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 .
Drawings
The drawings are objected to because the details of the invention shown in Figs. 10 are not clearly visible and are unlabeled. The description discusses certain portions of the system being shown in Figs. 10, however, these portions are not labeled in the figures and due to this and the quality of the images, it is unclear what is shown in these figures. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
[2] recites “…an Inductively coupled plasma (ICP)…”, which should read ‘…an inductively coupled plasma (ICP)…’;
[6] recites “…a first skimmers 151…”, which should read ‘…a first skimmer 151…’;
[7] recites “…are unaffected by the ion deflected…”, which should read ‘…are unaffected by the ions deflected…’;
[15] states that Fig. 3 shows one RF-only ion guide after the skimmer, however, there are two ion guides shown in the figure after the skimmer, and the supporting description also discusses two ion guides;
[15] states that Fig. 4 shows two RF-only ion guides, however, there are three ion guides shown in the figure, and the supporting description also discusses three ion guides;
[15] recites “…with dopant introduction in the first pumping region the MS that has two skimmers.”, which should read ‘…with dopant introduction in the first pumping region of the MS, the MS having two skimmers.’, as the figure shows (and the supporting description discusses) a second pumping region between the two skimmers;
[15] recites “FIG. 9 shows the eights embodiment…”, which should read ‘FIG. 9 shows the eighth embodiment…’;
[15] states that Fig. 9 has one ion guide, however, there are two ion guides shown in the figure, and the supporting description also discusses two ion guides;
[17] lacks a period at the end of the last sentence of the paragraph;
[18] recites “An off-axis exit 230…at the cavity allows the mixture in the cavity to leave the cavity as they flow with the fluid flow…”, which should read ‘An off-axis exit 230…in the cavity allows the mixture in the cavity to leave the cavity as it flows with the fluid flow…’;
[18] recites “…a dual-skimmer (FIG. 2) 250 and 260 followed by an ion guide 280 allow to pressure drop from the pressure inside…”, which has a grammatical error in the wording ‘allow to pressure drop’, which should read ‘allow for dropping the pressure’, ‘allow one to drop the pressure’, or some other grammatically acceptable alternative;
[18] refers to both items 220 and 211 as ‘the cavity’;
[18] recites “…allows species on the vicinity of the system axis…”, which should read ‘…allows species in the vicinity of the system axis…’;
[19] recites “The most probable charge separation region is mainly on the central axis 307 is in the ion guide 380…”, which is grammatically incomplete and should read ‘The most probable charge separation region is mainly on the central axis 307 in the ion guide 380…’, or some other grammatically acceptable alternative;
[19] recites “Electrons become unstable due to RF”, which does not make sense upon plain reading, as ‘radio frequency’ alone does not indicate how the electrons are becoming unstable, and should read ‘due to the RF field(s)’, ‘due to the RF of the ion guide’ or some other similar alternative which describes what has radio frequency;
[20] recites “…in which two ion-guides 481 and 482 separated by a lens 470 are used successively…”, which should read ‘…in which two ion-guides 481 and 482, separated by a lens 470, are used successively…’;
[20] recites “Another RF-only ion guide 483 separated from the second ion guide 482 with a lens 472 is used for…”, which should read ‘Another RF-only ion guide 483, separated from the second ion guide 482 with a lens 472, is used for…’;
[20] recites “In this ion guide 483, electron become unstable due to RF and…”, which should read ‘In this ion guide 483, electrons become unstable due to [the RF fields/the RF of the ion guide] and…’;
[21] recites “Although most of these metastable are formed…”, which doesn’t indicate what is formed as ‘metastable’ is not a noun and is not plural, and should read ‘Although most of these metastable [ions/neutrals] are formed…’;
[23] recites “…in which the excess energy of a meta-stable dissipates into the reacting partner…”, which suffers from a similar issue to [21];
[23] has a grammatical and typographical issue in the portion that reads “…causing the reactant to be ionized, if the ionization energy of reactant is less than the meta-stable energy of the plasma gas.”, which should read ‘…causing the reactant to be ionized if the ionization energy of the reactant is less than the meta-stable energy of the plasma gas.’;
[26] recites in ‘Case-2’: “The metastable energy of argon atom is dissipated into the dopant molecule and ionize it…”, which should read ‘The metastable energy of the argon atom is dissipated into the dopant molecule and ionizes it…’;
[26] recites in ‘Case-3’: “A free slow electron form in previous stages…”, which should read ‘A free slow electron formed in previous stages’;
in [26], each of cases 1-3 begins with a capital letter, and case 3 begins with a lower case letter; a convention should be chosen and maintained;
[29] recites “…the system has first 511, 2d 512, 3rd 513, 4th 514, and fifth 515 pressure regions.”, which has a typographical error in ‘2nd’, and uses different conventions for numbering (i.e., 1st vs. 1st vs. first); a convention should be chosen and maintained;
[34] begins with an incomplete sentence; “And” should be removed;
the description of Fig. 9 in [34] does not agree with the figure; the first sentence of [34] indicates that the first pumping region 512 has one skimmer 951 and one ion-guide 961, however, the figure indicates the skimmer dividing the first and second pumping regions, and one of the ion guides (i.e., 961) is in the second pumping region, as indicated by the differing pressure stages shown in the figure; one could also reasonably read this portion as indicating ‘the MS’ has the one skimmer 951 and one ion-guide 961, however, this also does not make sense with the figure or the remainder of the description, as the MS has two ion guides in the figure, and the second sentence of [34] discusses the second ion guide (i.e., 962); this inconsistency should be ameliorated;
the first sentence of [36] has a superfluous ‘and’ in “and molecules of the background gas”;
[36] recites “comprising of” and “comprise of”, which are redundant; ‘of’ should be omitted;
[36] recites “The plasma enters into the cavity that sustained at a pressure…”, which should read ‘The plasma enters into the cavity that is sustained at a pressure…’;
[36] recites “For example for Ar meta-stable neutrals, dopants comprise of [potential dopants], or a combination thereof react with and…”, which should read ‘For example for Ar meta-stable neutrals, dopants comprising [potential dopants], or a combination thereof react with and…’;
[37] refers to colors in the figures, however, the figures are presented in greyscale (as is standard practice); Applicant is not required to provide color drawings, however, the reference to colors in the specification should be removed or replaced with description that indicates the same information adapted for greyscale; Examiner additionally notes that the elements of the system described in [37] are not labeled or described in a manner in which Figs. 10 can be understood, as no corresponding numbering or labeling is provided in either the specification or Figs. 10, and as such it is unclear which parts of the figures correspond to which parts of the description.
additionally, the use of ‘meta-stable’ and ‘metastable’ throughout the disclosure is inconsistent; a convention should be chosen and maintained.
Appropriate correction is required.
Claim Objections
Claims 1, 3, 7-8, 10, 13, 15-16, 18-20, and 27-30 are objected to because of the following informalities:
Claim 1 recites “comprising of”, which appears to be redundant upon plain reading; Additionally, as discussed in MPEP 2111.03, comprising is equivalent to "including," "containing," or "characterized by,", each of which would not make sense if inserted in place of ‘comprising’ in this phrase; Accordingly, ‘of’ should be omitted; The claim recites this phrase in two locations;
Claim 1 recites “the plasma comprising [of] positive and negative ions, meta-stable ions and neutrals, and molecules of the background gas, and free electrons”; The grouping of the elements of the list is somewhat ambiguous upon plain reading for two reasons: first, it is unclear if ‘meta-stable’ is intended to modify both ‘ions’ and ‘neutrals’, or if ‘neutrals’ is unmodified; second, it is unclear why ‘and’ is present in ‘and molecules of the background gas’, since there is another element in the list (i.e., ‘and free electrons’); Accordingly, Examiner looked to Applicant’s disclosure for instruction, which appeared to indicate that meta-stable is intended to modify both ‘ions’ and ‘neutrals’, and that there was no significance to the additional ‘and’, which appears to perhaps be a typographical error; Examiner suggests rephrasing to remove the additional ‘and’, to distribute the ‘meta-stable’ to ‘ions’ and ‘neutrals’, and to form a simple list to more clearly and positively recite each of the elements intended, such that no ambiguity remains, e.g., ‘the plasma comprising positive and negative ions, meta-stable ions, meta-stable neutrals, molecules of the background gas, and free electrons’; Claim 15 has the same issue and should be ameliorated in the same manner;
Claim 1 recites “the formation of deposits’; While Examiner believes the phrase is definite in context, it nevertheless lacks antecedent basis; For clarity, this should read, e.g., ‘formation of deposits’;
Claim 1 recites “…whereby no electrostatic or magnetic fields is applied…”, which should read ‘…whereby no electrostatic or magnetic fields are applied…’;
Claim 1 recites “the first and second cavity inlets”, while claim 3 refers to ‘the first and the second cavity inlets’, which is inconsistent despite referring to the same elements; either convention would be acceptable, however, a convention should be chosen and maintained throughout the claims;
Claim 3 recites “..and to prevent photons to enter the MS.”, which should read ‘…and to prevent photons from entering the MS’;
Claim 7 recites “…each of the second, thirds, and further pressure stages…”, which should read ‘…each of the second, third, and further pressure stages…’;
Claim 8 recites “comprising of”, which appears to be redundant upon plain reading; As discussed above, ‘of’ should be omitted;
Claim 10 recites “the said orifices”, which is redundant; Either ‘the orifices’ or ‘said orifices’ is sufficient;
Claim 13 recites “…wherein a molecule or ion is…”, which should read ‘…wherein a molecule or an ion is…’;
Claim 15 lacks an articles (i.e., a/an/the) before ‘inductively coupled mass spectrometer’; Additionally, ICP is a known acronym for ‘inductively coupled plasma’, which Applicant recites in claim 1, however, claim 15 lacks the word ‘plasma’; Accordingly, this should read ‘an inductively coupled plasma mass spectrometer’;
Claim 15 recites “comprising of”, which appears to be redundant upon plain reading; As discussed above, ‘of’ should be omitted;
Claim 15 recites “the momentum of the background gas”; While Examiner believes the phrase is definite in context, it nevertheless lacks antecedent basis; For clarity, this should read, e.g., ‘momentum of the background gas’;
Claim 16 lacks a comma after “The method of claim 15”, which is inconsistent with the other claims;
Claim 16 lacks a comma after “water vapor”, which should be used to separate the elements of the list and prevent ambiguity;
Claim 17 recites “Hexane” twice in the list of potential dopants;
Claims 18-20 and 27-29 each lack a transitional phrase after their respective instances of ‘The method of claim [XX],…’; The phrase ‘further comprising’ or some suitable alternative should be included to maintain proper grammar;
Claim 20 recites “…first ionizing a molecule or ion…”, which should read ‘…first ionizing a molecule or an ion…’;
Claim 27 recites “…a first and a second skimmers…”, which should read either ‘first and second skimmers’, ‘a first and a second skimmer’, or a first skimmer and a second skimmer’;
Claim 28 recites “…thereby blocking photons to enter the MS.”, which should read ‘…thereby blocking photons from entering the MS’;
Claim 29 has a superfluous comma after “subsequently” that should be removed;
Claim 30 recites “the dopant or analyte” and subsequently recites “the dopant or the analyte”, which is inconsistent despite referring to the same elements; either convention would be acceptable, however, a convention should be chosen and maintained throughout the claims.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 29 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 29 recites “…introducing the dopant at any of the pressure stages of the MS, thereby transferring energy from metastable neutrals to the dopant molecules to ionize them, and subsequently, filtering any unwanted ionized species and allowing only ions of interest to enter the MS.” Applicant’s specification does not discuss any means for filtering unwanted ionized species and allowing only ions of interest to enter the MS, as best understood.
The closest disclosure to ‘filtering’ any elements out of the mixture present in the specification is the removal of photons by changing the direction of flow, and quenching meta-stable neutrals by interaction with other elements of the mixture. However, neither of these instances truly refers to filtering, and neither refers to ‘unwanted ionized species’, as the former is not an ‘ionized species’ and the latter only has its energy state altered in the reactions, and is not actually filtered, as best understood. At best, filtering of unwanted ions is most closely disclosed as being performed in the MS itself.
Furthermore, the specification discusses the quenching of meta-stable neutrals and removal of photons, however, it does not reasonably describe allowing only ions of interest to enter the MS, and rather discusses decreasing unwanted species.
As such, claim 29 is rejected for failing to comply with the written description requirement, as it recites method steps not reasonably described in the specification in such a manner that an ordinarily skilled artisan would conclude applicant had possession of the invention claimed in claim 29.
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 1-30 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 “an inductively coupled plasma (ICP) source having at least one inlet to receive a background gas and analytes, and to at least partially ionize the background gas…”, however, the language ‘and to’ is unclear, as it appears to indicate that ‘at least one inlet’ is the element which partially ionizes the background gas, which is non-physical. Based on Examiner’s reading of Applicant’s specification, Examiner believes this is intended to limit the ICP source, however, the present language does not do this, and Examiner is not permitted to read limitations from the specification into the claim. Accordingly, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘an inductively coupled plasma (ICP) source having at least one inlet to receive a background gas and analytes, wherein the ICP source is configured to at least partially ionize the background gas…’.
Claim 1 recites “…wherein the cavity is configured to mix and react the dopant, the plasma and the analytes to form a mixture…”, which is ambiguous in meaning. While Examiner believes this is intended to merely recite a list of elements that form a mixture, the lack of a comma in the list after ‘the plasma’ makes the meaning ambiguous. One could reasonably interpret this as meaning ‘wherein the cavity is configured to mix and react the dopant’ and separately ‘the plasma and the analytes to form a mixture’, or as meaning ‘wherein the cavity is configured to mix and react the dopant, the plasma, and the analytes to form a mixture’. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…wherein the cavity is configured to mix and react the dopant, the plasma, and the analytes to form a mixture…’.
Claim 1 recites “the walls”, which lacks antecedent basis. The claim is directed toward a system, and thus all required physical elements should be positively recited, such as by reciting ‘a cavity having walls’ or ‘configured to heat walls of the cavity’. This term is recited in two locations in the claim.
Claim 1 recites “wherein the plasma is configured to heat the walls of the cavity to prevent the formation of deposits on the walls of the cavity and to help with the transfer of the mixture from the first and second cavity inlets to the cavity outlet”. First, transferring the mixture from the first and second cavity inlets to the cavity outlet is not previously required by the claim, and as such ‘the transfer’ is indefinite, as no such transfer is required by the claim. Additionally, the claim pertains to a system, and thus it is unclear how these requirements further limit the system, as no structure capable of manipulating the plasma is recited in the claim. Finally, the phrase ‘to help with’ is indefinite, as there is no clear boundary on what would or would not satisfy this requirement, and the claim is not directed toward a method. Looking to Applicant’s specification for instruction, it appears that no action is taken to achieve the plasma helping with transfer of the mixture, and the movement of the mixture is actuated by pressure differences between different pressure stages. Accordingly, this limitation could result in written description issues if included as written. Applicant should positively recite the necessary structures and required capabilities of these structures, and avoid including limitations that could be interpreted as method steps, which are indefinite in a system claim. Furthermore, claiming a result without claiming how such result is achieved in a system claim is indefinite, and claiming a natural consequence of the relative arrangement of physical elements does not further limit the claim beyond the relative arrangement of the physical elements (i.e., confining a hot plasma in a chamber will naturally provide heating to any elements proximate thereto). For purposes of examination, this limitation is interpreted as ‘wherein the plasma is capable of heating walls of the cavity to prevent formation of deposits on the walls of the cavity’.
Claim 1 recites “…whereby no electrostatic or magnetic fields is applied inside the cavity to transfer the mixture from the first and second cavity inlets to the cavity outlet.”, however, the claim does not previously require transferring the mixture from the first and second cavity inlets to the cavity outlet, and as such the limitation is indefinite, as no such transfer is required by the claim. Additionally, the claim pertains to a system, and thus it is unclear how these requirements further limit the system, as no structure capable of manipulating the plasma is recited in the claim. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…whereby no electrostatic or magnetic fields are applied inside the cavity’.
Claim 2 recites “…wherein the cavity configures a first pressure stage of the system…”, however, it is unclear what is intended by ‘configures’ in this context. Typically, ‘configures’ would be understood to mean ‘sets up’, ‘arranges’ or ‘shapes’, however, based on Examiner’s understanding of Applicant’s disclosure, the cavity is the first pressure stage itself. Accordingly, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…wherein the cavity defines a first pressure stage of the system…’.
Claim 3 recites “…wherein the first and the second cavity inlets are in an off-axis position with respect to the cavity outlet…”. It is unclear whether this is intended to require that the first and second cavity inlets are each in respective off-axis positions (i.e., two positions, both off-axis), or that the first and second cavity inlets are each in an off-axis position (i.e., one position, both inlets at the one position). As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…wherein the first and the second cavity inlets are each in a respective off-axis position with respect to the cavity outlet…’.
Claim 3 recites “…wherein the first and the second cavity inlets…are configured to enhance mixing inside the cavity and to prevent photons to enter the MS.” Because the claim is directed to a system, it is unclear whether these limitations further limit the system, as the claim is requiring a result, rather than specific capabilities or functionality required to achieve the result. It is unclear what element(s) of the system the limitations ‘configured to enhance mixing inside the cavity’ and ‘to prevent photons to enter the MS’ actually limit, or whether this is merely reciting the natural outcome of positioning the first and second cavity inlets off-axis relative to the cavity outlet. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…wherein the first and the second cavity inlets are each in a respective off-axis position with respect to the cavity outlet, wherein the respective off-axis positions cause enhanced mixing of the background gas, the plasma, the dopant, and the analytes inside the cavity and prevent photons from entering the MS.’
Claim 4 recites “a second pressure stage”, however, claim 4 depends only on claim 1, which does not recite a ‘first’ pressure stage. Accordingly, it is unclear what ‘second’ indicates in this context. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. See below for discussion of interpretation of dependent claims with dependency issues.
Claim 4 recites “…the system has a second pressure stage right after the cavity outlet to receive the mixture…”. The phrase ‘right after’ does not clearly and unambiguously indicate a positional relationship between the elements, as the term itself is vague and does not provide a clear boundary on what would or not read on this requirement. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…the system has a second pressure stage immediately downstream of and fluidically coupled to the cavity outlet to receive the mixture…’.
Claim 5 recites “a third pressure stage”, however, claim 5 depends only on claim 1, which does not recite a ‘first’ or ‘second’ pressure stage. Accordingly, it is unclear what ‘third’ indicates in this context. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. See below for discussion of interpretation of dependent claims with dependency issues.
Claim 5 recites “the second pressure stage”, which lacks antecedent basis, as this term is first recited in claim 4, which claim 5 does not depend on. Furthermore, this term has an indefiniteness issue in claim 4 as well. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. See below for discussion of interpretation of dependent claims with dependency issues.
Claim 5 recites “wherein the system has a third pressure stage separated by a first orifice from the second pressure stage to receive the mixture”, which is ambiguous with its present wording. It is unclear what ‘to receive the mixture’ is intended to be linked to. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘wherein the system has a third pressure stage separated from the second pressure stage by a first orifice, wherein the third pressure stage is positioned to receive the mixture from the second pressure stage’.
Claim 6 recites “a fourth pressure stage”, “a second orifice”, and “a third orifice” however, claim 6 depends only on claim 1, which does not recite a ‘first’, a ‘second’, or a ‘third’ pressure stage, nor does it recite a ‘first’ orifice. Accordingly, it is unclear what these numerical indicators require in this context. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. See below for discussion of interpretation of dependent claims with dependency issues.
Claim 6 recites “the third pressure stage”, which lacks antecedent basis, as this term is first recited in claim 5, which claim 6 does not depend on. Furthermore, this term has an indefiniteness issue in claim 5 as well. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. See below for discussion of interpretation of dependent claims with dependency issues.
Claim 6 recites “wherein the system has a fourth pressure stage separated by a second orifice from the third pressure stage to receive the mixture, the fourth pressure stage further separated by a third orifice from later pressure stages of the MS” which is indefinite due to the language being ambiguous (i.e., for similar reasons to claim 5). As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘wherein the system has a fourth pressure stage separated from the third pressure stage by a second orifice, wherein the fourth pressure stage is positioned to receive the mixture, and wherein the fourth pressure stage is further separated from later pressure stages of the MS by a third orifice’.
Claim 7 recites “…the second, thirds, and fourth pressure stages of the system…”, however, claim 7 depends only on claim 1, which does not recite a ‘first’, a ‘second’, a ‘third’, or a ‘fourth’ pressure stage. Accordingly, it is unclear what these numerical indicators require in this context. Furthermore, these terms each lack antecedent basis for the same reason. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. See below for discussion of interpretation of dependent claims with dependency issues.
Claim 7 recites “…wherein each of the second, thirds, and fourth pressure stages of the system may have an inlet…”. It is unclear whether this limitation is actually required, as the limitation recites that each of the various pressure stages ‘may have’ an inlet, but not that they are required to have such an inlet. This does not provide a clear boundary on what would or not read on the required structures of the claim, because the claim does not clearly indicate the required structures. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…wherein one or more of the second, third, and fourth pressure stages of the system has an inlet…’.
Claim 7 recites “an inlet to receive the dopant or analytes”. It is unclear whether this is intended to refer to ‘the analytes’, i.e., equivalent to ‘the dopant or the analytes’, or to analytes in general. In other words, it is unclear whether this recitation of ‘analytes’ is intended to refer back to the analytes recited in claim 1, or additional analytes. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘an inlet to receive the dopant or the analytes’.
Claim 8 recites “…any of the second, third, or fourth pressure stages…”, however, claim 8 depends only on claim 1, which does not recite a ‘first’, a ‘second’, a ‘third’, or a ‘fourth’ pressure stage. Accordingly, it is unclear what these numerical indicators require in this context. Furthermore, these terms each lack antecedent basis for the same reason. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. See below for discussion of interpretation of dependent claims with dependency issues.
Claim 8 recites “…an ion guide to contain and focus ions and to transfer the ions…”, however, it is unclear what ions are being referred to by the recitations of ‘ions’ and ‘the ions’. Upon plain reading it appears ‘ions’ is intended to require a general capability to focus ions, and not refer to any particular ions. However, claim 1 recites several types of ions, i.e., those that form the plasma and thus form the mixture. Accordingly, one could reasonably interpret the subsequent recitation of ‘the ions’ as referring to the ions in the mixture/plasma, or as referring to the previously generally recited ions from earlier in claim 8. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘“…an ion guide to contain and focus ions and to transfer the focused ions…’, as Examiner believes this is intended to refer to a general capability of the ion guide, rather than as specifically referring to any particular ions.
Claim 8 recites “…wherein any of the second, third, or fourth pressure stages comprises of an ion guide to contain and focus ions and to transfer the ions to the next stage.” It is unclear how this limitation further limits the claim, as the limitation recites that ‘any’ of the various pressure stages ‘comprises’ an ion guide. This does not provide a clear boundary on what would or not read on the required structures of the claim, because the claim does not clearly indicate the required structures. Essentially, it is unclear whether this is a positive recitation of a requirement of an ion guide, because it appears this is merely indicating that each of the pressure stages is capable of having an ion guide. Additionally, “the next stage” lacks antecedent basis and is additionally indefinite because none of the claims (for the time being ignoring dependencies, see below) recites an additional stage downstream of the fourth pressure stage. Accordingly, it is not clear what ‘the next stage’ would be in this case. In the case of the second and third stages, were the dependency issues ameliorated (see discussion below), the term would only lack antecedent basis and could be ameliorate by simply rephrasing to ‘a pressure stage immediately downstream’, ‘a next stage’, ‘a subsequent pressure stage’, or some other suitable alternative. Nevertheless, at present it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…wherein one or more of the second, third, or fourth pressure stages comprises an ion guide, wherein the ion guide is configured to contain and focus ions and to transfer the ions to a respective pressure stage immediately downstream therefrom.’.
Claim 9 recites the limitation "the ion guides". There is insufficient antecedent basis for this limitation in the claim. Claim 9 depends only on claim 1, wherein no ion guides are required. Additionally, Examiner notes that a plurality of ion guides is not required by any of the preceding claims.
Claim 11 appears to be claiming a process which would naturally occur given the proper initial conditions, and it is unclear how this further limits the claim, or whether this portion of the claim is patent eligible. Additionally, claim 11 recites “wherein the dopant is selected to have…”, which appears to be claiming a method step in a system claim, which is further indefinite. Furthermore “the energy of the meta-stable neutrals”, “the molecules of the dopant”, and “the pressure stages” each lack antecedent basis, which further renders the claim indefinite. Examiner notes that claim 11 depends only on claim 1, and as such no plurality of pressure stages is previously recited. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘wherein the dopant has an ionization energy lower than an energy of the meta-stable energy state of the meta-stable neutrals, which allows the system to passively quench the meta-stable neutrals via interaction with the dopant’ , in order to rephrase as a capability of the system, as the remainder of the claim at present is merely describing a natural process of placing such a dopant with such meta-stable neutrals, and does not further limit the system itself.
Claim 12 appears to be claiming a process which would naturally occur given the proper initial conditions, and it is unclear how this further limits the claim, as it is not directed toward any elements of the system. Furthermore, it is unclear whether the subject matter of the claim is patent eligible, as it appears to be directed solely to a natural process. Additionally, similar to claim 11, “the pressure stages” lacks antecedent basis. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…wherein the presence of the free electrons in proximity to the analytes allows the system to passively form negative analyte ions via electron attachment’, in order to rephrase as a capability of the system.
Claim 13, similar to claims 11-12, appears to be claiming a process which would naturally occur given the proper initial conditions, and it is thus unclear how this further limits the claim, as it is not directed toward any elements of the system. Furthermore, it is unclear whether the subject matter of the claim is patent eligible, as it appears to be directed solely to a natural process. Additionally, similar to claims 11-12, “the electron” and “the pressure stages” each lack antecedent basis. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…wherein the presence of molecules and electrons in the mixture in proximity to the analytes allows the system to passively form negative analyte ions via electron transfer’, in order to rephrase as a capability of the system.
Claim 14, similar to claims 11-13, appears to be claiming a process which would naturally occur given the proper initial conditions, and it is thus unclear how this further limits the claim, as it is not directed toward any elements of the system. Furthermore, it is unclear whether the subject matter of the claim is patent eligible, as it appears to be directed solely to a natural process. Additionally, similar to claims 11-13, “the electron” and “the pressure stages” each lack antecedent basis. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…wherein the presence of dopant molecules and free electrons in proximity to one another allows the system to passively form negatively charged dopant molecules via electron attachment, and the presence of the negatively charged dopant molecules in proximity to the analytes allows the system to passively form negative analyte ions via electron transfer’, in order to rephrase as a capability of the system.
Claim 15 recites “…and generating high yields of negative ions…”. The term “high yields” in the claim is a relative term which renders the claim indefinite. The term “high yields” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Accordingly, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…and generating negative ions…’.
Claim 15 recites “…mixing the plasma and the dopant inside the cavity to quench meta-stable neutrals and form a mixture…”. It is unclear whether this recitation of ‘meta-stable neutrals’ is intended to refer to the same meta-stable neutrals as those found in the plasma, or additional meta-stable neutrals. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…mixing the plasma and the dopant inside the cavity to quench the meta-stable neutrals and form a mixture…’.
Claim 15 recites “…directing the mixture by the momentum of the background gas out of the cavity from a cavity outlet towards a mass spectrometer for analysis.”, which is somewhat unclear due to the phrasing, as it appears not to positively recite what is actually required to be performed. As best understood, the mixture merely flows by momentum of the background mixture and the pressure differential between the cavity and downstream stages, and is thus not ‘directed’ in an active sense, however, the pressure differential is not referenced in the claim. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…allowing the mixture to flow out of the cavity by the momentum of the background gas under the influence of a pressure differential between the cavity and one or more downstream pressure stages, whereby the mixture flows out of the cavity via a cavity outlet, and is subsequently allowed to flow through the one or more downstream pressure stages towards a mass spectrometer for analysis.’.
Claim 17 recites “the meta-stable energy”, which lacks antecedent basis. Additionally, it is not clear whether the claim is intended to require using Ar and thus Ar meta-stable neutrals, or dopants chosen therefor. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…wherein the dopant has an ionization energy lower than an energy of the meta-stable energy state of the meta-stable neutrals, which comprise Ar meta-stable neutrals, and wherein the dopant comprises Butenal, Butene, Butyne, Allene, Acetone, Propene, Hexyne, Ammonia, Pentyne, Hexane, Methylene, Ethylene, Hexane, Formic acid, or a combination thereof; and wherein mixing the dopant and the Ar meta-stable neutrals quenches the Ar meta-stable neutrals and forms ionized dopant molecules.’.
Claim 18 appears to be claiming a process which would naturally occur given the proper initial conditions, and it is thus unclear how this further limits the claim, as it is not directed toward any method steps. Furthermore, it is unclear whether the subject matter of the claim is patent eligible, as it appears to be directed solely to a natural process. In particular, ‘using penning ionization’ is indefinite, because the process of penning ionization is passive and would naturally occur if the meta-stable neutrals and proper dopant are placed in such a cavity. Additionally, the limitation “…wherein the reactant partner is selected that has an ionization energy less than that of a meta-stable neutral.” does not make sense upon plain reading, and is unclear because it appears to indicate that the ionization energy of the reactant partner is less than ‘a meta-stable neutral’, but not any particular meta-stable neutral, which does not provide a clear boundary on the requirements of the claim. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘wherein the dopant has an ionization energy less than an energy of the meta-stable energy state of the meta-stable neutrals, which facilitates quenching the meta-stable neutrals via penning ionization inside the cavity.’.
Claim 19 appears to be claiming a process which would naturally occur given the proper initial conditions, and it is thus unclear how this further limits the claim, as it is not directed toward any method steps. Furthermore, it is unclear whether the subject matter of the claim is patent eligible, as it appears to be directed solely to a natural process. Additionally, “the analyte molecules” lacks antecedent basis, and it is unclear what “(electron attachment)” is intended to require. Furthermore, the claim refers to ‘free electrons’, however, ‘free electrons’ was recited in claim 15, and thus it is unclear whether this is intended to refer to the same free electrons or additional free electrons. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘wherein the mixing the plasma and the dopant inside the cavity causes the analytes and the free electrons of the plasma to interact via electron attachment to passively form negative ions inside the cavity.’.
Claim 19 recites “…forming a high yield of negative ions…”. The term “high yield” in the claim is a relative term which renders the claim indefinite. The term “high yield” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Accordingly, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…form negative ions…’ as discussed above.
Claim 20 appears to be claiming a process which would naturally occur given the proper initial conditions, and it is thus unclear how this further limits the claim, as it is not directed toward any method steps. Furthermore, it is unclear whether the subject matter of the claim is patent eligible, as it appears to be directed solely to a natural process. Additionally, “the analyte molecules” and “the electrons” lack antecedent basis, and it is unclear what “(electron attachment)” is intended to require. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…wherein the mixing the plasma and the dopant inside the cavity causes molecules or ions of the plasma to interact with the free electrons to passively form negatively charged molecules or ions via electron attachment, and wherein the negatively charged molecules or ions are subsequently allowed to interact with analyte molecules to passively form negative analyte ions in the cavity via electron transfer.’.
Claim 20 recites “…forming a high yield of negative analyte ions…”. The term “high yield” in the claim is a relative term which renders the claim indefinite. The term “high yield” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Accordingly, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…form negative analyte ions…’ as discussed above.
Each of claims 21-26 have similar issues with numbered elements and dependencies that claims 4-8 have, including similar antecedent basis issues in claims 24-26. Furthermore, similar to claims 5-6, the wording is ambiguous and does not provide a clear boundary on what is required by the claims. As such, it is not possible to adequately determine the metes and bounds of the claims, rendering them indefinite. See below for discussion of interpretation of dependent claims with dependency issues.
For purposes of examination, claim 21 is interpreted as ‘wherein the dopant is injected in a second pressure stage of the MS, and wherein the second pressure stage is positioned immediately downstream of and fluidically coupled to the cavity outlet; and wherein the second pressure stage is further positioned to be separated from a third pressure stage by an orifice or a skimmer’. Examiner also notes that ‘right after’ is indefinite for the reasons previously discussed in regards to claim 4.
For purposes of examination, claim 22 is interpreted as ‘wherein the dopant is injected in a third pressure stage of the MS, and wherein the third pressure stage is further positioned to be separated from a fourth pressure stage by an orifice’.
For purposes of examination, claim 23 is interpreted as ‘wherein the dopant is injected in a fourth pressure stage of the MS, and wherein the fourth pressure stage is further positioned to be separated from downstream pressure stages of the MS by an orifice’.
For purposes of examination, claim 24 is interpreted as ‘wherein the dopant is injected in the second pressure stage of the MS, and wherein the second pressure stage has one ion-guide to contain and focus ions and transfer the focused ions to the third pressure stage.’. Examiner notes that ‘the ions’ are interpreted as ‘ions’, recited in generality, as discussed above, since no particular ions are indicated.
For purposes of examination, claim 25 is interpreted as ‘wherein the dopant is injected in the third pressure stage of the MS, and wherein the third pressure stage has one ion-guide.’.
For purposes of examination, claim 26 is interpreted as ‘wherein the dopant is injected in the fourth pressure stage of the MS, and wherein the fourth pressure stage has one ion-guide.’.
Claim 27 recites “the pressure stages” which lacks antecedent basis in the claims. Additionally, it is unclear what steps are required to be performed, as it is not clear which, if any, pressure stages are required to have the analytes injected thereto. Furthermore, it is unclear whether the ionizing is actually required, as the phrasing ‘to be negatively ionized’ does not appear to positively require that the analytes are actually ionized. Finally, it is unclear whether ‘injecting the analytes…in a pressure zone between a first and a second skimmers” is possible given the required elements of the claim. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘further comprising injecting the analytes to one or more of the pressure stages of the MS, whereby the analytes interact with other constituents of the mixture and are negatively ionized through electron attachment or electron transfer to passively form negative analyte ions.’.
Claim 27 recites “…forming a high yield of negative analyte ions…”. The term “high yield” in the claim is a relative term which renders the claim indefinite. The term “high yield” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Accordingly, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…form negative analyte ions…’ as discussed above.
Claim 28 recites “the ion flow” and “the cavity outlet skimmer”, which lack antecedent basis in the claims. Additionally, claim 28 recites “…bending the ion flow from the first cavity inlet to the cavity outlet skimmer by an off-axis cavity configuration…”, however, the specification does not appear to support any active bending of the ion flow, and rather that the flow path of the ions is bent by a pressure differential between the cavity and downstream pressure stages. Accordingly, it is unclear what is required by this limitation, which appears to be directed toward a natural phenomenon resulting from particular initial conditions. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…wherein the first cavity inlet and the cavity outlet are positioned to achieve an off-axis cavity configuration, and wherein a lower pressure is maintained downstream of the cavity outlet so as to cause a flow path of the plasma to bend from the first cavity inlet toward the cavity outlet, thereby blocking photons from entering the MS’.
Claim 29 recites “the pressure stages” and “the dopant molecules”, which lack antecedent basis in the claims. Additionally, claim 29 refers to ‘metastable neutrals’, which is unclear because claim 15 recites ‘meta-stable neutrals’, and as such it is unclear whether this recitation is intended to reference the meta-stable neutrals of claim 15 or additional meta-stable neutrals. Furthermore, the claim recites “filtering any unwanted ionized species and allowing only ions of interest to enter the MS”, which is vague and indefinite. First, it is unclear what is required by ‘filtering’ as the specification does not discuss what processes would need to be performed to filter ‘unwanted ionized species’ (see 112(a) discussion above). Additionally, the claim does not provide a boundary on what would be considered ‘unwanted ionized species’ or ‘ions of interest’, or how the method would distinguish between them and perform filtering therebetween. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as ‘…further comprising introducing the dopant at one or more of the pressure stages of the MS, wherein the injection of dopant molecules in proximity to the meta-stable neutrals causes an interaction therebetween, whereby energy is transferred to the dopant molecules from the meta-stable neutrals to ionize the dopant molecules. ’.
Claim 30 recites several numbered elements, which each lack antecedent basis in the claims, as claim 30 depends only on claim 15. Additionally, “the dopant or analyte” and “the dopant or the analyte” each lack antecedent basis. Furthermore, the claims recites “wherein introduction of the dopant or the analyte in a RF confinement field generates a high yield of negative ions”, however, no such introduction into an RF confinement field is required in the claims, and as such it is unclear what this limitation is intended to require, and it is unclear whether this limitation further limits the claim. As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. See below for discussion of interpretation of dependent claims with dependency issues. For purposes of examination, this claim is interpreted as ‘wherein a dopant or an analyte is added into one or more of the second, third, or fourth pressure regions of the MS to passively generate negative ions by interaction of the dopant or analytes with the mixture.’.
Claims that depend on the above rejected claims are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Examiner note with respect to dependencies: It appears that several of the dependent claims are intended to depend upon one another, rather than each only depending on claim 1 or claim 15, however, it is not immediately clear which claims are intended to depend upon which. Due to this, Examiner will forgo an examination on the merits of these claims until such time as the scope of these claims can be reasonably understood. Additionally, for this reason, Examiner has chosen not to provide an interpretation of the numbered elements, as such an interpretation would be purely speculative.
General note with respect to indefiniteness issues above: Applicant is reminded that method steps should not be claimed in system claims, and that any and all required elements and/or methods steps need be positively recited in the claims in order to further limit the claims. Making general reference to an outcome or claiming a natural result without linking the outcome/natural result to claim elements and/or claimed method steps does not further limit the claims and raises potential subject matter eligibility and indefiniteness issues.
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 11-14 and 18-20 rejected under 35 U.S.C. 101 because the claimed invention is directed to natural phenomena-type judicial exceptions without significantly more. The claims recite processes which would naturally occur between the claimed elements of the mixture if placed in proximity. In other words, the claims recite in words the chemical reactions that would take place between the elements of the mixture absent any intervention (e.g., the claims are claiming electron attachment and electron transfer themselves).
This judicial exception is not integrated into a practical application because the claims do not link the natural phenomena (i.e., the various chemical reactions) to any claim structure or method steps that are specifically performed to cause the natural phenomena to occur or significantly modify the natural reactions that would occur. The claims merely recite the natural phenomena that would occur without intervention.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not have any additional required claim elements other than those which occur in the various natural reactions.
Examiner notes that the above recited interpretations in the 112(b) section were chosen to attempt to overcome the subject matter eligibility issues. However, as discussed above, Examiner is not able to provide adequate interpretation for all of the above issues, and as such there is no guarantee that the above recited interpretations would be adequate to overcome the subject matter eligibility issues, as Examiner is unable to predict how Applicant will ameliorate the above issues. Nevertheless, claiming in similar form (i.e., as capabilities of the system/method steps) should be sufficient to overcome these issues. Examiner encourages Applicant to contact Examiner or to request an interview to discuss any uncertainty.
Examiner Note with respect to Prior Art
Examiner notes that due to the nature and quantity of objectional language/matters of form, subject matter eligibility issues, written description issues, and indefiniteness issues in the claims (as discussed above), it is not presently possible to adequately determine the metes and bounds of the claims in a manner that would allow examination of the claims on the merits. An application of prior art by the Examiner at present would rely heavily on speculation, and is thus forgone herein.
Examiner makes note of the prior art documents Sakata, Mitsui, Tanner, Loboda, and Bazargan (each cited below), which are the closest prior art identified in Examiner’s search, as best understood in view of the various issues identified above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Sakata (US 6265717 B1);
Mitsui (US 4948962 A);
Tanner (US 6140638 A);
Loboda (US 9589779 B2);
Bazargan (US 10181394 B2).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J GASSEN whose telephone number is (571)272-4363. The examiner can normally be reached M-F 9-5.
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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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/CHRISTOPHER J GASSEN/Examiner, Art Unit 2881
/ROBERT H KIM/Supervisory Patent Examiner, Art Unit 2881