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 .
Requirement for Information under 37 CFR 1.105
Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application.
In response to this requirement, please provide copies of each publication which any of the inventors authored or co-authored and which describe the disclosed subject matter of the analysis of liver fat content using Raman spectroscopy. Specifically, this request for information is focused on any additional pages of the document titled ““Low-cost and Real-time Analyzer of Liver Fat Content Using Raman Spectroscopy”, Conference 11957, SPIE, October 11, 2021 by Hao Guo, cited on the Information Disclosure Statement of January 22, 2025. The examiner notes that additional pages of this document, if they exist, could be pertinent to examination of this application because a) the publication is by one of the named inventors of this application; b) the date of publication is before the effective filing date of the instant application, and c) the subject matter listed in the abstract, hand-held Raman scattering analysis for accurate real time liver fat content assessment appears relevant to the claimed invention of an optical system which can be hand held (see the embodiments of Figs. 2 and 3) and performs Raman analysis (see paragraph 0079 for example). See also 37 CFR 1.105(a)(1)(iii).
In responding to those requirements that require copies of documents, where the document is a bound text or a single article over 50 pages, the requirement may be met by providing copies of those pages that provide the particular subject matter indicated in the requirement, or where such subject matter is not indicated, the subject matter found in applicant’s disclosure.
The timing fee and certification requirements of 37 CFR 1.97 are waived for those documents submitted in reply to the requirement (emphasis added; see additional information disclosure statement information below). This waiver extends only to those documents within the scope of this requirement under 37 CFR 1.105 that are included in the applicant’s first complete communication responding to this requirement. Any supplemental replies subsequent to the first communication responding to this requirement and any information disclosures beyond the scope of this requirement under 37 CFR 1.105 are subject to the fee and certification requirements of 37 CFR 1.97 where appropriate.
Information Disclosure Statement
The information disclosure statement filed January 22, 2025 fails to comply with the provisions of 37 CFR 1.98(a)(4) because it lacks the appropriate size fee assertion. It has been placed in the application file, but the information referred to therein has not been considered as to the merits unless otherwise cited on form PTO-892.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the single or multiple current-to-voltage converters, the single or multiple current or voltage amplifiers (assuming these are not the transimpedance amplifiers from claim 3), the option of multiple lock-in amplifiers, and the reference channel all found in at least claim 1 and the multiple beam splitters of claim 14 that select characteristic optical bands along with the voltage amplifiers must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The abstract of the disclosure is objected to because the abstract exceeds the maximum allowable length of 150 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1 and 12-14 are objected to because of the following informalities:
For each of claims 1 and 14, each limitation should be separated by a line indentation as stated in MPEP 1.75(i) and MPEP 608.01(m).
As for claim 12, the phrase “of one or multiple informative channels” in line 4 of the claim should be amended to read “of the one or more multiple informative channels”.
As for claim 13, the phrase “the samples include but not limited to” in line 3 of the claim should be amended to read “the samples include but are not limited to” (for additional information about the limitation, see the 35 USC 112(b) rejection of this claim set forth above).
Additionally, in claim 14, the phrase “the analysing system” should be amended to read “the analyzing system” in line 9 of the claim.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“A data analysis system . . . (that) analyzes amplified signals collected by the channels and outputs the substance content of the sample” in claims 1-13.
“The analyzing system” in claims 14-15.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-13 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.
Regarding claim 1, lines 8-10 of the claim recite that the collection system collects scattered light from the sample and focuses the light on the photoelectric detectors of the informative channels and a reference channel. However, while multiple informative channels appears to have support in the specification and the drawings of the instant application, the reference channel does not.
The instant specification only discloses that the channels of the collection system in Figs. 1-3 are “informative channels”, which are defined in the specification as “is a combination of one or multiple optical filters and a photoelectric detector where the signal of a characteristic spectrum peak is the strongest and other signals are filtered” (see paragraph 0076). Paragraph 0079 discloses that beam splitter 22 is a short pass dichroic mirror which splits the light into two informative channels. There is no discussion of sending light from the sample to a reference channel. Indeed, the only reference signal that appears to be disclosed with regards to the disclosed optical system is a reference signal that is the frequency signal of the optical modulator 2 which is used by the lock in amplifier 19 as a reference. This would not be reasonably considered the claimed reference channel. While paragraph 0054 of the specification, for example, repeats the language found in instant claim 1, the examiner contends that this is not enough information to show possession of the claimed invention, as there are no details about that reference channel in the claimed optical system. Where is the reference channel located? What optics beyond a photoelectric detector is part of the reference channel? Does it contain the same filters and lenses as the informative channels? Different optics? None at all?
As these questions are not readily answered, claim 1 is rejected for failing to comply with the written description requirement.
Claim 3 recites that the lock-in amplifiers extract signals “directly or not directly from the pre-amplified signals output from the transimpedance amplifiers and/or voltage amplifiers”. However, the specification does not appear to provide support for having the lock-in amplifiers extract signals “not directly” from the pre-amplified signals from voltage amplifiers. While the instant specification states that the signals from the transimpedance amplifiers can be provided to an additional voltage amplifier before reaching the lock-in amplifier (see paragraph 0079), there appear are no elements disclosed between the optional voltage amplifiers and the lock-in amplifier so that the lock-in amplifiers extract signals “not directly” from the pre-amplified signals from voltage amplifiers.
Claim 11 sets forth transimpedance amplifiers that amplify signals “directly or indirectly from the photoelectric detectors”. However, the specification does not appear to provide support for the transimpedance amplifiers amplifying signals “indirectly from the photoelectric detectors”. While the instant specification states that transimpedance amplifiers 17, 18 are used to convert the current signals produced by the photoelectric detectors 13 and 16 to amplified voltage signals (see paragraph 0079). As a result, there do not appear to be any elements between the amplifiers and the detectors so that the amplifiers amplify electric signals indirectly from the detectors as claimed.
Claims 2, 4-10, and 12-13 are rejected by virtue of their dependence on claim 1, thereby containing all the limitations of the claim on which they depend.
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.
Claim 1 recites the limitation “photoelectric detectors” in line 6 of the claim. The limitation is unclear for two reasons. First, the detectors are listed after the current to voltage converters, the current or voltage amplifiers, and the lock-in amplifiers in the system. How do the converters and amplifiers receive a signal if light has yet to be detected in the order in which the elements of the system are first laid out? Second, if there is only a single informative channel as is possible given the claiming of “single or multiple informative channels” in lines 3-4 of the claim, why would multiple detectors be required in the system? Notwithstanding the rejection set forth above under 35 USC 112(a), are multiple photoelectric detectors required because of the existence of the claimed reference channel?
Claim 1 recites the limitation “wherein a modulated light beam from the light source” in line 7 of the claim. Is there any structure required to modulate the light beam (such as in claim 6)? Or can the light beam be modulated by the light source itself? Because of this question, one having ordinary skill in the art would not know the specific structure that generates a modulated light beam from the light source, and the claim is rejected as indefinite. See MPEP 2173.05(g).
Claim 1 recites that the scattered light is focused “on the photoelectric detectors of the informative channels and a reference channel “ in lines 9-10 of the claim. In an extension of the 35 USC 112(a) rejection set forth above, what is the reference channel that is set forth here? In the best understanding of the examiner, while the lock-in amplifier can use a signal from a signal generator as a reference signal (see Fig. 2 and paragraph 0080) or the frequency signal from the optical modulator 2 as the reference signal (see Fig. 1 and paragraph 0079), these are not a reference channel that detects light from the sample as claimed. The instant drawings and specification do not appear to show such a channel, so it is unclear how the system can have a reference channel that receives light from the sample, or what the elements of that reference channel would be. Wouldn’t a reference channel receive light directly from the light source itself in order to be used as a comparison signal to the light actually scattered from the sample? Or does a certain makeup of optics in the reference channel allow it to be used as a reference channel?
Claim 1 recites the limitation "the output signals of the photoelectric detectors" in lines 12-13 of the claim. There is insufficient antecedent basis for this limitation in the claim. What output signals of the detectors are being set forth here?
Claim 1 recites the limitation "analyzes amplified signals collected by the channels" in lines 13-14 of the claim. There is insufficient antecedent basis for this limitation in the claim. First, which of the channels does the data analysis system analyze? Is it all of the channels, both informative and reference, of the system? Or just some of the channels? Additionally, how do the channels themselves collect amplified signals when the elements that perform such amplification are found after the detectors detect the light in the system?
Claim 1 recites the limitation "the substance content of the sample" in line 14 of the claim. There is insufficient antecedent basis for this limitation in the claim. What substance content is being referred to here?
Claim 2 is rejected by virtue of its dependence on claim 1, thereby containing all the limitations of the claim on which it depends.
Claim 3 recites that the lock-in amplifiers extract signals “directly or not directly from the pre-amplified signals output from the transimpedance amplifiers and/or voltage amplifiers”. However, it is not clear how the lock-in amplifiers extract signals “not directly” from the pre-amplified signals from voltage amplifiers, as while the instant specification states that the signals from the transimpedance amplifiers can be provided to an additional voltage amplifier before reaching the lock-in amplifier (see paragraph 0079), there appear are no elements disclosed between the optional voltage amplifiers and the lock-in amplifier.
Claim 3 recites the limitation "the transimpedance amplifiers" in line 4 of the claim. There is insufficient antecedent basis for this limitation in the claim. What transimpedance amplifiers are being referred to here? Claim 1, the claim on which claim 3 depends, is silent with regards to transimpedance amplifiers. Are these the current or voltage amplifiers from claim 1?
Claim 4 recites that the system outputs a signal which is insensitive to ambient light conditions. However, it is unclear how the system is capable of performing that function. What structure exists in the system to make it insensitive to ambient light conditions? Without that structure, the claim is considered indefinite, because one having ordinary skill in the art would not know what combination of structural elements would be encompassed by the claim in order to perform the claimed function. See MPEP 2173.05(g).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation ambient light conditions, and the claim also recites including but not limited to LED light conditions which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 4 recites the limitation “including but not limited to LED light conditions” in line 4 of the claim. Notwithstanding the above rejection, what other conditions does the claim encompass beyond “LED light conditions” here? Because this is an open ended, unbounded limitation, the metes and bounds of the claim cannot be ascertained, and the claim is rejected as indefinite.
Claim 5 recites that the light source “includes but is not limited to an infrared laser” in line 3 of the claim. What other specific types of light sources can be the light source of the optical system? Because this is an open ended, unbounded limitation, the metes and bounds of the claim cannot be ascertained, and the claim is rejected as indefinite.
Claim 6 recites that an initial light beam is modulated. However, claim 1 already recites “a modulated light beam”. Is this an additional modulated beam to the modulated beam set forth in claim 1? Or does this claim set forth how the light beam in claim 1 is modulated?
Claim 7 claims that “the incident light path guides the output light beam from the laser source, shapes the beam, and alters the incident angle of the beam to a sample”. However, as there is no structure associated with the incident light path that allows for the claimed function to be performed, the claim is considered indefinite, because one having ordinary skill in the art would not know what combination of structural elements would be encompassed by the claim in order to perform the claimed function. See MPEP 2173.05(g).
Claim 8 recites the limitation "the optical elements" in lines 4-5 of the claim. There is insufficient antecedent basis for this limitation in the claim. What optical elements are being referred to here? Are they all of the optical elements set forth in claim 1? Other optical elements not set forth in that claim?
Claim 9 recites the limitation “a combination of any number of optical elements including but not limited to lenses, mirrors, filters, beam splitters, or optical fibers” in line 3-5 of the claim. What other optical elements does the claim encompass beyond the ones specifically claimed here? Because this is an open ended, unbounded limitation, the metes and bounds of the claim cannot be ascertained, and the claim is rejected as indefinite. Additionally, where in the system are these elements located? The incident light path? The informative channels? Both? Elsewhere in the system? Which elements are in the incident light path, and which are in the informative channels, and which can be located somewhere else in the system?
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation the photoelectric detectors, and the claim also recites including but not limited to InGaAs photodiode detectors which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 10 recites the limitation “including but not limited to InGaAs photodiode detectors” in lines 3-4 of the claim. Notwithstanding the above rejection, what other detectors does the claim encompass beyond “InGaAs photodiode detectors” here? Because this is an open ended, unbounded limitation, the metes and bounds of the claim cannot be ascertained, and the claim is rejected as indefinite.
Claim 11 sets forth transimpedance amplifiers that amplify signals “directly or indirectly from the photoelectric detectors”. However, it is not clear how the transimpedance amplifiers amplify signals “indirectly from the photoelectric detectors”, as while the instant specification states that transimpedance amplifiers 17, 18 are used to convert the current signals produced by the photoelectric detectors 13 and 16 to amplified voltage signals (see paragraph 0079). As a result, there do not appear to be any elements between the amplifiers and the detectors so that the amplifiers amplify electric signals indirectly from the detectors as claimed.
Claim 11 recites the limitation “including but not limited to informative, reference, background or noise signals” in lines 4-5 of the claim. What other signals does the claim encompass beyond “informative, reference, background or noise signals” here? Because this is an open ended, unbounded limitation, the metes and bounds of the claim cannot be ascertained, and the claim is rejected as indefinite.
Claim 12 recites that “a combination of dichroic mirrors and optical pass filters selects specific optical wavelength bands of one or more informative channels” in lines 3-4 of the claim. However, this limitation is unclear, because the specific combination of dichroic mirrors and optical pass filters is not set forth by the claim. Can it be any number of dichroic mirrors and filters for each of the informative channels? Do the channels share any of these elements, such as dichroic mirror 22 being shared between informative channels in Fig. 1 of the instant application? Because these questions cannot be readily answered, the claim is rejected as indefinite.
Claim 13 recites the limitation “the samples include but (are) not limited to in-situ and ex-situ liver organs or tissues” in lines 3-4 of the claim. What other samples does the claim encompass beyond “in-situ and ex-situ liver organs or tissues” here? Because this is an open ended, unbounded limitation, the metes and bounds of the claim cannot be ascertained, and the claim is rejected as indefinite.
Claim 14 recites that “selecting characteristic optical bands with beam splitters and optical pass filters” in lines 4-5 of the claim. However, this limitation is unclear, because the specific combination of beam splitters and optical pass filters to select characteristic optical bands is not set forth by the claim. Can it be any number of beams splitters and filters? Can it be just one beam splitter with a filter for each detection channel as shown in Figs. 1-3? Additionally, how are there multiple beam splitters that select characteristic optical bands, as the instant specification only appears to show beam splitter 22 (see Figs. 1-3) performing this function? Because these questions cannot be readily answered, the claim is rejected as indefinite.
Claim 14 recites “converting light signals to electric signals with at least one photoelectric detector, converting current signals to voltage signals with current-to-voltage converters” in lines 5-7 of the claim. This limitation is unclear because it appears that a step is missing in the claim. The claim converts light signals to electric signals with a detector, but then converts current signals to voltage signals with a converter. However, there is no step that converts electric signals to current signals. How can the current-to-voltage converters convert current signals to voltage signals if nothing converts the electric signals to current signals in the claimed method?
Claim 14 recites “extracting signals from noise with at least one lock-in amplifier and/or voltage amplifier” in lines 7-8 of the claim. While one having ordinary skill in the art would understand that a lock-in amplifier is capable of extracting a signal from noise, it is unclear how a voltage amplifier would be able to perform the same function. In the best understanding of the examiner, a voltage amplifier merely amplifies voltage. How can an element that only amplifies the voltage of a signal extract a signal from background noise?
Claim 14 recites the limitation "the substance content of the sample" in line 8 of the claim. There is insufficient antecedent basis for this limitation in the claim. What substance content is being referred to here?
Claim 14 recites the limitation "using the analyzing system and the extracted voltage signals” in line 9 of the claim. There is insufficient antecedent basis for this limitation in the claim. What analyzing system and what extracted voltage signals are being referred to here?
Claim 15 recites the limitation "the intensity of the extracted voltage signal of either channel" in lines 2-3 of the claim. There is insufficient antecedent basis for this limitation in the claim. First, what intensity of the extracted voltage signal is being referred to here? Additionally, what does “either channel” refer to? No channels are set forth in claim 14 to provide antecedence for “either channel” here.
Claim 15 recites the limitation "the target substance" in line 4 of the claim. There is insufficient antecedent basis for this limitation in the claim. What target substance is being referred to here? Is this the sample from claim 14, or a different substance?
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 14 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vo-Dinh (5,864,397), in the best understanding of the examiner.
Regarding claim 14, Vo-Dinh (Fig. 2) discloses a method of detecting vibration and/or rotation modes of a biotic or abiotic sample, comprising placing a sample 32 to be tested onto a test stage (inherent; the sample must be placed on some kind of support), illuminating the sample with a light beam from laser 12 to excite the sample (Col. 4, lines 9-13 describe the light source 12 as an excitation laser), collecting scattered light from the illuminated sample using probe 18 connected to fiber 30 (see Col. 4, lines 30-33, “The probe 18 directs the laser radiation toward the bio logical Specimen 32 being examined and receives return radiation that has been reflected and scattered by that specimen”) and selecting characteristic optical bands with beam splitters 26 and optical pass filters (unmarked, but see the filter that mirrors bandpass filter 28 in the detection arm of the device), converting light signals to electric signals with at least one photoelectric detector 16, converting current signals to voltage signals with current-to-voltage converters (the examiner here assumes the current signals are the same as the electric signals from the detector; in that light, this is implicit, as Col. 4, line 45 gives an option of a photodiode array as the detector, which will convert current generated by detected light into a voltage), extracting signals from noise with at least one lock-in amplifier 42 and/or voltage amplifier, and calculating the amount of the substance content in the sample using the analyzing system (see computer 72 in Fig. 3 for example) and the extracted voltage signals (see Col. 8, lines 12-21 disclosing identification of biochemical species such as cholesterol for biomedical screening along with Figs. 17 and 19).
As for claim 15, Vo-Dinh discloses that the intensity of the extracted voltage signal represents the strength of characteristic vibration and/or rotation modes of the target substance (inherent; Col. 1, lines 11-27 in the background discussion of Vo-Dinh discloses, for example, Upon irradiation of a molecule with light in biological applications, the incident radiation having a frequency ν should produce scattered radiation, the most intense part of which has unchanged frequency. In addition, if the polarization of a molecule changes as it rotates or vibrates, there are spectral lines of much lesser intensity at frequencies ν±νk, where νk is the molecular frequency of rotation or vibration”).
Examiner Note
Given the nature of the indefiniteness rejection set forth above regarding claim 1, the examiner cannot reasonably ascertain the metes and bounds of the claimed optical system are, particularly with regards to the claimed reference channel. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 USC 103 should not be made based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. As a result, further examination of claims 1-13 is precluded at this time. However, the examiner points to the rejection of claim 14 above in view of Vo-Dinh as a discussion as to how claim 1 might be rejected in view of prior art once the outstanding issues under 35 USC 112 are resolved.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pat. 6,151,522 to Alfano et al. discloses a system and method for examining biological materials using excitation Raman spectroscopy where the device uses a signal from a chopper as a reference for lock-in amplifier 15 and also images a sample with light from 3 pump lasers and a probe laser (see Fig. 3); US 2021/0169364 to Han et al. and US 2022/0146393 to Gonzalez et al. disclose various measuring devices featuring current to voltage converters and lock-in amplifiers as part of the detection circuitry (see paragraph 0035 for Han and 0029 for Gonzalez); and US 2022/0133185 to Popp et al. discloses a system for measuring concentration of a substance in fluid where reference light for the system is light scattered by the sample which remains uninfluenced by a filter prior to detection (see paragraph 0022).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael A. Lyons whose telephone number is (571)272-2420. The examiner can normally be reached Monday - Friday.
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, Michelle Iacoletti can be reached at 571-270-5789. 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 A Lyons/Primary Examiner, Art Unit 2877 August 3, 2026
Prosecution Insights