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 .
Claim Objections
Claim 1 is objected to because of the following informalities: missing colon after the term “comprising” in line of the claim. 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 1-15 rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without a source of excitation, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).
Regarding claim 1, while the claim does disclose “a source of excitation” it is not clear if the “source of excitation” is part of the sensor disclosed. Considering that the claim is directed to a “sensor device”, rather than a component of a sensor, it is believed that the “source of excitation” should be included as a part of the “sensor device” disclosed in claim 1 because the sensor device cannot work without the source of excitation. Claims 2-15 are rejected for depending on claim 1.
Claims 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for nitrogen-vacancy diamonds as the source of fluorescence and physical phenomenon is a magnetic field and said excitation is light in the green spectrum produced by an excitation light source, does not reasonably provide enablement for other sources of fluorescence, measuring other physical phenomenon, or using other spectrums of light. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to use the invention commensurate in scope with these claims.
The only concrete source of fluorescence supported by the description seems to consist of NV centers in a diamond crystal and the claim should be limited accordingly, e.g. by including the features of claim 2. This may also be seen as a problem under Article 5 PCT because the description fails to set out a way of carrying out the invention in the absence of NV centers, i.e. the invention is not sufficiently disclosed within the whole area covered by the claim. For example, the description does not specify how the setup would have to look like if one wanted to use the fluorescence of an excited gas. It is not even explained which phenomenon could be detected with a gas and whether sufficient sensitivity could be achieved at all.
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 1-15 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 how the invention of a “sensor device” can be used without the inclusion of a “source of excitation” included as a component of the sensor device.
Regarding claim 1, it is unclear how other forms of fluorescence (other than NV diamonds) and measuring other physical phenomenon (other than magnetic fields) can be measured with the sensor device.
Claims 2-15 are rejected for depending on claim 1.
Regarding claim 3, it is unclear if “said diamond” refers back to “a nitrogen-vacancy diamond” disclosed in claim 2.
Regarding claim 5, it is unclear if “the diamond” refers back to “a nitrogen-vacancy diamond” disclosed in claim 2.
Regarding claim 9, the claim depends from claim 2 but the limitation discloses “further comprising a second optical fiber distinct from said first optical fiber, wherein said second optical fiber is arranged to channel said excitation light to said nitrogen-vacancy diamond.” However, “said first optical fiber” is mentioned in claim 7. Therefore, it is unclear if this claim should depend from claim 7.
Regarding claim 11, it is unclear if “said diamond” refers back to “a nitrogen-vacancy diamond” disclosed in claim 2.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) 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.
Claims 1 and 12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Tsuji (US 2024/0187009).
Regarding claim 1, Tsuji teaches a sensor device comprising
a source of fluorescence, wherein said fluorescence is function of a physical phenomenon to be sensed and wherein said fluorescence is generated in response to an excitation provided by a source of excitation [See sample 110 and see atomic beam. ¶0057. See also rest of reference.];
a collector for collecting said fluorescence [¶0057, wherein the fluorescence signal is received. See also rest of reference.];
a reflector placed around said source of fluorescence to reflect said fluorescence towards said collector [See right angle mirror 102 which is placed around sample 110. See also rest of reference.],
wherein said reflector is provided with an opening at its vertex [See opening 106. See also rest of reference.], the source of fluorescence being arranged within said reflector to sense said physical phenomenon through said opening [¶0040, see also rest of reference.].
Regarding claim 12, Tsuji further teaches wherein said reflector has the shape of a truncated cone [Fig. 2, see truncated conical right angle mirror 102. See also rest of reference.] or the shape of a truncated standard surface.
Claim Rejections - 35 USC § 103
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.
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 15 is rejected under 35 U.S.C. 103 as being unpatentable over previously cited Tsuji, in view of McBride (US 2023/0296380).
Regarding claim 15, Tsuji teaches the limitations of claim 1, which this claim depends from.
Tsuji further teaches an interferometer comprising a sensor device according to claim 1 [¶0040, see also rest of reference.].
However, Tsuji is silent in teaching a magnetometer comprising a sensor device.
McBride teaches a magnetometer comprising a sensor device [¶0003].
It would have been obvious to a person having ordinary skill in the art before the filing date of the claimed invention to combine the teachings of Tsuji and McBride because both references are in the field of atomic sensors and because McBride teaches it is obvious to try forming a magnetometer or interferometer with an atomic sensor [McBride - ¶0003].
Allowable Subject Matter
Claims 2-11 and 13-14 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 a statement of reasons for the indication of allowable subject matter:
Regarding claim 2, the closest prior art is considered previously cited Tsuji. However, Tsuji is silent in teaching wherein said source of fluorescence comprises a nitrogen-vacancy diamond, said physical phenomenon is a magnetic field and said excitation is light in the green spectrum produced by an excitation light source.
Claims 3-11 and 13-14 are considered above the prior art for depending on claim 2.
Conclusion
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/RISHI R PATEL/Primary Examiner, Art Unit 2896