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 § 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 1-15 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “TEM” in claim 15 is used by the claim to mean “Transition Electron Microscopy,” while the accepted meaning is “Transmission Electron Microscopy.” The term is indefinite because the specification does not clearly redefine the term.
Claims 1-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: In independent claim 1, the final limitation states “determining a first redox potential due, at least in part, to the redox couple while exposing the liquid to ionizing radiation”. What is unclear is if the actual measurement of the redox potential is taking place while the ionizing radiation is applied, or after the ionizing radiation is applied. As none of claims 2-14 clarify this issue, these claims must likewise be rejected under 35 USC 112 second paragraph.
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) 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Muhlebach et al. (U.S. Patent Application Publication Number 20120142850, from hereinafter “Muhlebach”).
In regards to claim 15, Muhlebach teaches a liquid phase TEM cell (note the examiner believes the “T” in TEM is intended to refer to “transmission” and not “transition” as claimed) comprising an oxidizing agent of a redox pair (paragraph 0046) for contacting with a liquid receivable therein (paragraphs 0179-0190).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE M IPPOLITO whose telephone number is (571)270-7449. The examiner can normally be reached Monday-Thursday 6:00am-4:00pm Mountain Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert H Kim can be reached at 571-272-2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE M IPPOLITO/Primary Examiner, Art Unit 2881