DETAILED ACTION
Response to Amendment
Receipt is acknowledged of the amendment filed 5/6/2026. Claims 1, 3-8, and 10-15 are pending. Claims 2 and 8-9 are canceled. Claims 1, 3, and 10-11 were amended. Claim 15 was added. The previous claim objections to claims 10-11 are withdrawn in view of the amendments.
Response to Arguments
Applicant's arguments filed 5/6/2026 have been fully considered but they are not persuasive.
Regarding claim 1, the applicant argues:
(1) Spin concentration as a device configuration: As recited in amended claim 1, the electron spin resonance device is configured to measure a target having a spin concentration of 1011 spins/g or more in the transmission region through which microwaves are irradiated and transmitted. According to the claimed invention, microwaves resonate within the cavity 14A and then radiate freely outwards from the opening 14B.
(2) Explicit exclusion of through-hole coupling structure: Amended claim 1 requires that the microwave is emitted without using a through-hole coupling structure configured to electromagnetically couple the measurement target to the cavity resonator. According to the claimed device, microwaves are emitted into free space as a propagating electromagnetic wave, without forming such a coupled system.
(3) Measurement target not physically constrained by the device: Amended claim 1 recites that the measurement target is positioned outside the electron spin resonance device without being physically constrained by the microwave oscillator, the magnet, the modulation coil, and the cavity resonator. The claimed invention allows measurement of arbitrary-shaped and
large objects without positional constraints.
Regarding argument (1), the examiner respectfully disagrees with the applicant’s arguments. The applicant “According to the claimed invention, microwaves resonate within cavity resonator 14 and then radiate freely outward from the opening 14B.” As best understood by the examiner, the system of Kumatoriya operates on the same principles as the pending application. The pending application and Kumatoriya each teach a microwave resonator having an opening in which microwaves are injected into the resonator, and an opening in which they escape the leak out of the resonator. As state in col. 3, lines 57-col. 4, line 4, “Specifically, a through-hole was drilled in a side wall at a position of high intensity high-frequency magnetic field of a cavity resonator.” Which results in microwaves leaking out through the through hole in an equivalent manner in which the microwaves radiate “freely outward from the opening 14B” as stated in the applicant’s arguments. As stated in [0030] of the specification as filed 3/28/2024:
“The cavity resonator 14 is located at a position where the microwave M generated by the microwave oscillator 11 reaches. The microwave M generated by the microwave oscillator 11 reaches the cavity resonator 14. A cavity 14A is located inside the cavity resonator 14. An opening 14B is located at a part of the cavity resonator 14. The microwave M resonates in the cavity 14A and is emitted from the opening 14B to the outside. At least a part of the measurement target 1 is irradiated with the microwave M emitted from the opening 14B.” (Emphasis provided by examiner).
The microwaves leak out of the through hole 20 and irradiate the wafer 26 in Kumatoriya in the exact same manner as they are emitted (i.e. leak) from the opening 14B to the outside and irradiate the sample located outside the resonator. Any distinction between the prior art and the pending application regarding generating microwaves in a microwave cavity, and coupling the microwaves with a sample through a hole in the microwave cavity is not clearly understood by the examiner.
The applicant further argues Kumatoriya is a type of ferromagnetic resonance and states “while there is a limitation that the measurement sample is a ferromagnetic material, (Column 5, lines 28-39), there is no limitation on the spin number. Therefore, even if Kumatoriya has a structure similar to claim 1, it is not reasonable to assume that the measurement target includes spins within the above range because the measurement principle is distinctly different.” The pending application is directed toward an electron spin resonance device. While Kumatoriya teaches a ferromagnetic resonance measuring apparatus, col. 1, lines 11-20 teach that “ferromagnetic resonance (FMR) measurement is a kind of electron spin resonance (ESR) measurement and is employed for evaluating the magnetic properties of a magnetic material.” In other words, FMR is just ESR on a ferromagnetic sample. One of ordinary skill in the art would understand Kumatoriya teaches all the elements as claimed, and would reasonably be configured to measure ESR. The properties of the sample having 1011 spins/g corresponds to a feature of the material or article worked upon and do not limit the apparatus claim. See MPEP 2115.
Regarding argument (2), the argument is not understood by the examiner.
First, the pending application as filed never recites a “through-hole coupling structure” as recited in the amended claims, or defines what constitutes a “through-hole coupling structure”. Therefore, the limitation constitutes new matter.
Second, Kumatoriya never recites a “through-hole coupling structure” and it is unclear to the examiner what components of Kumatoriya constitute the “through-hole coupling structure” as claimed. As discussed above, it is unclear how the opening 14B of the cavity resonator 14 of the pending application is distinct from the through-hole 20 of Kumatoriya.
Third, as best understood by the examiner, both the pending application and Kumatoriya operate on the same principle wherein microwaves are generated in a microwave cavity and radiate out of the microwave cavity through a through-hole/opening to radiate a sample corresponding to the ESR resonance frequency. While Kumatoriya teaches wherein the sample is a ferromagnetic sample, the same principles of ESR apply to the limitations as claimed. One of ordinary skill in the art would understand equation (1) of Kumatoriya corresponds to the ESR resonance frequency similar to the equation recited in [0037] of the specification as filed 3/28/2024. As best understood by the examiner, the only difference between the limitations as claimed and Kumatoriya being Kumatoriya performs ESR on a ferromagnetic sample and the pending application does not.
Regarding argument (3), the argument is not understood by the examiner.
First, it is unclear what is meant by “without being physically constrained by the microwave oscillator, the magnet, the modulation coil, and the cavity resonator.” The pending specification as filed does not recite or define what is meant by “constrained”. While the arguments state the “claimed invention allows measurement of arbitrary-shaped and large objects without positional constraints”, however, this does not correspond to the language of the limitations as claimed.
Second, Fig. 1 of the pending application illustrates target 1 is positioned adjacent the opening in an equivalent manner as wafer specimen 26 is positioned adjacent through-hole 20.
Third, [0030] of the specification as filed 3/28/2024 states, “At least a part of the measurement target 1 is irradiated with the microwave M emitted from the opening 14B.” As best understood by the examiner, this would reasonably constitute a measurement target which is “physically constrained” by the microwave oscillator, the magnet, the modulation coil, and/or the cavity resonator in view of a broadest reasonable interpretation.
US 2022/0196775 Prisecaru teaches wherein only a single magnet pole and modulation coil are used such that the “measurement target is positioned outside the electron spin resonance device as recited in claim 1.
Therefore, as best understood by the examiner, claims 1, 3-7 and 15 stand rejected as outlined below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-7 and 15 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “a through-hole coupling structure” and “without being physically constrained by the microwave oscillator, the magnet, the modulation coil, and the cavity resonator” but the examiner is unable to find support for the limitations in the disclosure filed 3/28/2024, or establishes or suggests any guidance as to what components constitute “a through-hole coupling structure” or “without being physically constrained” as recited in the claim. Therefore, the limitation constitutes new matter.
Claims 3-7 and 15 are rejected through a dependence on claim 1.
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.
Claims 1, 3-7, and 15 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, it is unclear what is meant by “the microwave is emitted without using a through0hole coupling structure configured to electromagnetically couple the measurement tarted to the cavity resonator”. As best understood by the examiner, the pending application as filed never recites a “through-hole coupling structure” as recited in the amended claims, or defines what constitutes a “through-hole coupling structure”. While the amendment appears to be an attempt to overcome the prior art, as best understood by the examiner, Kumatoriya never recites a “through-hole coupling structure” either. As discussed in the arguments above, it is unclear how the cavity resonator 14 having an opening 14b of the pending application is distinct from the cavity resonator 12 having a through-hole 20 as taught in Kumatoriya. Therefore, it is unclear to the examiner how to define “a through-hole coupling structure as claimed and how the limitation would reasonably overcome the prior art. For the purpose of examination, Kumatoriya teaches all the structure of an ESR system as claimed and would reasonably read on the limitation.
Regarding claim 1, the claim recites, “the measurement target is position outside the electron spin resonance device without being physically constrained by the microwave oscillator, the magnet, the modulation coil, and the cavity resonator.” It is unclear what is meant by “physically constrained” or how to reasonable determine the scope of protection sought by the applicant. For example, [0030] of the specification as filed 3/28/2024 states, “At least a part of the measurement target 1 is irradiated with the microwave M emitted from the opening 14B.” As best understood by the examiner, this would reasonably constitute a measurement target which is “physically constrained” by the microwave oscillator, the magnet, the modulation coil, and/or the cavity resonator in view of a broadest reasonable interpretation. For the purpose of examination, Kumatoriya is interpreted as teaching all the structure of an ESR system as claimed and would reasonably read on the limitation.
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, 3, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,889,402 (Kumatoriya) in view of US 2022/0196775 (Prisecaru).
Regarding claim 1, Kumatoriya teaches an electron spin resonance device comprising a microwave oscillator, a magnet, a modulation coil, and a cavity resonator having an opening (microwave generator 32, magnet 22, modulation coils 48, 50, and cavity resonator 12; see Figs. 1-3), wherein
a microwave generated by the microwave oscillator resonates in the cavity resonator and is emitted from the opening toward a measurement target located outside the opening (a microwave generated by the microwave generator 32 resonates in the cavity 16 and is emitted from through-holes 20, 24 to a specimen 26 facing the through-hole; see Figs. 1-3; see col. 5, line 59 – col. 6, line 13),
the magnet applies a magnetic field toward an irradiation surface of the measurement target, the irradiation surface being irradiated with the microwave (ferromagnetic plate 22 applies a magnetic field that intersects a plane of the specimen at the through-hole 24; see Figs. 1-3; see col. 5, lines 14-39; see col. 6, lines 14-40), and
the modulation coil modulates an intensity of the magnetic field or a frequency of the microwave applied toward the irradiation surface of the measurement target (modulation coils 48, 50 modulate magnetic fields from electromagnets 44, 46; see Fig. 3; see col. 5, line 67-col. 6, line 5),
the electron spin resonance device is configured to measure the measurement target in a permeation region which is irradiated and permeated by the microwave (an area of measurement faces the through-hole 24 and the apparent area of measurement is reduced to the diameter of the through-hole 24; see col. 6, lines 29-40), and
the microwave is emitted without using a through-hole coupling structure configured to electromagnetically couple the measurement target to the cavity resonator (Kumatoriya teaches all the structure as claimed and would reasonably read on the limitations in an equivalent manner as the pending application as best understood by the examiner.).
Kumatoriya fails to teach the electron spin resonance device is configured to measure the measurement target having 1011 spins/g or more in a permeation region which is irradiated and permeated by the microwave, and the measurement target is positioned outside the electron spin resonance device without being physically constrained by the microwave oscillator, the magnet, the modulation coil, and the cavity resonator.
Prisecaru teaches the measurement target is positioned outside the electron spin resonance device without being physically constrained by the microwave oscillator, the magnet, the modulation coil, and the cavity resonator (Fig. 2 shows wherein an ESR system comprises a single magnet 2, a single pole piece 8a, a single modulation coil 11a, and a single resonator 10; see Fig. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the features of Prisecaru into Kumatoriya in order to gain the advantage of only a single magnet and modulation coil instead of a pair of magnetic poles and modulation coils as shown in Fig. 3 of Kumatoriya to allow for a very compact EPR/ESR device.
Kumatoriya teaches an electron spin resonance measuring apparatus having an equivalent structure as claimed, but fails to explicitly teach wherein the electron spin resonance device is configured to measure the measurement target having 1011 spins/g or more in a permeation region which is irradiated and permeated by the microwave, however, these limitations correspond to features of the material or article worked upon and do not limit the apparatus claim. See MPEP 2115.. Since Kumatoriya teaches an equivalent structure for performing electron spin resonance, it would be a reasonable presumption that the prior art structure inherently performs the function of performing electron spin resonance on a measurement target including 1011 spins/g. See MPEP 2182and MPEP 2114 I. and II.. Further, [0055] of the pending specification characterizes a measurement target including 1011 spins/g as having a high concentration of spins and, “If the measurement target 1 is limited to a substance having a high concentration spin, the electron spin resonance device 10 is not required to have high sensitivity. Thus, the electron spin resonance device 10 according to the present embodiment can be reduced in size and simplified in configuration.” Since Kumatoriya teaches an electron spin resonance device having an equivalent structure as claimed, and the pending application fails to disclose any special technical features or details which enable the claimed apparatus to perform ESR on a target including 1011 spins/g, it would be a reasonable presumption that the structure of Kumatoriya would inherently perform ESR on a measurement target including 1011 spins/g or more without requiring any undue experimentation or providing any new or unexpected results.
Regarding claim 3, Kumatoriya fails to explicitly teach wherein the measurement target is a carbon fiber composite material, however, as in claim 1, these limitations correspond to features of the material or article worked upon and do not limit the apparatus claim. See MPEP 2115. Further, since Kumatoriya taches all the structural components of the apparatus as claimed, the ESR apparatus would reasonably be configured to perform ESR on a carbon fiber composite material without requiring any undue experimentation or providing any new or unexpected results for similar reasons provided for claim 1 above. See MPEP 2182and MPEP 2114 I. and II..
Regarding claim 15, Kumatoriya teaches wherein the microwave and the magnetic field are applied from directions intersecting the irradiation surface of the measurement target (it would be understood by one of ordinary skill in the art that the microwave and magnetic fields are from directions intersecting the surface of wafer 26; alternatively, see Fig. 2 of Prisecaru).
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,889,402 (Kumatoriya) in view of US 2022/0196775 (Prisecaru) and in further view of US 6,504,367 (Chandrakumar).
Regarding claim 4, Kumatoriya fails to teach wherein the modulation coil sweeps the magnetic field in a range of +/- 2 mT with 319.5 mT as a reference.
Chandrakumar teaches wherein EPR (i.e. ESR) measurements are performed where it is customary to employ field modulation and the EPR spectral profile is recorded by conventional field sweep method. While Chandrakumar fails to teach “the modulation coil sweeps the magnetic field in a range of +/- 2 mT with 319.5 mT as a reference” it would be obvious to one of ordinary skill in the art to determine a reference field and field sweep range, as a matter of routine data collection without providing any new or unexpected result. For example, the field at which an ESR signal is present is proportion to the frequency of the MW signal. For a free electron radical at 319 mT would correspond to a Larmor frequency of 8.94 GHz. Therefore, it would be obvious to one of ordinary skill in the art to sweep the magnetic field in order to obtain an ESR spectrum, wherein determining the particular values of the field and range would be a matter of routine optimization without requiring undue experimentation or providing any new or unexpected result.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,889,402 (Kumatoriya) in view of US 2022/0196775 (Prisecaru), and in further view of US 2002/0163336 (Yokoyama).
Regarding claim 5, Kumatoriya teaches wherein the electron spin resonance device is portable (the cavity resonator 10 would reasonably be interpreted as “portable” in view of a broadest reasonable interpretation and MPEP 2144.04 V. A teaches wherein the fact that a claimed device is portable or movable is not sufficient by itself to patentably distinguish over an otherwise old device unless there are new or unexpected results.).
Kumitoriya fails to teach wherein the electron spin resonance device is installable with respect to a measurement target having any shape. Kumitoriya teaches wherein the resonance device comprises a pair of modulation coils 48, 50 and a pair of electromagnets 44, 46 and wherein the sample 26 is placed in between.
Yokoyama teaches wherein the electron spin resonance device is installable with respect to a measurement target having any shape (an ESR resonator 1, main magnet 2, and field modulation coil 3 are placed on a plane 4 such that a sample 5 is placed below this plane and ESR measurements are conducted outside of the resonator which would allow for samples of any shape in an equivalent manner as disclosed; see Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the features wherein the resonator, magnet, and modulation coils are arranged on one side of a sample without sandwiching the samples in between as taught in Yokoyama into Kumitoriya in order to gain the advantage of arranging the resonator components on one side of a sample without sandwiching the sample therebetween in order to allow measurements of samples having any shape to be imaged by ESR.
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,889,402 (Kumatoriya) in view of US 2022/0196775 (Prisecaru), and in further view of US 2007/0152669 (Park).
Regarding claims 6 and 7, Kumitoriya fails to teach further comprising a plurality of units, wherein each of the plurality of units includes the microwave oscillator, the magnet, the modulation coil, and the cavity resonator; and wherein some units of the plurality of units share at least one of the microwave oscillator, the magnet, or the modulation coil.
Park teaches a plurality of units, wherein each of the plurality of units includes the microwave oscillator, the magnet, the modulation coil, and the cavity resonator, wherein some units of the plurality of units share at least one of the microwave oscillator, the magnet, or the modulation coil (an array of ESR microcoils are contained in a single substrate and the substrate includes an integrated magnet for generating the static magnetic field; see [0017]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the features as taught in Park into Kumitoriya in order to gain the advantage of performing multiple DNA analysis simultaneously.
Allowable Subject Matter
Claims 10-14 are allowed.
The following is an examiner’s statement of reasons for allowance:
Regarding claim 10, the prior art of record fails to teach or suggest a deterioration evaluation method comprising an evaluation step of evaluating deterioration of the measurement target from the electron spin resonance signal; and before the detection step, a preparation step of finding, in advance, a relationship between deterioration of a reference specimen and an electron spin resonance signal of the reference specimen by using the reference specimen having the same configuration as the measurement target, wherein the preparation step includes a step of finding a critical value by dividing a number of spins in the reference specimen at a time point when a load at which breakage of the reference specimen occurs is applied by a number of spins in the reference specimen before the load is applied, and the evaluation step includes: a step of fitting a graph using the following Equation (1), the graph having a horizontal axis representing a number of applications (N) of the load to the measurement target, and a vertical axis representing a standardized number of spins (Nspin1(N)/Nspin1(0)) in the measurement target, and a step of substituting the critical value to a left side of the following Equation (1) and estimating a number of applications of the load at which breakage of the measurement target occurs, Nspin(N)/Nspin(0)= Alog10 (N + 1) + 1... (1) where, in Equation (1), Nspin(N) is the number of spins in the measurement target after the load is applied N times, Nspin(0) is the number of spins in the measurement target before the load is applied, and A is a constant, in combination with all other limitations of claim 10.
Claim 14, definite and enabled by the specification, are allowed through a dependence on objected claim 10.
Regarding claim 11, the prior art of record fails to teach or suggest a deterioration evaluation method an evaluation step of evaluating deterioration of the measurement target from the electron spin resonance signal; and before the detection step, a preparation step of finding, in advance, a relationship between deterioration of a reference specimen and an electron spin resonance signal of the reference specimen by using the reference specimen having the same configuration as the measurement target, wherein the preparation step includes a step of fitting a graph using the following Equation (2), the graph having a horizontal axis representing a number of applications (N) of the load to the reference specimen and a vertical axis representing a standardized number of spins (N'spin1(N)/N'spin1(0)) in the reference specimen, N'spin(N)/N'spin(0)= A'logio (N + 1) + 1...(2) where, in Equation (2), N'spin1(N) is the number of spins in the reference specimen after the load is applied N times, N'spin1(0) is the number of spins in the reference specimen before the load is applied, and A' is a constant, in combination with all other limitations of claim 11.
Claims 12-13, definite and enabled by the specification, are allowed through a dependence on objected claim 11.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
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 STEVEN LEE YENINAS whose telephone number is (571)270-0372. The examiner can normally be reached M - F 10 - 6.
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, Judy Nguyen can be reached at (571) 272-2258. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN L YENINAS/Primary Examiner, Art Unit 2858
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