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 .
Requirement for Information Under 37 C.F.R. 1.105
Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application.
The applicant has submitted information disclosure statements, filed on April 3, 2025, referencing documents that the applicant deems material to the patentability of the claimed invention, in accordance with 37 CFR 1.56. However, these information disclosure statements contain a large number of documents. MPEP 609.04(a)III states:
Although a concise explanation of the relevance of the information is not required for English language information, applicants are encouraged to provide a concise explanation of why the English-language information is being submitted and how it is understood to be relevant.
Concise explanations (especially those which point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more are highly relevant to patentability.
(emphasis added). In this case, the IDSs reference over 150 NPL documents comprising thousands of pages in total, including three references that are more than 200 pages each. Accordingly, the examiner requires concise explanations for those documents in the English language deemed particularly relevant to the claimed invention.
In particular, the examiner requests information as to which of the cited documents most closely disclose the claimed limitations.
The examiner further requests information as to how the features, via concise explanation or citation of passages within the documents, of those particular documents are relevant to the claimed limitations.
Accordingly the above information is required under 37 CFR 1.105. A statement by the applicant that this information is unknown and/or not readily available, will be accepted as a complete response to this requirement.
In regard to the above requirement, notice is taken of the January 3, 2005 decision of the United States Court of Appeals for the Federal Circuit in the case of Star Fruits S.N.C.v. United States. Pertinent portions of the said decision are reproduced below.
Under 37 C.F.R. § 1.105 the Office can require information that does not directly support a rejection. An agency's interpretation of its own regulations is entitled to substantial deference and will be accepted unless it is plainly erroneous or inconsistent with the regulation. See Eli Lilly & Co. v. Bd. of Regents of the Univ. of Wa., 334 F.3d 1264, 1266 (Fed. Cir. 2003). Here, the Office Considered information concerning any sale or public distribution of the claimed invention and any information concerning Breeder's Rights applications or grants as within the authorized scope of a Requirement For Information under section 1.105.
This interpretation is not plainly erroneous or inconsistent with the regulation. Congress has delegated to the Office the rulemaking power to ''establish regulations, not inconsistent with law, which—(A) shall govern the conduct of proceedings in the Office.'1 35 U.S.C. § 2(b)(2) (2000) (formerly at 35 U.S.C. § 6(a) (1988), see Merck & Co. v. Kessler, 80 F.3d 1543, 1549-50 (Fed. Cir. 1996)); Stevens v. Tamai, 366 F.3d 1325, 1333 (Fed. Cir. 2004). Section 1.105 stems from an initiative entitled Changes to Implement the Patent Business Goals. Through notice and comment rulemaking the Office made explicit the inherent authority of Office employees to require information from an applicant. The goal is to ''encourage” employees to use that power to ''perform the best quality examination possible.” 65 Fed. Reg. 54,604, at 54,633 (September 8, 2000) (to be codified at 37 C.F.R. pts. 1, 3, 5, 10); see also 64 Fed. Reg. 53,772 (proposed October 4, 1999); 63 Fed. Reg. 53,498 (proposed October 5, 1998). The final rule permits that ''the examiner or other Office employee may require the submission.., of such information as may be reasonably necessary to properly examine or treat the matter.” 37 C.F.R. 1.105(a)(1) (emphasis added).
We think it clear that ''such information as may be reasonably necessary to properly examine or treat the matter,” 37 C.F.R. 1.105(a)(1), contemplates information relevant to examination either procedurally or substantively. It includes a zone of information beyond that defined by section 1.56 as material to patentability, and beyond that which is directly useful to support a rejection or conclusively decide the issue of patentability. Several observations militate in favor of this conclusion.
First, under the current regulations an applicant has an affirmative duty to disclose information material to patentability. See 37 C.F.R. § 1.56. Because an applicant already has a duty to disclose this information, it makes no sense for the Office to promulgate a rule empowering it to ''require the submission” of information the applicant is required to submit in the first instance.
Second, section 1.105 identifies the required information as that information ''reasonably necessary to properly examine or treat the matter” instead of that information ''material to patentability.” Under ordinary principles of interpretation, the choice of different language indicates a different intended meaning.
Third, the plain language of the regulation contemplates requirements for information that go beyond information required by section 1.56. For example, ''any non-patent literature.., by any of the inventors, that relates to the claimed invention[,]" 37 C.F.R. § 1.105(a)(l )(iii) (emphasis added), could include sales brochures, catalogues, or PBR applications or grants. "[A]ny use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use,” id. § 1.105(a)(l )(vii) (emphasis added), could refer to uses that would not affect patentability at all. Likewise, information directed to whether a search was conducted and what was searched, id § 1.105(a)(l)(ii), is not necessarily required by section 1.56. Other requirements for information are also foreseeable under the ''reasonably necessary to properly examine or treat the matter'1 standard. For instance, it might be reasonably necessary for the Office to require an explanation of technical material in a publication, such as one of the inventor's publications, or require the applicant's comments on a recent Federal Circuit opinion and how that opinion affects examination. See, e.g., 65 Fed. Reg. at 54,634. Although this information improves the quality and efficiency of examination it is not necessarily information that an applicant is required to provide under section 1.56. In sum, we think that the Office's interpretation of 37 C.F.R. § 1.105 conforms to the plain language of the regulation.
The Director is charged with the duty of deciding whether a patent should issue from an application. To perform that duty, the law must be applied to the facts at hand in any application. That the person charged with enforcement of the law, here an examiner, may sometimes disagree with the applicant on the theory or scope of the law to be applied is hardly surprising. So long as the request from the examiner for information is not arbitrary or capricious, the applicant cannot impede the examiner's performance of his duty by refusing to comply with an information requirement which proceeds from the examiner's view of the scope of the law to be applied to the application at hand. To allow such interference would have the effect of forcing the Office to make patentability determinations on insufficient facts and information. Such conduct inefficiently shifts the burden of obtaining information that the applicant is in the best position to most cheaply provide onto the shoulders of the Office and risks the systemic inefficiencies that attend the issue of invalid patents. Examination under such circumstances is neither fair and equitable to the public nor efficient.
This requirement is an attachment of the enclosed Office action. A complete reply to the enclosed Office action must include a complete reply to this requirement. The time period for reply to this requirement coincides with the time period for reply to the enclosed Office action.
Information Disclosure Statement
The information disclosure statements, filed April 3, 2025, have not been considered in light of the above request for information.
Claim Objections
Claim 20 objected to because of the following informalities: The acronym “ADC” should be defined prior to its first usage, as per Applicant’s formatting in claims 1 and 9. Appropriate correction is required.
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.
Claims 1-21 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 recites “at least one antenna positioned opposite from at least one reflector” which is indefinite, because it is unclear whether or not the “at least one reflector” is an element of the claimed radar system. Assuming the reflector is not part of the radar system, as it is not explicitly recited as an element of the radar system, it is unclear to attempt to define the position of a claim element, e.g. the antenna, in terms of an element that is outside the scope of the claim and therefore not necessarily present. Dependent claims 2-8 fail to cure the deficiency.
Claim 1 recites “a processing device coupled to the ADC, the processing device to process the digital signal” which is indefinite, because it is unclear if the recitation is a method step, an intended use of the processing device, or a capability for which the processing device is so configured. Claim 3 is likewise indefinite for the recitation of “the transceiver to cause the series of chirps to be emitted”, and claim 18 is likewise indefinite for the recitation of “wherein the radar system is to emit”. Dependent claims 2 and 4-8 fail to cure the deficiency.
Claim 4 recites “wherein the processing device is further to” which is indefinite because the meaning of the recitation, as it affects the metes and bounds of an apparatus claim, is unclear. Claims 5-6 and 15-17 are likewise rejected.
Claim 20 recites “converting…a reflective electromagnetic signal received from one or more reflectors” which is indefinite because it is unclear who or what is receiving the signal. Is the ADC receiving the signal? Is the ADC operably connected to something that is receiving a signal? Is receiving the signal part of the method? By failing to specify how the signal is being received, the claim is rendered improperly broad in such a way that the claim encompasses embodiments of the invention not disclosed by Applicant. Dependent claim 21 fails to cure the deficiency.
Claim 21 recites “generating tomographic data indicative of the path-integrated particle number density over one or more paths associated with one more antennas of the radar system” which is indefinite for three reasons. First “one more antennas” is out of sync with the one or more paths. Second, it is unclear how the antennas and the one or more paths relate to claim 20, from which claim 21 depends. Do the antennas and the one or more paths relate to the electromagnetic signal? No relationship is currently claimed. Third, it is unclear whether the “generating” step of claim 21 is performed by the radar system, or by some other unclaimed element of the invention.
Allowable Subject Matter
Claims 9-14 and 19 are considered to be allowable, notwithstanding the Requirement for Information detailed hereinabove.
Claims 1-8, 15-18, and 20-21 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) set forth in this Office action.
With regard to claim 1 (independent claims 9 and 20 being substantively similar), Hausner et al. (US 2008/0284636 A1) discloses a radar system comprising:
at least one antenna (antenna 80; fig. 2) positioned opposite from at least one reflector (fig. 3) with an area under test therebetween having a particle-medium mixture (inherent), the at least one antenna to emit, at the reflector, a series of chirps within a first electromagnetic signal and to receive a second electromagnetic signal that includes reflected chirps that bounce off the reflector (para. [0044], regarding transmit/receive antenna 80 preferably both transmits the signal in horizontal polarization and receives the reflected horizontal or co-pol signal, and receive antenna 82 preferably receives the vertical or X-pol reflected signal in vertical polarization);
an analog-to-digital converter (ADC) (54; fig. 2) coupled to the at least one antenna, the ADC to convert the second electromagnetic signal to a digital signal containing phase, frequency, and amplitude information (para. [0045]); and
a processing device coupled to the ADC (processor 26; fig. 2).
However, the prior art does not appear to teach the combined limitations of the claimed invention, specifically, the processing device to process the digital signal to: detect raw phase data of reflector peaks to be tracked over the reflected chirps; unwrap the raw phase data into a continuous phase-based signal; correct for phase non-linearities within the continuous phase-based signal; and generate, from the corrected continuous phase-based signal, a path-integrated particle number density for the particle-medium mixture.
Conclusion
The cited references made of record in the contemporaneously filed PTO-892 form and not relied upon in the instant office action are considered pertinent to applicant's disclosure, and may have one or more of the elements in Applicant’s disclosure and at least claim 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADY W FRAZIER whose telephone number is (469)295-9263. The examiner can normally be reached Monday-Friday 9:00am-5:00pm CT.
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, Vladimir Magloire can be reached at 571-270-5144. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRADY W FRAZIER/Primary Examiner, Art Unit 3648
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