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
Claim 1 is objected to because of the following informalities: The claims should spell out the word Equation instead of abbreviating it. 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.
Claim 1 is 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. Claim 1 is the only claim in the present invention. Claim 1 is a very detailed claim with very specific steps which are not quite disclosed as claimed in the prior art. However, there are at least two portions of the claim that are not described in the specification in such a way that would indicate that the inventor had possession of the invention at the time of filing. First, the claim requires that if an updated sub-signal energy Ei of the split spectrum processing in the bandwidth [fₖ,fu] satisfies a condition of 10lg(E/E)<signal-to-noise ratio, determining an updated bandwidth b [fₖ,fu] reporting S3, drawing a new scanning image Im according to S4, updating the curve according to S5, and re-obtaining a quantitative size dₖ of the defect. There is no definition of the bandwidth b disclosed prior to this point, and how to update a bandwidth b is not disclosed or taught in the specification as filed. There is nothing in the specification about reporting S3, or reporting anything for that matter and it is no even clear or disclosed how this reporting would be accomplished. There is no disclosure of any updating of any curve. Second, the claim requires that if the resolution frequency fk is not in the effective frequency band or the condition of 10lg(E/E/)<signal-to-noise ratio is not satisfied, extrapolating the fitted curve against the frequency f and deriving it, and the detected defect size dₖ corresponding to the slope k = -0.01 is the quantitative size of the defect. There is no disclosure of how the extrapolation or deriving is done, it’s simply stated that it is done. There is also nothing for what is done with the result of the extrapolation or deriving. Since these two steps are required in the claim and not truly disclosed in the specification as to how these things are accomplished, for at least these reasons, it is not evident that the inventor truly had possession of the invention as claimed in claim 1.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. First, the claim requires that if an updated sub-signal energy Ei of the split spectrum processing in the bandwidth [fₖ,fu] satisfies a condition of 10lg(E/E)<signal-to-noise ratio, determining an updated bandwidth b [fₖ,fu] reporting S3, drawing a new scanning image Im according to S4, updating the curve according to S5, and re-obtaining a quantitative size dₖ of the defect. There is no definition of the bandwidth b disclosed prior to this point, and how to update a bandwidth b is not disclosed or taught in the specification as filed. There is nothing in the specification about reporting S3, or reporting anything for that matter and it is not even clear or disclosed how this reporting would be accomplished. There is no disclosure of any updating of any curve. Second, the claim requires that if the resolution frequency fk is not in the effective frequency band or the condition of 10lg(E/E/)<signal-to-noise ratio is not satisfied, extrapolating the fitted curve against the frequency f and deriving it, and the detected defect size dₖ corresponding to the slope k = -0.01 is the quantitative size of the defect. There is no disclosure of how the extrapolation or deriving is done, it’s simply stated that it is done. There is also nothing for what is done with the result of the extrapolation or deriving. There is no disclosure of how the extrapolation or deriving is done, it’s simply stated that it is done. There are no formula or process disclosed for the extrapolation, so it’s not disclosed how it is done for one of ordinary skill in the art.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557,1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
With respect to the case of the present invention, there is not enough direction provided by the inventor as things are stated to be done with no explanation of how the inventor is getting it done (Wands Factor F), there are no comparisons given to any existing working examples to give an idea of how certain things might be accomplished (Wands Factor G), and the amount experimentation to determine from the numerous ways to extrapolate or determine something to end up at the specific one intended by the inventor would be immense (Wands Factor H). For at least these reasons, claim 1 lacks enablement with the disclosure as filed.
Response to Arguments
Applicant's arguments filed 06 April 2026 have been fully considered but they are not persuasive. The Applicant argues that “the Office asserts that "There is no definition of the bandwidth b disclosed prior to this point, and how to obtain any bandwidth b is not disclosed or taught in the specification as filed." Office Action at 3. The specification provides an example in which a filtering bandwidth bi was determined according to the condition that "the sub-signal energy Ei and total energy (E=2.52 mJ) of the signals x(t) satisfy 101g(E/Ei)< signal-to-noise ratio of 9.89 dB." Specification, page 7, paragraph [0044]. "For example, when the center frequency f=11 MHz, b =4.1 MHz; and when the center frequency f=21 MHz, b =2.1 MHz." Id. Further, "When a new spectrum processing bandwidth b is [27.2 MHZ, 33.6 MHZ], the sub-signal energy Ei of split spectrum processing was 0.31 mJ, which satisfies a condition of 101g(E/Ei)<9.89 dB
Id. page 8, paragraph [0050]. One skilled in the art, reading the above disclosures, would have readily appreciated that Ei is a sub-signal energy within the filter band with a bandwidth bi, so that the value of 101g(E/Ei) is determined by one variable bi. As such, a certain center frequency of a filter band, increasing the bandwidth value decreases the value of 101g(E/Ei). Referring back to the examples, when the center frequency is 11 MHz and the filter band bandwidth b increases to 4.1 MHz (E is also determined based on b ), the value of 101g(E/Ei) becomes less than 8.89 dB. Similarly, when the center frequency is 21 MHz and the bandwidth increases to 2.1 MHz, the value of 101g(E/Ei) becomes less than 9.89 dB.
As such, one skilled in the art would readily appreciate that the disclosure provide the method and examples of how to obtain bi. The issue is, the examiner was no asking about how to obtain bi, the question was how to obtain b. Even with the examples given by the Applicant, giving examples where values for center frequency A gives a bandwidth b doesn’t explain how those values are actually obtained. Clearly there is some relationship or formula used such that a center frequency A gives a value for bandwidth b. However, that relation and those formula are not disclosed. That is not resolved by the Applicant’s presented arguments for a value bi which was not in question. The Applicant also does not address any of the other issues raised in the previous rejection so those rejection points are maintained. Further, the Applicant’s amended claim has new issues that lack enablement as addressed in the rejection above. For at least these reasons the Applicant’s arguments are not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODNEY T FRANK whose telephone number is (571)272-2193. The examiner can normally be reached M-F 9am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Macchiarolo can be reached at (571) 272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RODNEY T. FRANK
Examiner
Art Unit 2855
April 21, 2026
/PETER J MACCHIAROLO/Supervisory Patent Examiner, Art Unit 2855
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