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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
This application is claiming the benefit of provisional application No. 63/545,951 under 35 U.S.C. 119(e). However, this application was not filed within twelve months from the filing date of the provisional application, and there is no indication of an intermediate nonprovisional application or international application designating the United States that is directly claiming the benefit of the provisional application and filed within 12 months of the filing date of the provisional application. In addition, no petition under 37 CFR 1.78(b) or request under PCT Rule 26bis.3 to restore the benefit of the provisional application has been granted.
Applicant is required to delete the claim to the benefit of the prior-filed provisional application, unless applicant can establish that this application, or an intermediate nonprovisional application or international application designating the United States, was filed within 12 months of the filing date of the provisional application. See 35 U.S.C. 119(e)(3). Alternatively, applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional. A petition under 37 CFR 1.78(b) to restore the benefit of the provisional application must include: (1) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m)(3); and (3) a statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional. A petition to restore the benefit of a provisional application must be filed in the subsequent application. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and § 1.78(d) in the application is more than six years before the actual filing date of the application.
Election/Restrictions
Applicant’s election of Invention I (claims 1-10 and 16-20) in the reply filed on June 29, 2026, is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Claims 11-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims 3-10 and 18-20 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: (claims 3-10 and 18-20, line 1, “The assembly”: replacing “assembly” with --apparatus-- in each claim).
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.
Claims 1-10 and 16-20 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 an X-ray computed tomography imaging modality or a magnetic resonance imaging modality, does not reasonably provide enablement for all imaging modalities. 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 “imaging modality” as being any imaging via radiation or other physical phenomena, which can include radiation 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 "imaging modality", 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 an X-ray computed tomography imaging modality or a magnetic resonance imaging modality. However, the scope of protection sought by the claims is "imaging modality" which can be any imaging via radiation or other physical phenomena, which can include 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 imaging modalities with all radiations in the broad scope of the claimed invention, such as cosmic radiation, radiation with energy greater than 1 QeV, 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 “imaging modality” in general, which can include any imaging via radiation or other physical phenomena, which can include 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 an X-ray computed tomography imaging modality or a magnetic resonance imaging modality.
(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 computed tomography imaging modality or magnetic resonance imaging modality 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 imaging modalities, which can include all radiations in the broad scope of "imaging modality", such as cosmic radiation, radiation with energy greater than 1 QeV, 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 computed tomography imaging modality or the magnetic resonance imaging modality subject matter to which the invention pertains. However, one of ordinary skill would not know how to make and/or use all radiations in imaging modalities in the broad scope of "imaging modality", such as cosmic radiation, radiation with energy greater than 1 QeV, 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 the X-ray computed tomography imaging modality or the magnetic resonance imaging modality. However, there is no direction or guidance with regard to all imaging modalities with all spectrums of radiations in the broad scope of "imaging modality", such as cosmic radiation, radiation with energy greater than 1 QeV, 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 an X-ray computed tomography imaging modality or a magnetic resonance imaging modality. 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 imaging modalities with all radiations that do not have an existing emission device, such as devices emitting cosmic radiation, radiation with energy greater than 1 QeV, 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 imaging modalities with all spectrums of radiation, there are devices for various radiations that do not exist, such as cosmic radiation, radiation with energy greater than 1 QeV, 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 an X-ray computed tomography imaging modality or a magnetic resonance imaging modality, the specification does not enable one to make and/or use the claimed invention with other types of imaging modalities with various radiations, such as cosmic radiation, radiation with energy greater than 1 QeV, 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 " an X-ray computed tomography imaging modality or a magnetic resonance” before each instance of "imaging modality" in the claim(s). Any dependent claims are rejected for the above reason by virtue of their claim dependency.
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) 1-10 and 16-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yock et al. (US 2021/0370100; hereinafter Yock).
Regarding claim 1, Yock discloses an apparatus (title) comprising: a housing (202) formed from a first material having a first appearance under a selected imaging modality (par. 14); and a target (with 204-208) that is inserted into the housing, the target comprising a plurality of target components formed from a second material (224-228) having a second appearance under the selected imaging modality and manipulable to assume at least a first configuration comprising a first subset of the plurality of target components and a second configuration comprising a second subset of the plurality of target components that is different from the first subset of the plurality of target components (par. 15).
Regarding claim 2, Yock discloses the first configuration having a known geometric relationship to the second configuration (fig. 2, par. 15).
Regarding claim 3, Yock discloses the known geometric relationship comprising a geometric transformation required to convert a morphology of the first configuration to the morphology of the second configuration (fig. 2, par. 15).
Regarding claim 4, Yock discloses wherein the first configuration represents the second configuration with an asymmetric deformation (fig. 2, par. 15).
Regarding claim 5, Yock discloses wherein the first configuration represents the second configuration with a known change in volume (par. 17).
Regarding claim 6, Yock discloses wherein the first subset of the plurality of target components comprises all of the target components (fig. 2).
Regarding claim 7, Yock discloses the target further comprising a frame (214-218) that is inserted into the housing (202) to receive a subset of the plurality of target components (224-228), the frame being removable from the housing (par. 15).
Regarding claim 8, Yock discloses the housing (202) being configured to receive the frame (214-218) in at least two orientations, such that the target can be rotated relative to the housing (par. 15).
Regarding claim 9, Yock discloses where the target is a first target, the plurality of target components is a first plurality of target components, and the apparatus further comprises a second target that is inserted into the housing, the second target comprising a second plurality of target components and manipulable to assume at least a third configuration comprising a first subset of the second plurality of target components and a fourth configuration comprising a second subset of the second plurality of target components that is different from the first subset of the second plurality of target components (pars. 15-16).
Regarding claim 10, Yock discloses wherein each of the first plurality of target components has a shape congruent with a corresponding one of the second plurality of target components (par. 15).
Regarding claim 16, Yock discloses an apparatus comprising: a housing (202) formed from a first material having a first appearance under a selected imaging modality; and a target (224-228) that is inserted into the housing, the target comprising a plurality of target components formed from a second material having a second appearance under the selected imaging modality and manipulable to assume at least a first configuration comprising a first subset of the plurality of target components and a second configuration comprising a second subset of the plurality of target components that is different from the first subset of the plurality of target components, wherein the first configuration has a known geometric relationship to the second configuration representing a geometric transformation required to convert a morphology of the first configuration to a morphology of the second configuration (fig. 2, pars. 15-16).
Regarding claim 17, Yock discloses the target further comprising a frame (214-218) that is inserted into the housing (202) to receive a subset of the plurality of target components (224-228), the housing being configured to receive the frame in at least two orientations, such that the target can be rotated relative to the housing (par. 15).
Regarding claim 18, Yock discloses where the target is a first target, the plurality of target components is a first plurality of target components, and the apparatus further comprises a second target that is inserted into the housing, the second target comprising a second plurality of target components and manipulable to assume at least a third configuration comprising a first subset of the second plurality of target components and a fourth configuration comprising a second subset of the second plurality of target components that is different from the first subset of the second plurality of target components, each of the first plurality of target components having a shape congruent with a corresponding one of the second plurality of target components (fig. 2, pars. 15-16).
Regarding claim 19, Yock discloses wherein the first configuration represents the second configuration with one of an asymmetric deformation and a known change in volume (figs. 2, pars. 15-16).
Regarding claim 20, Yock discloses wherein the first subset of the plurality of target components comprises all of the target components, and the second subset of the plurality of target components is a proper subset of the plurality of target components (fig. 2, par. 16).
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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