DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim(s) 1-2, 4, 6-7, 9-10 and 12-13 are provisionally rejected on the ground of nonstatutory double patenting.
Claim(s) 1-4, 6, 8-12 and 14-16 are rejected under 35 U.S.C. 102(a1).
Claim(s) 5, 7 and 13 are rejected under 35 U.S.C. 103.
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 1-2, 4, 6-7, 9-10 and 12-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 10-11, 17, 19 and 21-22 of copending Application No. 18/732,498 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are broader in scope. The claims merely differ in the use of the term “a filter”, in place of “an optical isolator”.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1-4, 6, 8-12 and 14-16 are rejected under 35 U.S.C. 102(a1) as being anticipated by US Publication 2023/0087059 to Knollenberg et al.
In regards to claims 1-4, 6, 8-12 and 14-16, Knollenberg discloses and shows in Figures 5 and 8-9, an optical particle counter (par. 95-101) comprising:
a flow cell (E) adapted to contain a flow of liquid dispersion (par. 10-12, 28, 75, 96-97);
a laser (A) that generates a beam of laser light directed at the flow cell (par. 10-12, 23, 73);
an optical isolator (B) located between the laser and the flow cell adapted to allow light to pass in a direction from the laser to the flow cell, and to prevent laser light that is reflected from the flow cell from entering the laser as optical feedback (par. 10-12, 67, 76); and
an optical detection system (G) for detecting laser light that exits the flow cell (par. 10-12, 40, 72);
[claim 2] wherein the optical detection system comprises an optical detector that receives laser light that passes through the flow cell, and is scattered by a particle in a liquid dispersion passing through the laser light (Figure 5) (par. 10-12, 72, 96-97);
[claim 3] wherein the optical detector is adapted to detect particles of a size greater than 0.15 micron passing through the beam of laser light (par. 31, 63-65, 115);
[claim 4] wherein the optical isolator is effective to reduce mode-hopping by the laser compared to a comparable counter that does not include the optical isolator located between the laser and the flow cell (par. 8-9, 67, 77);
[claim 6] comprising a liquid dispersion in the flow cell, the liquid dispersion comprising a liquid medium and particles dispersed in the liquid medium (par. 28, 31, 63-65);
[claim 8] wherein the particles have an average particle size below 0.15 microns (par. 28, 31, 63-65, 115);
[claim 10] wherein an optical detector receives laser light that passes through the flow cell and detects a reduction in intensity of the laser light caused by a particle contained in a liquid dispersion passing through the laser light (Figure 5) (par. 10-12, 72, 96-97);
[claim 11] wherein the optical detector detects a reduction in intensity of the laser light caused by a particle having a size greater than 0.15 micron (par. 31, 63-65, 115);
[claim 12] wherein the optical isolator is effective to reduce mode-hopping by the laser compared to a comparable counter that does not include the optical isolator located between the laser and the flow cell (par. 8-9, 67, 77);
[claim 15] wherein the optical detector measures a reduction in intensity of the laser light when a particle contained in the liquid dispersion passes through the laser light (Figure 5) (par. 10-12, 72, 96-97);
[claim 16] wherein the laser experiences reduced mode hopping compared to a comparable optical particle counter that does not include the optical isolator between the laser and the flow cell (par. 8-9, 67, 77).
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) 5, 7 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Knollenberg.
In regards to claims 5, 7 and 13, Knollenberg differs from the limitations in that it is silent to the system and method:
[claim 5] wherein the flow cell is a micro flow cell that includes a channel having a 0.4 mm x 2 mm depth and width;
[claims 7 and 13] wherein the liquid dispersion comprises:
at least 90 weight percent liquid medium, and less than 10 weight percent dispersed particles, based on total weight liquid dispersion.
However, it has been held that finding the optimal or working ranges of a variable involves only routine skill in the art (MPEP 2144.05). In re Aller, 105 USPQ 233. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382.
Further, a mere change in size or design choice of a component is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Also, the material or article worked upon by a structure being claimed does not impart patentability to the claims (MPEP 2115).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention, to modify Knollenberg to include the dimensions and parameters discussed above for the advantage of obtaining and optimum or desired system configuration, with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN M HANSEN whose telephone number is (571)270-1736. The examiner can normally be reached Monday to Friday, 8am to 4pm.
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.
JONATHAN M. HANSEN
Primary Examiner
Art Unit 2877
/JONATHAN M HANSEN/Primary Examiner, Art Unit 2877