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 .
Election/Restrictions
Applicant’s election without traverse of Group II, Claims 10-17 in the reply filed on 05/26/2026 is acknowledged.
Applicant contends that Claims 19-28 reciting “a method” are in condition for examination for including all the limitations of Claim 10. However, as discussed below in the body of the action, the system of Claim 10 is not a special technical feature which makes a prior contribution over the prior art given its obviousness over Lahitte in view of Froncisz.
As such, the newly amended Claims 19-28 remain directed to an invention that is, under 35 USC 371, independent from the invention originally claimed for the following reasons: Because the inventions lack a shared special technical feature which makes a contribution over the prior art; as such, unity of invention is not present and the claims remain restrictable under 35 USC 371.
Since applicant has elected Group II, this invention has been constructively elected for prosecution on the merits. Accordingly, Claims 19-28 are withdrawn from consideration as being directed to a non-elected invention.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Objections
Claim 14 is objected to because of the following informalities: The claim recites “an aperture through the body; a sample tube extending through the aperture of the resonator” and should be amended to recite “an aperture through the body; a sample tube extending through the aperture of the body” for clarity. Appropriate correction is required.
Claim 36 is objected to because of the following informalities: The claim recites “the SR model” and should be amended to recite “the SVR model”. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitation is:
“a processor [generic computer] that receives the reflection coefficient and produces a determination if the ion is in the fluid based upon the reflection coefficient [specific function/process not coextensive with a general-purpose computer]” as in Claims 10 and 36.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
***See the 35 USC 112 section below.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 10-17 and 29-36 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.
Claims 10 and 36 recite “the VNA receives a reflected portion of the RF energy signal through the coupling loop and calculates a reflection coefficient” wherein it is unclear as to how the data used for calculating the reflection coefficient is gathered as the claim does not describe any data handling so as to arrive at the calculated reflection coefficient. Merely claiming “receiving a signal” and “calculating a coefficient” does not provide sufficient detail to appraise on of ordinary skill in the art as to how the calculated reflection coefficient is arrived at.
Further, Claims 10 and 36 are reliant on particular software for accomplishing the functionality where the claimed processor “produces a determination if the ion is in the fluid based upon the reflection coefficient”. However, the written description fails to disclose the algorithm(s) for performing the claimed specific computer function of “produc[ing] a determination if the ion is in the fluid based upon the reflection coefficient” as in Claims 10 and 36.
See MPEP 2181(II)(B): For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b). -- See Net MoneyIN, Inc. v. Verisign. Inc., 545 F.3d 1359, 1367, 88 USPQ2d 1751, 1757 (Fed. Cir. 2008).
See also In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011) (“[W]hen the disclosed structure is a computer programmed to carry out an algorithm, ‘the disclosed structure is not the general-purpose computer, but rather that special purpose computer programmed to perform the disclosed algorithm.’”) (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999)). In cases involving a special purpose computer-implemented means-plus-function limitation, the Federal Circuit has consistently required that the structure be more than simply a general-purpose computer or microprocessor and that the specification must disclose an algorithm for performing the claimed function.
See, e.g., Noah Systems Inc. v. Intuit Inc., 675 F.3d 1302, 1312, 102 USPQ2d 1410, 1417 (Fed. Cir. 2012); Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. For a computer-implemented means-plus-function claim limitation invoking 35 U.S.C. 112(f) the Federal Circuit has stated that “a microprocessor can serve as structure for a computer implemented function only where the claimed function is ‘coextensive’ with a microprocessor itself.”
See EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 622, 114 USPQ2d 1711, 1714 (Fed. Cir. 2015), citing In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316, 97 USPQ2d 1737, 1747 (Fed. Cir. 2011). “‘It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed.’” EON Corp., 785 F.3d at 621, 114 USPQ2 at 1714, quoting Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365, 102 USPQ2d 1122, 1125 (Fed. Cir. 2012). “‘[S]pecial programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general-purpose computer.”
EON Corp., 785 F.3d at 623, 114 USPQ2d at 1715 (citations omitted). “Examples of such coextensive functions are ‘receiving’ data, ‘storing’ data, and ‘processing’ data—the only three functions on which the Katz court vacated the district court’s decision and remanded for the district court to determine whether disclosure of a microprocessor was sufficient.” 785 F.3d at 622, 114 USPQ2d at 1714. Thus, “[a] microprocessor or general-purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer implemented functions require disclosure of an algorithm.” Id., 114 USPQ2d at 1714.
To claim a means for performing a specific computer-implemented function and then to disclose only a general-purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333, 86 USPQ2d at 1239. In this instance, the structure corresponding to a 35 U.S.C. 112(f) claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999); Rain Computing, Inc. v. Samsung Electronics America Co., 989 F.3d 1002, 1007-8, 2021 USPQ2d 284 (Fed. Cir. 2021).
The corresponding structure is not simply a general-purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. Thus, the specification must sufficiently disclose an algorithm to transform a general-purpose microprocessor to the special purpose computer. See Aristocrat, 521 F.3d at 1338, 86 USPQ2d at 1241. (“Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. §112 ¶ 6. It was required, however, to at least disclose the algorithm that transforms the general-purpose microprocessor to a ‘special purpose computer programmed to perform the disclosed algorithm.’” (quoting WMS Gaming, 184 F.3d at 1349, 51 USPQ2d at 1391.))
An algorithm is defined, for example, as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow char t, or “in any other manner that provides sufficient structure.”
Finisar, 523 F.3d at 1340, 86 USPQ2d at 1623; see also Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366, 65 USPQ2d 1934, 1941 (Fed. Cir. 2003); In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir.1997); Typhoon Touch Inc. v. Dell Inc., 659 F.3d 1376, 1385, 100 USPQ2d 1690, 1697 (Fed. Cir. 2011); In re Aoyama, 656 F.3d at 1306, 99 USPQ2d at 1945.
However, no specific algorithm(s) is/are defined and the functions therein Claims 10 and 36 go beyond a general-purpose computer and are not coextensive with the computer as defined in the MPEP passages cited above.
Therefore, the claim(s) is/are indefinite and rejected under 35 USC 112b/2nd. Discussion with respect to the software/algorithms as in Claim 1 is not found within the disclosure.
Additionally, while Applicant’s instant specification para. [0006] describes “the processor applies a support vector regressor (SVR) model to the reflection coefficient to produce the determination if the ion is in the fluid. The processor further determines a concentration of the ion in the fluid by applying the SVR model to the reflection coefficient” and [0007] states “A detection of the ion in the fluid is determined based upon the measured reflection coefficients.”, these recitations are highly generic discussions of the computer-implemented determination not amounting to the required specific set of steps/equations used by the processor for making the claimed determination.
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.
Claims 10-17 and 29-35 are rejected under 35 U.S.C. 103 as being unpatentable over Lahitte et al. (US PAT 5,103,180 A), hereinafter “Lahitte”, in view of Froncisz et al. (US PAT 4,446,429 A), hereinafter “Froncisz”, and Dehning et al. (Dehning, Kirsten; et al., “Split-ring resonator: A new detector in liquid chromatography”, Leibniz University Hannover, Dresdner Sensor-Symposium, 2019.), hereinafter “Dehning”.
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Regarding Claim 10, Lahitte teaches a system comprising: a resonator comprising:
a body, the body having a planar surface (Fig. 1 and “an ultrahigh frequency cavity defined by a wall 12” – The planar surface is the surface opposite the surface 12 seen through Fig. 1.);
an aperture 22 through the body (Figs. 3A and 4A: The through-opening through which the element F extends.);
a gap that extends into the body from the planar surface to the aperture (See the annotated Fig. 1 above showing the rectangular cut extending from the planar surface downwards to the aperture.); and
at least one cut through the body from the planar surface towards the aperture, wherein the at least one cut extends across the gap (See the annotated Fig. 1 above showing the rectangular cut extending across the gap, the structures forming a common volume.);
a sample tube 28a/b extending through the aperture of the resonator (See Fig. 1 showing the sample tube formed by the two halves 28a and 28b.), the sample tube 28a/b configured to receive a sample F of the fluid with the ion (“The desired measurement can then be carried out on the filiform material F by making the latter move continuously or discontinuously within the protective device constituted by the two complimentary portions 28a,28b and substantially without any contact with the said device.”);
as in Claim 10.
Further as in Claim 10, Lahitte does not specifically teach the system discussed above further comprising a coupling loop comprising a coil of wire, the coil of wire of the coupling loop coaxially aligned with the aperture of the resonator, wherein the sample tube extends through the coupling loop;
a vector network analyzer (VNA) connected to the coupling loop, wherein the VNA supplies an RF energy signal to the coupling loop, the RF energy signal transferred to the resonator by inductive coupling, and the VNA receives a reflected portion of the RF energy signal through the coupling loop and calculates a reflection coefficient; and a processor that receives the reflection coefficient and produces a determination if the ion is in the fluid based upon the reflection coefficient, as in Claim 10.
However, Froncisz teaches a respective high-frequency resonator cavity (“a lumped circuit cavity resonator”) further comprising a coupling loop 6 comprising a coil of wire 6, the coil of wire of the coupling loop coaxially aligned with the aperture of the resonator, wherein a sample tube 3 extends through the coupling loop (See Froncisz Fig. 1 and Claim 9: “a loop of conductive wire positioned adjacent one end of the loop and encircling the central axis”). Therein, the loop forms an inductive element and the gaps form capacitive elements which determine the resonant frequency (Abstract). Utilizing the loop to generate the RF/microwave magnetic field at the sample so as to induce a magnetic field within the sample is beneficial for improving the sensitivity of detection (col. 4, lines 25-35).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the system of Lahitte further comprising a coupling loop comprising a coil of wire, the coil of wire of the coupling loop coaxially aligned with the aperture of the resonator, wherein the sample tube extends through the coupling loop, such as suggested by Froncisz, so as to improve the sensitivity of detection by inducing a magnetic field within the sample to be detected by the capacitive resonator.
Further, regarding the “a vector network analyzer (VNA) connected to the coupling loop, wherein the VNA supplies an RF energy signal to the coupling loop, the RF energy signal transferred to the resonator by inductive coupling, and the VNA receives a reflected portion of the RF energy signal through the coupling loop and calculates a reflection coefficient; and a processor that receives the reflection coefficient and produces a determination if the ion is in the fluid based upon the reflection coefficient”, as in Claim 10, the functionality of “supplies an RF energy signal to the coupling loop, the RF energy signal transferred to the resonator by inductive coupling, and the VNA receives a reflected portion of the RF energy signal through the coupling loop and calculates a reflection coefficient...receives the reflection coefficient and produces a determination if the ion is in the fluid based upon the reflection coefficient” is drawn to a process recitation. As the claims are drawn to a device, such process recitation is not afforded patentable weight when the prior art device is capable of performing the claimed process. "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc. – MPEP 2114(II).
As such, Claim 10 merely requires a “vector network analyzer (VNA) and...a processor” capable of performing the claimed function. As discussed above, the prior art of Froncisz provides a commensurate loop-gap structure as in the claimed resonator with an induction loop surrounding the sample. Therein, Froncisz discusses current supplied to the loop 6 from “a high frequency radio source (not shown in the drawings)” and the measurement signal being interpreted as a measurement, thereby implicitly supplying “a processor”, as broadly claimed, given that such electron spin measurements discussed by Froncisz are not capable of being performed by hand.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that, when providing the system of Lahitte with the loop arrangement of Froncisz, to further provide a unit capable of controlling the loop so as to provide the resonant frequencies as desired by Froncisz, as well as a detection system for performing the measurements desired by Froncisz, so as to achieve the overall function of Froncisz for improved measurement sensitivity using the loop to induce a magnetic field in a sample.
Applicant may wish to update the functions of the vector network analyzer (VNA) and processor to utilize “configured/programmed to” language so as to carry patentable weight.
Further regarding the VNA of Claim 10, even if the system of Nelson/Froncisz is taken as not providing the VNA, such structure is common in the prior art of resonators. A vector network analyzer (VNA) is merely a precision RF/microwave test instrument that measures both the magnitude and phase of signals as they pass through or reflect off a device under test across a range of frequencies. Dehning, for example, teaches a split-ring resonator for analyzing liquid samples of liquid chromatography, wherein a VNA is used to determine and measure the resonance frequency. Therein, a VNA’s ability to capture phase allows it to resolve the full complex impedance and phase shift of the resonator, which is necessary for accurate modeling and tuning.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide the system of Nelson/Froncisz discussed above including a VNA configured with the loop so as to provide an accurate and sensitive means for performing the resonance measurement.
Regarding Claim 11, the prior art meets the limitations of Claim 10 as discussed above. Further, the recitation “applies a support vector regressor (SVR) model to the reflection coefficient to produce the determination if the ion is in the fluid” is drawn to a process recitation. As the claims are drawn to a device, such process recitation is not afforded patentable weight when the prior art device is capable of performing the claimed process. "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc. – MPEP 2114(II). Therein Lahitte in view of Froncisz, the processor suggested by Froncisz for producing a measurement signal from raw data is fully capable of performing the desired process.
Regarding Claim 12, the prior art meets the limitations of Claim 11 as discussed above. Further, the recitation “determines a concentration of the ion in the fluid by applying the SVR model to the reflection coefficient” is drawn to a process recitation. As the claims are drawn to a device, such process recitation is not afforded patentable weight when the prior art device is capable of performing the claimed process. "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc. – MPEP 2114(II). Therein Lahitte in view of Froncisz, the processor suggested by Froncisz for producing a measurement signal from raw data is fully capable of performing the desired process.
Regarding Claim 13, the prior art meets the limitations of Claim 11 as discussed above. Further, the claim recites “wherein the SVR model is produced by a machine learning algorithm...” and is drawn to a product-by-process recitation. Despite being defined by a process, the patentability of a product-by-process claim is assessed based on the product itself, not the process used to make it. If the product is identical or obvious in light of prior art, the claim is unpatentable, even if the prior art product was made by a different process. The process steps are relevant only if they impart distinctive structural or technical characteristics to the product. The burden is on the applicant to demonstrate that the process produces a product with non-obvious differences from prior art.
Therein Lahitte in view of Froncisz, the SVR model run by the processor suggested by Froncisz is fully capable of being one produced by the claimed machine learning requirements, such an SVR model not having patentable distinction from any other SVR model in the claims. Further, as discussed above, the SVR model has no basis in the claimed device as it is recited through a process-type recitation having no patentable weight in a device claim. Therefore, additional details to the SVR model are moot.
Regarding Claim 14, the prior art meets the limitations of Claim 13 as discussed above. Further, similarly as above, the claim recites “the SVR model is produced by the machine learning algorithm...” and is thereby drawn to a product-by-process recitation. Despite being defined by a process, the patentability of a product-by-process claim is assessed based on the product itself, not the process used to make it. If the product is identical or obvious in light of prior art, the claim is unpatentable, even if the prior art product was made by a different process. The process steps are relevant only if they impart distinctive structural or technical characteristics to the product. The burden is on the applicant to demonstrate that the process produces a product with non-obvious differences from prior art.
Therein Lahitte in view of Froncisz, the SVR model run by the processor suggested by Froncisz is fully capable of being one produced by the claimed machine learning requirements, such an SVR model not having patentable distinction from any other SVR model in the claims. Further, as discussed above, the SVR model has no basis in the claimed device as it is recited through a process-type recitation having no patentable weight in a device claim. Therefore, additional details to the SVR model are moot. Additionally, the SVR model is fully capable of being trained for a specific ion.
Regarding Claims 15 and 17, the prior art meets the limitations of Claims 14 and 10 respectively as discussed above. Further, Lahitte is modified in view of Froncisz, as discussed above regarding Claim 10, to provide the loop for producing a resonant frequency. Therein Froncisz, the resonant frequencies of Table A produce resonant frequencies matching the exchange rates of common ions (see also Table C) with water given that such ions water exchange rates are extremely broad (0.00003 GHz – 100 GHz) and are dependent upon the temperature of the exchanging aqueous solution.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious that the modification of Lahitte in view of Froncisz provides for resonant frequencies of common ions as discussed above.
Regarding Claim 16, the prior art meets the limitations of Claim 15 as discussed above. Further, Lahitte is modified in view of Froncisz, as discussed above regarding Claim 10, to provide the loop for producing a resonant frequency.
Further, as the resonant frequency is a property that can be modified by adjusting power/frequency of the loop RF/microwave current supply unit of Froncisz, the precise resonant frequency value would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed resonant frequency of 7 GHz cannot be considered critical. Thus, one of ordinary skill in the art would have optimized through routine experimentation the resonant frequency to maximally obtain the desired output signal corresponding to a particular sample-type at hand, such as the claimed “wherein the target ion is lead” (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding Claim 29, the prior art meets the limitations of Claim 10 as discussed above. Further, Lahitte teaches the system discussed above wherein the body is cuboid (See Fig. 1 showing the body being cuboid in shape.), as in Claim 29.
Regarding Claim 30, the prior art meets the limitations of Claim 10 as discussed above. Further, Lahitte teaches the system discussed above wherein the at least one cut is perpendicular to the gap (See Fig. 1 showing the cut as being perpendicular to the gap.), as in Claim 30.
Regarding Claim 31, the prior art meets the limitations of Claim 10 as discussed above. Further, Lahitte teaches the system discussed above wherein the at least one cut extends from the planar surface to the aperture (See Fig. 1 wherein the cut intersects with the aperture to form a common volume, thereby extending from the planar surface to the aperture.), as in Claim 31.
Regarding Claim 32, the prior art meets the limitations of Claim 10 as discussed above. Further, Lahitte teaches the system discussed above wherein the at least one cut extends from the planar surface through the aperture (See Fig. 1 wherein the cut intersects with the aperture to form a common volume, thereby extending from the planar surface through the aperture.), as in Claim 32.
Regarding Claim 33, the prior art meets the limitations of Claim 10 as discussed above. Further, Lahitte teaches the system discussed above wherein the body comprises at least two cuts (See the annotated Fig. 1 above showing the second cut 18 in the body.), as in Claim 33.
Regarding Claim 34, the prior art meets the limitations of Claim 10 as discussed above. Further, Lahitte teaches the system discussed above wherein the resonator further comprises a dielectric material in the gap (“The tubular protective device 26 is made from a material which disturbs to a minimum extent the measurements performed with the aid of the ultra-high frequency cavity 10. In addition, said material is advantageously chosen in such a way that there is a minimum adhesion of the polluting liquids or particles thereto. A material which simultaneously satisfies these two criteria is polytetrafluoroethylene, whose dielectric constant is low (2.01) and whose anti-adhesive properties are well known. Silica can also be used.” – Fig. 3A further shows the device 26 is inserted into the gap as provided by the uppermost portion extending beyond the bounds of the aperture 22.), as in Claim 34.
Regarding Claim 35, the prior art meets the limitations of Claim 10 as discussed above. Further, Lahitte teaches the system discussed above wherein the resonator exhibits a resonant frequency for each gap or cut in the resonator (Given the commensurate structural arrangement of a gap and a cut of a loop resonator in Claim 1 as provided through the prior art of Lahitte in view of Froncisz, one of ordinary skill in the art would expect the prior art resonator to commensurately display a resonant frequency for each gap or cut in the resonator, especially given that resonant frequencies are present throughout the body of the resonator device.), as in Claim 35.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Froncisz in view of Dehning. Froncisz and Dehning have been discussed above.
Regarding Claim 36, Froncisz teaches a system comprising:
a resonator (Fig. 1) comprising a body 7/8 (“The inductive element in the resonator 1 is the loop, or ring, formed by two metallic pieces 7 and 8...”) and an aperture through the body 7/8; a sample tube 3 extending through the aperture of the resonator (See Fig. 1 showing the sample 3 extending through the end apertures of the body formed by the plates 7/8.), the sample tube configured to receive a sample of the fluid with an ion (“A tube 3 containing a sample, or specimen, to be tested is inserted through the resonator 1...”);
a coupling loop 6 comprising a coil of wire 6, the coil of wire 6 of the coupling loop 6 coaxially aligned with the aperture of the resonator, wherein the sample tube 3 extends through the coupling loop 6 (See Fig. 1.);
as in Claim 36.
Further as in Claim 36, regarding the “a vector network analyzer (VNA) connected to the coupling loop, wherein the VNA supplies an RF energy signal to the coupling loop, the RF energy signal transferred to the resonator by inductive coupling, and the VNA receives a reflected portion of the RF energy signal through the coupling loop and calculates a reflection coefficient; and a processor that receives the reflection coefficient and produces a determination if the ion is in the fluid based upon the reflection coefficient”, as in Claim 36, the functionality of “supplies an RF energy signal to the coupling loop, the RF energy signal transferred to the resonator by inductive coupling, and the VNA receives a reflected portion of the RF energy signal through the coupling loop and calculates a reflection coefficient...receives the reflection coefficient and produces a determination if the ion is in the fluid based upon the reflection coefficient” is drawn to a process recitation. As the claims are drawn to a device, such process recitation is not afforded patentable weight when the prior art device is capable of performing the claimed process. "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc. – MPEP 2114(II).
As such, Claim 36 merely requires a “vector network analyzer (VNA) and...a processor” capable of performing the claimed function. As discussed above, the prior art of Froncisz provides a commensurate loop-gap structure as in the claimed resonator with an induction loop surrounding the sample. Therein, Froncisz discusses current supplied to the loop 6 from “a high frequency radio source (not shown in the drawings)” and the measurement signal being interpreted as a measurement, thereby implicitly supplying “a processor”, as broadly claimed, given that such electron spin measurements discussed by Froncisz are not capable of being performed by hand.
Applicant may wish to update the functions of the vector network analyzer (VNA) and processor to utilize “configured/programmed to” language so as to carry patentable weight.
Further regarding the VNA of Claim 36, even if the system of Froncisz is taken as not providing the vector network analyzer (VNA), such structure is common in the prior art of resonators. A vector network analyzer (VNA) is merely a precision RF/microwave test instrument that measures both the magnitude and phase of signals as they pass through or reflect off a device under test across a range of frequencies. Dehning, for example, teaches a split-ring resonator for analyzing liquid samples of liquid chromatography, wherein a VNA is used to determine and measure the resonance frequency. Therein, a VNA’s ability to capture phase allows it to resolve the full complex impedance and phase shift of the resonator, which is necessary for accurate modeling and tuning.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide the system of Froncisz discussed above including a VNA configured with the loop so as to provide an accurate and sensitive means for performing the resonance measurement.
Conclusion
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/B.J.K./Examiner, Art Unit 1798
/NEIL N TURK/Primary Examiner, Art Unit 1798
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