NON-FINAL REJECTION
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 .
Response to Amendment
On 3/31/2026, Applicant filed an amendment to the application. The amendment to the application contains an amendment to the Specification, an amended claim set, remarks/arguments, and a Terminal Disclaimer. The amendment to the application has been entered and considered for this Office Action.
Terminal Disclaimer
The Terminal Disclaimer filed on 3/31/2026 was filed as an eTerminal Disclaimer (doc code: DIST.E.FILE) and therefore has been automatically approved (doc code: DISQ.E.FILE).
Priority
Applicant states that this application is a continuation application of the prior-filed application (18/389,161). A continuation application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:
For example, claims 1 and 2 as originally filed in this application recite (with emphasis added):
1. A method for controlling a portable ultrasound apparatus comprising a first probe and a second probe having different specifications compared to the first probe, the method comprising:
receiving a user input to select between the first probe and the second probe;
based on the user input, activating the selected probe between the first probe and the second probe;
detecting electrical signal of the activated probe;
based on a result of the detection, lighting an activation indicator of the activated probe;
obtaining ultrasound signal from the activated probe;
focusing the obtained ultrasound signal by controlling at least one digital beamformer;
performing image processing to generate ultrasound image based on the ultrasound signal; and
displaying the generated ultrasound image.
2. A portable ultrasound apparatus comprising:
a first probe;
a second probe having different specifications compared to the first probe;
a first activation indicator;
a second activation indicator;
at least one digital beamformer; and
a control unit,
wherein the control unit is configured to:
receive a user input to select between the first probe and the second probe;
based on the user input, activate the selected probe between the first probe and the second probe;
detect electrical signal of the activated probe;
based on a result of the detection, light an activation indicator of the activated probe;
obtain ultrasound signal from the activated probe;
focus the obtained ultrasound signal by controlling the at least one digital beamformer;
perform image processing to generate ultrasound image based on the ultrasound signal; and
display the generated ultrasound image.
Claims 1 and 2 have been amended (see amended claim set dated 3/31/2026) and now appear as follows (with emphasis added):
1. (Currently Amended) A method for controlling a portable ultrasound apparatus comprising a first probe and a second probe having different specifications compared to the first probe, a first activation indicator corresponding to the first probe and a second activation indicator corresponding to the second probe, the method comprising:
receiving a user input to select between the first probe and the second probe;
based on the user input, activating the selected probe between the first probe and the second probe;
detecting electrical signal of the activated probe;
based on a result of the detection, lighting an activation indicator corresponding to the among the first activation indicator and the second activation indicator;
obtaining ultrasound signal from the activated probe;
focusing the obtained ultrasound signal by controlling at least one digital beamformer;
performing image processing to generate an ultrasound image based on the focused ultrasound signal; and
displaying the generated ultrasound image.
2. (Currently Amended) A portable ultrasound apparatus comprising:
a first probe;
a second probe having different specifications compared to the first probe;
a first activation indicator corresponding to the first probe;
a second activation indicator corresponding to the second probe;
at least one digital beamformer; and
a control unit,
wherein the control unit is configured to:
receive a user input to select between the first probe and the second probe;
based on the user input, activate the selected probe between the first probe and the second probe;
based on an electrical signal of the activated probe
indicator corresponding to the activated probe among the first activation indicator and second activation indicator;
obtain ultrasound signal from the activated probe;
focus the obtained ultrasound signal by controlling the at least one digital beamformer;
perform image processing to generate ultrasound image based on the focused ultrasound signal; and
display the generated ultrasound image.
This subject matter (in particular, the emphasized portions thereof) is not disclosed in the prior-filed application.
The prior-filed application does describes user input(s) (e.g., buttons, a key pad, a dome switch, a touch pad, a jog wheel, or a jog switch1). However, the prior-filed application does not state that the user input(s) is/are for selecting between the first probe and the second probe, let alone for activation thereof.
Further, the prior-filed application does not disclose activating the selected probe based on the user input (i.e., the selection of the first or second probe). The closest thing that the examiner could find in prior-filed application is page 16 of the Specification, but this does not state how the first/second probe(s) is/are activated. In other words, the Specification of the prior-filed application reads as if probe activation is taken for granted and the apparatus detects/recognizes which probe is active, which is then indicated to the user via the corresponding activation display unit.
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosures of the prior-filed applications, Application Nos. 18/389,161, 17/021,269, and 14/060,282, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) for one or more claims of this application.
Application 18/389,161 does not provide support for claims 1-6 for the reasons already discussed above. Further, the discussion similarly applies to Applications 17/021,269 and 14/060,282 because their respective Specifications also do not provide support for the same subject matter discussed above.
Since the prior-filed applications do not provide adequate support for claims 1-6, these claims do not receive the benefit of the earlier filing dates of the prior-filed applications under 35 U.S.C. 120. Therefore, the effective filing date of claims 1-6 is the date that this application was filed (i.e., 12/30/2024).
Specification
The amendment to the Specification is sufficient to overcome the objection regarding the term “magnetic resonance”.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The Specification as filed in this application and subsequently amended does not provide antecedent basis for the following steps of claim 1 as already discussed above: “receiving a user input to select between the first probe and the second probe; based on the user input, activating the selected probe between the first probe and the second probe” (with emphasis added).
Further, the Specification as filed in this application and subsequently amended does not provide antecedent basis for the following limitations of claim 2 as already discussed above: “wherein the control unit is configured to: receive a user input to select between the first probe and the second probe; based on the user input, activate the selected probe between the first probe and the second probe” (with emphasis added).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a) and (b):
(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.
(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 7, 8, 10, and 11 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.
MPEP 2173.03 recites:
The specification should ideally serve as a glossary to the claim terms so that the examiner and the public can clearly ascertain the meaning of the claim terms. Correspondence between the specification and claims is required by 37 CFR 1.75(d)(1), which provides that claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification. Glossaries of terms used in the claims are a helpful device for ensuring adequate definition of terms used in claims. If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1). See MPEP § 608.01(o) and MPEP § 2181, subsection IV. Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.
A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970). For example, a claim with a limitation of "the clamp means including a clamp body and first and second clamping members, the clamping members being supported by the clamp body" was determined to be indefinite because the terms "first and second clamping members" and "clamp body" were found to be vague in light of the specification which showed no "clamp member" structure being "supported by the clamp body." In re Anderson, 1997 U.S. App. Lexis 167 (Fed. Cir. January 6, 1997) (unpublished). In Cohn, a claim was directed to a process of treating an aluminum surface with an alkali silicate solution and included a further limitation that the surface has an "opaque" appearance. Id. The specification, meanwhile, associated the use of an alkali silicate with a glazed or porcelain-like finish, which the specification distinguished from an opaque finish. Cohn, 438 F.2d at 993, 169 USPQ at 98. Noting that no claim may be read apart from and independent of the supporting disclosure on which it is based, the court found that the claim was internally inconsistent based on the description, definitions and examples set forth in the specification relating to the appearance of the surface after treatment, and therefore indefinite. Id. In addition, inconsistencies in the meaning of terms or phrases between claims may render the scope of the claims to be uncertain. Tvngo Ltd. (BVI) v. LG Elecs. Inc., 861 Fed. Appx. 453, 459-60, 2021 USPQ2d 697 (Fed. Cir. 2021) ("The issue is not breadth of the dependent claims but their use of the disputed phrase in a way that contradicts the independent claims. The dependent claims state that 'said overlay activation criterion includes . . . a user command information,' which conflicts with the independent claim's use of this same phrase."). "When faced with this unknown and undefined phrase, a skilled artisan would look for clarification not only in the specification but also in '[o]ther claims of the patent in question,' which 'can also be valuable sources of enlightenment as to the meaning of a claim term.'" Id. at 460 (quoting Philips v. AWH Corp., 415 F.3d 1303, 1314, 75 USPQ2d 1321, 1327 (Fed. Cir. 2005)).
In this case there is a conflict between what has been disclosed in the Specification and what is currently being claimed in view of the amendment to the claims.
Claim 7 originally recited “a sensing unit configured to detect an activated probe from between the first probe and the second probe” and claim 9 originally recited “wherein the sensing unit is configured to detect the activated probe by sensing an electrical signal.” This appears to be consistent with the Specification which recites on page 11:
“The sensing unit 160 detects an activated probe. That is, the sensing unit 160 detects, among at least two probes included in the obtaining unit 110, a currently-activated probe that is to scan a target object. In more detail, one probe from among the at least two probes included in the portable ultrasound apparatus 100 may transmit an ultrasound signal to the target object, and the sensing unit 160 may detect the one probe that is currently activated.
The sensing unit 160 may detect the activated probe by using various physical/electrical methods. For example, the sensing unit 160 may detect the probe that faces in a downward direction so as to diagnose the target object, by using at least one of a gyro sensor, an acceleration sensor, a tilt sensor, and a gravity sensor. In another example, the sensing unit 160 may detect the activated probe in a manner that the sensing unit 160 recognizes which probe directly contacts the target object, by
sensing an electrical signal. The sensing unit 160 may detect the activated probe by using various methods other than the aforementioned examples.”
Claim 7 has been amended to now recite “a sensor configured to detect an electrical signal of at least one of the first probe and the second probe” and “a control unit configured to control elements included in the portable ultrasound apparatus and to detect an activated probe from between the first probe and the second probe based on the detected electrical signal”, and claim 9 has now been canceled. In other words, the sensor/sensing unit is no longer recited as being configured to detect the activated probe; rather, the control unit is now what is being recited as configured to detect the activated probe.
This appears to be inconsistent with the Specification. As discussed above, page 11 recites that it is the sensing unit 160 (not the control unit 150) that detects the activated probe. The control unit 150 does not appear to be configured to detect the activated probe. Regarding the functions of the control unit 150, the Specification merely recites at page 10:
“ The control unit 150 controls elements included in the portable ultrasound apparatus 100. For
example, the control unit 150 may transmit the ultrasound data that is obtained by the obtaining unit
110 and then may control the image processing unit 130 to generate the ultrasound image or may
control the display unit 120 to display the ultrasound image that is generated by the image processing
unit 130.”
On the one hand, the Specification and the original claims clearly state that the sensing unit (not the control unit) detects the activated probe. On the other hand, the text of the claims has been amended to now clearly state the opposite --i.e., the control unit (not the sensor/sensing unit) detects the activated probe. This blatant inconsistency between the claims as currently amended and the Specification as originally filed leads to confusion as to scope of protection sought. The ordinarily skilled artisan would therefore not be reasonably apprised of the metes and bounds of the claimed invention.
Claims 7, 8, 10, and 11 rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Regarding claim 7, it is noted that the claim has been determined to be indefinite due to inconsistencies between the claim as currently amended and the Specification as originally filed. If the claim is construed as written in isolation of the Specification, then the claim lacks written description support because the Specification as originally filed does not disclose that the control unit is configured to detect the activated probe. Rather, the Specification discloses that it is the sensing unit (not the control unit) that is configured to detect the activated probe as discussed above.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Jin et al., US 2014/0303501 A1 (hereinafter “Jin”) in view of Marteau et al., US 8,043,221 B2 (hereinafter “Marteau”).
Note: Jin qualifies as prior art under §102(a)(1) because the effective filing date of claim 1-6 has been determined to be 12/30/2024 (see “Priority” section above) and Jin was published on 10/9/2014 which is before 12/30/2024.
Regarding claim 1: Jin discloses a method for controlling a portable ultrasound apparatus (100) comprising a first probe (112) and a second probe (114) having different specifications compared to the first probe (¶ [0044]), a first activation indicator (e.g., 170a or 170b, Fig. 6) corresponding to the first probe and a second activation indicator (e.g., 170c or 170d, Fig. 6) corresponding to the second probe the method comprising:
detecting electrical signal of the activated probe (¶ [0073]-[0074], [0092]);
based on a result of the detection, lighting an activation indicator corresponding to the activate probe among the first activation indicator and second activation indicator of the activated probe (¶ [0075]-[0076], [0093]-[0097]);
obtaining ultrasound signal from the activated probe (¶ [0044], [0073]);
focusing the obtained ultrasound signal by controlling at least one digital beamformer (¶ [0077]);
performing image processing to generate ultrasound image based on the ultrasound signal (¶ [0050]); and
displaying the generated ultrasound image (¶ [0050]).
Jin does not disclose receiving a user input to select between the first probe and the second probe; and based on the user input, activating the selected probe between the first probe and the second probe.
Marteau teaches receiving a user input to select between a first probe and a second probe, and based on the user input, activating the selected probe between the first probe and the second probe (implied: “In some embodiments of the present invention, to control whether transducer 106 or 107 is electrically activated, buttons 204 and 206, respectively, are provided on multi-headed probe 52.” col. 4, lines 54-57).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Jin by receiving a user input to select between a first probe and a second probe, and based on the user input, activating the selected probe between the first probe and the second probe, as taught by Marteau; and the ordinarily skilled artisan would have been motivated to make this modification in order to allow the user to be able to select and activate one of the two probes.
Regarding claim 2: Jin discloses A portable ultrasound apparatus comprising:
a first probe (112);
a second probe (114) having different specifications compared to the first probe (¶ [0044]);
a first activation indicator (e.g., 170a or 170b) corresponding to the first probe;
a second activation indicator (e.g., 170c or 170d) corresponding to the second probe;
at least one digital beamformer (180); and
a control unit (150), wherein the control unit is configured to:
based on an electrical signal of the activated probe, light an activation indicator corresponding to the activated probe among the first activation indicator and the second activation indicator (¶ [0073]-[0076], [0093]-[0097]);
obtain ultrasound signal from the activated probe (¶ [0044], [0073]);
focus the obtained ultrasound signal by controlling the at least one digital beamformer (¶ [0077]);
perform image processing to generate ultrasound image based on the ultrasound signal (¶ [0050]); and
display the generated ultrasound image (¶ [0050]).
Jin does not disclose that the control unit is configured to receive a user input to select between the first probe and the second probe; and based on the user input, activate the selected probe between the first probe and the second probe.
Marteau teaches receiving a user input to select between a first probe and a second probe, and based on the user input, activating the selected probe between the first probe and the second probe (implied: “In some embodiments of the present invention, to control whether transducer 106 or 107 is electrically activated, buttons 204 and 206, respectively, are provided on multi-headed probe 52.” col. 4, lines 54-57).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Jin by configuring the control unit to receive a user input to select between a first probe and a second probe, and based on the user input, activate the selected probe between the first probe and the second probe, as taught by Marteau; and the ordinarily skilled artisan would have been motivated to make this modification in order to allow the user to be able to select and activate one of the two probes.
Regarding claim 3: Jin further discloses a user input unit (140) including at least one of a button, a key pad, a dome switch, a touch pad, a jog wheel, and a jog switch (¶ [0065]).
Regarding claim 4: Jin further discloses a sensor (sensing unit 160) configured to detect the electrical signal of the activated probe (¶ [0073]-[0074]).
Regarding claim 5: Jin further discloses that the first activation indicator and the second activation indicator include a light-emitting diode (LED) lamp (¶ [0075]).
Regarding claim 6: Jin further discloses that the different specifications include at least one of a frequency of the ultrasound signal to be transmitted, a bandwidth of the ultrasound signal to be transmitted, a total number of channels of the first probe and the second probe, and a resolution of the first probe and the second probe (¶ [0054]).
Examiner Remarks Regarding Prior Art
MPEP 2173.06 recites in part:
II. PRIOR ART REJECTION OF CLAIM REJECTED AS INDEFINITE
All words in a claim must be considered in judging the patentability of a claim against the prior art. In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970). The fact that terms may be indefinite does not make the claim obvious over the prior art. When the terms of a claim are considered to be indefinite, at least two approaches to the examination of an indefinite claim relative to the prior art are possible.
First, where the degree of uncertainty is not great, and where the claim is subject to more than one interpretation and at least one interpretation would render the claim unpatentable over the prior art, an appropriate course of action would be for the examiner to enter two rejections: (A) a rejection based on indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; and (B) a rejection over the prior art based on the interpretation of the claims which renders the prior art applicable. See, e.g., Ex parte Ionescu, 222 USPQ 537 (Bd. App. 1984). When making a rejection over prior art in these circumstances, it is important for the examiner to point out how the claim is being interpreted. Second, where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
The first approach is recommended from an examination standpoint because it avoids piecemeal examination in the event that the examiner’s 35 U.S.C. 112, second paragraph rejection is not affirmed, and may give applicant a better appreciation for relevant prior art if the claims are redrafted to avoid the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph rejection.
As discussed above, there is a major conflict/inconsistency between claim 7 as currently amended and the Specification as originally filed (i.e., it is unclear which element detects the activated probe). Therefore, there is a great deal of confusion and uncertainty as to the proper interpretation of the limitation in question. Any attempt to reject the claim on the basis of prior art would inherently involve speculation or assumptions about the limitation in the question because each interpretation fails to explain the aforementioned conflict/inconsistency. It would therefore not be proper to reject the claim 7 or any dependent claim thereof on the basis of prior art because rejections should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Response to Arguments
Applicant's arguments filed 3/31/2026 have been fully considered but they are not persuasive.
Regarding the priority issues (specifically, the limitation of “receiving a user input to select between the first probe and the second probe”), Applicant points to the paragraph starting from line 13 of page 16 of the prior-filed application US 14/060,282.
Examiner response: This is not found to be persuasive. Claim 1 recites in part “receiving a user input to select between the first probe and the second probe; based on the user input, activating the selected probe between the first probe and the second probe”. Claim 2 recites similar language. In other words, the claims clearly state that probe selection is for activation of the selected probe; i.e., the user selects which probe to activate. Although the aforementioned paragraph of the prior-filed application uses the words “and then selects the probe 112”, the prior-filed application does not clearly recite what the purpose of this selection is for, let alone that it is for activating the probe; i.e., the prior-filed application does not disclose that the user selects which probe to activate.
Regarding the priority issues (specifically, the limitation of “based on the user input, activate the selected probe between the first probe and the second probe”), Applicant points to the same paragraph again, as well as the next paragraph of the prior-filed application.
Examiner response: This is not found to be persuasive. The two paragraphs cited by the Applicant do not disclose activating a probe based on a user selection between the probes; i.e., the prior-filed application does not disclose the user selects which probe to activate. Applicant cannot point to any paragraph that discloses this limitation because it simply does not exist in the prior-filed application. The prior-filed application merely discloses that the portable ultrasound apparatus “recognizes” or “detects” (via the sensing unit) which probe is active. More specifically, the Specification of the prior-filed application discloses the feature of the sensing unit 160 which detects an activated probe. The different embodiments of the sensing unit detect which probe is active by different physical measuring technique. In one example, the sensing unit is some kind of motion or orientation sensor such as an accelerator or gyroscope (i.e., it detects which probe is downward facing, presumably under the somewhat flawed assumption that the downward facing probe is the activated probe); and in another example, the sensing unit detects an electrical signal of the activated probe. This sensing unit 160 thus allows or enables the portable ultrasound apparatus 100 to “recognize” or “detect” which of the two probes is active.
Otherwise, think about it like this with the following thought experiment: If, for argument’s sake, the portable ultrasound apparatus receives user input from the user indicating/selecting which probe to activate and then activates the selected probe on the basis of the user selection as alleged by the Applicant in their arguments, then why even have the sensing unit in the first place? Why does the portable ultrasound apparatus need to “recognize” or “detect” (via the sensing unit) which probe is active? Shouldn’t the portable ultrasound apparatus already know that the active probe is the one that it activated on the basis of the user selection? Based on the presence of the sensing unit feature (which is clearly disclosed in the Specification of the prior-filed application), the ordinarily skilled artisan reading the Specification of the prior-filed would simply not understand it as providing support for activating one of the two probes based on user selection of which of two probes to activate as alleged by the Applicant.
For the reasons above, the claims are considered to contain subject matter which was not described in the prior-filed application in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the prior-filed application was filed, had possession of the claimed invention.
The amendment to the Specification is sufficient to overcome the objection regarding the term “magnetic resonance”.
Applicant argues against the objection to the Specification for lacking antecedent basis for the aforementioned user selected probe activation limitation by referring to the same arguments discussed above. Applicant’s argument is not found to be persuasive for the same reasons discussed above.
Regarding the rejection under §103 over prior art, Applicant argues that claim 1 has been amended to recite “detecting electrical signal of the activated probe; based on a result of the detection, lighting an activation indicator corresponding to the activated probe among the first activation indicator and the second activation indicator”. Applicant then states that this limitation is supported in the prior-filed application (14/060,282) at the paragraph starting from line 23 in page 12. Applicant then argues that Jin does not teach this limitation.
Examiner response: This is not found to be persuasive. It is initially noted that Jin qualifies as prior art because (1) the effective filing date of the claimed invention has been determined to be the actual filing date of this application (i.e., 12/30/2024) as discussed above in the Priority section of the Office Action, and (2) Jin was published on 10/9/2014 which is before 12/30/2024.
It is further noted that Jin is the pre-grant publication of the prior-filed application; i.e., application 14/060,282 was published as Jin, US 2014/0303501 A1. In other words, the prior-filed application and Jin disclose the same subject matter. Applicant cannot argue that one (the prior-filed application) discloses the limitation while the other (Jin) doesn’t because they both disclose the same subject matter. It is further noted that Jin qualifies as prior art because the effective filing date of the claimed invention has been determined to be the filing date of this application (i.e., 12/30/2024) as discussed above in the Priority section of the Office Action and Jin was published on 10/9/2014 which is before 12/30/2024. Applicant’s arguments are not found to be persuasive; therefore, the rejection is maintained.
Applicant doesn’t provide any additional arguments for claims 2 and 7 beyond what was said for claim 1. Therefore, the rejection is maintained for the same reasons.
The terminal disclaimer is sufficient to overcome the non-statutory double patenting rejection raised in the previous Office Action.
Conclusion
This application is not in condition for allowance; no claim is allowed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLIN T. SAKAMOTO whose telephone number is (571)272-4958. The examiner can normally be reached Monday - Friday, ~9AM-5PM Pacific.
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, KEITH M. RAYMOND can be reached at (571) 270-1790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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COLIN T. SAKAMOTO
Primary Examiner
Art Unit 3798
/COLIN T. SAKAMOTO/Primary Examiner, Art Unit 3798
16 April 2026
1 See application 18/389,161, Specification as originally filed, page 10
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