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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`313- 1450
`Alexandria1 Virginia 22
`wwwnsptogov
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`APPLICATION NO.
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONF {MATION NO.
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`12/810,391
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`06/24/2010
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`Takahiko Tanida
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`20249.0050USWO
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`6139
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`53148
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`7590
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`05/02/2012
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`HAMRE, SCHUMANN, MUELLER & LARSON P.C.
`PO. BOX 2902
`MINNEAPOLIS, MN 55402-0902
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`EXAMINER
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`GAKH, YELENA G
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`ART UNIT
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`1777
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`MAIL DATE
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`05/02/2012
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`PAPER NUMBER
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`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL—90A (Rev. 04/07)
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`

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`Office Action Summary
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`Application No.
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`Applicant(s)
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` 12/810,391 TANIDA ET AL.
`Examiner
`Art Unit
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`Yelena G. Gakh, Ph.D.
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`1777
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 1MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1. 136(a).
`In no event however may a reply be timely filed
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
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`Status
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`1)|Zl Responsive to communication(s) filed on 24 June 2010.
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`2a)|:l This action is FINAL.
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`2b)|:l This action is non-final.
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`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`5)IZ CIaIm(s) 1-13is/are pending in the application.
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`5a) Of the above claim(s) _ is/are withdrawn from consideration.
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`6)|:| CIaIm(s) _ is/are allowed.
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`7)|:l CIaIm(s) _ is/are rejected.
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`8)I:I CIaIm(s)
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`is/are objected to.
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`£3)le CIaIm(s) m are subject to restriction and/or election requirement.
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`Application Papers
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`10)I:I The specification is objected to by the Examiner.
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`11)I:| The drawing(s) filed on _ is/are: a)|:| accepted or b)|:| objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`12)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`13)|:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
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`a)|:| AII
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`b)|:l Some * c)I:I None of:
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`1.I:I Certified copies of the priority documents have been received.
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`2.|:l Certified copies of the priority documents have been received in Application No. _
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`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1) I] Notice of References Cited (PTO-892)
`2) I] Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) I] Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mai| Date _.
`U.S. Patent and Trademark Office
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`4) I] Interview Summary (PTO-413)
`Paper N0(S )/Mai| Date. _
`5)I:I NOTICQ 0f Informal Patent Application
`6)I:I Other:—
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`PTOL-326 (Rev. 03-11)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20120430
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`Application/Control Number: 12/8 10,391
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`Page 2
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`Art Unit: 1777
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`DETAILED ACTION
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`1.
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`Preliminary amendment filed on 06/24/10 is acknowledged. Claims 1—13 are pending in
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`the application.
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`2.
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`Restriction is required under 35 U.S.C. 121 and 372.
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`Election/Restrictions
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`This application contains the following inventions or groups of inventions which are not
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`so linked as to form a single general inventive concept under PCT Rule 13.1.
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`In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a
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`single invention to which the claims must be restricted.
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`Group I, claim(s) 1—6 and 12—13, drawn to a solution measurement method.
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`Group II, claim(s) 7—11, drawn to solution measurement apparatus.
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`The groups of inventions listed above do not relate to a single general inventive concept
`under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special
`technical features for the following reasons: the examiner did not find the common technical
`features for the claims the way they are written in the instant application: the method comprises
`measuring an optical property of the portion of to be measured, while the apparatus comprises an
`imaging device. Optical measurement is not limited to imaging devices. It can be any
`measurement using IR, UV, Raman spectroscopy, etc. Therefore, the claims are restrictable.
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`3.
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`A telephone call was made to Douglas P. Mueller on 04/26/12 to request an oral election
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`to the above restriction requirement, but did not result in an election being made.
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`Applicant is advised that the reply to this requirement to be complete must include (i) an
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`election of a species or invention to be examined even though the requirement may be traversed
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`(37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
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`The election of an invention or species may be made with or without traverse. To
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`preserve a right to petition, the election must be made with traverse. If the reply does not
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`distinctly and specifically point out supposed errors in the restriction requirement, the election
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`shall be treated as an election without traverse. Traversal must be presented at the time of
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`election in order to be considered timely. Failure to timely traverse the requirement will result in
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`

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`Application/Control Number: 12/810,391
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`Page 3
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`Art Unit: 1777
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`the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant
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`must indicate which of these claims are readable on the elected invention or species.
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`Should applicant traverse on the ground that the inventions have unity of invention (37
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`CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit
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`evidence or identify such evidence now of record showing the inventions to be obvious variants
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`or clearly admit on the record that this is the case. Where such evidence or admission is
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`provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art,
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`the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other
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`invention.
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`Applicant is reminded that upon the cancellation of claims to a non—elected invention, the
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`inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the
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`currently named inventors is no longer an inventor of at least one claim remaining in the
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`application. Any amendment of inventorship must be accompanied by a request under 37 CFR
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`1.48(b) and by the fee required under 37 CFR 1.17(i).
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`4.
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`Examiner’s Note: In response to the restriction requirements the examiner suggests the
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`Applicants to rewrite the claims in light of the specification, since at present the claims are
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`written in an unclear and indefinite form. For example, the method claims look like Jepson type
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`claims; however, in this case they are not written in the correct format. Otherwise the preamble
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`of claim 1 should be placed in the body of the claim and clearly recited as the method steps. The
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`examiner suggests the Applicants to use the language of the specification for presenting the
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`invention in the clear and definite form.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Yelena G. Gakh, Ph.D. whose telephone number is (571)272—
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`1257. The examiner can normally be reached on 9:30am—6:30pm.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Vickie Kim can be reached on 571—272—0579. The fax phone number for the
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`organization where this application or proceeding is assigned is 571—273—8300.
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`Application/Control Number: 12/810,391
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`Page 4
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`Art Unit: 1777
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`Information regarding the status of an application may be obtained from the Patent
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`Application Information Retrieval (PAIR) system. Status information for published applications
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`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
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`applications is available through Private PAIR only. For more information about the PAIR
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`system, see http://pair—direct.uspto.gov. Should you have questions on access to the Private PAIR
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`system, contact the Electronic Business Center (EBC) at 866—217—9197 (toll—free). If you would
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`like assistance from a USPTO Customer Service Representative or access to the automated
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`information system, call 800—786—9199 (IN USA OR CANADA) or 571—272—1000.
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`/Yelena G. Gakh, Ph.D./
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`Primary Examiner, Art Unit 1777
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`5/2/2012
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