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 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 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:
A first mounting member in claim 3, because it uses “member” (MPEP 2181.I.A) coupled with functional language “for fixing to the ring-shaped frame” without citing sufficient structure to achieve the function. Furthermore the “member” is not preceded by a structural modifier.
A second mounting member in claim 4, because it uses “member” (MPEP 2181.I.A) coupled with functional language “for fixing to the ring-shaped frame” without citing sufficient structure to achieve the function. Furthermore the “member” is not preceded by a structural modifier.
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.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
Regarding the first mounting member, paragraph 0024 discloses "The first mounting member 14 is shaped like a substantially rectangular plate with two notched corners on the other end side thereof (upper side in the figure). The shape of the first mounting member 14 is not limited to the shape shown in FIG. 1 and may be any shape that allows the X-ray tube 11 to be positioned outside the ring-shaped frame 41. The shape of the first mounting member 14 may be various shapes, for example, a circle, an ellipse, a polygon, a trapezoid or the like.” Thus, for the purpose of examination, the mounting member is interpreted to be a plate of any shape.
Regarding the second mounting member, paragraph 0033 discloses " The second mounting member 23 is shaped like a substantially rectangular plate with two notched corners on the other end side thereof (upper side in the figure). The shape of the second mounting member 23 is not limited to the shape shown in FIG. 1 and may be various shapes such as a circle, an ellipse, a polygon, a trapezoid or the like.” Thus, for the purpose of examination, the mounting member is interpreted to be a plate of any shape.
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 § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claim 11 is rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claim 11 recites “wherein the subject is a head.” The broadest reasonable interpretation includes a human head which is a human organism.
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.
Claim(s) 1-7 and 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishimura US 2020/008760.
Regarding claim 1, Nishimura teaches an X-ray imaging apparatus (figs. 1, 9) comprising: an X-ray irradiation unit (40) including an X-ray tube (42; para. 0086) for irradiating a subject with X-rays (fig. 9); an X-ray detection unit including an X-ray detector (52) arranged at a position facing the X-ray tube across the subject and detecting the X-rays passed through the subject (M1; figs. 1, 9); a rotation mechanism including a rotating body rotatably constituted around the subject (62, 66; para. 0081, 0160); and a control unit for controlling rotation of the rotating body and irradiation of the X-rays from the X-ray tube (30, 80, 34, 84; para. 0130-0131), wherein the X-ray irradiation unit and the X-ray detection unit are provided to the rotating body (fig. 1), and wherein when a distance from a focal point of the X-ray tube to a center of rotation of the rotating body is defined as X (mm) and a distance from the center of rotation to a detection surface of the X-ray detector is defined as Y (mm) (fig. 19 para. 0222-0227),
Nishimura does not specifically disclose the ratio X:Y is 9:1 to 7:3. However, one of ordinary skill in the art would have been led to recited range (the ratio X:Y is 9:1 to 7:3) through routine experimentation and optimization. The Applicant has not disclosed that the range is for a particular unobvious purpose, produce an unexpected/significant result, or are otherwise critical, and it appears prima facie that the process would possess utility using another range. Indeed, it has been held that mere range limitations are prima facie obvious absent a disclosure that the limitations are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the of the claimed invention to have the ratio X:Y is 9:1 to 7:3 in the apparatus of Nishimura for the purpose of optimizing the image quality.
Regarding claim 2, Nishimura teaches wherein the rotating body is a ring-shaped frame (para. 0307).
Regarding claim 3, Nishimura teaches wherein the X-ray irradiation unit further includes a first mounting member (46) for fixing to the ring-shaped frame (para. 0307, 0089).
Nishimura does not explicitly disclose the X-ray tube is provided to the first mounting member so as to be positioned outside the ring-shaped frame, however, it has been judiciarily determined that rearrangement of parts has been obvious to one of ordinary skill in the art (MPEP 2144.04.IV.C). Rearrangement of parts is insufficient to establish patentability over the prior art of record unless it changes the operation of the device in some unexpected way. Since this device appears to operate in a similar manner to the prior art device, the rearrangement of parts is not of patentable significance.
Regarding claim 4, Nishimura teaches wherein the X-ray detection unit further includes a second mounting member (54) for fixing to the ring- shaped frame (para. 0093-0095, 0307).
Nishimura does not explicitly disclose the X-ray detector is provided to the second mounting member so as to be positioned inside the ring-shaped frame, however, it has been judiciarily determined that rearrangement of parts has been obvious to one of ordinary skill in the art (MPEP 2144.04.IV.C). Rearrangement of parts is insufficient to establish patentability over the prior art of record unless it changes the operation of the device in some unexpected way. Since this device appears to operate in a similar manner to the prior art device, the rearrangement of parts is not of patentable significance.
Regarding claim 5, Nishimura teaches wherein the X-ray tube is movably provided on the first mounting member (fig. 19; the mounted tube 42 is movable along path PT42; para. 0222-0227).
Regarding claim 6, Nishimura teaches wherein the X-ray detector is movably provided on the second mounting member (fig. 19; the mounted detector 52 is movable along path PT52; para. 0222-0227).
Regarding claim 7, Nishimura teaches an apparatus which has a x-ray tube and an x-ray detector which can change their distance from the subject (fig. 19) which changes the size of the focal point/plane (para. 0218) and the size of the magnification (fig. 20), ergo changing the size of the penumbra/shadow.
Nishimura does not specifically disclose a size of a penumbra P caused by the focal point at the center of rotation is 0.1 to 0.25 mm, and the size of the penumbra P expressed by the following formula:
P
=
F
×
Y
/
(
X
+
Y
)
. However, one of ordinary skill in the art would have been led to recited range (0.1 to 0.25 mm) through routine experimentation and optimization. The Applicant has not disclosed that the range is for a particular unobvious purpose, produce an unexpected/significant result, or are otherwise critical, and it appears prima facie that the process would possess utility using another range. Indeed, it has been held that mere range limitations are prima facie obvious absent a disclosure that the limitations are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the of the claimed invention to have a penumbra P caused by the focal point at the center of rotation is 0.1 to 0.25 mm, and the size of the penumbra P expressed by the following formula:
P
=
F
×
Y
/
(
X
+
Y
)
in the apparatus of Nishimura for the purpose of optimizing image quality.
Regarding claim 9, Nishimura does not specifically disclose wherein the distance Y (mm) from the center of rotation of the rotating body to the detection surface of the X-ray detector is 70 to 140 mm. However, one of ordinary skill in the art would have been led to recited range (70 to 140 mm) through routine experimentation and optimization. The Applicant has not disclosed that the range is for a particular unobvious purpose, produce an unexpected/significant result, or are otherwise critical, and it appears prima facie that the process would possess utility using another range. Indeed, it has been held that mere range limitations are prima facie obvious absent a disclosure that the limitations are for a particular unobvious purpose, produce an unexpected result, or are otherwise critical. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the of the claimed invention to have wherein the distance Y (mm) from the center of rotation of the rotating body to the detection surface of the X-ray detector is 70 to 140 mm in the apparatus of Nishimura for the purpose of optimizing image quality.
Regarding claim 10, Nishimura teaches a base for placing the subject (72; para. 0076), wherein the base is arranged between the X-ray tube and the X-ray detector (figs. 1, 2, 19).
Regarding claim 11, Nishimura teaches wherein the subject is a head (figs. 1, 2, 19) including a dentition of the subject (figs. 4-8), and the control unit controls the rotating body to rotate half a turn while maintaining a state of the X-ray detector in close proximity to the dentition of the subject (fig. 9; para. 0160).
Regarding claim 12, Nishimura teaches wherein when a fan angle of the X-ray tube is defined as
α
(degrees) (ANG1; para. 0165-0168; figs. 9-10, 19), the control unit controls the rotating body to rotate by (180 +
α
) degrees (figs. 9, 19; para. 0160-0168).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard Toohey whose telephone number is (703)756-5818. The examiner can normally be reached Mon-Fri: 7:30am – 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uzma Alam can be reached on (571)272-2995. The fax number for the organization where this application or processing is assigned is 571-273-8300.
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/RICHARD O TOOHEY/Examiner, Art Unit 2884
/UZMA ALAM/Supervisory Patent Examiner, Art Unit 2884
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