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 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 1-12 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.
Regarding claim 1, line 1 “the presence”, line 2 “its”, line 4 “the diffraction” lacks proper antecedent basis.
Similar issue in claim 9.
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: means for positioning in claim 2, movement means in claim 6, means for reading in claim 7.
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.
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) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Musgrave et al. (US 20230049542) in view of Nazarpoor (US 20150004709).
Regarding claim 1, Musgrave teaches metal oxidation determining apparatus for determining the presence of metal oxidation on a pipe, wherein the pipe includes insulation 220 around its outer surface, the apparatus comprising an x-ray emitter 236, and an x-ray detector 238, the apparatus arranged to identify the presence of metal oxidation by virtue of the characteristics of the detected x-rays (para 71)
However Musgrave fails to teach by virtue of diffraction characteristics.
Nazarpoor teaches by virtue of diffraction characteristics (para 62).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adapt identification of Musgrave by the diffraction as taught by Nazarpoor, since it would better modality and/or alternative measurement technique.
Regarding claim 2, Musgrave teaches attachment means for attaching the apparatus to the outside of the insulation surrounding the pipe (figure 2a and 6).
Regarding claim 3, Musgrave teaches x-ray emitter adjustment means for positioning the emitter such that the x-rays are emitted at a tangent to the surface of the pipe underneath the insulation (figure 2a and 6).
Regarding claim 4, Musgrave teaches x-ray detector adjustment means for positioning the detector to receive the x-rays emitted after they have travelled at a tangent to the surface of the pipe underneath the insulation (figure 2a and 6).
Regarding claim 5, Musgrave teaches movement means for moving the apparatus along the linear axis of the pipe (figure 2a and 6).
Regarding claim 6, Musgrave teaches a means of determining its position relative to the pipe (figure 2a and 6).
Regarding claim 7, Musgrave teaches the means of determining its position include any one or more of a GPS, means for reading a fiducial marker located on the pipe, and movement recording means (figure 2a and 6).
Regarding claim 8, Musgrave teaches movement means for moving the apparatus around the circumference of the pipe (figure 2a and 6).
Regarding claim 9, Musgrave teaches a method of determining the presence of metal oxidation on a pipe, wherein the pipe includes insulation around its outer surface, including the steps of providing a metal oxidation determining apparatus, the metal oxidation determining apparatus comprising an x-ray emitter, and an x-ray detector, the metal oxidation determining apparatus arranged to identify the presence of metal oxidation by virtue of the characteristics of the detected x-rays; the method further including the step of placing the apparatus on the pipe, and operating the apparatus (para 71).
However Musgrave fails to teach by virtue of diffraction characteristics.
Nazarpoor teaches by virtue of diffraction characteristics (para 22).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adapt identification of Musgrave by the diffraction as taught by Nazarpoor, since it would better modality and/or alternative measurement technique.
Regarding claim 10, Musgrave teaches attachment means for attaching the apparatus to the outside of the insulation surrounding the pipe; and x-ray emitter adjustment means for positioning the emitter relative to the pipe; the method including the steps of attaching the apparatus to the outside of the insulation surrounding the pipe; and positioning the emitter relative to the pipe such that the x-rays are emitted at a tangent to the surface of the pipe underneath the insulation (figure 2a and 6).
Regarding claim 11, Musgrave teaches x-ray detector adjustment means for positioning the detector relative to the pipe; the method including the step of positioning the detector so as to receive the x-rays emitted after they have travelled at a tangent to the surface of the pipe underneath the insulation (figure 2a and 6).
Regarding claim 12, Musgrave teaches movement means for moving the apparatus along the linear axis of the pipe; the method including the step of moving the apparatus along the axis of the pipe; and determining the presence of metal oxidation (figure 2a and 6).
Claim(s) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Georgeson et al. (US 10502697) in view of Wolf et al. (US 20140134743).
Regarding claim 1, Georgeson teaches metal oxidation determining apparatus for determining the presence of metal oxidation on a pipe, wherein the pipe includes insulation around its outer surface, the apparatus comprising an x-ray emitter 514, and an x-ray detector 518, the apparatus arranged to identify the presence of metal oxidation by virtue of the characteristics of the detected x-rays (para 2, 6, 81 and 95-96, figures 4-5, PCT written opinion)
However Georgeson fails to teach by virtue of diffraction characteristics.
Wolf teaches by virtue of diffraction characteristics (para 22).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adapt identification of Georgeson by the diffraction as taught by Wolf, since it would better modality and/or alternative measurement technique.
Regarding claim 2, Georgeson teaches attachment means for attaching the apparatus to the outside of the insulation surrounding the pipe (figure 4).
Regarding claim 3, Georgeson teaches x-ray emitter adjustment means for positioning the emitter such that the x-rays are emitted at a tangent to the surface of the pipe underneath the insulation (figure 4).
Regarding claim 4, Georgeson teaches x-ray detector adjustment means for positioning the detector to receive the x-rays emitted after they have travelled at a tangent to the surface of the pipe underneath the insulation.
Regarding claim 5, Georgeson teaches movement means for moving the apparatus along the linear axis of the pipe (para 81).
Regarding claim 6, Georgeson teaches a means of determining its position relative to the pipe (para 81).
Regarding claim 7, Georgeson teaches the means of determining its position include any one or more of a GPS, means for reading a fiducial marker located on the pipe, and movement recording means (para 81).
Regarding claim 8, Georgeson teaches movement means for moving the apparatus around the circumference of the pipe (para 81).
Regarding claim 9, Georgeson teaches a method of determining the presence of metal oxidation on a pipe, wherein the pipe includes insulation around its outer surface, including the steps of providing a metal oxidation determining apparatus, the metal oxidation determining apparatus comprising an x-ray emitter, and an x-ray detector, the metal oxidation determining apparatus arranged to identify the presence of metal oxidation by virtue of the characteristics of the detected x-rays; the method further including the step of placing the apparatus on the pipe, and operating the apparatus (para 2, 6, 81 and 95-96, figures 4-5, PCT written opinion)
However Georgeson fails to teach by virtue of diffraction characteristics.
Wolf teaches by virtue of diffraction characteristics (para 22).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adapt identification of Georgeson by the diffraction as taught by Wolf, since it would better modality and/or alternative measurement technique.
Regarding claim 10, Georgeson teaches attachment means for attaching the apparatus to the outside of the insulation surrounding the pipe; and x-ray emitter adjustment means for positioning the emitter relative to the pipe; the method including the steps of attaching the apparatus to the outside of the insulation surrounding the pipe; and positioning the emitter relative to the pipe such that the x-rays are emitted at a tangent to the surface of the pipe underneath the insulation (figure 4).
Regarding claim 11, Georgeson teaches x-ray detector adjustment means for positioning the detector relative to the pipe; the method including the step of positioning the detector so as to receive the x-rays emitted after they have travelled at a tangent to the surface of the pipe underneath the insulation (figure 4).
Regarding claim 12, Georgeson teaches movement means for moving the apparatus along the linear axis of the pipe; the method including the step of moving the apparatus along the axis of the pipe; and determining the presence of metal oxidation (figure 4).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOON K SONG whose telephone number is (571)272-2494. The examiner can normally be reached M to Th 10am to 7pm.
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/HOON K SONG/Primary Examiner, Art Unit 2884
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