DETAILED ACTION
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. 17/926,765, filed on 11/21/2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/11/2025, 7/9/2025 and 11/26/2025 were considered by the examiner.
The IDS filed 4/11/2025 cited 2023/0020067 and identified Agostinelli et al. as the inventor, however, US 2023/0020067 is directed toward an eyeglass lens which does not name Agostinelli as an inventor. The reference was not considered by the examiner as indicated by a strikethrough.
Reference 2023/0200675 by Agostinelli et al. is included with the attached PTO-892.
Claim Objections
Claims 20 and 25 are objected to because of the following informalities:
Claim 20 recites “a ratio of the secondary portion of the first response component and the secondary portion of the second response component”. This limitation corresponds to “a secondary response factor that corresponds to a ratio of a secondary portion of the first response component and a secondary portion of the second response component” redundantly recited in claim 25. The examiner proposes amending claim 20 as follows: “determining, by a processor, a driving factor, the driving factor being approximately equal to a secondary response factor that corresponds to a ratio of the secondary portion of the first response component and the secondary portion of the second response component”.
Please amend line 4 of claim 25 as follows: “…a ratio between [[a]] the secondary portion of the first response component and [[a]] the secondary portion of the…” and/or to be consistent with any amendments to claim 20.
Appropriate correction is required.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 20-38 rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-3, 5-6, 8-11, and 13-22 of U.S. Patent No. 12,290,348. Although the claims at issue are not identical, they are not patentably distinct from each other as claims 20-38 of the pending application are broader in scope than those recited in US Patent 12, 290,348 with all features of pending independent claims 20 and 37 are disclosed in claims 1 and 19 of US Patent 12,290,348. Further, dependent claims 21-36 and 38 are also disclosed in claims 2-3, 5-6, 8-11, 13-18, and 20-22 of US patent 12,290,348.
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 20-38 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01.
As best understood by the examiner, claim 20 requires multiple limitations recited in claim 25 to perform the method of claim 20. Claim 20 discloses (element abbreviations emphasized in bold were added by the examiner and correspond to element abbreviations used in [0089]-[0096] of the Pg. Pub. US 2025/0235119):
20. (New) A method for detecting a secondary magnetic source, comprising:
generating, by a driving unit, a driving magnetic field (DH) comprising a first driving component at a first frequency (DH1) and a second driving component at a second frequency (DHn), the second frequency being an n-th harmonic of the first frequency;
detecting, by a magnetic field sensor, a response magnetic field (SH) comprising a first response component at the first frequency (SH1) and a second response component at the second frequency (SHn),
wherein a primary portion of the first response component (MH1) and a primary portion of the second response component (MHn) are generated by a primary magnetic source in response to the driving magnetic field; and
wherein a secondary portion of the first response component (TH1) and a secondary portion of the second response component (THn) are generated by at least one secondary magnetic source in response to the driving magnetic field;
determining, by a processor, a driving factor, the driving factor (DF) being approximately equal to a ratio of the secondary portion of the first response component and the secondary portion of the second response component (DF=TH1/THn); and
determining, by the processor, from the first response component and the driving factor, a correction factor corresponding to the secondary portion of the second response component.
As best understood by the examiner, it is not possible to determine a correction factor merely from “the first response component” and “the driving factor” as recited in claim 20.
From the claim, three equations are established:
SH1 = MH1 + TH1
SHn = MHn + THn
DF = TH1/THn;
As best understood by the examiner, SH1 and SHn are known values corresponding to the first and second response component. As recited in claim 20, DF, MH1, MHn, TH1, and THN are unknown values. Therefore, claim 20 establishes 3 equations with 5 unknowns, which cannot be solved mathematically.
In addition, the claim omits the relationship of the driving factor corresponding to a ratio between a fundamental frequency and the harmonic frequency f.sub.n in the generated alternating magnetic field, (i.e. DF=DH1/DH2) as recited in [0065] of corresponding Pg. Pub. US 2025/0235119. This relationship is essential to the method to obtain the equation DH1/DHn=TH1/THn, wherein DH1 and DHN would be understood as a known parameters from the driving unit as outlined in [0066] of the corresponding Pg. Pub.. With this information, equation 3) may be re-written as 3) DF= DH1/DHn=TH1/THn.
However, this still leaves three equations with four unknowns TH1, THn, MH1, MHn. In order to perform the calculation as claimed, the claim requires the primary response factor corresponding to PRF = MH1/MHn which is a known value as outlined in [0056] of the corresponding Pg. Pub.
Since the driving factor having the relationship DF=DH1/DHn, the primary response factor, and the secondary response factor are essential to performing the steps of claim 20, they should be incorporated into claim 20. The examiner proposes, as an example, amending claim 20 as follows:
20. (Proposed) A method for detecting a secondary magnetic source, comprising:
generating, by a driving unit, a driving magnetic field (DH) comprising a first driving component at a first frequency (DH1) and a second driving component at a second frequency (DHn), the second frequency being an n-th harmonic of the first frequency;
detecting, by a magnetic field sensor, a response magnetic field (SH) comprising a first response component at the first frequency (SH1) and a second response component at the second frequency (SHn),
wherein a primary portion of the first response component (MH1) and a primary portion of the second response component (MHn) are generated by a primary magnetic source in response to the driving magnetic field; and
wherein a secondary portion of the first response component (TH1) and a secondary portion of the second response component (THn) are generated by at least one secondary magnetic source in response to the driving magnetic field;
determining, by a processor, a driving factor, the driving factor that corresponds to a ratio of the first driving component at the first frequency and the second driving component at the second frequency being approximately equal to a secondary response factor that corresponds to a ratio of the secondary portion of the first response component and the secondary portion of the second response component, and a primary response factor representing a ratio between the primary portion of the first response component and the primary portion of the second response component; and
determining, by the processor, from the first response component, the secondary response factor, and the primary response factor, a correction factor corresponding to the secondary portion of the second response component.
While the above language is merely a suggested amendment, the above features should be incorporated into claim 20. Further, claim 25 should be amended to reflect all antecedent bases established in amendments to claim 20.
Claims 21-36 are rejected through a dependence on claim 20.
Regarding claim 37, the claim is rejected for similar reasons as claim 20. In contrast to claim 20, claim 37 establishes the driving component as being dependent on the first driving component and the second driving component. The claim should be amended to include a primary response factor and a secondary response factor as these components are essential for determining a correction factor as claimed.
Claim 38 is rejected through a dependence on claim 37.
Claims 24, 27, 29-30, 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.
Claim 24 recites, “wherein the primary magnetic source is formed from a paramagnetic material.” As best understood by the examiner, the primary magnetic source corresponds to marker 6 of the disclosure and the secondary magnetic source corresponds to a tracer 7. The disclosure identifies marker 6 as comprising a large Barkhausen jump material, which the examiner understands to be a ferromagnetic material, not paramagnetic. See [0042]. The only reference of a paramagnetic material in the disclosure is in reference to paramagnetic material are in [0010] “A further approach is to use a suspension of super-paramagnetic iron oxide nanoparticles.” And [0043], “The tracer 7 comprises a liquid comprising a plurality of magnetic nanoparticles. For example, the tracer 7 may comprise a plurality of iron oxide nanoparticles. The nanoparticles may be described as superparamagnetic nanoparticles.”
It is unclear how the limitations as claimed are operable if the primary magnetic source is paramagnetic. Therefore, as best understood by the examiner, claim 24 is interpreted wherein the secondary magnetic source comprises a paramagnetic material.
Claim 27 depends on claim 20 but recites “the primary response factor” which is not established until claim 25. As discussed above, the examiner proposes amending claim 20 to establish an antecedent basis for a primary response factor as it is an essential element for performing the method of claim 20.
Regarding claims 29, the claim recites (emphasis added by examiner):
29. The method of claim 20, further comprising:
determining, by the processor, a secondary detection signal that is different from the first detection signal based on the secondary portion of the first response component and the secondary portion of the second response component; and
generating, by the processor for output, a secondary output signal that is different from the first output signal based on a strength of the secondary detection signal.
The limitations as claimed are unclear.
First, there is no antecedent basis for “the first detection signal” or “the first output signal” in claim 29 or parent claim 20.
Second, the specification and drawings as filed do not recite “a secondary detection signal”, “the first detection signal” “a secondary output signal” or “the first output signal” as recited in claim 29.
Third, the specification only recites a single output signal. For example, [0097] recites “At step S07, an output signal is generated. The output signal is generated by the processor for output. The output signal is based on a strength of the detection signal.” Therefore, the disclosure only identifies a single output signal, and it is unclear how to interpret the first output signal and a second output signal as claimed. As best understood by the examiner, the secondary detection signal would merely be a signal including TH1 and THn.
Claim 30 is rejected through a dependence on claim 29 and for reciting similar subject matter as claim 29.
Regarding claims 33-34, the claims recite “an amplitude of the first output signal” and “an amplitude of the secondary output signal”. The claims are rejected for similar reasons as outlined above for claim 29.
Further, claim 33 is dependent on claim 20 but there is no antecedent basis for “the first out signal” in claims 20 or 33. the specification as filed do not recite or define what is meant by “a first output signal”.
Further, claim 34 is dependent on claim 31 but there is no antecedent basis for “the second out signal” or how the output signal would relate to an amount of magnetic material as claimed.
For the purpose of examination, the claim is interpreting the output signals as visual and audio output proportional to the amplitudes of the primary and secondary portions MH1, MHn, TH1, THn.
No prior art was identified which reads on the limitations as claimed at the time of examination. The claims stand rejected under 35 USC 112(b) as outlined above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN LEE YENINAS whose telephone number is (571)270-0372. The examiner can normally be reached M - F 10 - 6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Judy Nguyen can be reached at (571) 272-2258. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN L YENINAS/Primary Examiner, Art Unit 2858
