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 .
This Office Action is in response to amendments and remarks filed August 6, 2026. Claims 1-14 are currently pending.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive.
In regards to the Applicant’s arguments on pages 9-17 of Applicant’s Arguments filed on August 6, 2026, Examiner disagrees in part. The 35 USC 112 rejections of claims 1, 3, 4, 7 and 11 have been considered and are persuasive, the rejection of those claims has been removed. The 35 USC 101 and 35 USC 112 rejections of claim 13 remain proper and the Examiner disagrees with the arguments.
In regards to the Applicant’s to the Applicant’s argument that in Ex parte Porter, 25 USPQ2d 1144 (Bd. Pat. App. & Inter. 1992), the claims were found definite with respect to method of utilizing a specific nozzle in a method for unloading nonpacked, nonbridging and packed, bridging flowable particle catalyst and bead material from the opened end of a reactor, therefore the method of using the portable spectrometer in claim 1 with a myriad of various sensing/detecting applications is definite (Applicant’s Arguments, page 10-11), Examiner respectfully disagrees. The test for 35 USC 101 and 35 USC 112(b) for use claims includes active, positive steps delimiting how this use is actually practiced within the claim and/or specification. In 35 USC 112(b), 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. Just stating that a spectrometer can be used in a myriad of applications is not enough to show the Applicant clearly can show how the portable spectrometer is used in these various applications. Going back to the case of Ex parte Porter, the claim was found definite because there was enough in the specification showing how the claimed nozzle is used with the process of unloading nonpacked, nonbridging and packed, bridging flowable particle catalyst and bead material from the opened end of a reactor tube. See US patent 5222533, which is the patent of the Application 07/595164, which is the application from Ex parte Porter. The patent describes using the nozzle in this specific process (col. 2, lines 15-44). There is a clear utilization of the nozzle in the process of unloading nonpacked, nonbridging and packed, bridging flowable particle catalyst and bead material from the opened end of a reactor tube. There is nothing like this in the Applicant’s specification in regards to the use of the portable spectrometer with the various applications. The 35 USC 101 and 112(b) rejections of claim 13 remain proper.
As noted previously, the rejections of claims 1, 3, 4, 7 and 11 are withdrawn.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.
Claim 13 is rejected under 35 U.S.C. 101 because invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because "Use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961 ("one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101 "). Claim 13 is rejected because it is a "Use" claim.
In regards to claim 13, the claimed invention is not a process because it contains NO STEPS involved in how the device of claim 1 is used with an infrared detection application; a heat detection application; a thermometer application; a heat-seeking application; a flame-detection application; a fire-detection application; a smoke detection application; a temperature sensing application; a spectroscopy application; an exhaust gas monitoring application; a combustion process monitoring application; a pollution monitoring application; an industrial process monitoring application; a chemical process monitoring application; a food processing process monitoring application; a water quality monitoring application; an air quality monitoring application; a quality control application; a temperature control application; a motion control application; an exhaust control application; a gas sensing application; a gas analytics application; a motion sensing application; a chemical sensing application; a mobile application; a medical application; a mobile spectroscopy application; a food analysis application; an agricultural application; and a cosmetic application.
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.
Claim 13 is 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.
In regards to claim 13, is a "use claim" meaning it attempts to claim a process without setting forth any steps in the process which generally raises an issue of indefiniteness under 35 U.S.C. 112(b) (see MPEP 2173.05(q)). The claimed invention is not a process because it contains NO STEPS involved in how the device of claim 1, is used with an infrared detection application; a heat detection application; a thermometer application; a heat-seeking application; a flame-detection application; a fire-detection application; a smoke-detection application; a temperature sensing application; a spectroscopy application; an exhaust gas monitoring application; a combustion process monitoring application; a pollution monitoring application; an industrial process monitoring application; a chemical process monitoring application; a food processing process monitoring application; a water quality monitoring application; an air quality monitoring application; a quality control application; a temperature control application; a motion control application; an exhaust control application; a gas sensing application; a gas analytics application; a motion sensing application; a chemical sensing application; a mobile application; a medical application; a mobile spectroscopy application; a food analysis application; an agricultural application; and a cosmetic application. Please clarify and correct.
Allowable Subject Matter
Claims 1-12 and 14 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
In regards to claim 1, the prior art of record individually or in combination fails to teach a portable spectrometer for performing at least one optical measurement on at least one measurement object as claimed, the portable spectrometer comprising: at least one optical element configured for separating incident optical radiation provided by the measurement object into a spectrum of constituent wavelength components; at least one photosensor comprising at least one photosensitive region configured for receiving the optical radiation from the optical element, wherein the photosensor is configured for generating at least one photosensor signal dependent on an illumination of the photosensitive region by the optical radiation; at least one movement sensor configured for generating at least one movement sensor signal dependent on a movement of at least one of the portable spectrometer and the measurement object; and at least one evaluation device configured for determining at least one item of measurement quality information on the optical measurement by using the movement sensor signal, wherein the evaluation device is further configured for determining at least one item of spectral measurement information on the measurement object by using the photosensor signal, wherein the item of measurement quality information on the optical measurement comprises at least one of a speed of the portable spectrometer, a speed of the measurement object and a relative speed of the portable spectrometer with respect to the measurement object, wherein the item of measurement quality information on the optical measurement indicates whether the speed exceeds a predetermined threshold, more specifically in combination with wherein the evaluation device is configured for automatically determining the item of spectral measurement information on the measurement object only if the speed exceeds the predetermined threshold.
Claims 2-12 and 14 are allowed because of their dependency on claim 1.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/JENNIFER D BENNETT/Examiner, Art Unit 2878
