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 .
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).
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Claims 39-41, 43-52, and 54-59 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7-15, and 19-24 of U.S. Patent No. 11,592,391 (Li ‘391). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the current application are anticipated by the claims of Li ‘391.
Regarding claim 39:
Li ‘391 discloses a method for detecting infrared light absorption in a sample by mid-infrared spectroscopy, the method comprising the steps:
(a) generating, by a first light source, a pump beam having a first wavelength of mid- infrared radiation (Claim 1);
(b) generating, by a second light source, a probe beam having a second wavelength, wherein the second wavelength is different than the first wavelength (Claim 1);
(c) focusing the pump beam using a reflective objective (Claim 1) on to a first side of the sample (Claim 4);
(d) focusing the probe beam using a refractive objective (Claim 1) on to a second side of the sample (Claim 4), wherein the first side of the sample is opposite to the second side of the sample (Claim 4);
(e) collecting, by a detector, a portion of the probe beam reflected from the sample (Claim 1); and
(f) analyzing the portion of the probe beam collected from the sample to construct a signal indicative of infrared absorption by the sample (Claim 1).
Regarding claim 40:
Li ‘391 discloses the method according to claim 39, wherein the infrared absorption by the sample is analyzed and the signal is constructed with submicron spatial resolution (claim 1).
Regarding claim 41:
Li ‘391 discloses the method according to claim 39, further comprising the step of repeating steps (c)-(f) at plurality of regions on the sample to construct a map of the signal indicative of infrared absorption with a spatial resolution of less than 1 micron (Claim 3).
Regarding claim 43:
Li ‘391 discloses the method according to claim 39, further comprising the step: modulating the pump beam according to a first modulation frequency (Claim 7).
Regarding claim 44:
Li ‘391 discloses The method according to claim 43, wherein the first modulation frequency is greater than or equal to 100 kHz (claim 8).
Regarding claim 45:
Li ‘391 discloses the method according to claim 39, wherein the first light source is a mid-infrared laser having at least one emission wavelength within the range of 3 to 25 micrometers (Claim 9).
Regarding claim 46:
Li ‘391 discloses the method according to claim 39, wherein the second light source is a visible light laser having at least one emission wavelength that is less than or equal to 800 nanometers (Claim 10).
Regarding claim 47:
Li ‘391 discloses the method according to claim 39, wherein the analyzing step comprises:
sending a signal from the detector to a lock-in amplifier (claim 11) configured to determine at least one of (i) an amplitude (Claim 11) and (ii) a phase of the probe beam reflecting from the sample (Claim 11);
providing the lock-in amplifier a reference signal to a modulation frequency of the pump laser (claim 11); and
using the lock-in amplifier to construct the signal indicative of infrared absorption by the sample (claim 11).
Regarding claim 48:
Li ‘391 discloses the method according to claim 39, wherein the sample is held by a cell adapted for high infrared transmission, wherein the cell includes sapphire windows (Claim 12).
Regarding claim 49:
Li ‘391 discloses the method according to claim 39, wherein absorption of infrared radiation from the pump beam by the sample results in a temperature increase of the sample (Claim 13) and wherein propagation of the probe beam is affected by a thermal lens formed by the temperature increase (Claim 13).
Regarding claim 50:
Li ‘391 discloses a system for detecting infrared light absorption in a, the system comprising:
(a) a first light source operable to generate a pump beam having a first wavelength of mid-infrared radiation (Claim 14);
(b) a second light source operable to generate a probe beam having a second wavelength, wherein the second wavelength is different than the first wavelength (Claim 14);
(c) a reflective objective (claim 14); adapted to focus the pump beam onto a first side of the sample (Claim 16);
(d) a refractive objective (claim 14); adapted to focus the probe beam onto a second side of the sample, wherein the first side of the sample is opposite to the second side of the sample (claim 16);
(e) a detector operable to collect and measure at least a portion of the probe beam reflected from the sample (Claim 14); and
(f) a signal processing device (Claim 14) configured to generate, based on the portion of the probe light collected by the detector, a signal indicative of an amount of infrared light absorbed by the sample (Claim 14).
Regarding claim 51:
Li ‘391 discloses the system according to claim 50, wherein the infrared absorption by the sample is analyzed and the signal is constructed with submicron spatial resolution (Claim 14).
Regarding claim 52:
Li ‘391 discloses the system according to claim 50, wherein the system further comprises:
a movable platform coupled to the sample and operable to move the sample in two dimensions with respect to the first light source (Claim 15) and the second light source to illuminate a plurality of regions of the sample with the pump beam focused by the reflective objective (Claim 15) and the probe beam focused by the refractive objective (Claim 15).
Regarding claim 54:
Li ‘391 discloses the system according to claim 50, wherein the first light source is further operable to modulate the pump beam according to a first modulation frequency (Claim 19).
Regarding claim 55:
Li ‘391 discloses the system according to claim 54, wherein the first modulation frequency is greater than or equal to 100 kHz (Claim 20).
Regarding claim 56:
Li ‘391 discloses the system according to claim 50, wherein the first light source is a mid-infrared laser having at least one emission wavelength within the range of 3 to 25 micrometers (Claim 21).
Regarding claim 57:
Li ‘391 discloses the system according to claim 50, wherein the second light source is a visible light laser having at least one emission wavelength that is less than or equal to 800 nanometers (Claim 22).
Regarding claim 58:
Li ‘391 discloses the system according to claim 50, wherein the signal processing device is a lock- in amplifier configured to:
receive a signal from the detector indicative of at least a portion of the probe beam coming from the sample (Claim 23);
receive a signal indicative of a modulation frequency of the focused pump beam (Claim 23);
determine from the signal from detector and the signal indicative of the modulation frequency of the pump beam at least one of (i) an amplitude (Claim 23) and (ii) a phase of the probe beam coming from the sample (Claim 23); and
generate the signal indicative of the amount of infrared light absorbed by the sample based on the determined at least one of (i) the amplitude (claim 23) and (ii) the phase of the probe beam reflecting from the sample (Claim 23).
Regarding claim 59:
Li ‘391 discloses the system according to claim 50, wherein the signal processing device is further configured to construct the signal indicative of infrared absorption by the sample at a plurality of mid-infrared wavelengths of the pump beam (Claim 24).
Claim Objections
Claims 50-59 objected to because of the following informalities:
Regarding claim 50, the limitation “A system for detecting infrared light absorption in a” should be changed to “A system for detecting infrared light absorption” in order to correct a minor informality. Claims 51-59 are objected to by virtue of their dependency.
Appropriate correction is required.
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.
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 53 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.
Regarding claim 53, the claim recites “further comprising the step of repeating steps (c)-(f) at plurality of regions on the sample to construct a map of the signal indicative of infrared absorption with a spatial resolution of less than 1 micron” which renders the claim indefinite because claims 50 and 53 fail to recite limitations directed to steps. The claim relies upon claim 50 which is directed to a system. Claim 39 is directed to a method which has steps (c)-(f). The Examiner has interpreted the claim as “The method of claim 39”.
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.
Claims 39-43, 45-54, 56, 58-59 are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0188602 (Chinn) in view of Mertiri (“Nonlinear Midinfrared Photothermal Spectroscopy Using Zharov Splitting and Quantum Cascade Lasers”).
Regarding claim 39:
Chinn discloses a method for detecting infrared light absorption in a sample, the method comprising the steps:
(a) generating, by a first light source, a pump beam having a first wavelength ([0025], pump beam from pump source; claim 8 wavelength);
(b) generating, by a second light source, a probe beam having a second wavelength ([0043], probe source having a different wavelengths), wherein the second wavelength is different than the first wavelength ([0043], probe source having a different wavelengths);
(c) focusing the pump beam using a reflective objective on to a first side of the sample (Fig. 4A-4C, 310; focusing pump beam 340);
(d) focusing the probe beam using a refractive objective on to a second side of the sample (Fig. 4A-4C, 310; focusing probe beam 312), wherein the first side of the sample is opposite to the second side of the sample (fig. 4A-4C, side 320);
(e) collecting, by a detector, a portion of the probe beam reflected from the sample ([0044], detection of signals); and
(f) analyzing the portion of the probe beam collected from the sample to construct a signal indicative of infrared absorption by the sample ([0049], high resolution images).
However, Chinn fails to disclose mid-infrared spectroscopy, and a first wavelength of mid- infrared radiation.
Mertiri teaches mid-infrared spectroscopy (Figure 1; Pg. 696, right col, midinfrared photothermal spectroscopy), and a first wavelength of mid-infrared radiation (Figure 1; Pg. 696, right col, midinfrared photothermal spectroscopy).
It would have been obvious to one of an ordinary skill in the art before the effective filing date to combine the method of Chinn with the mid-IR pump taught by Mertiri in order to increase sensitivity and improve image resolution (Mertiri; Pg. 696, left col.). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 40:
The combination of Chinn and Mertiri discloses the method according to claim 39, wherein the infrared absorption by the sample is analyzed and the signal is constructed with submicron spatial resolution (Chinn; [0049], subwavelength images).
Regarding claim 41:
The combination of Chinn and Mertiri discloses the method according to claim 39, further comprising the step of repeating steps (c)-(f) at plurality of regions on the sample to construct a map of the signal indicative of infrared absorption with a spatial resolution of less than 1 micron (Chinn; [0039], repeat scanning to generate image or map at sub-wavelength resolution).
Regarding claim 42:
The combination of Chinn and Mertiri discloses the method according to claim 39, further comprising constructing the signal indicative of infrared absorption by the sample at a plurality of mid-infrared wavelengths of the pump beam (Mertiri; Fig. 3d).
It would have been obvious to one of an ordinary skill in the art before the effective filing date to combine the method of Chinn with the mid-IR pump taught by Mertiri in order to increase sensitivity and improve image resolution (Mertiri; Pg. 696, left col.). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 43:
The combination of Chinn and Mertiri discloses the method according to claim 39, further comprising the step:
modulating the pump beam according to a first modulation frequency (Chinn; [0042], modulated pump source).
Regarding claim 45:
The combination of Chinn and Mertiri discloses the method according to claim 39, wherein the first light source is a mid-infrared laser having at least one emission wavelength within the range of 3 to 25 micrometers (Mertiri; Pg. 696, mid-IR).
Regarding claim 46:
The combination of Chinn and Mertiri discloses the method according to claim 39, wherein the second light source is a visible light laser having at least one emission wavelength that is less than or equal to 800 nanometers (Chinn; Claim 8).
Regarding claim 47:
The combination of Chinn and Mertiri discloses the method according to claim 39, wherein the analyzing step comprises:
sending a signal from the detector to a lock-in amplifier (Chinn; [0037], lock-in phase) configured to determine at least one of (i) an amplitude (Chinn; [0037], amplitude) and (ii) a phase of the probe beam reflecting from the sample (Chinn; [0037], phase);
providing the lock-in amplifier a reference signal to a modulation frequency of the pump laser (Chinn; [0037], lock-in amplifier for recording images); and
using the lock-in amplifier to construct the signal indicative of infrared absorption by the sample (Chinn; [0037], lock-in amplifier for recording images).
Regarding claim 49:
The combination of Chinn and Mertiri discloses the method according to claim 39, wherein absorption of infrared radiation from the pump beam by the sample results in a temperature increase of the sample (Chinn; Fig. 4A-4C, 310; focusing pump beam 340 heats sample 330); and wherein propagation of the probe beam is affected by a thermal lens formed by the temperature increase (Chinn; Fig. 4A-4C, 310; 312 images sample which is affected by the temperature increase).
Regarding claim 50:
Chinn discloses a system for detecting infrared light absorption in a, the system comprising:
(a) a first light source operable to generate a pump beam having a first wavelength ([0025], pump beam from pump source; claim 8 wavelength);
(b) a second light source operable to generate a probe beam having a second wavelength ([0043], probe source having a different wavelengths), wherein the second wavelength is different than the first wavelength ([0043], probe source having a different wavelengths);
(c) a reflective objective (Fig. 4A-4C, 310) adapted to focus the pump beam onto a first side of the sample (Fig. 4A-4C, 330);
(d) a refractive objective (Fig. 4A-4C, 310) adapted to focus the probe beam onto a second side of the sample (Fig. 4A-4C, 320), wherein the first side of the sample is opposite to the second side of the sample (Fig. 4A,-4C, 320 and 330);
(e) a detector (Fig. 4A-4C, 360, detector that collects signals) operable to collect and measure at least a portion of the probe beam reflected from the sample; and
(f) a signal processing device ([0032], electronics that post process images) configured to generate, based on the portion of the probe light collected by the detector, a signal indicative of an amount of infrared light absorbed by the sample ([0032], post process images).
However, Chinn fails to disclose a first wavelength of mid-infrared radiation.
Mertiri teaches a first wavelength of mid-infrared radiation (Figure 1; Pg. 696, right col, midinfrared photothermal spectroscopy).
It would have been obvious to one of an ordinary skill in the art before the effective filing date to combine the system of Chinn with the mid-IR pump taught by Mertiri in order to increase sensitivity and improve image resolution (Mertiri; Pg. 696, left col.). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 51:
The combination of Chinn and Mertiri discloses the system according to claim 50, wherein the infrared absorption by the sample is analyzed and the signal is constructed with submicron spatial resolution (Chinn; [0049], subwavelength images).
Regarding claim 52:
The combination of Chinn and Mertiri discloses the system according to claim 50, The system according to claim 50, wherein the system further comprises:
a movable platform (Chinn; [0029], xyz stage) coupled to the sample and operable to move the sample in two dimensions with respect to the first light source and the second light source to illuminate a plurality of regions of the sample with the pump beam focused by the reflective objective and the probe beam focused by the refractive objective (Chinn; [0029] stage moves in three dimensions).
Regarding claim 53, as best understood:
The combination of Chinn and Mertiri discloses the method according to claim 39, further comprising the step of repeating steps (c)-(f) at plurality of regions on the sample to construct a map of the signal indicative of infrared absorption with a spatial resolution of less than 1 micron (Chinn; [0039], repeat scanning to generate image or map at sub-wavelength resolution).
Regarding claim 54:
The combination of Chinn and Mertiri discloses the system according to claim 50, wherein the first light source is further operable to modulate the pump beam according to a first modulation frequency (Chinn; [0042], modulated pump source).
Regarding claim 56:
The combination of Chinn and Mertiri discloses the system according to claim 50, wherein the first light source is a mid-infrared laser having at least one emission wavelength within the range of 3 to 25 micrometers (Mertiri; Pg. 696, mid-IR).
It would have been obvious to one of an ordinary skill in the art before the effective filing date to combine the system of Chinn with the mid-IR pump taught by Mertiri in order to increase sensitivity and improve image resolution (Mertiri; Pg. 696, left col.). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 57:
The combination of Chinn and Mertiri discloses the system according to claim 50, wherein the second light source is a visible light laser having at least one emission wavelength that is less than or equal to 800 nanometers (Chinn; Claim 8).
Regarding claim 58:
The combination of Chinn and Mertiri discloses the system according to claim 50, wherein the signal processing device is a lock- in amplifier (Chinn; [0037], lock-in phase) configured to:
receive a signal from the detector indicative of at least a portion of the probe beam coming from the sample (Chinn; [0037], signals);
receive a signal indicative of a modulation frequency of the focused pump beam ( Chinn; [0035]-[0037], modulation);
determine from the signal from detector and the signal indicative of the modulation frequency of the pump beam at least one of (i) an amplitude (Chinn; [0037], amplitude) and (ii) a phase of the probe beam coming from the sample (Chinn; [0037], phase); and
generate the signal indicative of the amount of infrared light absorbed by the sample based on the determined at least one of (i) the amplitude (Chinn; [0037], amplitude) and (ii) the phase of the probe beam reflecting from the sample (Chinn; [0037], phase).
Regarding claim 59:
The combination of Chinn and Mertiri discloses the system according to claim 50, wherein the signal processing device is further configured to construct the signal indicative of infrared absorption by the sample at a plurality of mid-infrared wavelengths of the pump beam (Mertiri; Fig. 3d).
It would have been obvious to one of an ordinary skill in the art before the effective filing date to combine the method of Chinn with the mid-IR pump taught by Mertiri in order to increase sensitivity and improve image resolution (Mertiri; Pg. 696, left col.). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claims 44 and 55 are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0188602 (Chinn) in view of Mertiri (“Nonlinear Midinfrared Photothermal Spectroscopy Using Zharov Splitting and Quantum Cascade Lasers”) as applied to claims 43 and 54, and further in view of Hovinen (U.S. 6,532,070).
Regarding claim 44:
The combination of Chinn and Mertiri discloses the method according to claim 43.
However, the combination of Chinn and Mertiri fails to disclose wherein the first modulation frequency is greater than or equal to 100 kHz.
Hovinen teaches wherein the first modulation frequency is greater than or equal to 100 kHz (Col. 4, lines 26-40, 100 KHz).
It would have been obvious to one of an ordinary skill in the art before the effective filing date to combine the method of Chinn with the modulation taught by Hovinen in order to improve the accuracy of the results (Hovinen; Col. 11, Lines 38-40.). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Regarding claim 55:
The combination of Chinn and Mertiri discloses the system according to claim 54.
However, the combination of Chinn and Mertiri fails to disclose wherein the first modulation frequency is greater than or equal to 100 kHz.
Hovinen teaches wherein the first modulation frequency is greater than or equal to 100 kHz (Col. 4, lines 26-40, 100 KHz).
It would have been obvious to one of an ordinary skill in the art before the effective filing date to combine the system of Chinn with the modulation taught by Hovinen in order to improve the accuracy of the results (Hovinen; Col. 11, Lines 38-40.). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claim 48is rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0188602 (Chinn) in view of Mertiri (“Nonlinear Midinfrared Photothermal Spectroscopy Using Zharov Splitting and Quantum Cascade Lasers”) as applied to claim 39, and further in view of Fishmann (U.S. 5,574,562).
Regarding claim 48:
The combination of Chinn and Mertiri discloses the method according to claim 39.
However, the combination of Chinn and Mertiri fails to disclose wherein the sample is held by a cell adapted for high infrared transmission, wherein the cell includes sapphire windows.
Fishman discloses wherein the sample is held by a cell adapted for high infrared transmission (Col. 7, lines 25-50, sapphire windows), wherein the cell includes sapphire windows (Col. 7, lines 25-50, sapphire windows).
It would have been obvious to one of an ordinary skill in the art before the effective filing date to combine the method of Chinn with the cell taught by Fish in order to improve sample positioning for improved focus and error reduction (Fishman; Col. 7, Lines 25-58). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SOORENA KEFAYATI whose telephone number is (469)295-9078. The examiner can normally be reached M to F, 7:30 am to 4:30 pm.
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/S.K./Examiner, Art Unit 2884
/DAVID J MAKIYA/Supervisory Patent Examiner, Art Unit 2884
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