Notice of Pre-AIA or AIA Status
(1) The present application is being examined under the pre-AlA first to invent provisions.
(2) Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AlA), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AlA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claim 1, “a controlled amount comprising a first distance based at least in part upon compressibility of the eluent” (lines 18,19) “wherein the sample volume is compressed” (lines 19-20, claim 1) by itself, or in combination with remaining claim limitations, is new to the application.?1
Claim 5’s exerting a force “thereby causing the moveable element to move in a controlled manner” (italics added) is new by itself, or the combination of such with remaining claim limitations.
As to claim 8, “controlled amount ... loop” (last 2 lines) by itself, or in combination with remaining claim limitations is new to the application.
As to claim 10, “moving the moveable element ... by a controlled amount comprising a second distance, to thereby decompress ... to an atmospheric pressure” (lines 5- last) by itself, or the combination of such with remaining claim limitations.
(3) Claims 5,8 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
As to claim 5, how is the moveable element moved “in a controlled manner” (italics added, last line, claim 5)? Para 84 refers to such, but nothing in the specification suggests any manner of control of movement. The specification suggests that the element moves due to an applied force, and subsequently stops. Any control is in stopping movement. Any manner of control any actual movement (“causing the moveable element to move”, last line, claim 5) of the element is not apparent. The specification does not provide for such, no reference provides for such. Where is one of ordinary skill to turn?
As to claim 8, how is control based upon “properties of the sample loop”? The loop is the apparatus structure that provides the loop, but no listed properties are listed that the loop has by itself that affects controlled amount of “distance” (line 18, claim 1. Nothing in the application provides for such, no reference provides for such. Any control is that of stoppage of movement when the high pressure is reached.
(4) As to the Response filed 7/15/25, please consider:
As to p. 6; the only “controlled amount” (claim 1) during compression (“compressed”, claim 1) in the instant application is that of the disclosed pressure sensor 220 that is employed to control movement until the pressure of the pump 20 “equals the system pressure” (Para 84) of the chromatograph column 30. There is no disclosed “controlled” (line 7 from last, claim 1) (i.e. targeted, even predetermined if you will) “first distance” (line 7 from last, claim 1) that is based upon “the high-pressure” (line 5 from last, claim 1). Relating the limitation “controlled” to a “first distance” (italics added, claim 1) is new, as no “distance” value is known/determinable until after the processing unit 70 recognizes pressure equilibrium. The processing unit 70 recognizes only the output of pressure sensor 220 value, which value is not any particular distance (i.e. “a distance” (line 7 from last, claim 7). While the sample volume is loaded into the loop, the moveable element is moved relative to the pump volume structure a controlled pressure (not distance), and the degree/amount of movement of the element stops/ceases at a distance.
As to p. 6; the so-called “direct correlation” (last line, p. 6) is an over statement. There is only support for the processing unit 70 stopping the movement of the pump when the high pressure is reached. One of ordinary skill is unaware of any “first distance” (line 7 from last, claim 1) that is “controlled” (line 7 from last, claim 1) (targeted, if you will) during “moving” (line 8 from last, claim 1). That phrase “controlled amount comprising a first distance” (line 7 from last) is new.
As to the last paragraph of p. 7 (and continuing on to p. 8); the Board did not consider “controlled amount comprising a first distance” (line 7 from last, claim 1). The Board considered language viewed in light of Applicant’s specification 15/965,402, and construed claim language in 15/965,402 “as permitting real-time, empirical determination of a movement amount while forwarding the piston to achieve pressure equalization” (underlining added, page 4 of CAFC), and did not construe such as a “determination of a movement amount before forwarding the piston” (underlining added, page 4 of CAFC). Claim 1’s “a controlled amount comprising a first distance” relates to what the Board did not consider. Claim 1 calls for the controlled amount being “based at least a part upon a compressibility of the eluent”. The final amount might be a function of compressibility, but the final amount is not a controlled distance. The final amount of distance is only determinable after the controlled pressure achieves high pressure equalization. Applicants “controlled amount comprising a first distance” (italics added), requires knowing/determining “a distance” prior to piston movement.
As to the middle paragraph of p. 7 (and continuing on to p. 8); there is a new matter difference between “moving” (line 8 from last, claim 1) an element “a controlled amount comprising a first distance” (line 7 from last, claim 1), and a supported - - moving an element an amount comprising a distance - - . Claim 1 calls for “moving” (line 8 from last, claim 1) the element a controlled amount, but CAFC passage refers to determining (any manner of) movement (be it controlled or otherwise) while forwarding. It is that term “controlled” that triggers the new matter. Claim 1’s “first distance” calls for a controlled amount. The CAFC comment relates to determining movement (be it controlled or otherwise) of a piston while forwarding, while claim 1 in issue is moving the piston a controlled amount that comprises a first distance. Applicant’s disclosed distance is not that of a controlled amount (i.e. a final/desired/planned/predetermined distance). The CAFC comment does not extend to “controlled amount comprising a first distance” (italic added, Applicant’s claim 1). Claim 1’s “a controlled amount” is a distance based is not some varying parameter; the “controlled amount” is that of distance which provides the high pressure that permits for the sample to be connected to high pressure fluid path for equilibrium. Again, the CAFC passage does not extend to “controlled amount” as it relates to distance to achieve equilibrium, and thus is not applicable to the issue at hand. Applicant’s disclosed controlled amount is only pressure based.
As to the last full paragraph of p. 7; claim 1 calls for “moving the moveable element … a controlled amount comprising a first distance” (line 17-18), for which there is no support. The disclosure calls for moving the moveable element a distance. The disclosure does so by employing a control unit 208 to control the pressure as a function of the pressure sensor 220. It is the pressure that is controlled. Applicant’s “a controlled amount comprising a first distance”2 is new by itself, even in combination with remaining claim limitations. There is no control of “a first distance”. The application is all about providing pressure compensation by utilizing a control unit 208 to control pump 206 as a function of the pressure sensor 220.
As to third full paragraph of p. 8; lines 19-20 (claim 1) indicate that the sample is compressed “to a high pressure” (line 20) before connecting the loop having that same “high pressure” (line 21) to the high-pressure path. Thus, the pressure compensation. As such, the pump 206/control unit 208/pressure sensor 220 move the moveable element relative to the volume structure by controlling/varying pressure. It is the pressure that is “controlled” by way of the pump 206/control unit 208/pressure sensor 220.
As to the last six line of the third paragraph of p. 8; contrary to the last six lines of the third paragraph, the phrase “moving the moveable element relative to the pump volume structure a controlled amount comprising a first distance” (italics and highlighting added, lines 17-18) suggests that the “a first distance” is (somehow) known/predetermined before equilibrium occurs, but there is no support for such. As disclosed, when the moveable element moves, such movement continues until pressure equalization occurs. There is no support for control of any distance during movement as claimed. Disclosure provides for controlling pressure until equilibrium is attained. The only distance is the final distance of the element after the controlled pressure is reached.
As to first paragraph of p. 8; there is no “controlled distance”. Just a distance.
(5) All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
(5) Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT R RAEVIS whose telephone number is (571)272-2204. The examiner can normally be reached on Mon to Fri from 8am to 4pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kristina DeHerrera, can be reached at telephone number 303-297-4237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT R RAEVIS/Primary Examiner, Art Unit 2855
1 Claim 8 refers to the same “controlled first distance”.
2 Disclosure suggests the phrase may appropriately have read - - to a final amount comprising a first distance - - , and the final amount is not controlled.