Information Disclosure Statement
The Written Opinion cited in the information disclosure statement of 29 August 2024 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered. No English translation was provided. Applicants only provided the English translation for the International Search Report.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
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 23 and 24 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.
These claims were added as part of a preliminary amendment filed 29 August 2024 and thus do not have the effective filing date of 28 February 2023, which is the filing date of the PCT application.
Claim 23, which depends from the device claim 14, teaches the radioactive source, whose nature the claimed device can detect, comprises Radon-222. Claim 24, which depends from claim 17, teaches the mixed source from which the alpha- and beta-rays are emitted comprises Radon-222 and its radioactive descendants.
The originally filed disclosure teaches, in original claim 14 and page 11, lines 25-28, that the radioactive source, whose nature the claimed device can detect, can be Radon-222. The originally filed disclosure teaches, in original claim 17 and page 12, line 15 the mixed source from which the alpha- and beta-rays are emitted can be Radon-222 and its radioactive descendants. These teachings of Radon-222 as the radioactive source and the mixed source and Radon-222 radioactive descendants as the mixed source does not support the claims where the radioactive source and the mixed source comprises Radon-222 and its radioactive descendants. The use of “comprises” opens the radioactive source and the mixed source compositions to sources to include additional, unrecited elements in addition to Radon-222 and its radioactive descendants. Thus new claims 23 and 24 include new matter.
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 5, 12, 15 and 21 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.
The wording of claim 5 makes this claim indefinite. The wording implies that it is the scintillator material itself that has a figure of merit greater than 1 at 600 keVee and not the shape of the scintillation pulse, as taught in lines 12-15 on page 7.
The amendment to claim 12 teaches “machining, cutting the monolith”. This wording makes the claim indefinite since it is unclear if the monolith is machined by cutting, machined or cut, or machined and then cut. The specification, on pages 11 and 22, indicate that the monolith is machined or cut to the final size. It is suggested to amend claim 12 to clearly reflect what is disclosed in the specification.
Claim 15 is directed to two different processes, one where a single due to alpha-rays or beta-rays is detected and one where a single due to alpha-rays from a signal due to beta-rays are discriminated from each other. The claimed final step in this claim only relates to the claimed method of discriminating a single due to alpha-rays from a signal due to beta-rays. There is no step in the claimed process of actually detecting a single due to alpha-rays or beta-rays after the plastic scintillator is exposed to the radiative medium. Accordingly, claim 15 is indefinite for only give the process from one of the two processes set forth in the preamble.
Finaly, claim 21 is indefinite as to what is an acridine yellow compound. It is unclear if this compound is different from acridine yellow. If the claimed “an acridine yellow compound” is acridine yellow, then it should be referred by its art acceptable name of “acridine yellow”, not “an acridine yellow compound”.
Allowable Subject Matter
Claims 1-4, 6-11, 13, 14, 16-20 and 22 are allowed.
Claims 5, 12, 15, 21, 23 and 24 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112, set forth in this Office action.
There is no teaching or suggestion in the cited art of record of a plastic scintillator that exhibits PDS properties when exposed to alpha-rays and beta rays having the size and shape limitations set forth in claim 1.
U.S. patent application publication 2021/0324217, WO 2021/142365 and WO 2014/135640 all teach plastic scintillator composition that meet the claimed scintillation and compositional requirements, but they do not teach or suggest that the taught plastic scintillators have a radioactive medium contact area to total volume ratio that at least overlaps that set forth in claim 1. While U.S. 3465147 does teach a plastic scintillator having a radioactive medium contact area to total volume ratio at falls within the ranges of claim 1, but the taught plastic scintillator composition is not claimed and there is no indication that it exhibits PDS properties when exposed to alpha-rays and/or beta rays.
It is noted that the S formula 2πrl used in Written Opinion for the PCT application for this application is not the radioactive medium contact area, it is the lateral surface area of a filament/cylinder. There is no indication in U.S. patent application publication 2021/0324217 that the lateral surface area of the taught filaments is the radioactive medium contact area. The figures in the reference indicate that it is the ends of the filaments that are the radioactive medium contact area and the taught areas of these ends are less than 10 cm2.
Conclusion
WO 2021/142365 and WO 2014/135640 are cited as of interest since these references were cited in the specification as teaching plastic scintillator compositions that meet the claimed scintillation and compositional requirements.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to C. MELISSA KOSLOW whose telephone number is (571)272-1371. The examiner can normally be reached Mon-Tues:7:45-3:45 EST;Thurs-Fri:6:30-2:00EST; and Wed:7:45-2:00EST.
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/C Melissa Koslow/Primary Examiner, Art Unit 1734
cmk
9/18/26
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