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 .
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 1-4 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.
In re claim 1, it is unclear how a planar member having only a 2D shape if such thing is a marker of real-life material. A paper is a 2D shape. It is unclear how this 2D shape is being structured on the apparatus. Furthermore, if the planar member is 2D, then in claim 2, how is a 3D printed plate formed with this planar member that is 2D?
It is unclear the scope of material. It is unclear what material would make the planar member that attenuates a portion of sonic energy and projects a shadow of reduced sonic energy. Every material would attenuate a portion of sonic energy and due to the attenuation, there is going to be some variation after sonic energy passing through the material. Is that the variation of passed sonic energy the shadow of reduce sonic energy? Furthermore, what is a shadow of a reduced sonic energy? Furthermore, what’s the scope of the shape such that the shape is designed so that it presents a different optical and ultrasound image from every direction? Applicant fails to claim a specific shape that would present a different optical and ultrasound image from every direction. Is a planar member having asymmetric 2D shape enough?
In re claim 2, what is an ink layer? Furthermore, a 3D printed plate is NOT a material. It is a finished product.
In re claim 3, what is a physiologically compatible? Compatible does not mean safe. What’s the scope of compatible?
In re claim 4, it is unclear what the position of the optical image is so that this can lead to “more accurately determined”? The only added structure limitation is an optically detectable pattern. Furthermore, the optical image lacks antecedent basis. Furthermore, what is the position of the optical image? Who’s position? Would any optical detectable pattern lead “more accurately determined”?
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 Rejections - 35 USC § 103
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 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) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Athol E. N. Lawrance (US 2,531,634, hereinafter Lawrance ‘634).
In re claim 1, Lawrance ‘634 teaches a surface marker for the definition of a coordinate system for the combined registration of the acoustic and optical signals for the depth-surface imaging device, which comprises a planar member having asymmetric 2D shape (col. 2, lines 35-40, logarithmic spiral is asymmetric) and defining an inner space sized to encompass the surface of interest (figs. 1-4), wherein the planar member is made of a material (col. 2, lines 5-23, note that claim 2, also claims that plastic is a material that would attenuates a portion … projects a shadow … energy, hence, the plastic of Lawrance ‘634 can do it too) that attenuates a portion of sonic energy and projects a shadow of reduced sonic energy, when subjected to an ultrasound beam, and the shape of the planar member is designed so that it presents a different optical and ultrasound image from every direction (figs. 1-4, because the shape of Lawrance is asymmetric 2D and defining an inner space too, it would be inherent to perform the same, or it would have be obvious to perform the same).
In re claim 2, Lawrance ‘634 teaches wherein the marker is a material selected from the group consisting of waterproof paper, a plastic, thin metal layer, ink layer, a 3D printed plate, synthetic resin, and coloured plastic (col. 2, lines 5-23).
In re claim 3, Lawrance ‘634 teaches provided with a physiologically compatible adhesive on one side of the planar member (col. 2, lines 5-23; note that a glue that is to attach cardboard and paper is physiologically compatible; col. 2, lines 35-43, note that a physiological compatible is too broad that any adhesive could be compatible especially with a paper mass type of attachment with an adhesive).
In re claim 4, Lawrance ‘634 teaches wherein an optically detectable pattern is placed or printed, with which, in addition to the shape of the marker, the position of the optical image can be more accurately determined according to the marker's coordinate system (figs. 1-4, when you can see this holes and patterns, they are light reflected. Hence, they are optically detectable pattern of which position can be seen and determined).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BO JOSEPH PENG whose telephone number is (571)270-1792. The examiner can normally be reached Monday thru Friday: 8:00 AM-5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ANNE M KOZAK can be reached at (571) 270-0552. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BO JOSEPH PENG/Primary Examiner, Art Unit 3797
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