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 .
Detailed Action
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 & 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,092493. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claim 1 contains all of the scope of the instant application claims and therefore fully anticipates the claims.
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.
Claim 1 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.
In Claim 1, the applicant claims, “wherein the setpoint mode is an open-loop tuning of the optical source using all tuning inputs according to a lookup table configured to maximize a nonzero mode-hop free wavelength range around each output wavelength when using the control mode,” which is indefinite because the term “to maximize” in claim 1 is a relative term which renders the claim indefinite. The term “to maximize” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Thus, it is unclear to what degree a nonzero mode-hop free wavelength range qualifies as maximized.
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 (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 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tan et al (US PAT 9,267,880) (Tan).
Regarding Claim 1, Tan discloses an apparatus for performing cavity ring down spectroscopy (Fig. 5), the apparatus comprising:
an optical source (110) having a tunable emission wavelength, wherein the optical source has two or more tuning inputs, and wherein tuning of the optical source is piecewise continuous with respect to variation of any one of its tuning inputs (Columns 8 & 9, lines 51-67 * 1-3, Fig. 8). What is being described is piecewise continuous tuning;
an optical cavity having two or more mirrors (Fig. 5, 102, 104, & 106) and configured to accept an optical input from the optical source, wherein the optical cavity is also configured to accept a sample gas (116) such that light circulating in the optical cavity passes through the sample gas;
a ringdown controller (114) configured to monitor the light circulating in the optical cavity and configured to couple and interrupt coupling of light between the optical source and the optical cavity (Column 4, lines 44-51, & Column 8, lines 26-31);
a tuning controller (Fig. 9) configured to tune the optical source in a setpoint mode and in a control mode;
wherein the control mode is closed-loop control of a single control input of the optical source to tune output wavelength of the optical source (Fig. 9, Column 9, lines 41-43);
wherein the setpoint mode is an open-loop tuning of the optical source using all tuning inputs according to a lookup table configured to maximize a nonzero mode-hop free wavelength range around each output wavelength when using the control mode (Column 8, lines 19-28 & 62-67, & Column 9, lines 1-3).
What is being disclosed is an open-loop tuning, which uses both temperature and current inputs, to adjust the laser to be near the various setpoints (aka the resonance frequencies of the cavity) and then a closed-loop tuning with a feedback control to adjust the current to fine tune the laser to the desired frequency. Thus, this meets the limitation. Further, the part of the limitation the tuning is “configured to maximize a nonzero mode-hop free wavelength range around each output wavelength when using the control mode” is met since maximize and undefined term of degree.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tan.
Regarding Claim 2, Tan discloses the aforementioned but fails to explicitly disclose wherein the nonzero mode-hop free wavelength range around each output wavelength is at least +/- 0.3 nm;
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Tan with wherein the nonzero mode-hop free wavelength range around each output wavelength is at least +/- 0.3 nm, since it has been held that 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. In re Aller, 105 USPQ 233;
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Tan with wherein the nonzero mode-hop free wavelength range around each output wavelength is at least +/- 0.3 nm because one would want to achieve as much mode hop free tuning range as possible to maximize the range of wavelengths that can be measured in the spectrometer which will not be prone to mode hop noise.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHON COOK whose telephone number is (571)270-1323. The examiner can normally be reached 11am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kara Geisel can be reached at 571-272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHON COOK/Examiner, Art Unit 2877 June 23, 2026
/Kara E. Geisel/Supervisory Patent Examiner, Art Unit 2877
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