DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
1- This office action is a response to an application filed on 3/13/2025, in which claims 1-17 are currently pending. The Application is a Continuation of PCT/EP2023/074918, filed 09/11/2023, and claims foreign priority to 10 2022 123 464.9, filed 09/14/2022.
Information Disclosure Statement
2- The submitted information disclosure statement(s) (IDS) is(are) in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is(are) being considered by the examiner.
Specification
3- The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which application may become aware in the specification.
Drawings
4- The drawings were received on 3/13/2025. These drawings are acceptable.
Claim Interpretation - 35 USC § 112
5- 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.
6- 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 limitation(s) uses 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 limitation(s) is/are:
beam shaper in claims 1, 3, 5-6, 8-11, 12,
analyzer in claims 1, 3, 9-11,
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/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 this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/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 limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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 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 (MPEP 706.02(m)).
7- The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
In addition, the functional recitation in the claims (e.g. "configured to" or "adapted to" or the like) that does not limit a claim limitation to a particular structure does not limit the scope of the claim. It has been held that the recitation that an element is "adapted to", "configured to", "designed to", or "operable to" perform a function is not a positive limitation but only requires the ability to so perform and may not constitute a limitation in a patentable sense. In re Hutchinson, 69 USPQ 139. (See MPEP 2111.04); see also In In re Giannelli, 739 F.3d 1375, 1378, 109 USPQ2d 1333, 1336 (Fed. Cir. 2014).
Also, it should be noted that it has been held that a recitation with respect to the manner in which a claimed device is intended to be employed does not differentiate the claimed device from a prior art apparatus satisfying the claimed structural limitations Ex-parte Masham 2 USPQ2d 1647 1987).
The claimed system in the instant application is capable of performing the claimed functionality, as is the prior art used in the present office action. The Examiner notes that where the patent office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinehart and sfiligoj, 169 USPQ 226 (C.C.P.A. 1971).
8- Claims 1-2, 13-14 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Mitchell et al. (PGPUB No. 2012/0012757)
As to claims 1, 14, Mitchell teaches a device, and its method of use, for characterizing a particle (Abstract, Figs. 1-9), the device comprising: a light source (100, 200 or equivalent) for projecting at least one light beam (210) along a beam axis (Figs. 1-4), a beam shaper (130 or 230) arranged along the beam axis and configured to adjust a location-dependent intensity distribution of the light beam in a measurement volume which extends partly along the beam axis (detailed in Figs. 1-4), and at least one detector (280) configured to detect at least one measurement beam (260) reflected and/or scattered by the particle when the particle (240) is located in the measurement volume, and to output at least one intensity signal to an analyzer (¶ 70-72; processor is used for analysis), wherein the analyzer is configured to determine a particle characteristic within the measurement volume based on the intensity signal (¶ 15, 43-45; size/position), wherein the beam shaper is configured to shape the location-dependent intensity distribution in a projection plane, which extends within the measurement volume transversely to the beam axis, such that an intensity of the light beam is minimal along an outer contour of an oval and is maximal at at least one point within the oval (Figs. 2-4; ¶ 54-55 for ex; focused light sheet with elliptical/oval intensity distribution 335 as it is known that when focused the light intensity is greater at the center than at the contours.)
(claim 2) wherein the intensity of the light beam is maximal at a surface center point of the oval (¶ 43, 80 for ex; necessary from the focusing step of the beam).
(claim 13) the light source and/or the beam shaper is/are arranged immovably in order to form the measurement volume in a stationary manner, or the light source, and/or the beam shaper, and/or the detector is/are arranged movably in order to displace the measurement volume by at least one scanning movement (¶ 68).
Claim Rejections - 35 USC § 103
9- 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 of this title, 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
10- Claims 3-9, 11, 15-16 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Mitchell in view of Karasikov et al. (Patent No. 11781965)
As to claims 3, 5-8, 15, Mitchell teaches the device and method according to claims 1 and 14.
Mitchell does not teach expressly wherein: the beam shaper is configured to adjust a location-dependent polarization distribution in the projection plane, wherein at least a first polarization and a second polarization with different polarization directions are present along a vertical axis of the oval, and the detector is configured to determine at least two intensities of the measurement beam, which has the first polarization and/or the second polarization, and to output two polarization-dependent intensity signals to the analyzer, and the analyzer is configured to determine the particle characteristic based on the at least two polarization-dependent intensity signals; (claim 5) wherein: the beam shaper is configured to generate the location-dependent polarization distribution such that there is an angle of 180 degrees between the polarization directions of the first polarization and the second polarization, and at least one third polarization is present along the vertical axis of the oval, wherein an angle of 90 degrees is present between the polarization direction of the first polarization and a direction of the third polarization and/or between the polarization direction of the second polarization and the direction of the third polarization; (claim 6) wherein: the beam shaper is configured to generate the location-dependent polarization distribution such that a fourth polarization is present along the vertical axis of the oval and between the first polarization and the third polarization and/or between the second polarization and the third polarization, wherein an angle of 45 degrees is present between a direction of the fourth polarization and the direction of the third polarization; (claim 7) wherein: the detector is configured to determine the at least two intensities of the measurement beam in at least two of the following polarizations: 0 degrees, 45 degrees, 90 degrees, or 135 degrees; (claim 8) wherein the light source and/or the beam shaper is configured to generate at least two light beams with a phase difference therebetween, and wherein the phase difference is 90 degrees in order to adjust a circular polarization in the projection plane at least in regions, or wherein the phase difference is between 0 degrees and 90 degrees or between 90 degrees and 180 degrees in order to adjust an elliptical polarization in the projection plane at least in the regions, even though Mitchell teaches using polarizers to control light beam polarizations (¶ 9, 50), which would suggest to a PHOSITA familiar with a minimum of ellipsometry based particle optical characterization to use beam polarizations to measure/distinguish particle properties (See MPEP § 2143 Sect. I. B-D). As to the angle of 180 degrees between polarization direction of the first/second polarizations, it is construed as the same polarization direction as taught by the optical polarization fundamentals.
Moreover, and to enforce the rejection, Karasikov which in a similar field of endeavor, teaches system and method for particles measurement (Abstract, Figs. 1-19), wherein two light perpendicular light polarizations are used to characterize particle characteristics (Col/ll. 16/22-30, 16/51-60, 18/11-21 for ex.) where polarizers are used to separate the signals with different polarizations (Col/ll. 15/1-14, 16/36-67 for ex.) As to claims 6-8; Karasikov teaches the use of BPS and quarter wave plates for altering the illuminating beam states of polarization (Col/ll. 16/36-50 and claim 19 for ex.) which would make it obvious to one PHOSITA to arbitrarily choose the polarization directions/angles of illumination beams, and the linearity/circularity/ellipticity thereof for full characterization of the particles (See MPEP § 2143 Sect. I. B-D).
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus/method of Mitchell in view of Karasikov’s suggestions so that the beam shaper is configured to adjust a location-dependent polarization distribution in the projection plane, wherein at least a first polarization and a second polarization with different polarization directions are present along a vertical axis of the oval, and the detector is configured to determine at least two intensities of the measurement beam, which has the first polarization and/or the second polarization, and to output two polarization-dependent intensity signals to the analyzer, and the analyzer is configured to determine the particle characteristic based on the at least two polarization-dependent intensity signals; wherein: the beam shaper is configured to generate the location-dependent polarization distribution such that there is an angle of 180 degrees between the polarization directions of the first polarization and the second polarization, and at least one third polarization is present along the vertical axis of the oval, wherein an angle of 90 degrees is present between the polarization direction of the first polarization and a direction of the third polarization and/or between the polarization direction of the second polarization and the direction of the third polarization; wherein: the beam shaper is configured to generate the location-dependent polarization distribution such that a fourth polarization is present along the vertical axis of the oval and between the first polarization and the third polarization and/or between the second polarization and the third polarization, wherein an angle of 45 degrees is present between a direction of the fourth polarization and the direction of the third polarization; wherein: the detector is configured to determine the at least two intensities of the measurement beam in at least two of the following polarizations: 0 degrees, 45 degrees, 90 degrees, or 135 degrees; wherein the light source and/or the beam shaper is configured to generate at least two light beams with a phase difference therebetween, and wherein the phase difference is 90 degrees in order to adjust a circular polarization in the projection plane at least in regions, or wherein the phase difference is between 0 degrees and 90 degrees or between 90 degrees and 180 degrees in order to adjust an elliptical polarization in the projection plane at least in the regions, with the advantage of effectively optimizing the optical characteristics measurements of the particles.
Moreover, Mitchell teaches:
(claim 4) wherein the particle characteristic comprises a particle position (¶13, 17 for ex.)
As to claim 9, Mitchell suggests the device/method according to claims 1 and 14, wherein: the light source and/or the beam shaper is/are configured to shape the location-dependent intensity distribution in the projection plane such that the intensity of the light beam along two outer contours of two ovals, the vertical axes of which are arranged in a V-shape, is minimal, and that the intensity of the light beam in regions of the vertical axes of the two ovals is maximal (Figs. 2-3 and ¶ 59 for ex; light sheet 310/335 forms an angle that can vary, two of the light oval intensities can be considered as intersect forming a V-shape, with the light intensity minimal at the edges of the oval and maximal at the center thereof (See rejection of claim 1).
Mitchell does not teach expressly the detector is configured to detect intensities of two measurement beams in a time- shifted manner, and the analyzer is configured to determine a particle position within the measurement volume at least based on a time interval between the intensities of the two measurement beams.
However, Karasikov teaches using time of transition between two beams (Col/ll. 1/50-67, 4/67-5/10, 6/49-57 for ex.) to measure the particle positions and their corresponding time interval between the two beams to determine particle velocity.
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus/method of Mitchell in view of Karasikov’s suggestions so that the detector is configured to detect intensities of two measurement beams in a time- shifted manner, and the analyzer is configured to determine a particle position within the measurement volume at least based on a time interval between the intensities of the two measurement beams, with the advantage of effectively optimizing the optical velocity measurements of the particles.
As to claims 11/16, Mitchell suggests the device/method according to claims 1 and 14.
Mitchell does not teach expressly wherein: the light source and/or the beam shaper is/are configured to project two light beams with different wavelengths each along a respective beam axis, which overlap in the projection plane and thereby have the location-dependent intensity distribution and a location-dependent wavelength distribution, the detector is configured to detect at least one wavelength-dependent intensity of the measurement beam and to output a wavelength-dependent intensity signal to the analyzer, and the analyzer is configured to determine a particle position within the measurement volume based on the wavelength-dependent intensity signal.
However, Karasikov teaches wherein: the light source and/or the beam shaper is/are configured to project two light beams with different wavelengths each along a respective beam axis, which overlap in the projection plane and thereby have the location-dependent intensity distribution and a location-dependent wavelength distribution, the detector is configured to detect at least one wavelength-dependent intensity of the measurement beam and to output a wavelength-dependent intensity signal to the analyzer, and the analyzer is configured to determine a particle position within the measurement volume based on the wavelength-dependent intensity signal (Fig.9, Col/ll. 8/56-59, 14/40-67, 1/50-67, 4/67-5/10, 6/49-57 for ex.) to measure, based on the different wavelengths, the particle positions and their corresponding time interval between the two beams to determine particle velocity.
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus/method of Mitchell in view of Karasikov’s suggestions so that the light source and/or the beam shaper is/are configured to project two light beams with different wavelengths each along a respective beam axis, which overlap in the projection plane and thereby have the location-dependent intensity distribution and a location-dependent wavelength distribution, the detector is configured to detect at least one wavelength-dependent intensity of the measurement beam and to output a wavelength-dependent intensity signal to the analyzer, and the analyzer is configured to determine a particle position within the measurement volume based on the wavelength-dependent intensity signal, with the advantage of effectively optimizing the optical velocity measurements of the particles.
11- Claims 10, 17 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Mitchell and Karasikov in view of Ohtomo et al. (PGPUB No. 20020092978)
As to claims 10/17, Mitchell suggests the device/method according to claims 1 and 14, wherein: the light source and/or the beam shaper is/are configured to shape the location-dependent intensity distribution in the projection plane such that the intensity of the light beam along two outer contours of two ovals, the vertical axes of which are arranged in a V-shape, is minimal, and that the intensity of the light beam in regions of the vertical axes of the two ovals is maximal (Figs. 2-3 and ¶ 59 for ex; light sheet 310/335 forms an angle that can vary, two of the light oval intensities can be considered as intersect forming a V-shape, with the light intensity minimal at the edges of the oval and maximal at the center thereof (See rejection of claim 1).
Mitchell does not teach expressly wherein: the light source and/or the beam shaper is/are configured to shape the location-dependent intensity distribution in the projection plane such that the intensity of the light beam along three outer contours of three ovals, the vertical axes of which are arranged in an N-shape, is minimal, and that the intensity of the light beam in regions of the vertical axes of the three ovals is maximal, the detector is configured to detect intensities of three measurement beams in a time-shifted manner, and the analyzer is configured to determine a particle position within the measurement volume based on two time intervals between the intensities of the three measurement beams.
However, Ohtomo teaches an optical system and method to measure position and deviation of projector body (Abstract, ¶ 1) wherein: the light source and/or the beam shaper is/are configured to shape the location-dependent intensity distribution in the projection plane such that the intensity of the light beam along three outer contours of three ovals, the vertical axes of which are arranged in an N-shape (Fig. 3, ¶ 168 for ex.) and that the intensity of the light beam in regions of the vertical axes of the three ovals is maximal, the detector is configured to detect intensities of three measurement beams in a time-shifted manner, and the analyzer is configured to determine a particle position within the measurement volume based on two time intervals between the intensities of the three measurement beams (see rejection of claim 1).
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus/method of Mitchell in view of Ohtomo’s suggestions so that the light source and/or the beam shaper is/are configured to shape the location-dependent intensity distribution in the projection plane such that the intensity of the light beam along three outer contours of three ovals, the vertical axes of which are arranged in an N-shape, is minimal, and that the intensity of the light beam in regions of the vertical axes of the three ovals is maximal, the detector is configured to detect intensities of three measurement beams in a time-shifted manner, and the analyzer is configured to determine a particle position within the measurement volume based on two time intervals between the intensities of the three measurement beams, with the advantage of effectively optimizing the positions of a target body, such as particles.
The combination is still silent with respect to the detector is configured to detect intensities of three measurement beams in a time-shifted manner, and the analyzer is configured to determine a particle position within the measurement volume based on two time intervals between the intensities of the three measurement beams
However, Karasikov teaches using time of transition between two beams (Col/ll. 1/50-67, 4/67-5/10, 6/49-57 for ex.) to measure the particle positions and their corresponding time interval between the two beams to determine particle velocity.
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus/method of Mitchell and Ohtomo in view of Karasikov’s suggestions so that the detector is configured to detect intensities of three measurement beams in a time-shifted manner, and the analyzer is configured to determine a particle position within the measurement volume based on two time intervals between the intensities of the three measurement beams, with the advantage of effectively optimizing the optical velocity measurements of the particles.
12- Claim 12 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Mitchell in view of Yguerabide et al. (PGPUB No. 20030112432), hereinafter Genicon.
As to claim 12, Mitchell suggests the device/method according to claims 1 and 14.
Mitchell does not teach expressly wherein the detector has a spatial resolution from 5 micrometers to 0.1 micrometers within the measurement volume.
However, Genicon teaches apparatus and method to measure particle light scattering (Abstract and Figs. 1-10) wherein the detector has a spatial resolution from 5 micrometers to 0.1 micrometers within the measurement volume (¶ 65).
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus/method of Mitchell in view of Genicon’s suggestions so that the detector has a spatial resolution from 5 micrometers to 0.1 micrometers within the measurement volume, with the advantage of effectively matching the size of the particles with the camera resolution.
Conclusion
The examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicant should consider the entire prior art as applicable as to the limitations of the claims. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire references as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED K AMARA whose telephone number is (571)272-7847. The examiner can normally be reached on Monday-Friday: 9:00-17:00
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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/Mohamed K AMARA/
Primary Examiner, Art Unit 2877
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