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 .
Claim Objections
Claims 39-64 are objected to because of informalities, which appear to be minor draft errors causing grammatical and/or antecedent basis issues.
As noted in the following format (location of objection: suggestion for correction), the following objections may be overcome by making the corresponding corrections: (claim 39, “2 radiations”: replacing “radiations” with --radiation--), (claim 39, line 7, “a standing”: replacing the word “a” with --the--), (claim 39, line 12, “a standing”: replacing the word “a” with --the--), (claim 39, line 27, “a standing”: replacing the word “a” with --the--), (claim 39, 13th to last line, “a standing”: replacing the word “a” with --the--), (claim 39, 11th to last line, “said identified”: replacing “said” with --the--), (claim 39, 5th to last line, “a standing”: replacing the word “a” with --the--), (claim 40, line 5, “radiation detectors)”: deleting “)”), (claim 40, “2 radiations”: replacing “radiations” with --radiation--), (claim 40, line 7, “a standing”: replacing the word “a” with --the--), (claim 40, line 12, “a standing”: replacing the word “a” with --the--), (claim 40, line 13, “detector)”: deleting “)”), (claim 40, line 27, “a standing”: replacing the word “a” with --the--), (claim 40, line 29, “detector)”: deleting “)”), (claim 40, 13th to last line, “a standing”: replacing the word “a” with --the--), (claim 40, 11th to last line, “said identified”: replacing “said” with --the--), (claim 40, 5th to last line, “a standing”: replacing the word “a” with --the--), (claim 41, “2 radiations”: replacing “radiations” with --radiation--), (claim 41, line 7, “a standing”: replacing the word “a” with --the--), (claim 41, line 12, “a standing”: replacing the word “a” with --the--), (claim 41, line 33, “a standing”: replacing the word “a” with --the--), (claim 41, line 36, “a standing”: replacing the word “a” with --the--), (claim 41, line 38: inserting the word --the-- before “same”), (claim 41, “source),”: deleting “)”), (claim 41, 16th to last line, “a standing”: replacing the word “a” with --the--), (claim 41, 14th to last line, “said identified”: replacing “said” with --the--), (claim 41, 5th to last line, “a standing”: replacing the word “a” with --the--), (claim 42, line 3, “a standing”: replacing the word “a” with --the--), (claim 42, line 7: replacing the period with a comma), (claim 42, line 7, “said lateral”: replacing “said” with --a--), (claim 42, line 9, “a standing”: replacing the word “a” with --the--), (claim 42, “said first lateral”: replacing “said” with --a--), (claim 42, “said second lateral”: replacing “said” with --a--), (claim 42, last line: inserting the word --the -- before “same”), (claim 43, lines 2-3, “a standing”: replacing the word “a” with --the--), (claim 43, line 5, “said lateral”: replacing the word “said” with --a--), (claim 43, lines 5-6, “a standing”: replacing the word “a” with --the--), (claim 43, “during same”: inserting the word --the -- before “same”), (claim 44, line 10, “detector)”: deleting “)”), (claim 44, line 11, “a subtracting”: deleting the word “a”), (claim 44, 7th to last line, “said first lateral”: replacing “said” with --a--), (claim 44, 4th to last line, “detector)”: deleting “)”), (claim 44, 2nd to last line, “said second lateral”: replacing “said” with --a--), (claim 44, 2nd to last line, “a subtracting”: deleting the word “a”), (claim 45, line 8, “a standing”: replacing the word “a” with --the--), (claim 45, line 19, “said lateral image”: replacing “said” with --a--), (claim 45, line 19, “a standing”: replacing the word “a” with --the--), (claim 45, 2nd to last line: inserting the word --the -- before “same”), (claim 46, line 6, “a standing”: replacing the word “a” with --the--), (claim 46, line 9, “said identified”: replacing “said” with --the--), (claim 46, line 17, “a standing”: replacing the word “a” with --the--), (claim 46, line 23: inserting --the -- before “same”), (claim 46, line 32, “a standing”: replacing the word “a” with --the--), (claim 46, line 39: inserting --the -- before “same”), (claim 46, 12th to last line, “a standing”: replacing the word “a” with --the--), (claim 46, 5th to last line: inserting --the -- before “same”), (claim 47, line 2, “said frontal multi”: replacing “said” with --the--), (claim 47, line 6, “said lateral”: deleting “said”), (claim 48, line 6, “said first and second lateral”: deleting “said”), (claim 50, line 6, “said lateral image”: replacing “said” with --a--), (claim 50, last line: inserting --the -- before “frontal image” and inserting --the -- before “lateral image”), (claim 51, line 5, “said standard”: replacing “said” with --a--), (claim 51, 5th to last line, “said standard”: replacing “said” with --a--), (claim 54, “said vertical scanning speed”: replacing “said” with --the--), (claim 56, “said vertical scanning speed”: replacing “said” with --the--), (claim 57, line 3, “a standing”: replacing the word “a” with --the--), (claim 59, line 1, “said images”: replacing “said” with --the--), (claim 59, line 2, “said imaged zones”: changing the dependency of claim 59 from claim 39 to claim 58), (claim 59, line 3, “said thickness profile(s)”: replacing “said” with --the--), (claim 59, line 3, “said specific”: replacing “said” with --the--), (claim 59, line 3, “a standing”: replacing the word “a” with --the--), (claim 60, line 1, “said images”: replacing “said” with --the--), (claim 60, line 2, “said imaged zones”: changing the dependency of claim 59 from claim 39 to claim 58), (claim 60, line 2, “said thickness profile(s)”: replacing “said” with --the--), (claim 60, line 3, “said specific”: replacing “said” with --the--), (claim 60, line 3, “a standing”: replacing the word “a” with --the--), (claim 61, line 4: inserting the word --to -- before “whatever”), and (claim 64, line 2, “said lateral image”: replacing “said” with --a--).
Any dependent claim of the claim(s) with the noted objections above is also objected to by virtue of its claim dependency. For purposes of examination, the claims have been treated as such with the correction(s). Appropriate correction is required.
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.
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 39-64 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for x-ray radiation, does not reasonably provide enablement for the broad scope of “radiation.” The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
Before explaining the Examiner’s analysis of enablement, the examiner has selected the definition of “radiation” as being any radiation included in the spectrums of electromagnetic radiation, particle radiation, acoustic radiation, and gravitational radiation. For the Examiner’s analysis of whether there is lack of enablement for the entire scope of "radiation", the following factors, were considered.
(1) The breadth (i.e., scope) of the claims: The relevant concern is whether the scope of enablement in the disclosure is commensurate with the scope of protection sought by the claims. In the disclosure, examples providing enablement included x-rays. However, the scope of protection sought by the claims is "radiation" which includes any radiation in the spectrums of electromagnetic radiation, particle radiation, acoustic radiation, and gravitational radiation. The disclosure did not enable one to make and/or use all radiations in the broad scope of the claimed invention, such as cosmic radiation, radiation with energy greater than 1 ZeV, and/or gravitational radiation, which would require undue experimentation to make and/or use since these devices do not exist.
(2) The nature of the invention: The subject matter to which the claimed invention recites is “radiation” in general, which can include any radiation in the spectrums of electromagnetic radiation, particle radiation, acoustic radiation, and gravitational radiation. However, the subject matter to which the subject matter pertains in the specification is x-ray radiation.
(3) The state of the prior art: One skilled in the art would have known, at the time of the application was filed, about the x-ray subject matter to which the invention pertains. However, the state of the prior art does not have any direction or guidance with regard to all radiations in the broad scope of "radiation", such as cosmic radiation, radiation with energy greater than 1 ZeV, and/or gravitational radiation, which would require undue experimentation to make, since those devices do not exist.
(4) The level of one of ordinary skill: The level of one of ordinary skill, would have known, at the time of the application was filed, how to practice the x-ray subject matter to which the invention pertains. However, one of ordinary skill would not know how to make and/or use all radiations in the broad scope of "radiation", such as cosmic radiation, radiation with energy greater than 1 ZeV, and/or gravitational radiation, since those devices do not exist and since the interaction of these other radiations would produce outputs that could not be used to practice the claimed invention.
(5) The amount of direction provided by the inventor: The inventor provided direction on how to make and/or use the invention with regard to x-ray radiation. However, there is no direction or guidance with regard to all spectrums of radiations in the broad scope of "radiation", such as cosmic radiation, radiation with energy greater than 1 ZeV, and/or gravitational radiation, which would require undue experimentation to make and/or use since those devices do not exist.
(6) The existence of working examples: The disclosure does provide a working example using x-ray radiation. Therefore, that is enough to preclude a rejection which states that nothing is enabled. However, a rejection stating that enablement is limited to a particular scope is appropriate, since there are no working examples provided for radiations that do not have an existing emission device, such as devices emitting cosmic radiation, radiation with energy greater than 1 ZeV, and/or gravitational radiation.
(7) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: Since the scope of the claimed invention includes all spectrums of radiation, there are devices for various radiations that do not exist, such as cosmic radiation, radiation with energy greater than 1 ZeV, and/or gravitational radiation. Since these types of emission devices do not exist, it would require undue experimentation to make such an invention commensurate with the scope of the claimed invention.
Based on the factors above, the Examiner concludes that the disclosure’s scope of enablement provided to one skilled in the art is not commensurate with the scope of protection sought by the claims. While the specification is enabling for x-ray radiation, the specification does not enable one to make and/or use the claimed invention with other types of radiation, such as cosmic radiation, radiation with energy greater than 1 ZeV, and/or gravitational radiation, which would require undue experimentation to make and/or use since such emission devices do not exist. Therefore, the claims are rejected for scope of enablement issues.
This rejection may be obviated by inserting "x-ray" before each instance of "radiation" in the claim(s). Any dependent claims are rejected for the above reason by virtue of their claim dependency.
Claims 39-64 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.
Regarding claims 39-41, 44-46, 48, 50-52, 56-58, and 61-63, the word "preferably", as recited multiple times in these claims, renders the claims indefinite because it is unclear whether the limitation(s) following the word are part of the claimed invention. See MPEP § 2173.05(d). The other dependent claims are also rejected for the above reason by virtue of their claim dependency.
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 39-41 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 43 and 45 of U.S. Patent Application No. 18/866671 (hereinafter USPAN ‘671). Although the claims at issue are not identical, they are not patentably distinct from each other because the narrower claims of USPAN ‘671 anticipate the broader claims of the instant application.
USPAN ‘671 claims radiological imaging method (claim 43, preamble) comprising: 2 radiation sources with imaging directions orthogonal to each other, one frontal radiation source and one lateral radiation source, sliding vertically so as to perform vertical scanning of a standing patient along a vertical scanning direction (par. 1 in the body of claim 43), 2 radiation detectors which are respectively associated with said 2 radiations sources, one frontal radiation detector and one lateral radiation detector, sliding vertically so as to perform vertical scanning of a standing patient along said vertical scanning direction, at least said frontal radiation detector being a multi-energy counting detector (par. 2), wherein said radiological method comprises at least one operating mode in which (par. 3): a frontal multi-energy scout view is made by performing a preliminary vertical scanning of a standing patient along said vertical scanning direction by said frontal radiation source and by said frontal radiation detector, so that said frontal radiation detector gives at least (par. 4): a first frontal scout view corresponding to a first portion of energy which is received by said frontal radiation detector and which is below a first given energy threshold, called low energy frontal scout view (par. 5), a second frontal scout view corresponding to a second portion of energy which is received by said frontal radiation detector and which is above a second given energy threshold, called high energy frontal scout view (par. 6), said first frontal scout view and said second frontal scout view are combined and processed so as to evaluate: at least a patient bone thickness, at least a patient soft tissue thickness), a patient specific bone localization at different imaging positions along said vertical scanning direction (pars. 7-10), a frontal image is made by performing a vertical scanning of a standing patient along said vertical scanning direction by said frontal radiation source and by said frontal radiation detector (par. 12), with: a modulation of a driving current intensity of at least said frontal radiation source along said vertical scanning direction, depending on said patient bone thickness, on said patient soft tissue thickness, and on said patient specific bone localization at different imaging positions along said vertical scanning direction (par. 13), and preferably also a modulation of a driving voltage intensity of said frontal radiation source along said vertical scanning direction, depending on said patient bone thickness, on said patient soft tissue thickness, and on said patient specific bone localization at different imaging positions along said vertical scanning direction, either driving current intensity modulation of said frontal radiation source, with no voltage intensity modulation of said frontal radiation source, is performed automatically, so as to improve a compromise between: the global radiation dose received by a patient during said vertical scanning, and the local image contrasts of said identified specific bone(s) localization at different imaging positions along said vertical scanning direction, for the frontal image (pars. 14-16), or both driving current intensity and voltage intensity modulations of said frontal radiation source are performed simultaneously, preferably synchronously, and automatically, so as to improve a compromise between: the global radiation dose received by a patient during said vertical scanning, and the local image contrasts of said identified specific bone(s) localization at different imaging positions along said vertical scanning direction, for the frontal image.
Regarding claim 40, USPAN ‘671 claims radiological imaging method (claim 45) comprising: 2 radiation sources with imaging directions orthogonal to each other, one frontal radiation source and one lateral radiation source, sliding vertically so as to perform vertical scanning of a standing patient along a vertical scanning direction (par. 1 in the body of claim 45), 2 radiation detectors) which are respectively associated with said 2 radiations sources, one frontal radiation detector and one lateral radiation detector, sliding vertically so as to perform vertical scanning of a standing patient along said vertical scanning direction, at least said lateral radiation detector being a multi-energy counting detector (par. 2), wherein said radiological method comprises at least one operating mode (par. 3) in which: a lateral multi-energy scout view is made by performing a preliminary vertical scanning of a standing patient along said vertical scanning direction by said lateral radiation source and by said lateral radiation detector, so that said lateral radiation detector gives at least (par. 4): a first lateral scout view corresponding to a first portion of energy which is received by said lateral radiation detector and which is below a first given energy threshold, called low energy lateral scout view, a second lateral scout view corresponding to a second portion of energy which is received by said lateral radiation detector and which is above a second given energy threshold, called high energy lateral scout view (pars. 7-8), said first lateral scout view and said second lateral scout view are combined and processed so as to evaluate: at least a patient bone thickness, at least a patient soft tissue thickness, a patient specific bone localization at different imaging positions along said vertical scanning direction (pars. 9-12), a lateral image is made by performing a vertical scanning of a standing patient along said vertical scanning direction by said lateral radiation source and by said lateral radiation detector (par. 22), with: a modulation of a driving current intensity of at least said lateral radiation source along said vertical scanning direction, depending on said patient bone thickness, on said patient soft tissue thickness, and on said patient specific bone localization at different imaging positions along said vertical scanning direction (par. 13), and preferably also a modulation of a driving voltage intensity of said lateral radiation source along said vertical scanning direction, depending on said patient bone thickness, on said patient soft tissue thickness, and on said patient specific bone localization at different imaging positions along said vertical scanning direction, either driving current intensity modulation of said lateral radiation source, with no voltage intensity modulation of said lateral radiation source, is performed automatically, so as to improve a compromise between: the global radiation dose received by a patient during said vertical scanning, and the local image contrasts of said identified specific bone(s) localization at different imaging positions along said vertical scanning direction, for the lateral image (pars. 23-25), or both driving current intensity and voltage intensity modulations of said lateral radiation source are performed simultaneously, preferably synchronously, and automatically, so as to improve a compromise between: the global radiation dose received by a patient during said vertical scanning, and the local image contrasts of said identified specific bone(s) localization at different imaging positions along said vertical scanning direction, for the lateral image.
Regarding claim 41, USPAN ‘671 claims radiological imaging method (claim 45) comprising: 2 radiation sources with imaging directions orthogonal to each other, one frontal radiation source and one lateral radiation source, sliding vertically so as to perform vertical scanning of a standing patient along a vertical scanning direction (par. 1 in the body of claim 45), 2 radiation detectors which are respectively associated with said 2 radiations sources, one frontal radiation detector and one lateral radiation detector, sliding vertically so as to perform vertical scanning of a standing patient along said vertical scanning direction, said 2 radiation detectors being respectively 2 multi-energy counting detectors (par. 2), wherein said radiological method comprises at least one operating mode in which (par. 3): frontal and lateral multi-energy scout views are made by performing a preliminary vertical scanning of a standing patient along said vertical scanning direction by said frontal and lateral radiation sources and by said frontal and lateral radiation detectors, so that said frontal and lateral radiation detectors give at least (par. 4): a first frontal scout view corresponding to a first portion of energy which is received by said frontal radiation detector and which is below a first given energy threshold, called low energy frontal scout view, a second frontal scout view corresponding to a second portion of energy which is received by said frontal radiation detector and which is above a second given energy threshold, called high energy frontal scout view, a first lateral scout view corresponding to a first portion of energy which is received by said lateral radiation detector and which is below a first given energy threshold, called low energy lateral scout view, a second lateral scout view corresponding to a second portion of energy which is received by said lateral radiation detector and which is above a second given energy threshold, called high energy lateral scout view (pars. 5-8), said first frontal and lateral scout views and said second frontal and lateral scout views are combined and processed so as to evaluate: at least a patient bone thickness, at least a patient soft tissue thickness, a patient specific bone localization at different imaging positions along said vertical scanning direction (pars. 9-12), a frontal image is made by performing a vertical scanning of a standing patient along said vertical scanning direction by said frontal radiation source and by said frontal radiation detector (par. 14), and a lateral image is made by performing a vertical scanning of a standing patient along said vertical scanning direction by said lateral radiation source and by said lateral radiation detector (par. 22), both frontal and lateral images being made during same vertical scanning (last paragraph), with: a modulation of driving current intensities of both said frontal and lateral radiation sources along said vertical scanning direction, depending on said patient bone thickness, on said patient soft tissue thickness, and on said patient specific bone localization at different imaging positions along said vertical scanning direction (par. 13), and preferably also a modulation of driving voltage intensities of both said frontal and lateral radiation sources along said vertical scanning direction, depending on said patient bone thickness, on said patient soft tissue thickness, and on said patient specific bone localization at different imaging positions along said vertical scanning direction, either driving current intensity modulation of said frontal radiation source, with no voltage intensity modulation of said frontal radiation source, as well as driving current intensity modulation of said lateral radiation source), with no voltage intensity modulation of said lateral radiation source, are performed simultaneously, preferably synchronously, and automatically, so as to improve a compromise between: the global radiation dose received by a patient during said vertical scanning, and the local image contrasts of said identified specific bone(s) localization at different imaging positions along said vertical scanning direction, for the frontal image and for the lateral image (pars. 15-17), or both driving current intensity and voltage intensity modulations of said frontal radiation source, are performed simultaneously, preferably synchronously, and automatically, as well as both driving current intensity and voltage intensity modulations of said lateral radiation source, are performed simultaneously, preferably synchronously, and automatically, so as to improve a compromise between: the global radiation dose received by a patient during said vertical scanning, and the local image contrasts of said identified specific bone(s) localization at different imaging positions along said vertical scanning direction, for the frontal image and for the lateral image.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Chih-Cheng Kao whose telephone number is (571)272-2492. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Makiya can be reached at (571) 272-2273. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Chih-Cheng Kao/Primary Examiner, Art Unit 2884
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