NON-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 .
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 1-9 and 11-13 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.
Regarding claims 1, 6, and 8: Claim 1 recites that “the processor is configured to: allow the ultrasonic generator to have a pause section…”. It is unclear whether this means that the processor is specifically programmed to control the ultrasonic generator “to have a pause section…” or otherwise whether this more broadly means that the processor merely enables the ultrasonic generator to have a pause section (e.g., by user configuration/choice). For purposes of applying prior art, this limitation is being construed as meaning the processor is specifically programmed to control the ultrasonic generator “to have a pause section…”. Claims 6 and 8 also use the term “allow” in a similar manner. The discussion above similarly applies to claims 6 and 8.
Regarding claims 2-4: The claim(s) makes reference to “a start point or and end point of the first point or the second point”. It is not quite clear what this refers to since the first point or the second point (or any other point in space for that matter) does not itself have a start/end point per se. Something like a line, a path, or movement can be thought of as having a start/end point, but not a point itself. Ordinarily the examiner would look to the Specification and Drawings for further insight or context for the limitation in question, however this limitation does not appear to be clearly described in the Specification or Drawings. For example, points A/B as described in the Specification and Drawings appear to correspond to the claimed first/second points. However, neither point A nor point B, itself, has a start/end point.
Further, the claims 3 and 4 make reference to an “odd-numbered irradiation” and an “even numbered irradiation”. It is not precisely clear what this refers to. Does this mean odd/even individual ultrasound shots; odd/even traversals between points A and B; or odd/even reciprocation cycles? While the Specification discusses odd/even numbered irradiation location (e.g., P1-1, P1-3, …, P1-17, and P1-2, P1-4, …, P1-16; see ¶ [00110]-[00124]) this does not seem to clearly apply in a manner that makes sense in the context of “located at the end point of the first point for an odd-numbered irradiation and at the start point of the second point during an even-numbered irradiation” (claim 3) or “located at the start point of the first point for an odd-numbered irradiation and at the end point of the second point during an even-numbered irradiation” (claim 4) because: even if, for arguments’ sake, the start and end points refer to points A/B, it doesn’t make sense to refer to points A/B as “for” an odd-numbered irradiation location (in the sense of P1-1, P1-3, …, P1-17) or “for” even-numbered irradiation location (in the sense of P1-2, P1-4, …, P1-16) . Otherwise, the Specification and Drawings do not appear to describe the limitation.
Accordingly, the ordinarily skilled artisan would not be reasonably apprised of the metes and bounds of the claimed invention(s).
Regarding claims 11-13: see above regarding claims 2-4.
Claim Rejections - 35 USC § 102
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.
Claims 1 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoo et al., US 2020/0086145 A1 (hereinafter “Yoo”).
Regarding claim 1: Yoo discloses an ultrasonic wave generator control device, the device comprising:
at least one actuator (piezoelectric driving unit/piezoelectric motor 330) configured to allow an ultrasonic wave generator to perform a reciprocating movement between a first point and a second point (movement from positions Ps to Pe, ¶ [0096]-[0117]; reciprocating movement is implied from the described “double shot” wherein movement is reversed, ¶ [0117]); and
a processor (controller 110) configured to control the ultrasonic wave generator and the at least one actuator, wherein the processor is configured to:
allow the ultrasonic wave generator to have a pause section where irradiation of ultrasonic waves pauses within a turning section during the reciprocating movement (implied from ¶ [0116]-[0117]: The first pass/shot starts at Ps and ends at Pe as discussed above. During the first pass/shot, ultrasonic waves are irradiated at positions P1-P8. The transducer then turns around at Pe for the return pass/shot which starts at Pe and ends at Ps. During the return pass/shot, ultrasonic waves are irradiated at positions P8-P1. Since irradiation of ultrasound on the first pass/shot ends at P8, and irradiation of ultrasound on the return pass/shot starts at P8, it is understood that the turning section –i.e., from P8 to Pe on the first pass/shot and from Pe to P8 on the return pass/shot– corresponds to a pause in the irradiation of ultrasonic waves).
Regarding claim 10: See above regarding claim 1.
MPEP 2112.02 recites in part:
I. PROCESS CLAIMS — PRIOR ART DEVICE ANTICIPATES A CLAIMED PROCESS IF THE DEVICE CARRIES OUT THE PROCESS DURING NORMAL OPERATION
Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device. When the prior art device is the same as a device described in the specification for carrying out the claimed method, it can be assumed the device will inherently perform the claimed process. In re King, 801 F.2d 1324, 231 USPQ 136 (Fed. Cir. 1986) (The claims were directed to a method of enhancing color effects produced by ambient light through a process of absorption and reflection of the light off a coated substrate. A prior art reference to Donley disclosed a glass substrate coated with silver and metal oxide 200-800 angstroms thick. While Donley disclosed using the coated substrate to produce architectural colors, the absorption and reflection mechanisms of the claimed process were not disclosed. However, King’s specification disclosed using a coated substrate of Donley’s structure for use in his process. The Federal Circuit upheld the Board’s finding that "Donley inherently performs the function disclosed in the method claims on appeal when that device is used in ‘normal and usual operation’" and found that a prima facie case of anticipation was made out. Id. at 138, 801 F.2d at 1326. It was up to applicant to prove that Donley’s structure would not perform the claimed method when placed in ambient light.). See also In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (Applicant claimed a process for preparing a hydrolytically-stable zeolitic aluminosilicate which included a step of "cooling the steam zeolite ... at a rate sufficiently rapid that the cooled zeolite exhibits an X-ray diffraction pattern ...." All the process limitations were expressly disclosed by a U.S. patent to Hansford except the cooling step. The court stated that any sample of Hansford’s zeolite would necessarily be cooled to facilitate subsequent handling. Therefore, rejections under 35 U.S.C. 102 and 103 were properly made. Applicant had failed to introduce any evidence comparing X-ray diffraction patterns showing a difference in cooling rate between the claimed process and that of Hansford or any data showing that the process of Hansford would result in a product with a different X-ray diffraction. Either type of evidence would have rebutted the rejections under 35 U.S.C. 102. A further analysis would be necessary to determine if the process was nonobvious under 35 U.S.C. 103.); Ex parte Novitski, 26 USPQ2d 1389 (Bd. Pat. App. & Inter. 1993) (The Board rejected a claim directed to a method for protecting a plant from plant pathogenic nematodes by inoculating the plant with a nematode inhibiting strain of P. cepacia. A U.S. patent to Dart disclosed inoculation using P. cepacia type Wisconsin 526 bacteria for protecting the plant from fungal disease. Dart was silent as to nematode inhibition but the Board concluded that nematode inhibition was an inherent property of the bacteria. The Board noted that applicant had stated in the specification that Wisconsin 526 possesses an 18% nematode inhibition rating.).
In this case, the prior art device of Yoo carries out the process of claim 1 in its ordinary/normal operation because the method steps track the functionality of the device including the processor configuration.
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.
Claims 6, 8, 15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Yoo in view of Cannata et al., US 2020/0164231 A1 (hereinafter “Cannata”).
Regarding claim 6: Yoo discloses generating ultrasonic waves at the irradiation section during the reciprocating movement as discussed above but doesn’t disclose changing the intensity thereof based on an irradiation section. However, controlling the ultrasonic wave generator to change intensity of the ultrasonic waves based on an irradiation section is known from Cannata (¶ [0049], [0056], [0057], [0060], [0067], [0072], [0073], [0212], [0214]).
It would have been obvious to one having ordinary skill in the art to modify the device of Yoo such that the processor is configured to allow the ultrasonic wave generator to change intensity of the ultrasonic waves based on an irradiation section, as taught by Cannata; and the ordinarily skilled artisan would have been motivated to make this modification because different locations in the irradiation section may require different intensity of ultrasonic waves.
Regarding claim 8: Yoo discloses generating ultrasonic waves at the irradiation section during the reciprocating movement as discussed above but doesn’t disclose changing the irradiation time thereof based on the irradiation section. However controlling the ultrasonic wave generator to change the irradiation time of ultrasonic waves based on the irradiation section is known from Cannata (¶ [0049], [0056], [0057], [0067], [0070]-[0072], [0075]).
It would have been obvious to one having ordinary skill in the art to modify the device of Yoo such that the processor is configured allow the ultrasonic wave generator to change an irradiation time of the ultrasonic waves based on an irradiation section, as taught by Cannata; and the ordinarily skilled artisan would have been motivated to make this modification because different locations in the irradiation section may require different dosages of energy.
Regarding claims 15 and 17: See above regarding claims 6 and 8. Here, the method claims are obvious for the same reasons.
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 limitations of claims 2-4 and 11-13 as discussed above in the §112(b) rejection. Any attempt to reject claims 2-4 and 11-13 would necessarily be based on considerable speculation about the meaning of terms employed in the claims or assumptions that must be made as to the scope of the claims – in this case, speculation or assumption as to the meaning of the terms/phases “a start point or and end point of the first point or second point”, “the end point of the first point for an odd-numbered irradiation”, “the start point of the second point during an even-numbered irradiation”, “the start point of the first point for an odd-numbered irradiation”, and “the end point of the second point during an even-numbered irradiation” as recited in claims 2-4 and 11-14. Therefore, a prior art rejection of these claims as currently presented would not be proper.
Allowable Subject Matter
Claims 14, 16, and 18 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.
Claims 5, 7, and 9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 5 and 14: Within the context of claim 1, the prior art of record does not teach or reasonably suggest to the ordinarily skilled artisan that “the processor is configured to: control the ultrasonic wave generator such that different irradiation points are formed in each of a section where the ultrasonic wave generator moves from the first point to the second point, and a section where the ultrasonic wave generator moves from the second point to the first point” as recited in claim 5. In other words, the prior art does not teach that the irradiation points during forward pass (moving the ultrasonic wave generator from the first point to the second point) are different points compared to the irradiation points during the return/reverse pass (moving the ultrasonic wave generator from the second point back to the first point). Claim 14 is substantially similar to claim 5, albeit in the form of a method instead of a device. Claim 14 is therefore allowable over the prior art for the same reason.
Regarding claims 7 and 16: Within the context of claim 6, the prior art of record does not teach or reasonably suggest to the ordinarily skilled artisan that the intensity of the ultrasonic waves is controlled to gradually increase in one direction and to gradually decrease in an opposite direction, based on the irradiation section as recited in claim 7. Claim 16 is substantially similar to claim 7, albeit in the form of a method instead of a device. Claim 16 is therefore allowable over the prior art for the same reason.
Regarding claims 9 and 18: Within the context of claim 8, the prior art of record does not teach or reasonably suggest to the ordinarily skilled artisan that the irradiation time of the ultrasonic waves is controlled to gradually increase in one direction and to gradually decrease in an opposite direction, based on the irradiation section as recited in claim 9. Claim 18 is substantially similar to claim 9, albeit in the form of a method instead of a device. Claim 18 is therefore allowable over the prior art for the same reason.
Conclusion
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.
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COLIN T. SAKAMOTO
Primary Examiner
Art Unit 3798
/COLIN T. SAKAMOTO/Primary Examiner, Art Unit 3798
19 September 2026
