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 .
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.
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Claims 1-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim of U.S. Patent No. 12,265,007. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to the same subject matter: a device/system/method that combines a first sensor with a second sensor using a common inlet, and a modeling tool to determine total mass loading of particles at specific size breakdowns.
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, 11, and 21 are 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.
With respect to the limitation of the “modeling tool” in claims 1, 11, and 21, the specification does not clearly recite what structural form, if any, the “modeling tool” takes and what algorithms or programming cause it to function in the claimed manner. The specification discloses that “the modeling tool” is included in the sensing instrument, operably coupled with the processor, and includes “a computer model” (P.0050) However, it isn’t clear if the modeling tool itself is structure or just software. Additionally, “a modeling algorithm” that is responsible for giving purpose and potential to “the modeling tool” is not fully described but simply “based on the underlying physics of light scattering (Mie theory)” with some generic references to the data that it uses. For this reason, the “modeling tool” is not sufficiently disclosed in the specification in order to enable one of ordinary skill in the art to understand from the specification how to make or use the component.
The balance of claims are likewise rejected for failing for correct the deficiency of the parent claims.
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 1-26 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.
With respect to claims 1, 11, and 21, the limitation “modeling tool” lacks the written description to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. As described above, the “modeling tool” is not described in the specification to clearly define the structure of the element or the algorithms that it possesses. Additionally, arguendo that the “modeling tool” is a processor or computer algorithm of some sort, there are no algorithms or steps present in the specification in sufficient detail to convert a generic computer into this specific purpose computer. P.0050 discloses that the modeling tool “is based on the underlying physics of light scattering” and “relationships obtained through laboratory or field measurements”. It does not disclose how those underlying physics laws are applied or what types of relationships and how they are determined are used. P.0051 discloses the inputs clearly but not how they are manipulated. P.0052 disclose stepwise integration of the input data, estimating “missing mass” and the idea of combining the two data sets but fails to disclose any specific algorithms or implementation. There are no mathematical steps or explanation for actually estimating the missing mass. The real intent of the modeling tool as described throughout the specification is to use a size dependent curve, size dependent density, integration limits, hygroscopic growth correction, and missing mass estimation. Without undue experimentation, one of ordinary skill in the art would not be able to actually build and program the modeling tool. Therefore, the claim is indefinite.
With respect to claims 1, the limitation “a first quality relating to the particles” and “a second quality” is indefinite. The word “quality” is vague and unclear. The specification discloses using a nephelometer that measures scatter and an OPC that measure intensity, however the claim language does not convey what exactly is being measured. For “the second quality” , the phrase “a second data set having a second quality comprising a number and a particle size” is redundant and adds to the confusion. Is the second data the same as a second quality? Which one comprises the number and particle size? Clarification is required.
With respect to claims 1, the limitation “a first quality being different than a second data set” compares two unlike things and the imbalance causes confusion. Correction is required.
With respect to claims 1, 14, and 21, the limitation “specific size breakdowns” is confusion as no specific sizes are disclosed. Correction is required.
With respect to claim 14, the limitation “a first data set” on page 3, line 25-26 and again “a first data set” on page 4, line 11 is confusing as to whether they are the same first data set or different first data sets. Clarification is required.
With respect to claim 21, the system limitations are hard to understand. The first sensor “determining a first data set comprising a total integrated scattered light signal” later to be received by the modeling tool where “the first data set configured to contain a single scalar value representing the total scattered light signal”. It is unclear firstly how the data set is configured to contain certain information since the data set itself is not responsible or able to determine which information is stored therein. Additionally, does the first data set contain a total integrated scattered light signal, a single scalar value representing such, or are both true? The relationship between the two limitations is unclear. Even more so for the second data set which initially “comprising a number and a particle size…” and later when received by the modeling tool “contain an array comprising a number of particles…and a second particle diameter for a range of particle diameters.” The limitations cause confusion over the metes and bounds of the system. Clarification is required.
The balance of claims are likewise rejected for failing to correct the deficiencies.
Allowable Subject Matter
Claims 1-26 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) and double patenting as set forth in this Office action.
The nearest prior art discloses using both a first sensor, nephelometer, to collect scattering from air particles at an angle between 5 degrees and 175 degrees and a second sensor, optical particle counter, to determine number and size of particles (Sloane et al. “Measurements of Aerosol Particle Size: Improved Precisions by Simultaneous Use of Optical Particle Counter and Nephelometer” and U.S. Publication 2018/0231448). The prior art also discloses using joint information between the first and second sensors (Kassianov and Sedlacek “A Closure Study of Total Scattering Using Airborne In Situ Measurements from the Winter Phase of TCAP” and U.S. Patent #7,932,490). However, the prior art fails to disclose a modeling tool configured to determine a total mass loading of particles at specific size breakdowns based on the total integrated scattered light from the first sensor and the number and size of individual particles from the second sensor.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA CAROLE BRYANT whose telephone number is (571)272-9787. The examiner can normally be reached M-F, 12-4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kara Geisel can be reached on 571-272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/REBECCA C BRYANT/Primary Examiner, Art Unit 2877
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