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 (i.e., changing from AIA to pre-AIA ) 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.
Claim Rejections - 35 USC § 112
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 2, 4 and 5 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.
Claim 2 contains the limitation “wherein the transparent channel comprises: an inner wall disposed inner surface of the U-shaped tube; and an outer wall disposed outer surface of the U-shaped tube”. It is unclear what is being required by the claim. Is the inner wall part of the inner surface? Is the inner wall disposed on the inner surface? How are the inner wall and inner surface structurally related? Similarly, is the outer wall part of the outer surface? Is the outer wall disposed on the outer surface? Howa are the outer wall and the outer surface structurally related? Appropriate clarification and correction is required.
Claims 4 and 5 are additionally rejected as being dependent on a rejected base claim and including all of the claim limitations thereof.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Philip et al. (“A tunable optical filter”) in view of Horne (WO 92/15119).
Regarding claim 1, Philip discloses an emulsion spectrum fluid filter capable of controlling light wavelength absorption (abstract), the emulsion spectrum fluid filter comprising:
an emulsion (abstract and Page 1290 Experimental details section) including a dispersed oil and surfactant (Page 1290-Experimental details section, the emulsion includes oil and surfactant).
Philip additionally discloses that the optical filter can be tuned to select a desired wavelength (abstract) and discloses that the optical filter can be used with a photodiode array (Page 1291, Results and Discussion section, paragraph 1), but Philip does not disclose a transparent channel formed as a U-shaped tube rotated by 90 degrees such that an opening of the U-shaped tube faces a horizontal direction; and wherein the U-shaped tube comprises: a first area where the emulsion is transferred in from an inlet and flows in a first direction; a second area disposed parallel to the first area where the emulsion is transferred out to an outlet and flows in a second direction opposite to the first direction; and a curved area connecting an end of the first area disposed opposite to the inlet to an end of the second area disposed opposite to the outlet.
Horne discloses an optical filter device in Figure 12 comprising a spectrum fluid filter capable of controlling light wavelength absorption (cooling fluid in prefilter filters out of band incoming radiation) and a transparent channel (passageway 182, 184, 190 is transparent as shown in Figure 12 and allows radiation to reach solar cells) formed as a U-shaped tube rotated by 90 degrees such that an opening of the U-shaped tube faces a horizontal direction; and wherein the U-shaped tube comprises a first area (182) where the fluid is transferred in from an inlet and flows in a first direction; a second area (190) disposed parallel to the first area where the fluid is transferred out to an outlet and flows in a second direction opposite to the first direction; and a curved area (184) connecting an end of the first area disposed opposite to the inlet to an end of the second area disposed opposite to the outlet (See U-shaped channel in Figure 12, cooling fluid flows through transparent channel from inlet around curve to outlet and acts as a prefilter for out of band incoming radiation, Figure 12 and Page 12 line 26-Page 13 line 6).
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to use the emulsion of Philip with the device of Horne such that the device includes a transparent channel formed as a U-shaped tube rotated by 90 degrees such that an opening of the U-shaped tube faces a horizontal direction; and wherein the U-shaped tube comprises: a first area where the emulsion is transferred in from an inlet and flows in a first direction; a second area disposed parallel to the first area where the emulsion is transferred out to an outlet and flows in a second direction opposite to the first direction; and a curved area connecting an end of the first area disposed opposite to the inlet to an end of the second area disposed opposite to the outlet, wherein the emulsion is received in the transparent channel, as taught by Horne, because such a modification would allow the emulsion fluid filter to be used in a suitable device and would amount to the combination of prior art elements according to known methods to yield predictable results.
Regarding claim 2, modified Philip discloses all of the claim limitations as set forth above. Modified Philip additionally discloses that the transparent channel comprises an inner wall (wall near enclosure 178 of Horne) forming the inner surface of the U-shaped tube; and an outer wall forming the outer surface of the U-shaped tube (outside of passageway in Figure 12 of Horne).
Regarding claim 4, modified Philip discloses all of the claim limitations as set forth above. Modified Philip additionally discloses that a solar cell (solar cell is fixed to base 170) is fixed to the inner wall (top surface of mounting block 180) in the first area (182) (Horne, Page 12 lines 26-36).
Regarding claim 5, modified Philip discloses all of the claim limitations as set forth above. Modified Philip additionally discloses that in the first area (182), the emulsion absorbs heat from the solar cell (170) (Horne, Page 12 lines 32-36), wherein in the second area (190), the emulsion absorbs light having a wavelength out of a range of 730nm to 1130nm from light incident on the solar cell (Horne, Page 12 lines 32-36, water included in the emulsions absorbs in the claimed wavelength range and see Philip, Table 1, see droplet sizes 280nm-320nm which filter the claimed wavelength range).
Regarding claim 6, modified Philip discloses all of the claim limitations as set forth above. Modified Philip additionally discloses that the oil includes at least one of silicone oil, corn oil, mineral oil (white oil), lubricant, or soybean oil (Horne discloses on Page 13 lines 1-6 that the fluid can include mineral oil or silicone oil which are suitable oils for filtering light).
Response to Arguments
Applicant’s arguments with respect to claims 7-9 have been fully considered and are persuasive. The rejections of claims 7-9 have been withdrawn.
Applicant's arguments with respect to claim 1 have been fully considered but they are not persuasive.
Applicant argues that the combination of Philip and Horne would not have been obvious to one of ordinary skill in the art because it would render Horne unsatisfactory for its intended purpose and change its principle of operation.
Specifically, Horne teaches a solar energy receiver where the cooling fluid also acts as a prefilter for out-of-band radiation and, importantly, functions as a secondary concentrating lens to focus incoming solar radiation. See e.g., page 12, line 26-page 13, line 6; and Fig. 12. Horne explicitly states that "it is generally desirable to use a high index fluid, such as a silicon- based oil or mineral oil, to increase the focusing" provided by the prefilter, which relieves requirements on the primary concentrator and lowers system costs. Id. High refractive index fluids like mineral oil or silicone oil typically have refractive indices around 1.4-1.5.
In contrast, Philip teaches an oil-in-water emulsion, see e.g., page 1290, "2. Experimental details," which inherently has a refractive index close to that of water (~1.33) due to the water being the continuous phase and oil dispersed at low volume fractions (e.g., 10% by volume in Philip, but even lower in the claimed invention). Substituting Philip's low-index water- based emulsion for Horne's high-index fluid would significantly reduce the focusing capability of the prefilter lens, defeating Horne's express purpose of using the fluid for secondary concentration to reduce costs and enhance efficiency. One of ordinary skill would recognize that this modification would impair Horne's optical performance, as the lower refractive index would provide less refraction and focusing of incoming radiation.
Examiner respectfully disagrees. The combination of Philip and Horne would not change the principal operation in the device of Horne. Horne discloses in Page 13 lines 3-6 that in the embodiment of Figure 12 “It is generally desirable to use a high index fluid”. However, Horne additionally discloses that a heat transfer fluid such as water can be used in the passageways and prefilter (Page 5 lines 7-8) and Horne discloses that “While the preferred embodiments of the invention have been illustrated and described, variations will be apparent to those skilled ln the art” (Page 13 lines 7-8).
As discussed in the MPEP 2123:
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A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). MPEP 2123 additionally states:
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Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
The combination of Horne and Philip would maintain the same principal operation of prefiltering and focusing particular wavelengths of light and would have been obvious to one having ordinary skill in the art at the time the invention was filed. Applicant’s arguments have not been found to be persuasive.
Allowable Subject Matter
Claims 7-9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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 LINDSEY A BUCK whose telephone number is (571)270-1234. The examiner can normally be reached Monday-Friday 9am-5:30pm.
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, Matthew Martin can be reached at (571)270-7871. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINDSEY A BUCK/Primary Examiner, Art Unit 1728
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