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 invention II in the reply filed on 11/12/25 is acknowledged.
Claims 2-4 and 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 6-9 and 17-18 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 6 and 17 recite, “wherein the histogram includes a frequency of counts of integrated ion signal intensity values formed by summing time-consecutive non-zero data points for detected intensity following subtraction of the background intensity value.” Their respective parent claims recite, “the histogram associated with a frequency of counts of integrated ion signal intensity values.” It is unclear whether these “frequency of counts of integrated ion signal intensity values” are the same, or if the versions in the dependent claims are a modified versions of the those in the independent claims.
Claims 1, 5-12, and 16-20 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. Independent claims 1 and 12 recite, “forming a histogram of the spectrometry data set, the histogram associated with a frequency of counts of integrated ion signal intensity values.” The word “associated” makes it unclear what the claimed contents of the histogram actually are, or how the histogram relates to the raw data collected by the ICP-MS system. These contents are of critical importance, as the rest of the claimed invention describes how the contents of the histogram are investigated for local minima. There are a number of ways of mathematically treating the signal generated by an ICP-MS, and each results in a different histogram that is associated with the others via those same mathematical treatments. The applicant recognizes this fact throughout the disclosure, offering multiple data manipulation techniques to improve the results of the method. See e.g., the data binning, rounding, and background subtraction of claims 6-9. One of ordinary skill in the art cannot reasonably ascertain whether an arbitrary histogram derived from counts manipulated by some undisclosed technique, be it calibration or binning or peak manipulations, results in the claimed histogram “associated with a frequency of counts of integrated ion signal intensity values.” As such, the claim is indefinite. The claim will be interpreted as though it recited
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 5-12, and 16-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to the abstract idea of mathematically finding a minimum without significantly more. The claims recite two basic steps, and the dependent claims elaborate on these steps. These steps are: 1) gathering spectral data with a well-known mass spectrometer; and 2) the abstract idea of finding a minimum using various mathematical techniques (See Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 111 USPQ2d 1717, 1721 (Fed. Cir. 2014). This abstract idea is judicial exception to patent eligibility.
The abstract idea is not integrated into a practical application because it’s relationship to the structure of the mass spectrometer is tenuous at best. This is because the process implied by the abstract idea does nothing to change or improve the mass spectrometer or its effect, but rather acts as an interpretative step for end users. Such a step cannot be reasonably considered a practical application, because it is simply an interpretation of data without any further practical use.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only other elements in the claims are a 1) generic computer/machine readable medium; and 2) a “spectrometry sample analyzer.” A generic computer/machine readable medium is not significantly more than the abstract idea itself. Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2359 (2014). Further, a “spectrometry sample analyzer” is a well-known device, having been used since its inception in the early 20th century to analyze samples. The claims at issue do not specify a particular modality of mass spectrometry, but it is worth noting that the instant disclosure specifies the use of inductively coupled plasma (ICP) mass spectroscopy in the instant invention, and identifies it as admitted prior art by placing it in the background section. As such, the inclusion of a generic “spectrometry sample analyzer” in the claims cannot be considered to be significantly more than the abstract idea itself, because it is only a recitation of a well-known source of spectrometry data.
The dependent claims do not obviate this issue. Claims 6-11 and 16-20 elaborate on the mathematical working of the abstract idea without adding significantly more or a practical application. Claims 6-9 and 15-18 describe data engineering techniques such as background subtraction and rounding, but do not add positively recite any element that would make the claim significantly more than the abstract idea, nor offer any application of the abstract idea. Claims 10-11 and 19-20 describe a mathematical validation of minima using standard deviation, but there is no suggestion that this step is more than the application notoriously well-known statistical analysis techniques. As such, the contents of claims 10-11 and 19-20 are not significantly more than the abstract idea, nor do they offer any practical application of the abstract idea.
In sum, the claims recite an abstract idea, namely mathematical calculation. Considered as an order combination, claims 1, 5-9, 12, and 16-20 of the instant application are not significantly more than the abstract ideas themselves, and have no recited practical application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 11.075,066 B2 Addresses the same issues as the instant invention using a separate mathematical algorithm.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/ Primary Examiner, Art Unit 2881
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