested an X-ray fluorescence system as claimed.
With respect to claims 25, 26, 30, and 37, the prior art failed to disclose or fairly suggested a method as claimed.
Response to Amendment
Applicant’s amendments filed 18 March 2026 with respect to the drawings have been fully considered. The objection of the drawings has been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to the specification have been fully considered. The objection of the specification has been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claims 1-5, 7-9, 11-13, 16-18, 20, and 23 have been fully considered. The objections of claims 1-5, 7-9, 11-13, 16-18, 20, and 23 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claim 2 have been fully considered. The objections of claim 2 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claims 3-5 have been fully considered. The objections of claims 3-5 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claims 4 and 5 have been fully considered. The objections of claims 4 and 5 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claim 5 have been fully considered. The objections of claim 5 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claims 7-9 and 11 have been fully considered. The objections of claims 7-9 and 11 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claims 8 and 9 have been fully considered. The objections of claims 8 and 9 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claim 9 have been fully considered. The objection of claim 9 has been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claim 11 have been fully considered. The objections of claim 11 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claims 12 and 13 have been fully considered. The objections of claims 12 and 13 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claim 13 have been fully considered. The objections of claim 13 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claim 16 have been fully considered. The objections of claim 16 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claim 17 have been fully considered. The objections of claim 17 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claim 18 have been fully considered. The objections of claim 18 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claim 20 have been fully considered. The objection of claim 20 has been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claim 23 have been fully considered. The objections of claim 23 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claims 25, 26, 30, and 37 have been fully considered. The objections of claims 25, 26, 30, and 37 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claim 26 have been fully considered. The objections of claim 26 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claim 30 have been fully considered. The objections of claim 30 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claim 37 have been fully considered. The objections of claim 37 have been withdrawn.
Applicant’s amendments filed 18 March 2026 with respect to claims 12, 13, 18, and 23 have been fully considered. The rejection of claims 12, 13, 18, and 23 under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, has been withdrawn.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kasper et al. (U. S. Patent No. 10,634,628 B2) disclosed an X-ray fluorescence apparatus for monitoring contaminations.
Mizuno et al. (U. S. Patent No. 9,606,249 B2) disclosed an analyzing apparatus and a calibration method.
Mizuno et al. (U. S. Patent No. 9,594,037 B2) disclosed an analyzing apparatus and a calibration method.
Tiffin et al. (U. S. Patent No. 5,742,658 A) disclosed an apparatus and a method for determining elemental compositions and relative locations of particles on a surface of a semiconductor wafer.
Smallbone (U. S. Patent No.5,627,874 A) disclosed an X-ray spectroscopic analysis of powder samples with a windowless cell system.
Smallbone (U. S. Patent No. 5,272,745 A) disclosed an apparatus for analyzing continuously flowing dry powder samples by X-ray spectroscopy.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Allen C. Ho, whose telephone number is (571) 272-2491. The examiner can normally be reached Monday - Friday 10AM - 6PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David J. Makiya, can be reached at (571) 272-2273. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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Allen C. Ho, Ph.D.
Primary Examiner
Art Unit 2884
/Allen C. Ho/Primary Examiner, Art Unit 2884 Allen.Ho@uspto.gov
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