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 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 1-8 and 10-26 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 x-ray radiation, does not reasonably provide enablement for the broad scope of “radiation.” 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 “radiation” as being any radiation included 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 "radiation", 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 x-rays. However, the scope of protection sought by the claims is "radiation" which includes any 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 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 “radiation” in general, which can include any 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 is x-ray radiation.
(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 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 radiations in the broad scope of "radiation", 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 subject matter to which the invention pertains. However, one of ordinary skill would not know how to make and/or use all radiations in the broad scope of "radiation", 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 x-ray radiation. However, there is no direction or guidance with regard to all spectrums of radiations in the broad scope of "radiation", 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 x-ray radiation. 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 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 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 x-ray radiation, the specification does not enable one to make and/or use the claimed invention with other types of radiation, 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 "x-ray" before each instance of "radiation" in the claim(s). Any dependent claims are rejected for the above reason by virtue of their claim dependency.
Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter.
Regarding claim 9 and its dependent claim(s), if any, the prior art (e.g., US 2004/0131140) discloses an imaging system (fig. 1) comprising: a source (2) of radiation (with 8) rotatable around a subject (on 9) and configured to deliver imaging radiation to the subject from a plurality of angles (around Z) ; and a detector (5) comprising a plurality of rows of detector elements (4), wherein the imaging system is configured to: receive the radiation (from 2); read out image data representing received radiation (from 5 to 10); assign a rotation angle to the rows of the image data (7); and output each row of the image data to an image reconstruction algorithm for reconstruction of a three-dimensional image of the subject (par. 155).
However, the prior art fails to disclose or fairly suggest an imaging system including: wherein the imaging system is configured to: output each row of the image data and the respective assigned rotation angle to an image reconstruction algorithm for reconstruction of a three-dimensional image of the subject, in combination with all of the other recitations in the claim.
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.
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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
