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 of group III comprising claims 20 – 26, and new dependent claims 27 – 33, in the reply filed on 3/24/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 1 – 9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/24/2026.
Applicant canceled claims 10 – 19.
Information Disclosure Statement
The listing of references in the specification (e.g., paragraph 6 of the specification) is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claim 1 is objected to because of the following informalities: in line 7, the term “configured” should be inserted prior to the term “to” to positively recite the functionality of the “input fiber bundle”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: in line 10, the term “configured” should be inserted prior to the term “to” to positively recite the functionality of the “output fiber bundle”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: in line 12, the term “configured” should be inserted prior to the term “for” to positively recite the functionality of the “temperature control”. Appropriate correction is required.
Claim 25 is objected to because of the following informalities: in line 1, the term “configured” should be inserted prior to the term “for” to positively recite the functionality of the “temperature control”. Appropriate correction is required.
Note Regarding Prior Art
Examiner cites particular sections, columns, line numbers, paragraphs and figures, in the references as applied to the claims below for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the Applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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) 20, 21, 25, 26, 27, 30 and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over McGill et al. (US 2014/0260535 A1; hereinafter “McGill”) in view of Farquharson et al. (US 2009/0168059 A1; hereinafter “Farquharson”).
Regarding claim 20, McGill teaches throughout the publication a system for chromatography and in-column spectroscopy for chemical mixtures, comprising:
an infrared light source (a UV light source comprising a tunable (QCL) infrared laser; paragraphs 22 and 41; figure 1; claim 5);
one or more chromatography columns, each comprising a column body (gas chromatographic (GC) column; paragraphs 11, 22 and 29 – 35; figure 1), an infrared transparent prism (an ATR crystal prism; paragraph 26; figure 1), a flowing gas mobile phase (e.g., a carrier gas carrying an analyte; paragraphs 12 and 35), one or more sorbents (paragraph 36), and multiple probe points along the column body (a tunable IR QCL light source can measure “in-column” IR absorption spectra as a function of incident wavelength and location along the GC column (paragraph 11); by design , IR interrogation and analyte detection is enabled at all points along a column during the GC analysis (paragraphs 22 and 41));
an infrared light detector (a UV light detector; paragraph 41; figure 1); and
temperature control for the one or more sorbents (paragraphs 12, 34 and 45; claim 8).
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McGill does not specifically teach:
an input fiber bundle to direct infrared light from the one or more infrared light sources to the multiple probe points; and
an output fiber bundle to send light from the multiple probe points to the one or more infrared light detectors.
Farquharson teach a related system comprising the use of optical devices comprising fiber optic probes capable of delivering excitation radiation and collection of photons at plurality of discrete locations along the length of a transparent column (paragraph 35). Fiber optic probes implicitly comprise input and output fiber bundles to transmit and collect light, respectively, to the infrared light source and infrared light detector. As evidenced by Farquharson, it would have been considered to be suitable and predictable to a person of ordinary skill in the art to utilize this same optical detection configuration in a similar chromatographic system. This same fiber optic probe configuration could be readily applied to the McGill system to monitor multiple probe points along the GC column body of the one or more chromatographic columns. McGill further teaches that when analyzed in conjunction with spectra from along GC columns, detection algorithm performance can be greatly improved (paragraph 25), thereby providing further motivation for incorporating multiple probe points along the length of the GC column for detection and monitoring. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Furthermore, the Supreme Court decision in KSR International Co. v. Teleflex Inc., 550 U.S. 82 USPQ2d 1385 (2007) has affirmed that the threshold requirement for a prima facie case of obviousness is “demonstrating that each element was, independently, known in the prior art.” Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide an input fiber bundle to direct infrared light from the one or more infrared light sources to the multiple probe points, and an output fiber bundle to send light from the multiple probe points to the one or more infrared light detectors, in order to provide effective detection and monitoring for the McGill system. Examiner submits that these arguments are in line with the Supreme Court unanimous opinion, KSR International v. Teleflex, Inc., 127 S. Ct. 1727, 1741 (2007), in which the Court stated that “[a] court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.” Id. at 1731.
Regarding claim 21, McGill teaches the system of claim 20, wherein the one or more infrared light source is a tunable laser (paragraph 22; claim 5).
Regarding claim 25, McGill teaches the system of claim 20, wherein the temperature control for the one or more sorbents uses resistive heating and thermometry to minimize the number of required electrical contacts (paragraph 34).
Regarding claim 26, McGill teaches a microfluidic system comprising the system of claim 20 (the system can be microfabricated; paragraph 33).
Regarding claim 27, McGill teaches the system of claim 20, wherein the infrared transparent prism is a multibounce prism (the ATR crystal prism is implicitly considered to be a multibounce prism; paragraph 26; figure 1).
Regarding claim 30, McGill teaches the system of claim 20, wherein the temperature control is configured to control a temperature as a function of spatial position along the one or more chromatography columns via one or more microscale resistive heating elements (implicit in paragraph 34).
Regarding claim 33, McGill teaches the system of claim 20, wherein the one or more columns comprises multiple columns, wherein each column is coated with a different sorbent or combination of sorbents (paragraphs 29 and 30).
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) 22 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over McGill et al. (US 2014/0260535 A1; hereinafter “McGill”) and Farquharson et al. (US 2009/0168059 A1; hereinafter “Farquharson”), and further in view of Ravishankar et al. (US 2016/0061807 A1; hereinafter “Ravishankar”).
Regarding claim 22, modified McGill does not specifically teach the system of claim 20, wherein the one or more infrared detectors is a linear array.
Regarding claim 23, modified McGill does not specifically teach the system of claim 20, wherein the one or more infrared detectors is a 2D imaging spectrometer.
However, the use of IR detectors comprising a linear array or a 2D array detector or a 2D imaging spectrometer, is well known in the art as evidenced by Ravishankar (paragraph 25). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Furthermore, the Supreme Court decision in KSR International Co. v. Teleflex Inc., 550 U.S. 82 USPQ2d 1385 (2007) has affirmed that the threshold requirement for a prima facie case of obviousness is “demonstrating that each element was, independently, known in the prior art.” Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide wherein the one or more infrared detectors is a linear array or a 2D imaging spectrometer.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over McGill et al. (US 2014/0260535 A1; hereinafter “McGill”) and Farquharson et al. (US 2009/0168059 A1; hereinafter “Farquharson”), and further in view of Finlay (US 2011/0113866 A1; hereinafter “Finlay”).
Regarding claim 24, modified McGill does not specifically teach the system of claim 20, wherein the column body comprises a machinable ceramic.
However, the use of microfabricated chromatographic column bodies comprising machinable ceramic are well known in the art as evidence by Finlay (paragraph 42). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Furthermore, the Supreme Court decision in KSR International Co. v. Teleflex Inc., 550 U.S. 82 USPQ2d 1385 (2007) has affirmed that the threshold requirement for a prima facie case of obviousness is “demonstrating that each element was, independently, known in the prior art.” Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide wherein the column body comprises a machinable ceramic.
Claim(s) 28 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over McGill et al. (US 2014/0260535 A1; hereinafter “McGill”) and Farquharson et al. (US 2009/0168059 A1; hereinafter “Farquharson”), and further in view of Agah et al. (US 2016/0018365 A1; hereinafter “Agah”).
Regarding claim 28, modified McGill does not specifically teach the system of claim 20, further comprising metallic nano-structures embedded within the one or more sorbents.
Regarding claim 29, modified McGill does not specifically teach the system of claim 28, wherein the metallic nano-structures comprise gold nanostructures.
However, the use of gold nanoparticles with adsorbent materials for use with GC columns is well known in the art as evidenced by Agah (paragraph 4). The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art (see MPEP § 2144.07). Furthermore, the combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide metallic nano-structures embedded within the one or more sorbents, and wherein the metallic nano-structures comprise gold nanostructures.
Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over McGill et al. (US 2014/0260535 A1; hereinafter “McGill”) and Farquharson et al. (US 2009/0168059 A1; hereinafter “Farquharson”), and further in view of Smith (US 2007/0273882 A1; hereinafter “Smith”).
Regarding claim 31, modified McGill does not specifically teach the system of claim 20, further comprising multi-port valves configured to minimize dead volume within the system.
However, the use of multi-port valves, such as an injector valve, which minimize dead volume with gas chromatograph systems is well known in the art as evidenced by Smith (paragraph 37). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide for the system multi-port valves configured to minimize dead volume within the system.
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over McGill et al. (US 2014/0260535 A1; hereinafter “McGill”) and Farquharson et al. (US 2009/0168059 A1; hereinafter “Farquharson”), and further in view of Hummer et al. (US 2018/0288977 A1; hereinafter “Hummer”).
Regarding claim 32, modified McGill does not specifically teach the system of claim 20, further comprising a micropump configured to pump an unknown mixture through the one or more chromatography columns based on real-time detection of light by the one or more infrared light detectors.
However, the use of micropumps with miniaturized GC columns is well known in the art as evidenced by Hummer (paragraph 32). McGill does teach that the system has a carrier gas flow rate control mechanism (paragraph 35). Consequently, it would have been within the ambit of a person of ordinary skill in the art to configure the micropump to pump the sample mixture through the chromatography columns based on real-time detection of light via the infrared light detectors to facilitate effective sample analysis. The rationale to support an obviousness rejection under 35 U.S.C. 103 may rely on logic and sound scientific principle (see MPEP § 2144.02). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Furthermore, the prior art can be modified or combined to reject claims as prima facie obvious as long as there is a reasonable expectation of success (see MPEP § 2143.02). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide that the system further comprises a micropump configured to pump an unknown mixture through the one or more chromatography columns based on real-time detection of light by the one or more infrared light detectors.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J. SINES whose telephone number is (571)272-1263. The examiner can normally be reached 9 AM-5 PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BRIAN J. SINES
Primary Patent Examiner
Art Unit 1796
/BRIAN J. SINES/Primary Examiner, Art Unit 1796
Prosecution Insights