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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No.2010317.2, filed on 7/6/2020.
Preliminary Amendment
Receipt is acknowledged of the preliminary amendment filed on 4/9/2025. The amendment has been placed of record in the file.
The Information Disclosure Statements
The prior art cited in the information disclosure statements filed on 4/9/2025, 5/28/2025 has been considered.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 1-2, 22 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-2, 22 of copending Application No. 19/189,162 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim 5 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12,287,289 B2. This is a statutory double patenting rejection.
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 1-19, 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18, 19 of U.S. Patent No. 12,287,289 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because Patent claims anticipate instant claims.
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.
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: analyzer… in claim 22.
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
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 22 is/are rejected under 35 U.S.C. 102(a(1)/(a))2) as being anticipated by Zhao et al. (US 2018/0372540 A1) [hereinafter Zhao].
As to claim 22, Zhao teaches an apparatus for Raman spectral analysis of a sample, comprising: a laser light source (420, 1214a , Figs.4, 12; paragraph 0026) arranged to generate probe light; delivery optics (400, 1200a, Figs.4, 12) arranged to deliver said probe light to a delivery region on the sample (408, 1208a, Figs. 4, 12); collection optics (430, 1230a , Figs.4, 12) arranged to collect, from a collection region on the sample spaced from the delivery region, said probe light following scattering through the sample; a detector ( 1256a, Fig.12) arranged to measure a spectrum of the collected light; an analyzer (1356, Fig.13; paragraph 0031) arranged to measure each of a plurality of target Raman spectral features in the spectrum of the collected light, to determine spectral distortion of the collected light arising during scattering through the sample, and to quantify a property of the sample using the target Raman spectral features in combination with the determined spectral distortion (note spectral distortion in optics refers to alteration of the spectral composition of the light as it passes through an optical system or medium, therefore target Raman spectrum has inherent spectral distortion because certain wavelengths are absorbed more than others, changing the spectral balance).
Furthermore, the recitation ‘to determine spectral distortion of the collected light arising during scattering through the sample, and to quantify a property of the sample using the target Raman spectral features in combination with the determined spectral distortion.’ Is intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
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.
Claim(s) 1-4, 18-19, is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao.
As to claim 1, Zhao teaches a method of Raman spectral analysis of a sample, comprising: using delivery optics (400, 1200a, Figs.4, 12) to deliver probe light to a delivery region on the sample (408, 1208a, Figs. 4, 12); using collection optics (430, 1230a, Figs.4, 12) to collect, from a collection region on the sample spaced from the delivery region, said probe light following scattering through the sample; measuring each of a plurality of target Raman spectral features in the collected light (paragraph 0026).
Zhao is silent to: determining a spectral distortion of the collected light arising during scattering through the sample; and quantifying a property of the sample using the target Raman spectral features in combination with the determined spectral distortion, such that the quantified property is compensated for the spectral distortion.
However, Zhao, teaches utilizing Reference Raman scattering as a reference for calibrating the Raman shift of the measured Raman spectrum (paragraph 0028); collecting back scattered Raman light and forward scattered Raman light and using together to analyze the composition of the sample (paragraph 0031).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to quantify a property of the sample using the target Raman spectral features in combination with the determined spectral distortion (reference spectrum), such that the collection efficiency of the Raman scattered light from the sample is improved/enhanced.
As to claim 2, Zhao teaches all as applied to claim 1, and in addition teaches wherein the spectral distortion arises from at least one of wavelength dependent absorption, and wavelength dependent diffuse scattering, during scattering of the probe light through the sample (paragraphs 0006, 0031).
As to claim 3, Zhao teaches all as applied to claim 1, and in addition teaches wherein the collection region (430, 1230a, Figs.4, 12) is on an opposite side of the sample 408 from the delivery region (400, 1200a, Figs.4, 12).
As to claim 4, Zhao teaches all as applied to claim 1, except wherein the delivery region and the collection region are spaced apart by between 2 mm and 20 mm. However, the space between the delivery and collection regions may be chosen according to need or design.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to space between delivery and collection regions of optical apparatus as needed in order to minimize back reflections, which can cause noise, errors, or damage to the light source.
As to claims 18-19, Zhao teaches all as applied to claim 1, and in addition teaches1 wherein the sample is a diffusely scattering solid object (paragraph 0058; note the sample is pharmaceutical tablet, also note dosage can refer to both solid or liquid dosage form), and optionally wherein the sample has a diffuse scattering transport length of less than 1 mm.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABDULLAHI NUR whose telephone number is (571)270-1298. The examiner can normally be reached on M-F, 9am to 6pm.
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/ABDULLAHI NUR/Primary Examiner, Art Unit 2886
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