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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 1, 4, and 5 are objected to because of the following informalities:
Claim 1 is objected to because there is an extra space before the comma in the 5th to last line.
Claim 4 is objected to because “in is” in line 2 appears to comprise a typographical error.
Claim 5 is objected to because “last” in line 2 appears to comprise a typographical error.
Appropriate correction is required.
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 - 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 18 of U.S. Patent No. 12,468,090. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to acoustic sensing systems comprising an optical whispering gallery mode resonator for sensing acoustic signals, a coupling waveguide having a first end and a second end opposite the first end, and a polymer encasing the optical whispering gallery mode resonator, the polymer having a convex upper boundary engineered to enhance acoustic focus on the optical whispering gallery mode resonator; a light source coupled to the first end of the coupling waveguide; and a light detector coupled to the second end of the coupling waveguide, wherein the resonator and the coupling waveguide each have higher refractive indices than a refractive index of the polymer, the at least one coupling waveguide is optically coupled to at least one optical whispering gallery mode resonator, the at least one coupling waveguide is spaced apart from the optical whispering gallery mode resonator to which it is coupled by a separation gap, and the polymer encasing the optical whispering gallery mode resonator to which the at least one coupling waveguide is coupled also encases a portion of the coupling waveguide and fills the separation gap. Specifically:
Claims 1 and 11 are suggested by reference claim 1, 8, 14, 17, and/or 18. The transducer of claim 11 is suggested by reference claim 12 and/or 14.
Regarding claims 2 - 3 and 12 - 23, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of the reference claims to arrange plural resonators in an array pattern as recited, in order to collect signals from multiple tissue points at the same time.
Regarding claims 4 - 5 and 14 - 15, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of the reference claims to have the spacing be as recited, in order to optimize the signal collection characteristics, for example, to reduce cross-talk, as is conventional in the art.
Regarding claims 6 and 16, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of the reference claims to include a differently sized resonator as recited, in order to optimize the signal collection.
Regarding claims 7 - 8 and 17 - 18, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of the reference claims to include coupling as recited, in order to optimize the signal collection.
Claims 9 and 19 are suggested by reference claim 9.
Claim 10 suggested by reference claim 7, 10,13, 16, and/or 18.
Claim 11 is suggested by reference claim 12 and/or 14, as transducers are understood to be able to receive ultrasound pulses.
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 1 - 20 are 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 1 is indefinite for the following reasons:
There is unclear antecedent basis for “the optical whispering gallery mode resonator” in line 5 - 6. It is unclear which of the at least one optical whispering gallery mode resonators is/are being referred to.
There is unclear antecedent basis for “the coupling waveguide” in line 8. It is unclear which of the at least one coupling waveguides is/are being referred to.
There is unclear antecedent basis for “the coupling waveguide” in line 9. It is unclear which of the at least one coupling waveguides is/are being referred to.
There is unclear antecedent basis for “the resonator” in line 10. It is unclear which of the at least one optical whispering gallery mode resonators is/are being referred to.
There is unclear antecedent basis for “the coupling waveguide” in line 10. It is unclear which of the at least one coupling waveguides is/are being referred to.
There is unclear antecedent basis for “at least one optical whispering gallery mode resonator” in line 12. It is unclear if this is “the” at least one optical whispering gallery mode resonators.
There is unclear antecedent basis for “the optical whispering gallery mode resonator to which it is coupled” in line 13 - 14. The claim has set forth that the coupling is to “at least one optical whispering gallery mode resonator”, rather than to only one optical whispering gallery mode resonator. It is unclear how many optical whispering gallery mode resonators are coupled to the at least one coupling waveguide. Similar logic applies to “the optical whispering gallery mode resonator to which the at least one coupling waveguide is coupled” in line 14 - 16.
There is unclear antecedent basis for “the coupling waveguide” in line 16. It is unclear which of the at least one coupling waveguides is/are being referred to.
Claim 4 is indefinite because it is unclear what structural feature of the claimed device is intended by “spacing … is selected based on one or more of ...” It is unclear if the claim is attempting to require a method step of ‘selecting spacing’ as a feature of the claimed device. If so, the claim is a hybrid apparatus/method claim, which the Federal Circuit has held are indefinite under §112, second paragraph. See Rembrandt Data Techs., LP v. AOL, LLC, 641F.3d 1331, 1339 (Fed. Cir. 2011) (holding apparatus claim reciting active transmitting step indefinite). This is a critical defect because it is unclear whether the claim covers a device that is merely capable of performing the recited function or if the function must actually be performed. The claim is further indefinite because it attempts to define structural features in terms of a result to be achieved. It is unclear what structural difference there is between a system in which the spacing is selected as claimed versus a system in which the spacing is not selected as claimed.
Claim 11 is indefinite for the following reasons:
There is unclear antecedent basis for “the optical whispering gallery mode resonator” in line 5 - 6. It is unclear which of the at least one optical whispering gallery mode resonators is/are being referred to.
There is unclear antecedent basis for “the coupling waveguide” in line 8. It is unclear which of the at least one coupling waveguides is/are being referred to.
There is unclear antecedent basis for “the coupling waveguide” in line 9. It is unclear which of the at least one coupling waveguides is/are being referred to.
There is unclear antecedent basis for “the resonator” in line 10. It is unclear which of the at least one optical whispering gallery mode resonators is/are being referred to.
There is unclear antecedent basis for “the coupling waveguide” in line 10. It is unclear which of the at least one coupling waveguides is/are being referred to.
There is unclear antecedent basis for “the optical whispering gallery mode resonator of at least one sensor,” in line 12 - 13. It is unclear which, if any, of the at least one optical whispering gallery mode resonators is/are being referred to. No “at least one sensor” has been recited or set forth as comprising the at least one optical whispering gallery mode resonator . It is unclear what is being referred to.
There is unclear antecedent basis for “the coupling waveguide” in line 16. It is unclear which of the at least one coupling waveguides is/are being referred to.
Claim 14 is indefinite because it is unclear what structural feature of the claimed device is intended by “spacing … is selected based on one or more of ...” It is unclear if the claim is attempting to require a method step of ‘selecting spacing’ as a feature of the claimed device. If so, the claim is a hybrid apparatus/method claim, which the Federal Circuit has held are indefinite under §112, second paragraph. See Rembrandt Data Techs., LP v. AOL, LLC, 641F.3d 1331, 1339 (Fed. Cir. 2011) (holding apparatus claim reciting active transmitting step indefinite). This is a critical defect because it is unclear whether the claim covers a device that is merely capable of performing the recited function or if the function must actually be performed. The claim is further indefinite because it attempts to define structural features in terms of a result to be achieved. It is unclear what structural difference there is between a system in which the spacing is selected as claimed versus a system in which the spacing is not selected as claimed.
Dependent claims that are listed in the rejection header above as being rejected while not having been specifically addressed are rejected by virtue of dependency.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMELIE R DAVIS whose telephone number is (571)270-7240. The examiner can normally be reached Monday-Friday, 9:30 - 6:00 PST.
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/AMELIE R DAVIS/Primary Examiner, Art Unit 3798
Prosecution Insights