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 .
Detailed 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.
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.
Claim 23 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.
In claim 23, the applicant claims “wherein the optical component is configured to receive and redirect the second collimated light to the light source” however this does not make sense. One would not redirect the light back to the light source because Raman signals are so weak they would be drowned out in the source. Nor is this supported in the specification. The examiner construes that the applicant meant that the Raman signal is collected and directed along the same path as the excitation light via the optical component and this will be the interpretation of the claim language until further clarification is received from the applicant.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1, 4, 7-9, 16-20, 22, 25, & 26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Behr et al (PGPub 2021/0263306) (Behr).
Regarding Claim 1, Behr discloses an optical analysis system for obtaining a Raman signal from a sample, the optical analysis system comprising:
a light source generating an excitation light (fig. 1, Laser), wherein the excitation light is collimated light (Paragraph 53);
an optical component (fig. 2, Fold Mirror) configured to redirect the excitation light as a first light beam; and
a focusing component (fig. 2, Sample Optic) configured to redirect the first light beam as a second light beam wherein the second light beam interrogates the sample at a predetermined distance from the focusing component in a linear shape (Paragraph 69).
Regarding Claim 4, Behr discloses the aforementioned. Further, the Fold mirror (Fig. 2) is a flat mirror.
Regarding Claim 7, Behr discloses the aforementioned. Further, the limitation, “wherein the second light beam is rotatable about a point,” is met since it only has to be capable of being rotated around a point which it is. Additionally, the dichroic filter (Fig. 2) redirects the second light beam to the sample via the sample optic and thus rotates it around a point.
Regarding Claim 8, Behr discloses the aforementioned. Further, Behr discloses wherein the first light beam is redirected at a first angle with respect to a first surface of the optical component (See fig. 2). The fold mirror is shown redirecting the beam at an angle.
Regarding Claim 9, Behr discloses the aforementioned. Further, Behr discloses wherein the first angle ranges from 100 to 35° (See fig. 2). The fold mirror is shown redirected the light at a right angle thus this is met.
Regarding Claim 16, Behr discloses the aforementioned. Further, Behr discloses a light analyzer configured to receive a Raman signal emitted by the sample in response to the second light beam (Fig. 1, Spectrometer, Paragraph 52).
Regarding Claim 17, Behr discloses the aforementioned. Further, Behr discloses an optics housing (102) comprising a first part (102h) and a second part (102o), wherein the first part includes the optical component, and the second part includes the focusing component (See fig. 2).
Regarding Claim 18, Behr discloses the aforementioned. Further, Behr discloses a probe component (104) separate from the optics housing, wherein the light source is supported within the probe component (see fig. 1).
Regarding Claim 19, Behr discloses the aforementioned. Further, Behr discloses wherein the optics housing comprises an opening (106, fig. 2) for receiving the excitation light from the light source.
Regarding Claim 20, Behr discloses the aforementioned. Further, Behr discloses wherein the optics housing is configured to be coupled to the probe component, (Via Excitation and Collection fibers, Fig. 1).
Regarding Claim 22, Behr discloses the aforementioned. Further, Behr discloses wherein the focusing component is configured to reflect and redirect a Raman light signal emitted by the sample as a second collimated light (See fig. 2, Paragraph 78) The lens in the sample optics will collimate the Raman light emitted back into the apparatus and this concept is further discussed in the citation.
Regarding Claim 25, Behr discloses an attachment for an optical analysis system for obtaining a Raman signal from a sample, the attachment comprising:
an optics (102, fig. 2) housing including a first opening (106) for receiving an excitation light from a light source (Fig. 1, laser), wherein the optics housing defines a pathway (See fig. 2);
an optical component (Fold mirror) positioned within the optics housing and configured to receive the excitation light as a collimated light (Paragraph 53) and redirect the collimated light along the pathway as a first light beam (See fig. 2); and
a focusing component (Sample Optic) positioned within the optics housing and configured to receive the first light beam and redirect the first light beam as a second light beam along the pathway toward the sample, the second light beam having a linear shape (Paragraph 69);
the optics housing further including a second opening, the second light beam passing through the second opening to interrogate to the sample. This would be the exit window after the sample optic.
Regarding Claim 26, Behr discloses the aforementioned. Further, the Fold mirror (Fig. 2) is a flat mirror.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2, 3, 6, 10-12, 21, 23, 24, 27, & 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Behr.
Regarding Claim 2, Behr discloses the aforementioned but fails to explicitly disclose wherein the linear shape is an elliptical or ovular shape;
However, the examiner takes official notice this would be obvious to one of ordinary skill in the art;
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Behr with wherein the linear shape is an elliptical or ovular shape because any illumination shape is a trivial matter to achieve by choosing the correct optics and whatever shape is chosen would be one to optimize a more global or averaged assessment of the surface or interior of an inhomogeneous sample while still maintaining a reasonably strong collection signal (Behr, Paragraph 69).
Regarding Claim 3, Behr discloses the aforementioned. Further, as Behr discloses the focal spot is an image of the source excitation light (Paragraph 54). Thus, the light being emitted by the fiber (106) to the Fold mirror will be generally circular and remain so as it is redirected.
Regarding Claims 6 & 27, Behr discloses the aforementioned but fails to explicitly disclose wherein the focusing component is a concave mirror;
However, the examiner takes official notice this would be obvious to one of ordinary skill in the art;
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Behr with wherein the focusing component is a concave mirror because this is a functionally equivalent optic to the disclosed sample optic and would be chosen based upon the desired illumination shape and further whatever illumination shape is chosen would be one to optimize a more global or averaged assessment of the surface or interior of an inhomogeneous sample while still maintaining a reasonably strong collection signal (Behr, Paragraph 69).
Regarding Claim 10, Behr discloses the aforementioned but fails to explicitly disclose wherein a cross-section of the collimated light has a diameter ranging from 2 mm to 20 mm;
However, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have a cross-section of the collimated light has a diameter ranging from 2 mm to 20 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233;
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Behr with wherein a cross-section of the collimated light has a diameter ranging from 2 mm to 20 mm because the size of the beam would be chosen to optimize a more global or averaged assessment of the surface or interior of an inhomogeneous sample while still maintaining a reasonably strong collection signal (Behr, Paragraph 69).
Regarding Claim 11, Behr discloses the aforementioned but fails to explicitly disclose wherein the diameter is 4 mm;
However, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the diameter is 4 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233;
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Behr with wherein the diameter is 4 mm because the size of the beam would be chosen to optimize a more global or averaged assessment of the surface or interior of an inhomogeneous sample while still maintaining a reasonably strong collection signal (Behr, Paragraph 69).
Regarding Claim 12, Behr discloses the aforementioned but fails to explicitly disclose wherein the linear shape has a beam width ranging from 30 pm to 40 pm;
However, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the linear shape has a beam width ranging from 30 pm to 40 pm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233;
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Behr with wherein the linear shape has a beam width ranging from 30 pm to 40 pm because the size of the beam would be chosen to optimize a more global or averaged assessment of the surface or interior of an inhomogeneous sample while still maintaining a reasonably strong collection signal (Behr, Paragraph 69).
Regarding Claims 21 & 28, Behr discloses the aforementioned. Further, Behr discloses the probe having a window the second light beam passing through the window to interrogate the sample (Fig. 4, 212, Paragraph 67) but fails to explicitly disclose a gasket;
However, the examiner takes official notice this would be obvious to one of ordinary skill in the art;
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Behr with a gasket because gaskets are well-known to use in conjunction with windows to prevent the environment from entering an optical housing which can cause contamination of the optics or cause the index of refraction from changing both of which can add inaccuracies and errors in the measurement.
Regarding Claim 23, Behr discloses the aforementioned. Further, the limitation, “wherein the optical component is configured to receive and redirect the second collimated light to the light source” is interpreted by the examiner to mean “the Raman signal is collected and directed along the same path as the excitation light via the optical component”
Behr fails to explicitly disclose the Raman signal is collected and directed along the same path as the excitation light via the optical component because in the Behr probe the Raman signal light is split from the other light by a Dichroic filter and sent back to the detector before it reaches the optical component;
However, the examiner takes official notice this would be obvious to one of ordinary skill in the art because this is a simple rearrangement of optics;
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Behr with the Raman signal is collected and directed along the same path as the excitation light via the optical component because this would have the Dichroic filter moved up the optical chain to be in front of the spectrometer and would offer such advantages as only needing one fiber to transfer the excitation light and the Raman signal light between the two units.
Regarding Claim 24, Behr discloses the aforementioned but fails to explicitly disclose wherein the sample is situated on a SERS chip;
However, the examiner takes official notice this would be obvious to one of ordinary skill in the art;
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Behr with wherein the sample is situated on a SERS chip because SERS chips are used for enhancing the Raman response from a sample and thus would improve the signal to noise ratio of the measurement thereby making it more accurate.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Behr in view of Qiao et al (PGPub 2025/0164233) (Qiao).
Regarding Claim 5, Behr discloses the aforementioned but fails to explicitly disclose wherein the focusing component is a cylindrical mirror;
However, As Qiao shows a cylindrical mirror and cylindrical lens are functionally equivalent (Paragraph 31) for achieving illumination in a linear shape;
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Behr with wherein the focusing component is a cylindrical mirror because they’re functionally equivalent and a mirror would be chosen based upon availability and cost.
Claim(s) 13 & 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Behr in view of Blaha (US Pat 4,688,883) (Blaha).
Regarding Claims 13 & 14, Behr discloses the aforementioned but fails to explicitly disclose wherein at least one of the optical component and the focusing component is covered at least partially with a coating; wherein the coating is a metal coating;
However, Blaha discloses that a cylindrical mirror may be formed using a metal coating (Column 3, lines 44-51);
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Behr with wherein at least one of the optical component and the focusing component is covered at least partially with a coating; wherein the coating is a metal coating because this is a common way of forming reflective surfaces and the metal coating would be used to optimize the reflectivity at desired wavelengths thus improving the signal to noise ratio of the detection.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Behr in view of Blaha and further in view of Careau et al (Careau, Nicholas. "Design of a Dental Mirror Mechanism." Worcester Polytechnic Institute (2009)) (Careau).
Regarding Claim 15, Behr as modified by Blaha discloses the aforementioned but fails to explicitly disclose wherein the metal coating is autoclavable;
However, Careau discloses that when designing optical parts one must take into account that the materials have properties to allow for autoclaving them to sterilize them (Page 6, Last paragraph);
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Behr with wherein the metal coating is autoclavable because this allows for the sterilization of the optics in cases where the probe is used in samples where cross-contamination might be possible.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHON COOK whose telephone number is (571)270-1323. The examiner can normally be reached 11am-7pm.
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/JONATHON COOK/Examiner, Art Unit 2877 September 4, 2026
/DOMINIC J BOLOGNA/Primary Examiner, Art Unit 2877
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