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 .
This is a response to Applicant's amendment filed on November 12, 2025.
Status of Claims
Claim 1 has been amended. Claims 7-8 have been withdrawn. No new claim has been added. Claims 1-8 are pending. Claims 1-6 are examined herein.
Response to Arguments
Applicant's Remarks/Arguments and Amendments to the Claims both filed 11/12/2025 have been fully considered.
Applicant argues that the claim 1 and its dependent claims as amended are not anticipated nor prima facie obvious over cited prior art(s), Watanabe (US 2021/0341441 A1). Applicant argues that: claim 1 is amended to recites “the analysis condition data pieces include a first factor, a second factor, and a third factor,” and “the estimator estimates respective distributions of the measurement quality indicator data with the second factor and the third factor as axes in a case in which the first factor is a first value and the distribution of the measurement quality indicator data with the second factor and the third factor as axes in a case in which the first factor is a second value,” in the context of an analysis assistance device which is not taught or suggested by Watanabe (US 2021/0341441 A1).
Applicant argues: Watanabe neither describes, teaches, nor suggests the essential combination of: (i) Using three factors (first, second, and third); and (ii) Estimating and displaying separate distribution maps based on different fixed values of the first factor, using the second and third factors as axes. For at least the above reasons, Watanabe does not disclose the subject matter of amended claim 1. See Remarks, pages 5-9.
In response, the applicants’ arguments direct a newly amended claim limitation which is a new issue. Therefore, the arguments are considered moot. Applicant's amendment necessitated a modified/new ground(s) of rejection presented in this Office action.
However, for the recordation purposes, it is noted herein that claimed invention recited in claim 1 is about an apparatus, not about a process (method). It has long been held that “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (“An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.”); In re Michlin, 256 F.2d 317, 320 (CCPA 1958) (“It is well settled that patentability of apparatus claims must depend upon structural limitations and not upon statements of function.”). It is noted that the amendments to claim 1 and corresponding applicants’ arguments are directed to what the device does and not what the device is. While “configured to” language provides functional limitations, the prior art merely needs to teach the same structural limitations that would be capable of performing the recited function.
Upon further consideration and search, a modified/new ground of rejections to claims 1-6 are presented in the instant Office action.
MODIFIED REJECTIONS
Claim Rejections - 35 USC § 103
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (US 2021/0341441 A1).
In regard to claim 1, Watanabe discloses an analysis assistance device (paragraph [0007]) comprising a computer (1, Fig. 1) and a liquid chromatograph (3, Fig. 1) comprising (please refer to Fig. 1 and Fig. 2, wherein Fig. 2 is a configuration diagram of the computer 1, Fig. 2):
(i) an estimator that estimates a distribution of measurement quality indicator data ("measurement quality index data", paragraph [0007]) by performing a regression analysis with use of a plurality of analysis condition data pieces supplied to an analysis device (paragraphs [0031]; [0038]; [0039]; [0048]) and a plurality of measurement data pieces obtained by the analysis device based on the plurality of analysis condition data pieces; and
(ii) an analysis assistance information outputter that outputs a distribution of the measurement quality indicator data to a display device (paragraphs [0085]; [0086]; claim 4: "outputting for display"), wherein
in the device, the analysis condition data pieces include a first factor, a second factor, and a third factor (in paragraph [0027], “The analysis condition data AP is data that describes the analysis condition to be set in the liquid chromatograph and includes a plurality of analysis parameters; and in paragraph [0051], “analysis parameters X, Y ...”). Choosing/designating the analysis parameter X as “a first factor”, the analysis parameter Y as “a second factor”, the analysis parameter Z as “a third factor” is considered prima facie obvious because this simply involves selecting analysis parameters in a known device/process operation.
But Watanabe does not explicitly disclose the features of: (I) the estimator estimates respective distributions of the measurement quality indicator data with the second factor and the third factor as axes in a case in which the first factor is a first value and the distribution of the measurement quality indicator data with the second factor and the third factor as axes in a case in which the first factor is a second value, and (II) the analysis assistance information outputter outputs the respective distributions to the display device.
However, Watanabe discloses, as shown in Fig. 2, that the storage device 106 stores an analysis assistance program P1, analysis condition data AP, measurement data MD, measurement quality index data MQ, and distribution data DD. The analysis assistance program P1 is a program for controlling the liquid chromatograph 3. The analysis assistance program P1 includes a function of setting an analysis condition for the liquid chromatograph 3, a function of acquiring a measurement result from the liquid chromatograph 3 and analyzing the measurement result, etc. The analysis condition data AP is data that describes the analysis condition to be set in the liquid chromatograph 3 and includes a plurality of analysis parameters [emphasis added] (paragraph [0027]). Moreover, Watanabe discloses an embodiment, in Fig. 6 in conjunction with paragraph [0040], a 3-D graph of showing RESOLUTION R (a dependent variable) with respect to ANALYSIS PARAMETER 31B and ANALYSIS PARAMETER 31A (two independent variables). It is the examiner’s assessment that the analysis assistance device taught by Watanabe is reasonably expected to conduct the function of “the estimator estimates respective distributions of the measurement quality indicator data with the second factor and the third factor as axes in a case in which the first factor is a first value and the distribution of the measurement quality indicator data with the second factor and the third factor as axes in a case in which the first factor is a second value” as recited.
In addition, Watanabe discloses that the measurement quality index display area 240 is displayed by the measurement quality index outputter 205 as described above. Distribution of resolution data RD is displayed as a measurement quality index in the measurement quality index display area 240 (paragraph [0053]) which directs outputting analysis information to the display device.
Therefore, before the effective filing date of the claimed invention, it would have been prima facie obvious to one of ordinary skill in the art to modify the analysis assistance device of Watanabe, to provide the features of (I) the estimator estimates respective distributions of the measurement quality indicator data with the second factor and the third factor as axes in a case in which the first factor is a first value and the distribution of the measurement quality indicator data with the second factor and the third factor as axes in a case in which the first factor is a second value, and (II) the analysis assistance information outputter outputs the respective distributions to the display device, because (1) Watanabe explicitly discloses the analysis condition data AP is data that describes the analysis condition to be set in the liquid chromatograph 3 and includes a plurality of analysis parameters (Watanabe, paragraph [0027]), (2) Watanabe discloses an embodiment of a 3-D graph of showing RESOLUTION R (a dependent variable) with respect to ANALYSIS PARAMETER 31B and ANALYSIS PARAMETER 31A (two independent variables) (Watanabe, Fig. 6; paragraph [0040]), and (3) distribution of resolution data RD is displayed as a measurement quality index in the measurement quality index display area 240 (Watanabe, paragraph [0053]).
Moreover, since “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003) (“An intended use or purpose usually will not limit the scope of the claim because such statements usually do no more than define a context in which the invention operates.”); In re Michlin, 256 F.2d 317, 320 (CCPA 1958) (“It is well settled that patentability of apparatus claims must depend upon structural limitations and not upon statements of function.”), the analysis assistance device taught by Watanabe renders the recited analysis assistance device prima facie obvious.
In regard to claims 2, 4 and 5, Watanabe discloses FIG. 9 is a diagram showing an analysis assistance screen displayed in a display; FIG. 10 is a diagram showing the analysis assistance screen displayed in the display (paragraphs [0017]; [0018]).
Watanabe discloses the analysis assistance information outputter 204 performs output of information for analysis assistance to the display 104 using the analysis condition data AP, the measurement quality index data MQ estimated in the estimator 203, the distribution data DD, etc. The analysis assistance information outputter 204 includes a measurement quality index outputter 205 (paragraph [0032]). Watanabe discloses that, in step S107, the measurement quality index outputter 205 outputs a design space to the display 104. FIG. 9 is a diagram showing an analysis assistance screen 210 displayed on the display 104 by the analysis assistance information outputter 204. The analysis assistance screen 210 includes a method list display area 220, a chromatogram display area 230, and a measurement quality index display area 240. The measurement quality index display area 240 is an area in which the design space is displayed and is displayed by the measurement quality index outputter 205 (paragraph [0050]). In light of teachings of Watanabe regarding a display, the recitations of claims 2, 4 and 5 are considered prima facie obvious.
In regard to claim 3, Watanabe discloses the analysis assistance device comprises an outputting design spaces (page 6, claim 1).
In regard to claim 6, in light of teachings from Watanabe, one skilled in the art would have reasonably expected that parameters such as the column length in a chromatography analysis system are not representable by a continuous value, wherein the column length in a chromatography analysis system can be used as a first factor.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YOUNGSUL JEONG whose telephone number is (571)270-1494. The examiner can normally be reached on Monday-Friday 9AM-5PM.
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/YOUNGSUL JEONG/Primary Examiner, Art Unit 1772