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 .
Specification
The title of the invention is not descriptive. The current title is highly vague and provides little informative value for a person of ordinary skill in the art whether the document warrants further review. A new title is required that is clearly indicative of the invention to which the claims are directed. MPEP 606.01 guides that a descriptive title may result in slightly longer title, but the loss in brevity of title will be more than offset by the gain in its informative value in indexing, classifying, searching, etc.
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:
spectroscopic unit in claims 1-3 and 5-16, and
analysis unit in claims 14-16
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.
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 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 12,584,792 in view of Harper et al. (US 2007/0064230).
Claim 1
Claim 14 of reference patent
1. A spectroscopic analyzer comprising:
1. A light measuring device comprising:
a Fabry-Perot quantum cascade laser element configured to emit a laser light including a plurality of mode lights respectively corresponding to a plurality of modes indicating a discrete oscillation spectrum;
a light source unit configured to emit a laser beam, wherein the light source unit is a quantum cascade laser element
(claim 12)
a spectroscopic unit configured to disperse the laser light emitted from the quantum cascade laser element into the plurality of mode lights; and
wherein the characteristic is a characteristic related to a wavelength (claim 14)
a light detector configured to detect the mode light dispersed by the spectroscopic unit and then transmitted through a sample or reflected by the sample.
a light detector configured to detect the laser beam returned by multiple reflection between the first mirror surface and the second mirror surface
Claim 14 of the reference patent does not recite that the quantum cascade laser element is a Fabry-Perot quantum cascade laser element and does not recite the spectroscopic element.
Harper shows a quantum cascade laser element that is a Fabry-Perot quantum cascade laser element. It would have been obvious to use a Fabry-Perot quantum cascade laser element
for nothing more than the predictable broadband spectral output.
As to the spectroscopic unit, Official notice is taken that spectroscopes were well known. It would have been obvious to use a spectroscope in order to detect each mode/wavelength discretely more accurately.
The limitations of claim 2 and 3 are found in reference claim 1.
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 9 and 12 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 9 recites that the light detector is a "quantum type detector" and it is not clear what limiting effect the term "type" has. The term "type" in in the claim implies that the light detector does not have to be a quantum detector; however, one of ordinary skill in the would not know what detectors would be and not be a quantum type detector because no evidence was found that the artisan would know and the specification does not set forth the bounds by defining what characteristics the light detector must have in order to be considered a "type." The examples found in the specification do not provide the bounds. For examination purposes, the list provided by the specification to be the bounds.
Claim 12 is drawn to the structure of a spectroscopic analyzer and recites a functional limitation "quantum cascade laser element is configured to generate light by a transition between a plurality of subbands" where it would not be clear whether the function requires some other structure or is simply a result of operating the analyzer in a certain manner. The limitation is unclear because the claim does not provide a discernable boundary on what performs the function. The recited function does not appear to follow from the recited structure. Thus one of ordinary skill in the art would not be able to draw a clear boundary between what is and is not covered by the claim. See MPEP 2173.05(g) for more information. The claim will be interpreted to require the structure disclosed at para.[0067] as published.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 8, and 13-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Harper et al. (US 2007/0064230).
1. A spectroscopic analyzer comprising:
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a Fabry-Perot quantum cascade laser element (Para. [0004]: "Examples of semiconductor lasers can include, but are not limited to Fabry-Perot quantum cascade lasers (FP-QCL)") configured to emit a laser light including a plurality of mode lights respectively corresponding to a plurality of modes indicating a discrete oscillation spectrum (Para. [0017]: "Since all modes of the broadband laser device can be emitted simultaneously");
a spectroscopic unit (Para. [0006]: "Examples of wavelength dispersive elements can include, but are not limited to…") configured to disperse the laser light emitted from the quantum cascade laser element into the plurality of mode lights; and
a light detector (Para. [0016]: "The wavelength-dispersed broadband spectral output is then detected by the detector array 106") configured to detect the mode light dispersed by the spectroscopic unit and then transmitted through a sample or reflected by the sample.
2. The spectroscopic analyzer according to claim 1 (see Fig. 5c), further comprising a reflector including a first plane mirror (first plane mirror in the perimeter) and a second plane mirror (second plane mirror in the perimeter) disposed to face each other, the reflector guiding the mode light to the light detector while performing multiple reflection of the mode light between the first plane mirror and the second plane mirror (two reflections shown),
wherein the first plane mirror and the second plane mirror are inclined to each other such that a distance between the first plane mirror and the second plane mirror increases from a side on which the mode light is incident toward a side from which the mode light is emitted to the light detector (see Fig. 5c; additional plane mirrors are anticipated by Harper; see plane mirrors in Figs. 1 and 3, planar mirror 305 being gimbled), and
the light detector is configured to detect the mode light transmitted through the sample disposed between the first plane mirror and the second plane mirror (Para. [0016]: "The wavelength-dispersed broadband spectral output is then detected by the detector array 106").
3. The spectroscopic analyzer according to claim 2, wherein the reflector is disposed to allow the mode light to be first incident on the first plane mirror, and the first plane mirror has an inclination angle relative to the second plane mirror, the inclination angle being configured to coincide with an incident angle obtained when the mode light detected by the light detector is first incident on the first plane mirror (Fig. 1 shows the angles to be 45 degrees).
8. The spectroscopic analyzer according to claim 1, further comprising a collimating lens disposed between the quantum cascade laser element and the spectroscopic unit and configured to collimate the laser light (Para. [0016]:" The broadband spectral output can be collimated using collimation optics 102 and directed to a sample 103"), wherein a position of a beam waist of the laser light collimated by the collimating lens is aligned with a position of a light receiving surface of the light detector (all the positions are aligned along the optical path).
13. The spectroscopic analyzer according to claim 1, wherein
the quantum cascade laser element is configured to include a plurality of active layers having center wavelengths different from each other (There appears to be nothing preventing the laser to include the active layers. The recitation of "configured to include" does not require that they be included).
14. The spectroscopic analyzer according to claim 1, further comprising an analysis unit configured to analyze a measurement result of the light detector,
wherein the analysis unit is configured to execute:
first processing of acquiring time-series data of a signal value detected by the light detector by controlling an operation of the spectroscopic unit so that each of the plurality of mode lights is detected by the light detector in order of wavelength magnitude (Para. [0016]: "Alternatively, a scanning monochrometer can be used for dispersing the broadband spectral output. The wavelengths can be quickly scanned over a feature of interest and a spectrum can be collected on a given timescale. Collection on a millisecond timescale can help mitigate atmospheric turbulence noise.");
second processing of determining a wavelength corresponding to at least one first peak among a plurality of peaks included in the time-series data acquired by the first processing (see Fig. 2 and para. [0019]); and
third processing of determining a wavelength of a second peak other than the first peak among the plurality of peaks based on a positional relationship between the first peak and the second peak (see Fig. 2 and para. [0019]).
15. The spectroscopic analyzer according to claim 14, wherein the analysis unit is configured to determine, in the second processing, the wavelength corresponding to the first peak by comparing information indicating an oscillation spectrum of the laser light acquired in advance with the time-series data (see Figs. 2 and 4, and paras. [0019]-[0023]).
16. The spectroscopic analyzer according to claim 14, wherein the mode light dispersed by the spectroscopic unit is configured to, before reaching the light detector, pass through a specific substance that absorbs light of a specific wavelength, and the analysis unit is configured to, in the second processing, specify a position of an absorption line appearing at a position corresponding to the specific wavelength in the time-series data and determine the wavelength corresponding to the first peak based on the position of the absorption line (see Figs. 2 and 4, and paras. [0019]-[0023]).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harper as applied to claim 1 above, and further in view of Official notice.
Harper shows all the elements as discussed for claim 1 and shows:
wherein the spectroscopic unit is a
Harper does not show that the scanning grating to be a MEMS. Official notice is taken that MEMS were well known. Before the effective filing date of the claimed invention, it would have been obvious to configure the grating to be MEMS based in order to make the system compact.
Claim(s) 5-7, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harper as applied to claim 4 above, and further in view of Official notice, alternatively Gao et al. (CN 118129904).
Harper shows all the elements as discussed for claim 4 above but does not show a slit. Official notice is taken that having a slit between a grating and detector of a spectrometer was well known. Alternatively, Gao shows a spectrometer where a slit is positioned between the grating and detector.
Before the effective filing date of the claimed invention, it would have been obvious to use a slit prior to the detector in order to limit the number of signal incident on the detector and thereby have a higher resolution ("the slit is used for controlling the light flux of the light beam formed by focusing, the larger the slit is, the larger the light flux is, the lower the resolution is").
6. As to claim 6, Harper and Gao show a collimating lens disposed between the quantum cascade laser element and the spectroscopic unit and configured to collimate the laser light (Harper Para. [0016]: "The broadband spectral output can be collimated using collimation optics 102 and directed to a sample 103"; Gao: "parallel light output by the lens"; and placing a slit at a beam waist is convention), wherein a position of a beam waist of the laser light collimated by the collimating lens is aligned with a position of the slit.
7 and 10. As to the lens being cylindrical as recited in claims 7 and 10 not being shown, Official notice is taken that cylindrical lenses were well known. Before the effective filing date of the claimed invention, it would have been obvious to use a cylindrical lens since the wavelengths are spread in a linear fashion and a cylindrical lens corresponds to the linear spread discussed by Gao, and thereby evenly converting the light into a collimated light.
Claim(s) 9, as interpreted by the Examiner, is/are rejected under 35 U.S.C. 103 as being unpatentable over Harper as applied to claim 1 above, and further in view of Rosencher et al. (US 5,969,375).
Harper shows all the elements as discussed for claim 1 above but does not show the detector to be a quantum type detector.
Rosencher shows an InAsSb detector (column 6, lines 6-35) used for infrared detection. Before the effective filing date of the claimed invention, it would have been obvious use the InAsSb detector shown by Rosencher for the expected ability to detect infrared light of Harper.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Harper as applied to claim 1 above, and further in view of Paek (US 5,946,128).
Harper shows all the elements as discussed for claim 1 above but does not show the a focus lens disposed between the spectroscopic unit and the light detector with a focal length of 15 cm or more and 3 m or less.
Paek shows a spectrum analyzer having with a focusing lens 33 having a 38 cm focal length disposed between grating 21 and detector 25 (column 6, lines 7-17). Before the effective filing date of the claimed invention, it would have been obvious to use the spectrum analyzer of Paek to analyze the spectrum of Harper for its wide range of useable wavelength channels (Abstract).
Claim(s) 12, as interpreted by the Examiner, is/are rejected under 35 U.S.C. 103 as being unpatentable over Harper as applied to claim 1 above, and further in view of Fujita et al (WO-2014/189015 corresponding to Japanese Patent No. 6276758 submitted in IDS of 9/13/2024).
Harper shows all the elements as discussed above for claim 1 but does not show the quantum cascade laser element is that which is shown by Japanese Patent No. 6276758. Applicant discloses this quantum cascade laser element of Japanese Patent No. 6276758 to be admitted prior art. Before the effective filing date of the claimed invention, it would have been obvious to use the quantum cascade laser element of Japanese Patent No. 6276758 for the predictable ability to produce the broadband laser light called for by Harper.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hwa Andrew S Lee whose telephone number is (571)272-2419. The examiner can normally be reached Mon-Fri 9am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle Iacoletti can be reached at (571) 270-5789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hwa Andrew Lee/Primary Examiner, Art Unit 2877
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