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. 10-2023-0176641, filed on 12/7/2023.
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 1-5, 7-9, 11-15, is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,287,291 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the Patent claim anticipate the instant claim.
Claims 6, 10, 16-20, is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,287,291 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because, for example, comparison of claims 6, 10, 16-20, of the instant application to claims 1-7 of the US. Patent No. 12,287,291 B2 reveals the claims of the instant application and the Patented claims define essentially the same invention in different language/wording. Thus, one of ordinary skill in the art would conclude that the invention defined in the claims at issue is an obvious variation of the invention defined in the claims in the Patented claims. Thus, examiner asserts the difference describe a subset of all possible conditions being monitored in the Patented. These differences are not sufficient to render the claim patentably distinct, and therefore a terminal disclaimer is required.
Instant claims correspond to the Patent claims as follows:
19/191,068
12,287,291
1, 3-5
1
2
2
7-9
3-5
11, 13-15
6
12
7
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: a light receiving unit, a processor, in claim 1.
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 § 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, 3, 7, 10-11, 13, 16-18, 20, is/are rejected under 35 U.S.C. 103 as being unpatentable over Vohra et al. (US 2021/0231499 A1) [hereinafter Vohra] in view of Yamamoto (US 2005/0162650 A1).
As to claim 1, Vohra teaches a Raman spectroscopic analysis device, comprising: a light source (22, Fig,1) that irradiates light onto a subject 28; a light receiving unit (20, 25, Fig.1) that receives light reflected or scattered from the subject to obtain a Raman spectrum; and a processor (52, Fig.1) configured to analyze material of the subject based on areas of one or more peaks in the Raman spectrum, wherein the light receiving unit comprises: a diffraction grating (44, Fig.1) that diffracts the light that has been reflected or scattered from the subject; and a light detector (48, Fig.1) that receives the light reflected from the diffraction grating, and wherein the diffraction grating is rotated by a driving unit (54, Fig.1) to allow a wavelength band that reaches the light detector to be adjusted. Note subject/sample being biological material 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.
Vohra is silent to: a slit through which a portion of the light diffracted by the diffraction grating passes.
However, Yamamoto, teaches spectroscope and measuring apparatus comprising a slit (14, Fig.15) through which light diffracted by a diffraction grating (8, Fig.15) passes.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Vohra to provide a rotatable diffraction grating and an adjustable slit before the detector to improve spectral resolution and adaptability for different sample types/ limit amount of light entering said detector.
As to claim 3, Vohra in view of Yamamoto teaches all as applied to claim 1. Vohra is silent the actuator that adjusts a width of the slit to allow the wavelength band and an amount of light that reaches the light detector to be adjusted. However, Yamamoto teaches deriving means (15, Fig. 15) for adjusting the width and position of the opening of the exit slit (14, Fig.15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Vohra to insert adjustable slit between the rotating diffraction grating and a detector in order to condition/shape light as desired.
As to claim 7, Vohra in view of Yamamoto teaches all as applied to claim 1, and in addition Vohra teaches wherein the processor (52, Fig.1) is configured to extract information of the subject based on a peak area value of a Raman spectrum range corresponding to at least one of glucose, protein, ketone, alcohol, caffeine, lactic acid, or fat. Note subject/sample being biological material of at least one of glucose, protein, or fat etc. 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.
As to claim 10, Vohra in view of Yamamoto teaches all as applied to claim 1, and in addition Vohra teaches a long pass filter (38, Fig.1) disposed upstream of the diffraction grating to filter out Rayleigh scattered light and pass Raman scattered light.
As to claim 11, Vohra teaches a Raman spectroscopic analysis method, comprising: outputting, by a light source, light (26, Fig.1) onto a subject 28; diffracting, by a diffraction grating (44, Fig.1), light that has been reflected or scattered from the subject; receiving, by a light detector (48, Fig.1), the light reflected from the diffraction grating; acquiring a Raman signal (36, Fig.1; paragraph 0055) of the light reflected or scattered from the subject; and analyzing biological (note the material upon which an apparatus acts is incidental to the claimed) information of the subject based on the Raman signal acquired by the light detector (28, Fig.1; paragraphs 0063-0064), wherein the diffraction grating is rotated by a driving unit (54, Fig.1) to allow a wavelength band that reaches the light detector to be adjusted.
Vohra is silent to ‘the passing, by a slit, a portion of the light diffracted by the diffraction grating.’ However, Yamamoto, teaches spectroscope and measuring apparatus comprising a slit (14, Fig.15) through which light diffracted by a diffraction grating (8, Fig.15) passes.
However, Yamamoto, teaches spectroscope and measuring apparatus comprising a slit (14, Fig.15) through which light diffracted by a diffraction grating (8, Fig.15) passes.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Vohra to provide a rotatable diffraction grating and an adjustable slit before the detector to improve spectral resolution and adaptability for different sample types/ limit amount of light entering said detector.
As to claim 13, Vohra in view of Yamamoto teaches all as applied to claim 11. Vohra is silent to ‘adjusting a width of the slit to allow the wavelength band and an amount of light that reaches the light detector.’
However, Yamamoto teaches deriving means (15, Fig. 15) for adjusting the width and position of the opening of the exit slit (14, Fig.15).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Vohra to insert adjustable slit between the rotating diffraction grating and a detector in order to condition/shape light as desired.
As to claim 16, Vohra in view of Yamamoto teaches all as applied to claim 13. Vohra is silent ‘setting the width of the slit to a first width to acquire a first Raman signal with a first wavelength resolution; and acquiring a second Raman signal of the biological material by adjusting the width of the slit SO as to acquire the second Raman signal with a second wavelength resolution different from the first wavelength resolution.’ However, Yamamoto, teaches spectroscope and measuring apparatus comprising an adjustable slit (14, Fig.15) through which light diffracted by a diffraction grating (8, Fig.15) passes.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to set the width of the said adjustable slit according to a desired wavelengths of different orders reflected from diffraction grating in order to get tunable spectral detection with controlled SNR.
As to claim 17, Vohra in view of Yamamoto teaches all as applied to claim 11 except the subject/sample being biological material of at least one of glucose, protein, or fat etc. However, the material upon which an apparatus acts is incidental to the claimed.
As to claim 18, Vohra in view of Yamamoto teaches all as applied to claim 11 except performing calibration prior to measuring the Raman signal. However, examiner takes Official Notice that
performing calibration prior to measuring the Raman signal is known in the art.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to perform calibration before measuring sample spectrum /data in order to determine the difference between collection data and collection usable data.
As to claim 20, Vohra in view of Yamamoto teaches all as applied to claim 11, and in addition Vohra teaches filtering out Rayleigh scattered light using a long pass filter (38, Fig.1) disposed upstream of the diffraction grating.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vohra in view of Yamamoto, and further in view of Rezac et al. (US 2009/0015829 A1) [hereinafter Rezac].
As to claim 8, Vohra in view of Yamamoto teaches all as applied to claim 7. Vohra in view of Yamamoto is silent to: wherein the processor is configured to perform calibration in response to the Raman spectroscopic analysis device starting operation or being worn on a user's body. However, Rezac, in the same field of endeavor, teaches spectrometer device for Raman scattering analysis (abstract), comprising a processor (80, Fig.1) coupled to calibration algorithm 100 and spectral analysis algorithm 200.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to couple Vohra processor to calibration algorithm and spectral analysis algorithm of Rezac in order to provide accurate Raman spectrum analysis.
Allowable Subject Matter
Claims 2, 4-6, 9, 12, 14-15, 19, are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As to claim 2, the prior art of record, taken alone or in combination, fails to disclose or render obvious a Raman spectroscopic analysis device, wherein the driving unit comprises: a motor; a worm gear system including a worm coupled to the motor and a worm wheel; and a holder disposed on an upper portion of the worm gear system, and wherein the diffraction grating is disposed on an upper portion of the holder and configured to be rotated, in combination with the rest of the limitations of the claim.
As to claim 4, the prior art of record, taken alone or in combination, fails to disclose or render obvious a Raman spectroscopic analysis device comprising: a reference light source that irradiates reference light to the diffraction grating, wherein a reference position for rotational operation of the diffraction grating is established using the reference light such that the reference position is set to a corresponding rotational position of the diffraction grating based on a signal of the reference light incident on the diffraction grating, in combination with the rest of the limitations of the claim. Claims 5-6 depend on claim 4.
As to claim 9, the prior art of record, taken alone or in combination, fails to disclose or render obvious a Raman spectroscopic analysis device, wherein, when the calibration is performed, the processor is configured to: control the light source to output the light at a predetermined intensity during a predetermined time period; and set a light amount and an exposure time for the light source for measuring the biological material based on a peak corresponding to a specific Raman transition value among the Raman spectrum acquired during the predetermined time period by the light detector, in combination with the rest of the limitations of the claim.
As to claim 12, the prior art of record, taken alone or in combination, fails to disclose or render obvious a Raman spectroscopic analysis, wherein the driving unit comprises a motor, a worm gear system including a worm coupled to the motor and a worm wheel, and a holder disposed on an upper portion of the worm gear system, and wherein the diffraction grating is disposed on an upper portion of the holder and configured to be rotated, in combination with the rest of the limitations of the claim.
As to claim 14, the prior art of record, taken alone or in combination, fails to disclose or render obvious a Raman spectroscopic analysis comprising: outputting, by a reference light source, reference light to the diffraction grating, wherein a reference position for rotational operation of the diffraction grating is established using the reference light such that the reference position is set to a corresponding rotational position of the diffraction grating based on a signal of the reference light incident on the diffraction grating, in combination with the rest of the limitations of the claim. Claim 15 depends on claim 14.
As to claim 19, the prior art of record, taken alone or in combination, fails to disclose or render obvious a Raman spectroscopic analysis method of claim 18, wherein the calibration comprises: controlling the light source to output the light at a predetermined intensity during a predetermined time period; and setting a light amount and an exposure time for the light source for measuring the biological material based on a peak corresponding to a specific Raman transition value among the Raman spectrum range acquired during the predetermined time period by the light detector, in combination with the rest of the limitations of the claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Carron et al. (US 2012/0154801 A1) teaches scanning Raman detection system with light source, light receiving unit, rotating diffraction grating, an aperture and light detector (Figs.1-2).
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/ABDULLAHI NUR/Primary Examiner, Art Unit 2886
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