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.
Claim 13 is 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.
Claim 13 is drawn to an evaluation unit configured to “conduct a method according to claim 10,” but claim 10 is drawn to a device, not a method. Therefore, it is not clear what method the evaluation unit of claim 13 is referring to.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 merely repeats limitations already present in its parent claim 1, and therefore fails to further limit the subject matter of the claim from which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 4, 6-12 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5-7 and 9-13, respectively, of U.S. Patent No. 12,215,990. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the claims of the patent fully anticipate each of the respective claims of the application.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,215,990. Although the claims at issue are not identical, they are not patentably distinct from each other because the only limitation required by claim 3 of the application that is not in claim 3 of the patent, is that the photodetector(s) includes an InAsSb photodetector; however, it would have been obvious to one of ordinary skill in the art before the effective filing date to have used any known type of photodetector, including an InAsSb photodetector in the method of claim 3 of the patent, because this a known type of photodetector material that can be substituted in a known way by simply using it in the same way as any other photodetector, and it would yield only predictable results by functioning as a known and conventional type of photodetector.
Claims 15 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 9, respectively, of U.S. Patent No. 12,215,990. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the application only differ in that they require an evaluation unit configured to automatically conduct the respective claimed methods rather than just the methods themselves. It would have been obvious to one of ordinary skill in the art before the effective filing date to have incorporated a conventional evaluation unit, such as a programmed computer or controller, in order to automatically conduct the claimed methods of claims 1 and 9, because computers with programmed algorithms are known in the art of performing processes more accurately and efficiently.
Allowable Subject Matter
Claims 1-4, 6-12 and 14-16 would be allowable if the non-statutory double patenting rejection were overcome by the filing of a properly executed terminal disclaimer.
The following is a statement of reasons for the indication of allowable subject matter:
With regard to claim 1, Hyde (US 2004/0113081) discloses a method for measuring a flow velocity of a gas stream, comprising: obtaining a first infrared (IR) radiation parameter curve using a time-resolved measurement of an IR radiation parameter of IR radiation of the gas stream at a first measurement point outside of the gas stream (see Fig. 1 and par. 0030, measurement of radiation after passage through the gas stream; see Fig. 2 showing signal 1 IR radiation over time); obtaining a second IR radiation parameter curve using a time-resolved measurement of an IR radiation parameter at a second measurement point outside of the gas stream (see Fig. 2, signal 2); calculating a transit time from the first IR radiation parameter curve and the second IR radiation parameter curve (par. 0032); and calculating the flow velocity of the gas stream from the transit time (Id. and par. 0033), wherein the gas stream is a stream of a gas mixture that contains a first gas and at least a second gas (par. 0013).
Hyde fails to teach or suggest: that the gas stream flows in a pipe and contains particles, the walls of the pipe and the particles emitting black body radiation that is measured by means of a photo detector; and that the IR radiation parameter is the irradiance of the infrared radiation caused by the IR radiation emitted by the gas stream due to the temperature of the gas stream. Hyde's method relies on IR emitters and the measurement of absorption patterns of the emitted IR radiation through the gas stream.
With regard to claim 9, Hyde fails to teach or suggest the steps of: obtaining a first irradiance curve using time-resolved detection of a second IR radiation parameter in a the form of an irradiance at a second gas excitation wavelength of the second gas at the first measurement point; obtaining a second irradiance curve using time-resolved detection of the second IR radiation parameter at the second measurement point; calculation of a second transit time; and calculation of the flow velocity from the first transit time and the second transit time.
With regard to claim 10, Hyde teaches or suggests a device for measuring flow velocity of a gas stream that contains a gas mixture of two or more gases where the device comprises: first and second IR radiation sensors; and an evaluation unit that calculates transit time between first and second IR radiation curves and calculates flow velocity from the transit time. Hyde fails to teach or suggest the device being configured to measure the flow velocity based on irradiance of the infrared radiation caused by the IR radiation emitted by the gas stream. Hyde relies on IR emitters and the measurement of absorption patterns of the emitted IR radiation from the emitters through the gas stream.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL M WEST whose telephone number is (571)272-2139. The examiner can normally be reached M-F 9 am - 5:30 pm (CT).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina DeHerrera can be reached at 303-297-4237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL M. WEST/Primary Examiner, Art Unit 2855
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