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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 7, 9 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 8, of copending Application No. 18/711,297 in view of Ichikawa (U.S. PGPub No. 2021/0025687 A1).
The claims are in each case anticipated by that of the copending application with the exception of the sensor being broadly claimed as an electromagnetic sensor in that of the copending application. As such the copending application fails to anticipate where the radiation sensor is an optical radiation sensor.
However, Ichikawa does disclose and show in figure 2 an optical sensor (33, 34 and 38) or an ionizing radiation sensor for providing a first measurement signal (S.sub.ott) representing in an absolute manner the total thickness of the film (F) (t as a function of Lo subtracted from Lm) ([0055]; [0059]-[0060]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the copending application with an optical electromagnetic radiation sensor in order to provide the advantages of expected results and increased accuracy as noted by Ichikawa the system in using an optical sensor has increased measurement accuracy ([0001]).
This is a provisional nonstatutory double patenting rejection.
Specification
The disclosure is objected to because of the following informalities:
Page 1, l. 21, it is believed “EVOH” should be un-abbreviated upon first use. In other words read –Ethylene vinyl alcohol (EVOH)--.
Page 7, l. 19, 23 and 24, “optical beam B” should be changed to –optical beam OB-- to be both consistent with the figures and the claim.
Appropriate correction is required.
Claim Objections
Claims 11 and 12 are objected to because of the following informalities:
Claim 11 and 12 recites the limitation "the cylinder" in lines 4 from claim 11 and line 2-3 of claim. There is insufficient antecedent basis for this limitation in the claim. The examiner notes that the cylinder was added in claim 10, so either claims 11-12 can be made to depend from 10, or the antecedent basis issue can be fixed in each respective claim.
Appropriate correction is required.
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 1-17 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.
As to claims 1 and 9, the examiner is unclear what is meant by “in an absolute manner the total thickness”. Specifically, the examiner fails to find any disclosure as to what applicant is intending to limit with the relative term “absolute manner”. As such it is unclear what would make the thickness measurement absolute or not, in contrast to a common thickness measurement of the film under test. The examiner is therefore interpreting the thickness measurement simply a total thickness measurement of the material under test, as the phrase “absolute manner” is not clearly defined in the disclosure in any meaningful way. Claims 2-8 and 10-17 are likewise rejected for their dependency on instant claims 1 and 9.
As to claims 3 and 12, the examiner is unclear what is meant by a “focused optical beam”. The examiner notes that the term focusing is clearly a known art term. However, the instant figures fail to show any kind of focusing, the instant figures and disclosure fail to disclose any optical components of the light source 16. Additionally what appears to actually be shown which is common in the art is actually providing a collimated beam to the sample under test. The examiner is therefore unclear if either the language “focusing” is used extremely broadly to imply collimation, or if the claim/source actually has a focused converged light beam, which if is the case needs to be clearly illustrated. For examination purpose the examiner is interpreting the claim to cover both interpretations as it is assumed the lack of clarity may be a function of a machine translation issue.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The examiner fails to find how either the structure of the apparatus could be further defined with claim 15. Even so how the “plant” could in any manner structurally define a system distinct from that of claim 9. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-2, 4-5, 9-11 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Ichikawa (U.S. PGPub No. 2021/0025687 A1) in view of Bierbaumer (EP 0918211 A1, where the examiner is providing a machine translation hereinwith for citations).
As to claims 1 and 9, Ichikawa discloses and shows in figure 2 an apparatus for measuring, in a multi-layer film (F) having one or more layers of a first material and one or more layers of a second material, the total thickness (L.sub.1) of the first material and/or the total thickness (L.sub.2) of the second material, comprising ([0008], whereas disclosed the material sheet worked upon can b e a “multi-layer structure of sheet-shaped electrode members”):
an optical sensor (33, 34 and 38) or an ionizing radiation sensor for providing a first measurement signal (S.sub.ott) representing in an absolute manner the total thickness of the film (F) (t as a function of Lo subtracted from Lm) ([0055]; [0059]-[0060]);
processing means (40) for calculating, from said first and second measurement signals (S.sub.ott, S.sub.cap), the total thickness (L.sub.1) of the first material and/or the total thickness (L.sub.2) of the second material (value t is a function of the first and second materials in the measurement of multi-layer sheets as disclosed) ([0062]; [0092]).
Ichikawa does disclose using a magnetic based sensor (32) for measuring a sum of signals (inherent result when measuring a multi-layer battery sheet as disclosed) to measure total thickness of the film under test ([0050], ll. 6-13; [0058]).
Ichikawa does not disclose a capacitive sensor for providing a second measurement signal (S.sub.cap) which is the sum of the signals given by the first and second material of the film (F), wherein the signal given by each material of the film (F) is a function of the thickness (L.sub.1, L.sub.2) of that material.
However, Bierbaumer does disclose and show in figure 3 and in ([0064]; [0065]) the use of a capacitive sensor (18) used for measuring layer thickness (2). Where obviously this layer thickness in for example a measurement where the sample is a multi-layer battery sheet as disclosed in Ichikawa, would likewise be a measurement of the sum of signals of the multiple materials of said battery sheet.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Ichikawa with a capacitive sensor for providing a second measurement signal (S.sub.cap) which is the sum of the signals given by the first and second material of the film (F), wherein the signal given by each material of the film (F) is a function of the thickness (L.sub.1, L.sub.2) of that material in order to provide the advantage of increased accuracy as firstly using a known capacitor produces a highly sensitive/precision measurement of thickness output further as also noted by Bierbaumer using a capacitive sensor gives the added metric of a length of the sheet (3) ([0061], ll. 17-18; [0063], ll. 9-10; [0066], ll. 6-8)
The subject matter of claims 1 and 9 relate in that the technical features of apparatus claim 9 are in each case suitable for implementing the method of claim 1, therefore the method is obvious in view of the above apparatus rejection.
As to claim 2, Ichikawa discloses a method, wherein said steps a) and b) of acquiring a first measurement signal (S.sub.ott) and acquiring a second measurement signal (S.sub.cap) are performed while the film (F) is being moved (i.e. position of surface as shown in figure 5 is moved during rolling) over a cylinder which deviates its path (Fig. 5; [0087]-[0088]).
As to claim 4, Ichikawa as modified by Bierbaumer discloses a method, wherein said step b) is performed with the capacitive sensor arranged with its measurement axis (z) lying in a plane passing through the axis (x) of the cylinder (e.g. a line drawn vertical relative to the center point of 12 through sensor 32 of Ichikawa) ([0054]; where the examiner notes that via the modification and motivation above, sensor 32 is now capacitive as claimed and therefore this same orientation is maintained).
As to claim 10, Ichikawa discloses and shows in figure 2, an apparatus, further comprising a cylinder (12) on which the film (F) is caused to move to deviate its path, wherein the optical sensor and the capacitive sensor are arranged close (where the examiner is interpreting the distance as close in being able to interact with the film under test) to the cylinder to acquire said first measurement signal and said second measurement signal, respectively, on a section of film (F) in contact with the outer surface of the cylinder (Fig. 5; [0087]-[0088]).
As to claims 5 and 11, Ichikawa does not explicitly disclose an apparatus, further comprising an inductive sensor associated with the capacitive sensor for measuring the distance between said capacitive sensor and the cylinder.
However, Bierbaumer does disclose and show in figure 3 and in ([0061]) the use of an inductive sensor (19) to measure a thickness of the sample under test. Further as explicitly shown in figure 3 the inductive sensor is at the same distance 9 from the roller 15. As such obviously the inductive sensor is likewise a measurement of the distance of the capacitive sensor to the cylinder.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Ichikawa with an apparatus, further comprising an inductive sensor associated with the capacitive sensor for measuring the distance between said capacitive sensor and the cylinder in order to provide the advantage of increased accuracy in obviously addition an additional/redundant sensor one can further verify a thickness/distance measurement for a more accurate determination.
As to claim 15, Ichikawa discloses a plant for producing a multi-layer film (F), comprising a measuring apparatus according to claim 9 (Abstract).
As to claims 16 and 17, Ichikawa does not explicitly disclose a method, wherein the inductive sensor is integrated in the capacitive sensor.
However, Bierbaumer does disclose and show in figure 3 and in ([0061], ll. 1-6) the use of an inductive sensor (19) to measure a thickness of the sample under test. Further as explicitly shown in figure 3 the inductive sensor is at the same distance 9 from the roller 15 and included in housing 20.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Ichikawa with wherein the inductive sensor is integrated in the capacitive sensor in order to provide the advantage reduction in size as obviously put the inductive sensor in the same housing as the capacitive sensor produce a compact measurement apparatus as a whole able to be more easily transported if desired.
Claim(s) 3 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Ichikawa in view of Bierbaumer further in view of Tojo et al. (JPH 10862632A where the examiner is providing a machine translation hereinwith for citations).
As to claims 3 and 12, Ichikawa discloses and shows in figure 2 a method, wherein said step a) is performed by hitting the film (F) with an optical beam (OB) (explicitly shown in figure 2) emitted by an emitting head (34) of the optical sensor placed on one side of the cylinder and detecting the shadow projected by the film (F) by means of a receiving head (36 and 38) of the optical sensor placed on the opposite side of the cylinder relative to the emitting head and wherein the receiving head is configured to analyse the shadow generated by the film (F) that is being hit by the optical beam (OB) emitted by the emitting head. ([0050]; [0088]).
Ichikawa in view of Bierbaumer does not explicitly disclose where the light is a “focused optical beam”.
However, Tojo does disclose and show in figure 3A and in ([0019], ll. 1-4) the use of similar thickness measurement system to that of Ichikawa, and uses a collimating lens 4a3 to focus the light from divergent as shown in order to relay the most amount of light possible to the detector for measuring thickness.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Ichikawa in view of Bierbaumer does not explicitly disclose where the light is a “focused optical beam” in order to provide the advantage of increased efficiency, as obviously and known in the art collimating a beam reduces divergent losses yielding a higher signal to noise ratio in optical measurements by relaying more light directly to the detector surface.
Claim(s) 6 and 13- 14 are rejected under 35 U.S.C. 103 as being unpatentable over Ichikawa in view of Bierbaumer further in view of Tojo et al. (U.S. PGPub No. 2011/0130890 A1, Tojo2 hereinafter for citations).
As to claims 6, 13 and 14, Ichikawa in view of Bierbaumer does not explicitly disclose an apparatus, wherein the ionizing radiation sensor comprises an emitting head placed on one side of the film (F) and a receiving head placed on the opposite side of the film (F), wherein the emitting head is configured to hit the film (F) with an ionizing radiation beam (RB) and wherein the receiving head is configured to analyse the ionizing radiation beam (RB) that has passed through the film (F) or wherein the capacitive sensor is mounted on the emitting head of the ionizing radiation sensor and has a through-hole aligned with the ionizing radiation beam (RB) emitted by said emitting head to allow the ionizing radiation beam (RB) to pass through the capacitive sensor.
However, Tojo2 does disclose and show in figure 2 and 3 and in ([0076], ll. 1-6; [0077], ll. 16-24) the use of a x-ray source (2a, i.e. ionizing emitting head) set opposite an x-ray detector (2b, i.e. ionizing radiation sensor) relative to a film (a). From the source/detector combo on can measure thickness of the sample under test. Further Tojo2 discloses and shows a through-hole (16). Further It would have been obvious to one of ordinary skill in the art at the time the invention was made to position the ionizing radiation beam emitter near the capacitive sensor, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. Further in doing so would obviously provide for a compact system.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Ichikawa in view of Bierbaumer with an apparatus, wherein the ionizing radiation sensor comprises an emitting head placed on one side of the film (F) and a receiving head placed on the opposite side of the film (F), wherein the emitting head is configured to hit the film (F) with an ionizing radiation beam (RB) and wherein the receiving head is configured to analyse the ionizing radiation beam (RB) that has passed through the film (F) or wherein the capacitive sensor is mounted on the emitting head of the ionizing radiation sensor and has a through-hole aligned with the ionizing radiation beam (RB) emitted by said emitting head to allow the ionizing radiation beam (RB) to pass through the capacitive sensor in order to provide the advantage of increase versatility and expected results in using an ionizing source to accurately measure a thickness of a sample under test in a wide range of samples, and likewise making the system more compact by mounting the capacitance sensor and ionization sensor together ([0040]).
Allowable Subject Matter
Claim 7 and 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance:
As to claim 7, the prior art taken alone or in combination fails to teach or disclose wherein said step c) of calculating the total thickness (L.sub.1) of the first material and/or the total thickness (L.sub.2) of the second material is based on solving the following system of equations: Sott=L1+L2 Scap=k1.Math.L1+k2.Math.L2, wherein the parameter k.sub.1 is determined, during the start-up of the film production plant, based on the value of said second signal (S.sub.cap) when the film (F) is formed by the first material only, and wherein the second parameter k.sub.2 is determined during the production cycle of the film (F), based on the average value of said second signal (S.sub.cap) and the average values of the total thickness (L.sub.1) of the first material and the total thickness (L.sub.2) of the second material, from the following equation: k2=(Scap_-k1.Math.L1_)/L2_..
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P LAPAGE whose telephone number is (571)270-3833. The examiner can normally be reached Monday-Friday 8-5:30.
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, Tarifur Chowdhury can be reached at 571-272-2287. 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.
/Michael P LaPage/Primary Examiner, Art Unit 2877