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
Claim 14 is objected to because of the following informality: In Line 4, the Examiner assumes that “concentration measurement system” should actually be --concentration measurement section--. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “signal acquisition section”, “light-emitting element drive section”, computation section”, and “temperature acquisition section” in claims 1, 7, 17, and 19.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If Applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, Applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 3-4 are 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 3 recites “the first drive signal is… equal to or greater than a first threshold voltage” and “the second drive signal is… less than a second threshold voltage”. However, claim 1 recites wherein the first and second drive signals may be first and second current values, respectively. It is unclear to the Examiner how the first and second current values are being compared with the first and second threshold voltages, respectively.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,265,069. Although the claims at issue are not identical, they are not patentably distinct from each other because the preambles are written slightly differently, but the elements comprising the inventions are the same. The following table provides the claim correspondence between the instant application and the issued patent.
US app.
19/062,017
US Patent
12,265,069
1
1
2
2
3
3
4
4
5
5
6
6
7
7
8
8
9
9
10
10
11
11
12
12
13
13
14
14
15
15
16
16
17
1
18
5
19
1
20
5
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-2, 6-7, 13-15, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Takagi (US 2020/0309752), hereinafter Takagi, in view of Ando (US 2020/0191707), hereinafter Ando.
Claim 1: Takagi discloses a concentration computation section that is a concentration measurement section (100, Fig. 1) including a light-emitting element (10) and a first sensor element (20) [0020] and comprises:
a light-emitting element drive section (30) that drives the light-emitting element (10) [0030];
a signal acquisition section (30) that acquires at least an output signal of the first sensor element (20) [0036], a first drive signal (“first drive current” [0038]) that is a first voltage value or a first current value of the light-emitting element (10), and a second drive signal (“second drive current” [0038]) that is a second voltage value or a second current value of the light-emitting element (10); and
a computation section (40) [0030].
Takagi discloses wherein a known gas detection apparatus measures a gas concentration [0002], but is silent with respect to computing the concentration based on the corrected output signal of the first sensor element.
Ando, however, in the same field of endeavor of optical analysis, discloses a concentration computation section that is a concentration measurement section (100, Fig. 3) including a light-emitting element (1) and a first sensor element (4) [0032] and comprises:
a computation section (51) that computes (51a) a concentration based on signals acquired by a signal acquisition section (5) [0045], wherein
the computation section (51) corrects (51d) the output signal of the first sensor element (4) and computes (51a) the concentration [0045].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Takagi’s computation section to compute the concentration based on the corrected output signal of the first sensor element for the purpose of accurately determining the concentration of a measurement target component (Ando [0045]). It is evident then, in Takagi’s modified concentration computation section, that the computation section makes the correction by using the drive signals since these drive signals are what allow first sensor element to have an output value.
Claim 2: Takagi further discloses wherein the first sensor element (20) is a light-receiving element that detects light [0020].
Claim 6: Takagi discloses generating the first and second drive signals for the light-emitting element (10) [0038], but is silent with respect to the first drive signal being a signal for when the light-emitting element emits light, and the second drive signal being a signal for when the light-emitting element does not emit light.
However, Takagi discloses using the first and second drive signals for calibration of the concentration measurement section (100) [0058,0061].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Takagi’s first and second drive signals to be used as a signal when the light-emitting element does and does not emit light, respectively, for the purpose of performing a self-calibration of the concentration measurement section [0058].
Claim 7: Takagi further discloses a temperature acquisition section that acquires temperature (implicit in “a measurement environment in which the temperature of the light-emitting element 10 rises rapidly over a very short time” [0037]), wherein the concentration measurement system, based on the first drive signal, the second drive signal, and temperature information acquired by the temperature acquisition section, corrects the output signal of the first sensor element and computes the concentration (implicit in “the controller 30 may first acquire the first detection current Ip1 and then acquire the second detection current Ip2 after the measurement environment stabilizes” [0037]).
Claim 13: Takagi further discloses wherein the light-emitting element (10) is an LED [0022].
Claim 14: Takagi further discloses wherein
the first sensor element (20) is a light-receiving element [0020], and
the concentration measurement section (100) further comprises a light guide that guides light from the light-emitting element (10) to the first sensor element (20) [0035].
Claim 15: Takagi further discloses an optical filter that is provided in an optical path along which light emitted from the light-emitting element (10) travels until it is received by the first sensor element (20) and that limits wavelength of the light [0029].
Claim 17: Takagi discloses a concentration measurement system (Fig. 1) comprising:
a concentration measurement section (100) including a light-emitting element (10) and a first sensor element (20) [0020] and comprises:
a light-emitting element drive section (30) that drives the light-emitting element (10) [0030];
a signal acquisition section (30) that acquires at least an output signal of the first sensor element (20) [0036], a first drive signal (“first drive current” [0038]) that is a first voltage value or a first current value of the light-emitting element (10), and a second drive signal (“second drive current” [0038]) that is a second voltage value or a second current value of the light-emitting element (10); and
a computation section (40) [0030].
Takagi discloses wherein a known gas detection apparatus measures a gas concentration [0002], but is silent with respect to computing the concentration based on the corrected output signal of the first sensor element.
Ando, however, in the same field of endeavor of optical analysis, discloses a concentration computation section that is a concentration measurement section (100, Fig. 3) including a light-emitting element (1) and a first sensor element (4) [0032] and comprises:
a computation section (51) that computes (51a) a concentration based on signals acquired by a signal acquisition section (5) [0045], wherein
the computation section (51) corrects (51d) the output signal of the first sensor element (4) and computes (51a) the concentration [0045].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Takagi’s computation section to compute the concentration based on the corrected output signal of the first sensor element for the purpose of accurately determining the concentration of a measurement target component (Ando [0045]). It is evident then, in Takagi’s modified concentration measurement system, that the computation section makes the correction by using the drive signals since these drive signals are what allow first sensor element to have an output value.
Claim 19: Takagi discloses a concentration measurement method performed by a concentration measurement system (Fig. 1) that includes:
a concentration measurement section (100) including a light-emitting element (10) and a first sensor element (20) [0020] and comprises:
a light-emitting element drive section (30) that drives the light-emitting element (10) [0030];
a signal acquisition section (30) that acquires at least an output signal of the first sensor element (20) [0036], a first drive signal (“first drive current” [0038]) that is a first voltage value or a first current value of the light-emitting element (10), and a second drive signal (“second drive current” [0038]) that is a second voltage value or a second current value of the light-emitting element (10); and
a computation section (40) [0030].
Takagi discloses wherein a known gas detection apparatus measures a gas concentration [0002], but is silent with respect to computing the concentration based on the corrected output signal of the first sensor element.
Ando, however, in the same field of endeavor of optical analysis, discloses a concentration computation section that is a concentration measurement section (100, Fig. 3) including a light-emitting element (1) and a first sensor element (4) [0032] and comprises:
a computation section (51) that computes (51a) a concentration based on signals acquired by a signal acquisition section (5) [0045],
the concentration measurement method comprising the computation section (51) correcting (51d) the output signal of the first sensor element (4) and computes (51a) the concentration [0045].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Takagi’s computation section to compute the concentration based on the corrected output signal of the first sensor element for the purpose of accurately determining the concentration of a measurement target component (Ando [0045]). It is evident then, in Takagi’s modified concentration measurement method, that the computation section makes the correction by using the drive signals since these drive signals are what allow first sensor element to have an output value.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Takagi, in view of Ando as applied to claim 1 above, and further in view of Kaestle (US 2023/0341321), hereinafter Kaestle.
Claim 12: Takagi discloses wherein the light-emitting element drive section (30) drives the light-emitting element (10) [0030], but is silent with respect to driving through a pulse signal.
Kaestle, however, in the same field of endeavor of optical measurement, discloses wherein a light-emitting element drive section drives a light-emitting element (24) through a pulse signal (Fig. 6) [0144].
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Takagi’s light-emitting element drive section to drive the light-emitting element through a pulse signal for the purpose of generating a corresponding light pulse (Kaestle [0144]), which allows the concentration measurement section to safely use higher energy radiation to obtain an improved signal to noise ratio.
Allowable Subject Matter
Claims 3-4 would be allowable if rewritten to overcome the double patenting rejections and the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 5, 8-11, 16, 18, and 20 would be allowable if rewritten to overcome the double patenting rejections set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to HINA F AYUB whose telephone number is (571)270-3171. The Examiner can normally be reached on 9am-5pm ET Mon-Fri.
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, Tarifur Chowdhury can be reached on 571-272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hina F Ayub/
Primary Patent Examiner
Art Unit 2877
Prosecution Insights