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 .
Drawings
Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “83” has been used to designate both a rotation unit and a first detection unit. 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. 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 disclosure is objected to because of the following informalities:
In paragraph 0058, the specification refers to both the first beam and the second beam as beam 61 when the first beam is 61 and the second beam is 62 in Fig. 3. Additionally, similarly to the drawing objection set forth above, the specification refers to both a first detection unit and a rotation unit using element number 83.
Appropriate correction is required.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
In the instant case, there is a claim between claims 4 and 5 that has not been numbered. As a result, the unnumbered claim is numbered claim 5, and original claims 5-16 are renumbered 6-17.
Claims 2, 4, 5, 7, 9, 13, and 17 are objected to because of the following informalities:
As for claim 2, the phrase “third optics that is configured to” should be amended to read “third optics that are configured to” in line 1 of the claim. Additionally, the phrase “to direct radiation emitted from the sample due to the illumination, to a first sensing unit” should be amended to read “and to direct radiation emitted from the sample due to the illumination to a first sensing unit”.
As for claims 4 and 5, in line 1 of each claim, the phrase “the third optics is configured to” should be amended to read “the third optics are configured to”.
As for claim 7, the phrase “the second opaque element” in lines 5-6 of the claim should be amended to read “the second opaque elements”.
As for claim 9, the phrase “the second angle exceeds the first angle” in lines 4-5 of the claim should be amended to read “the second angle exceeding the first angle”.
As for claim 13, the phrase “wherein the second modulation frequency that is lower by at least a factor of five” in lines 1-2 of the claim should be amended to read “wherein the second modulation frequency is lower by at least a factor of five”.
As for claim 17, in line 4 of the claim, the phrase “the outer opaque pattern surrounds the inner opaque pattern” should be amended to read “the outer opaque pattern surrounding the inner opaque pattern”.
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 rotating unit that is configured to rotate the disc during a modulation period” in claims 1-16.
“A first sensing unit” in claims 2-5.
“A rotation unit” in claim 17.
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 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 1-17 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 limitations “a rotating unit that is configured to rotate the disc during a modulation period” in claim 1 and “a rotation unit” in claim 17 invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
As both “a rotating unit” and “a rotation unit” are interpreted under 35 USC 112(f), the examiner turns to the specification in order to find the corresponding structure for performing the claimed function. However, the specification only appears to call the unit using the same, or nearly the same, language by which it is claimed – “a rotation unit” (see paragraph 0058 for example). As a result, it is not clear what structure represents the claimed rotating/rotation unit. Is it a stepper motor? A turntable? A spindle? Some other structure that enables a disc to rotate, or rotate during a modulation period as claimed? Without knowing what the structure of the rotating/rotation unit is, the metes and bounds of the claimed limitation cannot be ascertained.
Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 2-16 are rejected by virtue of their dependence on at least claim 1, thereby containing all the limitations of the claims on which they depend.
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 1-17 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 claims 1 and 17, the claims are rejected for a lack of written description for the reasons set forth above regarding 35 USC 112(b) and indefiniteness. The rejection is made because an indefinite, unbounded limitation would cover all structure that can perform the claimed function. Because the specification has not clearly defined structure for “a rotating unit that is configured to rotate the disc during a modulation period” (claim 1) and “a rotation unit” (claim 17), this indicates that applicant has not provided sufficient disclosure to show possession of the invention.
Claims 2-16 are rejected by virtue of their dependence on at least claim 1, thereby containing all the limitations of the claims on which they depend.
Allowable Subject Matter
Claims 1-17 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) and 35 U.S.C. 112(a), set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
As to claim 1, the prior art of record, taken either alone or in combination, fails to disclose or render obvious a system for evaluating a sample, the system comprising, among other essential features, a chopper bearing an inner opaque pattern and outer opaque pattern, the outer opaque pattern surrounds the inner opaque pattern; first optics that are configured to direct a first beam onto the inner opaque pattern, during the modulation period, to provide a first modulated beam of a first modulation frequency; second optics that are configured to direct a second beam onto the outer opaque pattern to provide a second modulated beam of a second modulation frequency that is lower than the first modulation frequency; and a control unit that is configured to detect the second modulated beam and control rotation of the chopper based on at least one parameter of the second modulated beam, in combination with the rest of the limitations of the above claim.
As to claim 17, the prior art of record, taken either alone or in combination, fails to disclose or render obvious a method for high-frequency modulation, the method comprising, among other essential steps, rotating a disc that bears an inner opaque pattern and outer opaque pattern, the outer opaque pattern surrounding the inner opaque pattern; directing, by first optics, a first beam onto the inner opaque pattern, during the modulation period, to provide a first modulated beam of a first modulation frequency; and directing, by second optics, a second beam onto the outer opaque pattern to provide a second modulated beam of a second modulation frequency that is lower than the first modulation frequency; and detecting, by a control unit, the second modulated beam and controlling the rotation of the disc based on at least one parameter of the second modulated beam, in combination with the rest of the limitations of the above claim.
With further regard to the above claims, US Pat. 10,801,950 to Kangas et al. discloses a device for noncontact sensing of substances (Fig. 6) where light from light source 602 is split by a beam splitter 610 into lights 654 and 656. These lights then pass through choppers 634, 636 before light 654 passes through sample 620. These lights are then combined via selector 624 and are detected by detector 630. Additionally, US 2023/0003637 to Oren et al. discloses a method and system for broadband photoreflectance spectroscopy (see Fig. 1) where light from a pump source 104 passes through a chopper 118 to excite a sample 110, which is probed by light 106 from probe source 102. Light reflects off the sample, then is split by splitter 112 and passes through a second chopper 120 before being detected by a spectrometer 116. US Pat. 5,386,295 to Switalski teaches a spectrophotometer where the light passes through a filter unit 42 (Fig. 3) that has a plurality of designated sites 48 including dark sites 49 and apertures 52. Finally, CA 1331692 to Grindon discloses a device for projecting patterns of light which includes a transparent disc 30 that has segments 32A-32H encoded on it that are opaque. However, this combination of prior art fails to disclose or render obvious the specifics of the claimed invention as set forth above regarding claims 1 and 17.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. “Differential frequency-domain photoacoustic microscope for blood oxygen saturation measurements” by Sathiyamoorthy et al. teaches a device for measuring blood where light from a pair of diode lasers passes through a chopper prior to being combined for the measurement (see Fig. 1), and WO 2016/040908 to Kra discloses a circulator indicator with markings thereon (see Fig. 2).
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/Michael A Lyons/Primary Examiner, Art Unit 2877 February 11, 2026