FINAL REJECTION
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 .
Response to Amendment
On 8/21/2026, Applicant submitted an amendment to the application which contains an amended claim set and arguments/remarks. The amendment has been entered and considered for this Office action.
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.
Claims 1-5 and 7-19 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 has been amended to recite in part: “wherein the controller sequentially and individually receives respective N ultrasound signals from the N ultrasound transducers and generates N separate ultrasound images respectively based on the N ultrasound signals, each of the N separate ultrasound images corresponding to a respective one of the N ultrasound transducers, without combining ultrasound signals received from different ultrasound transducers into a single signal to generate an ultrasound image”.
It is unclear whether the “without combining…” clause is meant to more narrowly be applied to specifically the generation of the N separate ultrasound images (narrower exclusion; broader claim scope), or otherwise meant to more broadly be applied to the claim as a whole (broader exclusion; narrower claim scope). In other words, it is unclear whether this means that the N separate ultrasound images are generated in such a way that the generation itself does not involve “combining…” (but “combining…” in other contexts such as subsequent to generating the N separate ultrasound images is not necessarily precluded), or otherwise whether this means “combining…” in broadly all contexts is precluded.
While the text of the claim seems to suggest the narrower exclusion (broader claim scope), Applicant’s arguments —particularly, the table bridging pages 11 and 12— seem to suggest the broader exclusion (narrower claim scope) by identifying “[g]eneration of an image by combining ultrasound signals from different transducers into a single signal” as its own separate/independent/discrete feature that is “expressly excluded”.
Furthermore, the Specification does not appear to explicitly disambiguate the aforementioned ambiguity because the Specification makes no explicit mention of exclusion. At best, the Specification might imply the narrower exclusion (broader claim scope) at ¶ [00101]-[00102] but certainly does not disclose the broader exclusion (narrower claim scope).
In view of the conflicting evidence, the ordinarily skilled artisan would not be reasonably apprised of the scope of the exclusion carved out from the scope of the claim and therefore would not be reasonably apprised of the remaining scope of the claim once the exclusion is carved out.
Examiner Remarks
MPEP 2173.06 recites in part:
II. PRIOR ART REJECTION OF CLAIM REJECTED AS INDEFINITE
All words in a claim must be considered in judging the patentability of a claim against the prior art. In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970). The fact that terms may be indefinite does not make the claim obvious over the prior art. When the terms of a claim are considered to be indefinite, at least two approaches to the examination of an indefinite claim relative to the prior art are possible.
First, where the degree of uncertainty is not great, and where the claim is subject to more than one interpretation and at least one interpretation would render the claim unpatentable over the prior art, an appropriate course of action would be for the examiner to enter two rejections: (A) a rejection based on indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph; and (B) a rejection over the prior art based on the interpretation of the claims which renders the prior art applicable. See, e.g., Ex parte Ionescu, 222 USPQ 537 (Bd. App. 1984). When making a rejection over prior art in these circumstances, it is important for the examiner to point out how the claim is being interpreted. Second, where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
The first approach is recommended from an examination standpoint because it avoids piecemeal examination in the event that the examiner’s 35 U.S.C. 112, second paragraph rejection is not affirmed, and may give applicant a better appreciation for relevant prior art if the claims are redrafted to avoid the 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph rejection.
In this case, there is a great deal of confusion and uncertainty as to the proper interpretation of the limitation(s) of the claim(s) as discussed above in the §112(b) rejection. Any attempt to reject the claims would necessarily be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims — in this case, speculation or assumption as to the scope of the exclusion as discussed above. Therefore, a prior art rejection of the claims in their current form would not be proper.
Response to Arguments
Applicant's arguments filed 8/21/2026 have been fully considered but they are not entirely persuasive.
Applicant’s arguments have been considered however the examiner is not able to fully respond in view of the indefiniteness issues discussed above.
Conclusion
This application is not in condition for allowance.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLIN T. SAKAMOTO whose telephone number is (571)272-4958. The examiner can normally be reached Monday - Friday, ~9AM-5PM Pacific.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH M. RAYMOND can be reached at (571) 270-1790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
COLIN T. SAKAMOTO
Primary Examiner
Art Unit 3798
/COLIN T. SAKAMOTO/Primary Examiner, Art Unit 3798
1 September 2026
Prosecution Insights