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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
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`APPLICATION NO.
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`
`
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` FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
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`CONFIRMATIONNO.
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`12/810,391
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`06/24/2010
`
`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 & LARSONP.C.
`P.O. 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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`Application No.
`Applicant(s)
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`Office Action Summary
`
`
` 12/810,391 TANIDA ETAL.
`Examiner
`Art Unit
`
`Yelena G. Gakh, Ph.D.
`
`1777
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 7 MONTH(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 CFR 1.136(a).
`In no event, however, may a reply be timely filed
`after SIX (6) 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).
`Anyreply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`1) Responsive to communication(s)filed on 24 June 2010.
`2a)L] This action is FINAL.
`2b) This action is non-final.
`3)L]
`Anelection was made bythe applicant in responseto a restriction requirementset forth during the interview on
`___; the restriction requirement and election have beenincorporated into this action.
`4)L] Sincethis application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`Disposition of Claims
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`5) Claim(s) 1-13 is/are pending in the application.
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`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)L] Claim(s) __is/are allowed.
`(
`)
`7)L) Claim(s
`is/are rejected.
`)
`(s)___
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`8)L] Claims)
`is/are objected to.
`9)X] Claim(s) 1-13 are subject to restriction and/or election requirement.
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`Application Papers
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`Status
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` U.S. Patent and Trademark Office
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`10)L] The specification is objected to by the Examiner.
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`11) The drawing(s)filed on
`is/are: a)L_] 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).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`12) 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)[.] Acknowledgmentis made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)LJ All b)L] Some*c)L] None of:
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`1.] Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] Copiesof the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`1) Cc Notice of References Cited (PTO-892)
`2) [J Notice of Draftsperson’s Patent Drawing Review (PTO-948)
`3) [J] Information Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date.
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`4) | Interview Summary (PTO-413)
`Paper No(s)/Mail Date. __
`5) L] Noticeof Informal Patent Application
`6) C 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./Mail Date 20120430
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`

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`Application/Control Number: 12/810,391
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`Art Unit: 1777
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`Page 2
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`1.
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`Preliminary amendmentfiled on 06/24/10 is acknowledged. Claims 1-13 are pending in
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`DETAILED ACTION
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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 whichare 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 berestricted.
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`GroupI, claim(s) 1-6 and 12-13, drawn to a solution measurement method.
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`GroupII, claim(s) 7-11, drawn to solution measurement apparatus.
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`The groups of inventions listed above do notrelate 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 examinerdid not find the commontechnical
`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 measurementis not limited to imaging devices. It can be any
`measurement using IR, UV, Raman spectroscopy, etc. Therefore, the claimsare 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 aboverestriction 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 (1) an
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`election of a species or invention to be examined even though the requirement maybe 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 supposederrors 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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`Art Unit: 1777
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`Page 3
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`the loss of right to petition under 37 CFR 1.144. If claims are addedafter 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 groundthat 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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`evidenceor 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 examinerfinds one of the inventions unpatentable over the priorart,
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`the evidence or admission maybe 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 inventorof at least one claim remaining in the
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`application. Any amendmentof 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 responseto the restriction requirements the examiner suggests the
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`Applicants to rewrite the claimsin 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 numberis (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 numberfor the
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`organization where this application or proceeding is assigned is 571-273-8300.
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`

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`Application/Control Number: 12/810,391
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`Art Unit: 1777
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`Page 4
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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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`maybe 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
`
`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
`
`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.
`
`/Yelena G. Gakh, Ph.D./
`Primary Examiner, Art Unit 1777
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`5/2/2012
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`