CTNF 18/842,423 CTNF 89724 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 07-06 AIA 15-10-15 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 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 Objections 1. Claim 7 is objected to because of the following informalities: 1.1. The claim-element/limitation relative to “ a magnetic field generating unit ” (lines 5-6) of claim 7 should be consistent and be written as “ a the magnetic field generating unit ” in order to improve consistency and clarity of the claim language because this claim-element/limitation already has antecedent basis in claim-1. 2. Claim 9 is objected to because of the following informalities: 2.1. The claim-element/limitation relative to “ a magnetic field generating unit ” (lines 2) of claim 7 should be consistent and be written as “ a the magnetic field generating unit ” in order to improve consistency and clarity of the claim language because this claim-element/limitation already has antecedent basis in claim-1. 3. Claim 10 is objected to because of the following informalities: 3.1. Claim 10 depends on claim-8 but appears to depend on claim-9. Please correct dependency. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 AIA 4. Claim (s) 10 is 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 pre-AIA the applicant regards as the invention. Specifically: 4.1. C laim 10 recites the limitations “ The MR apparatus ” in line(s) 1. There is insufficient antecedent basis for this limitation in the claim. Examiner’s Note 5. All the words in the language of the claims of which the specifications do not provide a definition in the form stated in the MPEP, the examiner has interpreted them by their plain meanings, pursuant to the MPEP 2111.01 “Plain Meaning” and MPEP 2173.01. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (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. 07-15 AIA 6. Claim (s) 1-3, 6, 9, 11-13 and 15 are/is rejected under 35 U.S.C. 102( a)(1) and 102(a)(2 ) as being anticipated by FUKUI et al. (Pub. No.: US 2020/0264252 hereinafter mentioned “Fukui”, which was submitted via IDS ) . As per claim 1, Fukui discloses: A set of shim elements ( Figs. 2 and 4, see the shim-elements 154 arranged and integrated in sets of seven set in the one of the plurality of magnetic-field-adjustment-devices 150. Also see [0026]-[0027] ) , comprising: shim blocks which are each separate from each other ( Figs. 4-5, see the shim-blocks formed by each shim-element 154 with its respective spacers 156 (top-158 and bottom-157) and cover 159. Also see [0029]-[0032] ) such that each shim block may be individually inserted into a shim opening magnetic field-generating unit ( Figs. 1-4, see the superconducting-magnet 100 with a plurality of openings along the its longitudinal-axis, each opening receives one magnetic-field-adjusting-device 150 with its shim-trays 152 that has a plurality of openings/shim-pockets 153, respectively, so each of the is individually shim-blocks 154 with its respective spacers 156 are individually inserted into their respective openings of the superconducting-magnet 100. Also see [0026]-[0027] ) of a magnetic resonance apparatus ( Fig. 1, see the MRI 1. Also see [0019]-[0021] ) , each shim block comprises a relative amount of shim iron relative of the block's total amount of iron and non iron-material ( Figs. 4-5, see the shim-blocks formed by each shim-element 154 made of iron with its respective spacers 156 (top-158 and bottom-157) made of non-magnetic iron material such as Bakelite or PET (polyethylene terephthalate) and cover 159 made non-magnetic-material such as reinforced-plastic. Also see [0028]-[0029] and [0032] ) , and the set comprises at least two shim blocks for which the respective relative amount of shim iron is different from each other ( Figs. 4-5, see the shim-blocks formed by each shim-element 154 made of iron, which may have different thicknesses with respect to each other, and their respective spacers 156 (top-158 and bottom-157) and cover 159. Also see [0028]-[0029] ) . As per claim 2, Fukui discloses the set of shim elements according to claim 1 as described above. Fukui further discloses: wherein the relative amount of shim iron in each shim block is provided by a number of shim iron plates which all have the same weight and/or dimensions ( Fig. 4, see each of the shim-elements 154 of the set formed by a flat-plate with same dimensions, thus, same weight. Also see [0028]-[0029] ) . As per claim 3, Fukui discloses the set of shim elements according to claim 1 as described above. Fukui further discloses: wherein the shim elements all have the same outer shape ( Figs. 4-5, see the shim-blocks formed by each shim-element 154 made of iron, which may have different thicknesses with respect to each other, and their respective spacers 156 (top-158 and bottom-157). Also see [0028]-[0029] ) , and wherein the volume of each shim element which is not filled with shim iron is made from a magnetically passive material ( Figs. 4-5, see the shim-blocks formed by each shim-element 154 made of iron with its respective spacers 156 (top-158 and bottom-157) made of non-magnetic iron material such as Bakelite or PET (polyethylene terephthalate) and cover 159 made non-magnetic-material such as reinforced-plastic. Furthermore, Bakelite or PET (polyethylene terephthalate) and reinforced-plastic are magnetically passive material. Also see [0028]-[0029] and [0032] ) . As per claim 6, Fukui discloses the set of shim elements according to claim 1 as described above. Fukui further discloses: wherein the shim iron is arranged inside each shim block such that a part of the shim iron forms an outer surface of the shim block or lies directly next to an outer surface of the shim block ( Figs. 4-5, see the shim-blocks formed by each shim-element 154 made of iron that lies directly next to the outer surface of cover 159. Also see [0028]-[0029] ) . As per claim 9, Fukui discloses the set of shim elements according to claim 1 as described above. Fukui further discloses: A magnetic resonance apparatus with a bore for accommodating a subject under examination and a magnetic field-generating unit surrounding the bore ( Figs. 1-2, see the MRI 1 with the static magnetic field generating unit 10, which includes a superconducting magnet 100. Also see [0019]-[0027] ) wherein the field-generating unit comprises a plurality of shim openings which run parallel to the longitudinal axis of the bore and wherein at least one of the plurality of shim openings comprises a set of shim elements according to claim 1 ( Figs. 1-4, see the superconducting-magnet 100 with a plurality of openings along the its longitudinal-axis, each opening receives one magnetic-field-adjusting-device 150 with its shim-trays 152 that has a plurality of openings/shim-pockets 153, respectively, so each of the is individually shim-blocks 154 with its respective spacers 156 are individually inserted into their respective openings of the superconducting-magnet 100. Also see [0026]-[0027] ) , As per claim 11, Fukui discloses the MR apparatus according to claim 9 as described above. Fukui further discloses: wherein the shim elements have a cross section which corresponds to the cross section of the shim openings ( Figs. 1-4, see the superconducting-magnet 100 with a plurality of openings along the its longitudinal-axis, each opening receives one magnetic-field-adjusting-device 150 with its shim-trays 152 that has a plurality of openings/shim-pockets 153, respectively, so each of the is individually shim-blocks 154 with its respective spacers 156 are individually inserted into their respective openings of the superconducting-magnet 100. Also see [0026]-[0027] ) . As per claim 12, Fukui discloses the MR apparatus according to claim 9 as described above. Fukui further discloses: wherein the shim elements ( Figs. 2 and 4, see the shim-elements 154 arranged and integrated in sets of seven set in the one of the plurality of magnetic-field-adjustment-devices 150. Also see [0026]-[0027] ) are connected to each other by a detachable string and/or wherein the shim elements are wrapped into a sleeve ( Figs. 2 and 4, see the any of the shim-trays 152 wrapping the shim-elements 154. Also see [0026]-[0027] ) . As per claim 13, Fukui discloses the MR apparatus according to claim 1 as described above. Fukui further discloses: A method of shimming a magnetic resonance apparatus which comprises a magnetic field-generating unit with multiple shim openings ( Figs. 1-2, see the MRI 1 with the static magnetic field generating unit 10, which includes a superconducting magnet 100 with a plurality of openings along the its longitudinal-axis. Also see [0019]-[0027] ) , comprising: providing a set of shim elements according to claim 1 lining up the shim elements ( Figs. 2 and 4, see the shim-elements 154 arranged and integrated in sets of seven set in the one of the plurality of magnetic-field-adjustment-devices 150. Also see [0026]-[0027] ) according to an order which has been determined beforehand under shimming requirement for the magnetic imaging apparatus ( Figs. 1-2, the order of shimming requirement is inherent to the MRI 1 and its use. Also see [0019]-[0027] ) inserting the lined-up shim element ( Figs. 2 and 4, see the shim-elements 154 arranged and integrated in sets of seven set in the one of the plurality of magnetic-field-adjustment-devices 150. Also see [0026]-[0027] ) in their beforehand-determined order into a respective shim opening one after the other ( Figs. 1-4, see the shim-elements 154 arranged and integrated in sets of seven set in the one of the plurality of magnetic-field-adjustment-devices 150 inserted in the MRI 1. Also see [0026]-[0027] ) . As per claim 15, Fukui discloses the method according to claim 13 as described above. Fukui further discloses: wherein the shim elements are wrapped into a sleeve ( Figs. 2 and 4, see the any of the shim-trays 152 wrapping the shim-elements 154. Also see [0026]-[0027] ) before insertion into the shim opening ( Figs. 1-2, see the MRI 1 with the static magnetic field generating unit 10, which includes a superconducting magnet 100 and openings for the shim-elements 154 wrapped within the trays 152. Also see [0019]-[0027] ) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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 of this title, 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. 07-21-aia AIA 7. Claim (s) 4-5 are/is rejected under 35 U.S.C. 103 as being unpatentable over Fukui in view of Boemmel et al. (Pub. No.: US 2003/0222650 hereinafter mentioned as “Boemmel”) . As per claim 4, Fukui discloses the set of shim elements according to claim 3 as described above but does not explicitly disclose: wherein the outer shape is such that two respective shim elements may be connected to each other by form fit. However, Boemmel further discloses: wherein the outer shape is such that two respective shim elements may be connected to each other by form fit ( Fig. 8, see the sub-boxes/shim-elements 77, 78 and 79 can be assembled inter-engaging with one another by form fit. Also see [0037] ) . It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the feature relative to the “ wherein the outer shape is such that two respective shim elements may be connected to each other by form fit ” disclosed by Boemmel into Fukui, with the motivation and expected benefit related to improving the system and measurements by enabling the shim-elements to be pulled along toward the left in longitudinal direction out of the shim tray receptacle together (Boemmel, Paragraph [0037]), thus, also achieving a simple manipulation of the shim tray (Boemmel, Paragraph [0009]). Furthermore, Fukui states that “ features described in the embodiments above illustrate an example of the contents of the present invention, and can be combined with other known techniques, or can be partially omitted or changed within the scope not departing from the gist of the present invention ” (Fukui, Paragraph [0051]). Furthermore, Boemmel states that “ Although modifications and changes may be suggested by those skilled in the art, it is the intention of the inventors to embody within the patent warranted hereon all changes and modifications as reasonably and properly come within the scope of their contribution to the art ” (Abrahamson, Paragraph [0038]). As per claim 5, Fukui discloses the set of shim elements according to claim 1 as described above but does not explicitly disclose: wherein the shim elements are each provided with interlockings such that respective two shim elements may be interlocked to each other via these interlockings. However, Boemmel further discloses: wherein the shim elements are each provided with interlockings such that respective two shim elements may be interlocked to each other via these interlockings ( Fig. 8, see the sub-boxes/shim-elements 77, 78 and 79 can be assembled inter-engaging with one another by form fit. Also see [0037] ) . It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement the feature relative to the “ wherein the shim elements are each provided with interlockings such that respective two shim elements may be interlocked to each other via these interlockings ” disclosed by Boemmel into Fukui, with the motivation and expected benefit related to improving the system and measurements by enabling the shim-elements to be pulled along toward the left in longitudinal direction out of the shim tray receptacle together (Boemmel, Paragraph [0037]), thus, also achieving a simple manipulation of the shim tray (Boemmel, Paragraph [0009]) . 07-21-aia AIA 8. Claim (s) 8 and 10 are/is rejected under 35 U.S.C. 103 as being unpatentable over Fukui . As per claim 8, Fukui discloses the set of shim elements according to claim 1 as described above but does not explicitly disclose an indication on its outside which indicates the relative amount of shim iron comprised by the respective shim element . However, one of ordinary skill in the art would find an obvious choice to try implementing the feature relative to the “ indication on its outside which indicates the relative amount of shim iron comprised by the respective shim element ” with the motivation and expected benefit related to using the proper amount of shim iron permitted to be disposed in each depression/shim-pocket to maintain the necessary magnetic field homogeneity ( see SAKAKIBARA Pub. No.: US 2018/0284205, [0053]-[0055] ) . As per claim 10, Fukui discloses the set of shim elements and MR apparatus according to claim 9 according to claim 8 as described above. Fukui further discloses: wherein all shim openings are completely filled with a respective set of shim elements ( Figs. 1-4, see the superconducting-magnet 100 with a plurality of openings along the its longitudinal-axis, each opening receives one magnetic-field-adjusting-device 150 with its shim-trays 152 that has a plurality of openings/shim-pockets 153, respectively, so each of the is individually shim-blocks 154 with its respective spacers 156 are individually inserted into their respective openings of the superconducting-magnet 100. Also see [0026]-[0027] ) . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 9. Claim (s) 7 and 14 are/is 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. 10. The following is an examiner's statement of reasons for the objection: 11. Regarding claim 7, the prior art of record, alone or in combination, does not disclose or suggest the below underlined limitations incorporated together with the other claimed limitations not mentioned herein: wherein the shim elements is arranged comprise at least one dummy block which is separate from all shim blocks of the set such that also the dummy block may be individually inserted into a shim opening of a magnetic field generating unit of the magnetic resonance apparatus, wherein the dummy block is free of any shim iron. 12. Regarding claim 14, the prior art of record, alone or in combination, does not disclose or suggest the below underlined limitations incorporated together with the other claimed limitations not mentioned herein: wherein the shim elements are connected to each other by a string before insertion into the shim opening. 13. The prior art of record does not anticipate the limitations of the independent claims. Furthermore, there is not any obvious motivation for an ordinary skilled in the art to combine some and/or all of the features of the prior art of record to achieve the features of the allowable subject matter. In addition, it will further require substantial structural modification of the components that will also require substantial modification of the measurements, and configurations to achieve the features of the allowable subject matter. 07-96 AIA 14. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. a) PAN (Pub. No.: US 2020/0072924) teaches that “ The passive shim bar tool is a space holder respectively dummy of a passive shim bar . The annulus between the inner casing and the outer casing is casted, preferably with resin. Since the dummy is inserted in the first recess, entering of casting material to the first recess can be avoided ” (Paragraph [0045]) . Conclusion 07-101 Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALVARO E. FORTICH whose telephone number is (571) 272-0944 . The examiner can normally be reached on Monday thru Friday from 8:30am to 5:30pm . If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Huy Phan , can be reached on (571)272-7924 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000 . /ALVARO E FORTICH/Primary Examiner, Art Unit 2858 Application/Control Number: 18/842,423 Page 2 Art Unit: 2858 Application/Control Number: 18/842,423 Page 3 Art Unit: 2858 Application/Control Number: 18/842,423 Page 4 Art Unit: 2858 Application/Control Number: 18/842,423 Page 5 Art Unit: 2858 Application/Control Number: 18/842,423 Page 6 Art Unit: 2858 Application/Control Number: 18/842,423 Page 7 Art Unit: 2858 Application/Control Number: 18/842,423 Page 8 Art Unit: 2858 Application/Control Number: 18/842,423 Page 9 Art Unit: 2858
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