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 FINAL REJECTION in response to applicant’s claim amendments and arguments filed July 27, 2026. Claim 17 is amended. Claims 1-20 are pending review in this correspondence.
Response to Amendment
Rejection of claims 17-19 as being anticipated by Van Berkel et al (Van Berkel et al, “"Immediate drop on demand technology (I-DOT) coupled with mass spectrometry via an open port sampling interface", BIOANAL YSIS, vol. 9, no. 21, 2 November 2017, pages 1667-1679, XP055551482, London, UK, DOI: 10.4155/bio-2017-0104) is maintained in view of applicant’s claim amendments and arguments.
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 17-20 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.
Claim 17 recites the limitation "the flow of gas" in line 10. There is insufficient antecedent basis for this limitation in the claim.
It should also be noted that claim 17 is drawn to an apparatus, and as such, it is unclear what embodiment would provide for a flow of gas in the sample transfer conduit. Is the flow of gas associated with the ionization source? Is there a separate source that provides the gas, and what features of the flow of gas are required to form an air core? Clarification is requested.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 17-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Van Berkel et al (Van Berkel et al, “"Immediate drop on demand technology (I-DOT) coupled with mass spectrometry via an open port sampling interface", BIOANAL YSIS, vol. 9, no. 21, 2 November 2017, pages 1667-1679, XP055551482, London, UK, DOI: 10.4155/bio-2017-0104) (provided by applicant in IDS dated 5/9/2024).
With respect to claim 17 Van Berkel discloses a sample transfer conduit for delivering transport liquid from an open port interface to a mass spectrometer (See caption of Fig. 2 and Pg. 1673, section "OPSI operation modes"), the sample transfer conduit comprising:
a proximal end (See Fig. 2A for depiction of the part of the open port sampling interface probe that contacts the microtiter plate; Fig. 2B depicts the upper part of the probes) disposed in an atmospheric pressure environment (See “Results and Discussion” on Pg. 1672) and configured to receive a transport liquid and a sample;
a distal end disposed remote from the proximal end (End opposite of the proximal end, See Figs. 2A-B);
an ionization source connected to the distal end (See second paragraph of section "OPSI operation modes" on Pg. 1673 for discussion of "transport of the material to the ionization source"), wherein the ionization source is configured to operate at a pressure lower than the atmospheric pressure (due to the "aspiration" as discussed in 2nd paragraph of section "OPSI operation modes"), wherein a pressure difference between the ionization source and the proximal end provides a motive force to the transport liquid through the conduit, wherein a flow of the transport liquid and the sample is disposed along the conduit walls (See Fig. 2B(i) for depiction of the flow being along the conduit walls), wherein the flow of gas forms an air core, and wherein the air core extends substantially an entire length of the sample transfer conduit. Applicant should note the italicized limitations are directed to the function of the apparatus and/or the manner of operating the apparatus. All the structural limitations of the claim have been disclosed by Van Berkel and the apparatus of Van Berkel is capable of the recitation of claim 17. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of Van Berkel (see MPEP §2114)."
With respect to claim 18 Van Berkel depicts that the flow is gas is generated along substantially the entire length of the sample transfer conduit (See Fig. 2B for depiction of the air core that; it will break up into bubbles, because the inner conduit is long; it is being interpreted that such bubbles still constitute a flow of gas along the entire length of the conduit).
With respect to claim 19 Van Berkel depicts that the flow of gas is generated through a continuous gas channel (See Fig. 2B; it should be noted that the claim does not require the flow of gas to be continuous throughout the length of the conduit).
Allowable Subject Matter
Claims 1-16 are allowed.
The following is an examiner’s statement of reasons for allowance: With respect to claim1, the closest cited prior art is to Van Berkel, and discloses:
A method of delivering transport fluid from an open port interface to an outlet via a transfer conduit (figure 2 as described in caption and in section "OPSI operation modes" on page 167 3), the method comprising:
delivering, to the open port interface, a transport liquid at a first flow rate (See Fig. 2B(i) for depiction of the up-pointing arrows), wherein the open port interface is disposed in a pressure environment having a first pressure;
applying a second pressure at the outlet (aspiration at the second outlet, See Pg. 1673, “OPSI operation modes”, second paragraph), wherein the second pressure is less than the first pressure ("aspiration" discussed above), wherein the pressure applied at the outlet generates a motive flow on the transport liquid, thereby drawing into the transfer conduit (the down-pointing arrow depicted in Fig. 2B(i)) (a) the transport fluid, wherein the transport fluid is in contact with a wall of the transport conduit (See Fig. 2B(i)), and (b) a gas present in the pressure environment (See Pg. 1673, second paragraph of section "OPSI operation modes" for discussion of "as this degree of solvent over aspiration increases, the depth of the vortex increases as well (from a subcritical to critical vortex) until the vortex actually penetrates into the inner capillary such that gas as well as liquid is entrained into inner capillary (supercritical vortex)"), wherein the gas forms an air core within the drawn transport fluid. However, there is no fair discussion or disclosure of the air core extending substantially an entire length of the transfer conduit. Rather, Van Berkel describes that one of the benefits of the supercritical vortex mode of operation (as depicted in Fig. 2B(i) is that it provides very rapid transport of the material to the ionization source; that this speed can be further improved by ensuring that the core extends substantially the entire length of the transfer conduit is not foreseen in the available prior art). Claims 2-7 are ultimately dependent upon claim 1, and thus, inherit the same status.
Similarly, Van Berkel fails to disclose or teach all the limitations of claim 8, specifically the limitation of “adjusting a length of the transfer conduit until the analyzed ejected transport fluid is defined by a second condition.” Van Berkel discloses that one of the benefits of the supercritical vortex mode of operation (as depicted in Fig. 2B(i)) is that it provides very rapid transport of the material to the ionization source. That this speed can be further improved by further reducing the length of the conduit (thereby ensuring that the core extends substantially the entire length of the transfer conduit) is not foreseen in the available prior art. It should be noted that document Van Berkel (See Pg. 1669) actually teaches that the length of the transfer conduit is 45 cm which is the shortest possible length, which is too long to achieve the effect that is sought by Para. 0035 of applicant’s specification.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Claim 20 would be allowable if rewritten 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 and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the cited prior art of reference fails to disclose or teach that a length of the sample transfer conduit is less than about 5cm (See Pg. 1669, “Experimental Setup” for discussion of the length of the PEEK capillary being the shortest possible length at 45cm long).
Response to Arguments
Applicant's remarks filed July 27, 2026 have been fully considered but they are not persuasive. Applicant generally remarks that claim 17 has been amended to require the same structural and functional relationship in the claimed sample transfer conduit that was deemed allowable in method claim 1. However, applicant should note that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Currently, it is being interpreted that the application of a flow of gas to the sample transfer conduit would serve to form an air core; also see the 112 rejection above. Applicant should consider the incorporation of claim limitations that further clarify the structural relationship of the recited flow of gas to the sample transfer conduit.
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 BRITTANY I FISHER whose telephone number is (469)295-9182. The examiner can normally be reached IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRITTANY I FISHER/Examiner, Art Unit 1796 September 3, 2026
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