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 40-77 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 40, line 7, “a standing”: replacing the word “a” with --the--), (claim 40, line 11, “a standing”: replacing the word “a” with --the--), (claim 40, line 17, “on identified patient thickness”: inserting --said -- before “identified”), (claim 40, line 21, “a standing”: replacing the word “a” with --the--), (claim 40, line 28, “a patient”: replacing the word “a” with --the--), (claim 41, line 7, “a standing”: replacing the word “a” with --the--), (claim 41, line 11, “a standing”: replacing the word “a” with --the--), (claim 41, line 17, “on identified patient thickness”: inserting --said -- before “identified”), (claim 41, line 21, “a standing”: replacing the word “a” with --the--), (claim 41, line 28, “a patient”: replacing the word “a” with --the--), (claim 42, line 7, “a standing”: replacing the word “a” with --the--), (claim 42, line 11, “a standing”: replacing the word “a” with --the--), (claim 42, line 18, “on identified patient”: inserting --said -- before “identified”), (claim 42, line 22, “a standing”: replacing the word “a” with --the--), (claim 42, line 29, “a patient”: replacing the word “a” with --the--), (claim 42, line 46, “a standing”: replacing the word “a” with --the--), (claim 42, 17th to last line, “a patient”: replacing the word “a” with --the--), (claim 42, last line: inserting --the -- before “same”), (claim 43, line 7, “a standing”: replacing the word “a” with --the--), (claim 43, line 11, “a standing”: replacing the word “a” with --the--), (claim 43, line 24, “specific bone localization”: replacing “bone” with --bone(s)--), (claim 43, line 31, “a standing”: replacing the word “a” with --the--), (claim 43, line 39, “a patient”: replacing the word “a” with --the--), (claim 44, line 7, “a standing”: replacing the word “a” with --the--), (claim 44, line 11, “a standing”: replacing the word “a” with --the--), (claim 44, line 24, “specific bone localization”: replacing “bone” with --bone(s)--), (claim 44, line 31, “a standing”: replacing the word “a” with --the--), (claim 44, line 39, “a patient”: replacing the word “a” with --the--), (claim 45, line 7, “a standing”: replacing the word “a” with --the--), (claim 45, line 11, “a standing”: replacing the word “a” with --the--), (claim 43, line 30, “specific bone localization”: replacing “bone” with --bone(s)--), (claim 45, line 37, “a standing”: replacing the word “a” with --the--), (claim 45, line 45, “a patient”: replacing the word “a” with --the--), (claim 45, lines 60-61, “a standing”: replacing the word “a” with --the--), (claim 45, line 69, “a patient”: replacing the word “a” with --the--), (claim 45, last line: inserting --the -- before “same”), (claim 46, “said first and second lateral”: deleting “said”), (claim 47, line 3, “a standing”: replacing the word “a” with --the--), (claim 47, line 5, “said lateral”: replacing “said” with --a--), (claim 47, line 6, “a standing”: replacing the word “a” with --the--), (claim 47, last line: inserting --the -- before “same”), (claim 48, line 12, “a subtracting”: deleting the word “a”), (claim 44, 2nd to last line, “said second lateral”: replacing “said” with --a--), (claim 48, 2nd to last line, “a subtracting”: deleting the word “a”), (claim 48, 2nd to last line, “said first”: replacing “said” with --a--), (claim 49, line 2, “a standing”: replacing the word “a” with --the--), (claim 49, line 9, “said lateral image”: replacing “said” with --a--), (claim 49, line 9, “a standing”: replacing the word “a” with --the--), (claim 49, 2nd to last line: inserting the word --the -- before “same”), (claim 50, line 5, “a patient”: replacing the word “a” with --the--), (claim 50, line 15, “a patient”: replacing the word “a” with --the--), (claim 50, 4th to last line: inserting --the -- before “same”), (claim 51, line 2, “said front multi-“: replacing “said” with --the--), (claim 51, line 6, “said lateral multi-“: replacing “said” with --a--), (claim 52, lines 5-6, “said lateral image”: replacing “said” with --a--), (claim 50, 2nd to last line: inserting --the -- before “frontal image” and inserting --the -- before “lateral”), (claim 53, line 5, “said standard”: replacing “said” with --a--), (claim 53, 5th to last line, “said standard”: replacing “said” with --a--), (claim 54, “said vertical scanning speed”: replacing “said” with --the--), (claim 56, line 3, “a standing”: replacing the word “a” with --the--), (claim 58, line 2, “said imaged zones”: changing the dependency of claim 58 from claim 40 to claim 57), (claim 58, line 3, “said thickness profile”: replacing “said” with --a--), (claim 59, line 3, “a standing”: replacing the word “a” with --the--), (claim 59, line 4: inserting the word --to -- before “whatever”), (claim 61, line 3: inserting --the -- before “vertical direction”), (claim 61, end of line 3: inserting --the -- before “vertical”), (claim 62, line 7, “a patient”: replacing the word “a” with --the--), (claim 62, last line, “a patient”: replacing the word “a” with --the--), (claim 63, 7th to last line, “a subtracting”: deleting the word “a”), (claim 63, 5th to last line, “said first lateral image”: replacing “said” with --a--), (claim 63, 2nd to last line, “a subtracting”: deleting the word “a”), (claim 63, 2nd to last line, “said second lateral image”: replacing “said” with --a--), (claim 64, line 2, “a standing”: replacing the word “a” with --the--), (claim 64, line 9, “said lateral image”: replacing “said” with --a--), (claim 64, line 9, “a standing”: replacing the word “a” with --the--), (claim 64, 2nd to last line: inserting the word --the -- before “same”), (claim 65, line 5, “a patient”: replacing the word “a” with --the--), (claim 65, line 15, “a patient”: replacing the word “a” with --the--), (claim 65, 4th to last line: inserting --the -- before “same”), (claim 66, line 2, “said front multi-“: replacing “said” with --the--), (claim 66, line 6, “said lateral multi-“: replacing “said” with --a--), (claim 67, lines 5-6, “said lateral image”: replacing “said” with --a--), (claim 67, 2nd to last line: inserting --the -- before “frontal image” and inserting --the -- before “lateral”), (claim 68, line 5, “said standard”: replacing “said” with --a--), (claim 68, 5th to last line, “said standard”: replacing “said” with --a--), (claim 70, “said vertical scanning speed”: replacing “said” with --the--), (claim 71, line 3, “a standing”: replacing the word “a” with --the--), (claim 73, line 2, “said imaged zones”: changing the dependency of claim 73 from claim 43 to claim 72), (claim 73, line 3, “said thickness profile”: replacing “said” with --a--), (claim 73, line 3, “a standing”: replacing the word “a” with --the--), (claim 74, line 4: inserting the word --to -- before “whatever”), (claim 76, line 3: inserting --the -- before “vertical direction”), (claim 76, end of line 3: inserting --the -- before “vertical”), (claim 77, line 2: deleting “7”), (claim 77, line 4: replacing “7a” with --a--), (claim 77, line 7: replacing “7a” with --a--), (claim 77, line 7, “a patient”: replacing the word “a” with --the--), (claim 77, 2nd to last line: deleting “(5)”), (claim 77, last line, “a patient”: replacing the word “a” with --the--).
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 40-77 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 40-77 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 40-46, 48, 52-57, 59-61, 63, 67-68, 70-72, and 74-76, 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.
Claim 49 recites the limitation "said frontal image" in line 2. The antecedent basis for this limitation in the claim is not clear, since there are different frontal images recited previously.
Claim 58 recites the limitation "said images" in line 1. The antecedent basis for this limitation in the claim is not clear, since there are different images recited previously.
Claim 62 recites the limitations "said second lateral image" and “said combined lateral image”. There is insufficient antecedent basis for these limitations.
Claim 63 recites the limitation "said first given energy threshold" and “said second given energy threshold” multiple times. The antecedent basis for this limitation in the claim is not clear, since there are different first and second energy thresholds recited previously.
Claim 64 recites the limitation "said frontal image" in line 2. The antecedent basis for this limitation in the claim is not clear, since there are different frontal images recited previously.
Claim 72 recites the limitation "said scout view" in line 2. The antecedent basis for this limitation in the claim is not clear, since there are different scout views recited previously.
Claim 76 recites the limitation "said second energy threshold" multiple times. The antecedent basis for this limitation in the claim is not clear, since there are different second energy thresholds recited previously.
Claim 77 recites the limitations "said second lateral image" and “said combined lateral image”. There is insufficient antecedent basis for these limitations.
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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