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 Objections
Claims 4-5 and 7-8 are objected to because of informalities, which appear to be minor draft errors causing grammatical and/or antecedent basis issues.
As noted in the following format (location of objection: suggestion for correction), the following objections may be overcome by making the corresponding corrections: (claim 4, line 2: inserting the word --the -- before “same”), (claim 5, line 1: inserting --for the second light -- after “wherein the irradiation conditions”), (claim 5, line 2: inserting --the -- before “same”), (claim 7, line 2, “the third light”: changing the dependency of claim 7 from claim 1 to claim 6), (claim 7, line 2: inserting --the -- before “same”), (claim 8, line 1: inserting --for the third light -- after “wherein the irradiation conditions”), and (claim 8, line 2: inserting --the -- before “same”).
Any dependent claim of the claim(s) with the noted objections above is also objected to by virtue of its claim dependency. For purposes of examination, the claims have been treated as such with the correction(s). 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.
Claims 1-9 and 11-14 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 wherein the first light and the second light have a center wavelength in a wavelength band of 400 nm to 1200 nm (i.e., claim 10), does not reasonably provide enablement for the broad scope of “light.” 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 “light” as being any light included in the spectrum of electromagnetic radiation. For the Examiner’s analysis of whether there is lack of enablement for the entire scope of "light", 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 wherein the first light and the second light have a center wavelength in a wavelength band of 400 nm to 1200 nm. However, the scope of protection sought by the claims is "light" which includes any light in the spectrum of electromagnetic 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 light and/or light with energy greater than 1 ZeV, 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 “light” in general, which can include any light in the spectrums of electromagnetic radiation. However, the subject matter to which the subject matter pertains in the specification is wherein the first light and the second light have a center wavelength in a wavelength band of 400 nm to 1200 nm (i.e., claim 10).
(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 subject matter, wherein the first light and the second light have a center wavelength in a wavelength band of 400 nm to 1200 nm, to which the invention pertains. However, the state of the prior art does not have any direction or guidance with regard to all light in the broad scope of "light", such as cosmic light and/or light with energy greater than 1 ZeV, 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 subject matter, wherein the first light and the second light have a center wavelength in a wavelength band of 400 nm to 1200 nm, to which the invention pertains. However, one of ordinary skill would not know how to make and/or use all light in the broad scope of "light", such as cosmic light and/or light with energy greater than 1 ZeV, 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 wherein the first light and the second light have a center wavelength in a wavelength band of 400 nm to 1200 nm. However, there is no direction or guidance with regard to all light in the broad scope of "light", such as cosmic light and/or light with energy greater than 1 ZeV, 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 the first light and the second light having a center wavelength in a wavelength band of 400 nm to 1200 nm. 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 lights that do not have an existing emission device, such as devices emitting cosmic light and/or light with energy greater than 1 ZeV.
(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 light, there are devices for various lights that do not exist, such as cosmic light and/or light with energy greater than 1 ZeV. 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 wherein the first light and the second light have a center wavelength in a wavelength band of 400 nm to 1200 nm, the specification does not enable one to make and/or use the claimed invention with other types of light, such as cosmic light and/or light with energy greater than 1 ZeV, 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 incorporating all of claim 10 into claim 1. Any dependent claims are rejected for the above reason by virtue of their claim dependency.
Claims 1-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: wherein the first information is acquired by acquiring scattered light from the sample in a wavelength band of 1800 cm−1 to 2700 cm−1 (i.e., claim 12); and wherein the sample including at least a resin in which degradation proceeds with a structural change in which the functional group is generated due to split of a main skeleton of the resin is a target of the analysis (i.e., claim 14).
The analysis method for acquiring information about degradation of a sample including a resin using information concerning an optical density of a functional group contained in the resin. However, this only happens when in the acquired optical spectrum, the Raman scattered light components are not observed continuously and uniformly with respect to a wavenumber shift, but are observed in a specific band called a fingerprint region, or a CH or OH stretching vibration region, at the lower side and the higher side of the wavenumber shift, with a wavenumber band of 1800 cm-1 to 2700 cm-1 between a fingerprint region and a stretching vibration region being called a silent region, wherein in the silent region, a Raman scattered light peak is not significantly observed (par. 32 in the specification). Since this spectrum observation is necessary, the omitted steps of wherein the first information is acquired by acquiring scattered light from the sample in a wavelength band of 1800 cm−1 to 2700 cm−1 (i.e., claim 12) is an essential omission amounting to a gap between the steps.
Additionally, the analysis method for acquiring information about degradation of a sample including a resin using information concerning an optical density of a functional group contained in the resin, requires wherein the sample including at least a resin in which degradation proceeds with a structural change in which the functional group is generated due to split of a main skeleton of the resin is a target of the analysis (i.e., claim 14). Without this structural change, the degradation will not be observed, which would become an essential omission amounting to a gap between the steps.
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.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takaya et al. (“Degradation Index of Acrylic Top Coat by Raman Spectroscopy”; hereinafter Takaya).
Regarding claim 1, Takaya (sections 2-5; table 1; figs. 3-12) discloses an analysis method for acquiring information about degradation of a sample (acrylic top coat) including a resin using information concerning an optical density of a functional group (- COOH) contained in the resin, the analysis method comprising: acquiring first information concerning the optical density of the functional group based on a first fluorescence spectrum (sections 2.3-3; figs. 3-5) measured by irradiating a predetermined region of the sample with first light (section 2.1, table 1); and acquiring third information (using formula 1) concerning degradation of the sample based on the first information and the second information (sections 4-5; figs. 10-12; with a photo-degradation curve using formula 1 for relative fluorescence intensity, fluorescence intensity after n minutes, and initial fluorescence intensity).
However, Takaya fails to disclose acquiring second information concerning the optical density based on a second fluorescence spectrum measured by irradiating at least a part of the predetermined region with second light after the irradiation of the first light (i.e., doing the same measurement twice).
It would have been obvious, to one having ordinary skill in the art before the effective filing date of the invention, to modify Takaya with a second step of repeating the same measurement, since mere duplication of the essential steps involves only routine skill in the art. One would have been motivated to make such a modification for obtaining more data or double checking to see if a measurement was done correctly.
Regarding claim 2, Takaya discloses wherein the third information includes information concerning degradation of the sample immediately before the sample is subjected to photobleaching by the first light and the second light (formula 1).
Regarding claim 3, Takaya discloses acquiring fourth information concerning photobleaching of the functional group based on the first information and the second information (sections 4-5; figs. 10-12).
Regarding claims 4-5, Takaya as modified above suggests claim 1.
However, Takaya fails to disclose wherein irradiation conditions for the second light are same as irradiation conditions for the first light with respect to an irradiation wavelength, and wherein the irradiation conditions are same as the irradiation conditions for the first light with respect to an irradiation intensity.
It would have been obvious, to one having ordinary skill in the art before the effective filing date of the invention, to modify Takaya with a second step of repeating the same measurement, since mere duplication of the essential steps involves only routine skill in the art. One would have been motivated to make such a modification for obtaining more data or double checking to see if a measurement was done correctly.
Regarding claim 6, Takaya as modified above suggests claim 1.
However, Takaya fails to disclose causing bleaching by irradiating at least a part of the predetermined region with third light after the irradiation of the first light and before the irradiation of the second light.
It would have been obvious, to one having ordinary skill in the art before the effective filing date of the invention, to modify Takaya with the bleaching and step arrangement, since mere duplication of the essential steps involves only routine skill in the art. One would have been motivated to make such a modification for obtaining more data or double checking to see if a measurement was done correctly.
Regarding claims 7-8, Takaya as modified above suggests claim 6.
However, Takaya fails to disclose wherein irradiation conditions for the third light are same as irradiation conditions for the first light with respect to an irradiation wavelength, and wherein the irradiation conditions are same as the irradiation conditions for the first light with respect to the irradiation intensity.
It would have been obvious, to one having ordinary skill in the art before the effective filing date of the invention, to modify Takaya with a third step of repeating the same measurement, since mere duplication of the essential steps involves only routine skill in the art. One would have been motivated to make such a modification for obtaining more data or double checking to see if a measurement was done correctly.
Regarding claim 9, Takaya as modified above suggests claim 6.
However, Takaya fails to disclose acquiring preliminary information concerning the degradation to determine whether to execute the acquisition of the second information based on the first information.
It would have been obvious, to one having ordinary skill in the art before the effective filing date of the invention, to modify Takaya with a preliminary step that repeats the same measurement, since mere duplication of the essential steps involves only routine skill in the art. One would have been motivated to make such a modification for seeing if everything is set up properly first.
Regarding claim 10, Takaya discloses wherein the first light and the second light have a center wavelength in a wavelength band of 400 nm to 1200 nm (fig. 2.3; fig. 5: 532 nm).
Regarding claim 11, Takaya as modified above suggests claim 1. Takaya discloses wherein the sample is irradiated with the first light at an illuminance (figs. 3-12).
However, Takaya fails to disclose an illuminance of 100 j/m2 or more.
It would have been obvious, to one having ordinary skill in the art before the effective filing date of the invention, to modify Takaya with an illuminance of 100 j/m2 or more, since where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. One would have been motivated to make such a modification for ensuring an output signal.
Regarding claim 12, Takaya discloses wherein the first information is acquired by acquiring scattered light from the sample in a wavelength band of 1800 cm−1 to 2700 cm−1 (sections 3-4; figs. 3, 5, 9-10).
Regarding claim 13, Takaya as modified above suggests claim 1. Takaya discloses wherein the resin includes a polymer (section 1, last paragraph; table 1).
However, Takaya fails to disclose wherein the resin includes one of polypropylene (PP), polyethylene (PE), polycarbonate (PC), and polystyrene (PS).
It would have been obvious, to one having ordinary skill in the art before the effective filing date of the invention, to modify Takaya with a different resin, since it is within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use. One would have been motivated to make such a modification for testing different materials.
Regarding claim 14, Takaya discloses wherein the sample including at least a resin in which degradation proceeds with a structural change in which the functional group is generated due to split of a main skeleton of the resin is a target of the analysis (section 3).
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
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