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 .
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 8-12 are rejected under 35 U.S.C. 101 because the claimed invention lacks patentable utility. This rejection was applied in Paragraphs 2-3 of the Non-Final Rejection mailed 11/29/25. The rejection remains in effect. Please see Response to Arguments below.
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 1-12 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.
Claim 1 recites the limitation "the chambers" in line 6. There is insufficient antecedent basis for this limitation in the claim. Claim 1 recites the limitation "the chamber" in line 13. There is insufficient antecedent basis for this limitation in the claim. Claim 13 also recites the limitation “each chamber” in line 13.
Claim 1 recites “wherein the cover includes a channel” in lines 16-17. The Examiner submits the limitation is unclear. Claim 1 recites “wherein each of the at least 3 spectroscopy chambers includes a substructure, a sample crucible and a cover” in lines 7-8. Since claim 1 recites that EACH of the at least 3 spectroscopy chambers includes a cover in lines 7-8, it is unclear which cover of each of the at least 3 spectroscopy chambers is being referred to by the term “the cover” in lines 16-17.
Claim 4 recites the limitation “wherein the cover of the at least 3 spectroscopy chambers includes heating wires” in line 2. The Examiner submits the limitation is unclear. Claim 1 recites “wherein each of the at least 3 spectroscopy chambers includes a substructure, a sample crucible and a cover wherein the substructure, the sample crucible and the cover…” in lines 7-9. Since claim 1 recites that EACH of the at least 3 spectroscopy chambers includes a cover in lines 7-8, it is unclear which cover of each of the at least 3 spectroscopy chambers is being referred to by the term “the cover” in claim 4 in line .
Claim 5 recites the limitation “wherein each spectroscopy chamber includes a thermocouple” in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. The Examiner submits amending the phrase to recite “wherein each of the at least one of the at least 3 spectroscopy chambers”.
Claims 8-12 recite use claims that do not set forth any positive steps with respect to reciting a method. Claims 11 and 12 recite a method for studying reaction by means of DRIFT spectroscopy, but does not set forth any positive steps for the method in the body of the claims.
Response to Arguments
Applicant’s arguments, filed 03/27/26, with respect to the rejection(s) of claims 8-10 under 35 U.S.C. 102 (a)(1) as being anticipated by Roman et al. (US 2020/0354291) have been fully considered and are persuasive. Applicant has amended claim 8 to include the device of claim 1 as argued that this feature is not taught by the prior art Roman. See page 5 of Applicant’s Remarks. The Examiner agrees; therefore, the rejection has been withdrawn.
Applicant’s arguments, filed 03/27/26, with respect to the rejection(s) of claims 8-12 under 35 U.S.C. 101 and ALSO under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, U.S.C. 102 (a)(1) have been fully considered but they are not persuasive. Applicant has amended claim 8 to recite “the use of a measuring cell according to claim 1 for DRIFT spectroscopy of heterogeneously catalyzed reactions”. Applicant has amended claim 11 to recite “the method comprising using a measuring cell according to claim 1 to conduct a study of heterogeneously catalyzed reactions using DRIFT spectroscopy”. Applicant then argued the amendments are sufficient to overcome the previous rejections under 35 U.S.C. 101 and under 35 U.S.C. 112(b). The Examiner respectfully disagrees and submits claims 8-12 still do not positively recite steps delimiting how the use of the device is actually practiced. The Examiner directs Applicant to MPEP 2173.05(q) directed to “Use” claims which states:
Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112 or pre-AIA 35 U.S.C. 112 second paragraph. For example, a claim which read: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). "Use" claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961)("one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. 101"). In Ex parte Dunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: "The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction." In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district court held the following claim was definite, but that it was not a proper process claim under 35 U.S.C. 101: “The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid”.
Allowable Subject Matter
Claims 1-7 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 8-12 would also be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 and the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claim 1 recites a measuring cell for studying samples by means of electromagnetic radiation, which includes beam entry and exit windows, an optical mirror system, and a sample plate, wherein the measuring cell comprises flushing gas connections, a mirror system for recording DRIFT spectra, a sample plate having at least 3 spectroscopy chambers, which are fastened on the sample plate, which is connected via a receptacle to a rotating and lifting motor, by which the chambers can be moved horizontally and rotated into the beam path and aligned under the mirror optical unit, and wherein each of the at least 3 spectroscopy chambers includes a substructure, a sample crucible, and a cover, wherein the substructure, the sample crucible, and the cover are connected to one another gas-tight and are closed off in relation to surroundings of the measuring cell by O-rings, the sample crucible is provided with a drilled hole, through which reaction gas is conducted from an external reactor connected to the measuring cell through the sample material and out of the chamber, and each chamber includes a cover having two cones in which windows transmissive to electromagnetic radiation, are inserted and are arranged so that incident radiation and radiation leaving the measuring cell can pass through the windows transmissive to electromagnetic radiation, wherein the cover includes a channel having a gas connection for introducing reaction gases from an external reactor into the chamber, and wherein the chamber includes a reaction gas outlet in the substructure of the chamber. The Examiner submits the cited prior art does not teach or suggested a device having the combination of features highlighted above in claim 1.
Conclusion
THIS ACTION IS MADE FINAL. 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 DWAYNE K HANDY whose telephone number is (571)272-1259. The examiner can normally be reached M-F 10AM-7PM.
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, Charles Capozzi can be reached at 571-270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DWAYNE K HANDY/Examiner, Art Unit 1798 June 30, 2026
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
Prosecution Insights