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 .
Response to Amendment
Applicant’s amendments, filed 25 March 2026, with respect to the specification, the drawings, and the claims have been entered. Therefore, the objections to the specification, the drawings, and claim 30 have been withdrawn. Furthermore, the interpretation of claim 1 under 35 U.S.C. 112(f) has been removed.
Applicant’s amendments have overcome the following rejections:
The rejections of claims 4, 15-17, 22, and 31 under 35 U.S.C. 112(a), as well as the rejection of claim 25 under the written description requirement under 35 U.S.C. 112(a);
The rejections of claims 1-3, 6-10, 12-13, 15-23, and 25-29 under 35 U.S.C. 112(b); and
The rejection of claim 24 under 35 U.S.C. 112(d).
However, applicant’s amendments have not overcome further rejections indicated in the Office Action mailed 19 December 2025; furthermore, applicant’s amendments have necessitated new rejections under 35 U.S.C. § 112. See Claim Rejections - 35 USC § 112 below.
Response to Arguments
Applicant’s arguments, see page 17, filed 25 March 2026, with respect to the rejections of claims 11 and 14 under 35 U.S.C. 112(b) with respect to the lack of antecedent basis for the term “the conversion dynode” have been fully considered but are not persuasive. A conversion dynode is introduced in claim 9; however, neither claim 11 nor claim 14 depends from claim 9. Claim 11 depends from claims 10/1, and claim 14 depends from claims 13/1. None of claims 1, 10, or 13 discloses a conversion dynode.
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 25 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a dynamic range “from 1 to
10
19
cps” across three detection modes (page 11, paragraph 23), the upper end of the range being provided by a Faraday cup with a working range “between
10
8
and
10
19
counts per second” (page 2, paragraph 3), does not reasonably provide enablement for “at least 19 orders of magnitude” as claimed, i.e., the specification does not provide enablement for greater than 19 orders of magnitude. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
The scope of enablement has been determined in accordance with the appropriate factors set forth in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988). Everything within the scope of the claim is not enabled by the specification; the claim is vastly broader than the specification. The inventor has not provided a sufficient amount of direction for one of ordinary skill in the art to make and use the claimed invention without undue experimentation. The specification discloses that the state of the prior art covers detection ranges of
10
0
-
10
6
using microchannel plate detectors (page 2, paragraph 5),
10
6
-
10
8
using discrete dynode multipliers (page 2, paragraph 4), and
10
8
-
10
19
using Faraday cups (page 2, paragraph 3). However, the specification includes no explanation of how detection may be achieved at greater than
10
19
cps; therefore, the specification is not enabling for the scope of the claimed subject matter, which recites a dynamic range of the system extended to “at least 19 orders of magnitude”.
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 11, 14, 24, and 30-31 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.
Claims 11 and 14 recite the limitation “the conversion dynode” in line 2 (claim 11) and lines 2-3 (claim 14). There is insufficient antecedent basis for this limitation in the claims. For the purpose of compact prosecution, the Examiner has interpreted “the conversion dynode” to mean “[[the]]a conversion dynode”.
Claim 24 recites the limitation “the deflector” in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purpose of compact prosecution, the Examiner has interpreted “the deflector” to mean “[[the]]a deflector”.
Claim 30 recites the limitation “the ion detector” in lines 14, 22, and 28. There is insufficient antecedent basis for this limitation in the claim. For the purpose of compact prosecution, the Examiner has interpreted “the ion detector” to mean “the one or more ion detectors”. Claim 31 is rejected because of its dependence on claim 30.
Claim 31 recites the limitation “the system” in lines 4 and 6. There is insufficient antecedent basis for this limitation in the claim. For the purpose of compact prosecution, the Examiner has interpreted “a Faraday cup detection mode of the system” to mean “a Faraday cup detection mode
The term “approximately” in claim 31 is a relative term which renders the claim indefinite. The term “approximately” 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. For the purpose of compact prosecution, the Examiner has interpreted “approximately 1 to
10
19
counts per second” to mean “
10
19
counts per second”.
Allowable Subject Matter
Claims 1-3, 6-10, 12-13, 15-23, and 26-29 are allowed. Claims 11, 14, 24-25, and 30-31 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112 set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 1 contains allowable subject matter because the prior art of record fails to teach “an image current processing circuit to amplify and measure the image current and compare it against one or more reference thresholds to automatically determine which said one or more ion detectors the ion beam should be directed to and which the signal processing mode should be used” in combination with the additional limitations of claim 1.
The closest prior art of record, Kholomeev et al. (U.S. Patent Application Publication No. 2013/0264474 A1), hereinafter Kholomeev, teaches a system for detection of positive and negative ions (paragraph 0069) in a mass spectrometer (paragraph 0001), comprising:
an aperture plate (FIG. 1, element 21) that is conductive and ungrounded (paragraph 0051);
an ion beam having a polarity and a current density (paragraph 0050, lines 12-13; polarity and current density are inherent characteristics of an ion beam) that is emerging from a mass analyzer (FIG. 1, element 10) and can pass through the aperture plate (paragraphs 0050-0051 disclose electron packets as the secondary particles converted from the ion packets passing aperture plate 21; paragraphs 0016-0019 disclose that the converted secondary particles may be secondary ions; therefore, secondary ions as an ion beam can pass through aperture plate 21), thereby inducing an image current into the aperture plate which is proportional to the current density and polarity of the ion beam (paragraph 0050, 0055, lines 16-17: the first output from the aperture plate, i.e., the image current (paragraph 0051), is proportional to the original ion packet);
one or more ion detectors (paragraph 0069; FIG. 1, element 70);
an ion beam directing element configured to direct the ion beam to impinge onto a chosen one of said one or more ion detectors to produce a signal output (paragraphs 0016-0019, secondary ions; paragraph 0063, lines 9-22, wherein dynode 51 is considered to be a deflector in accordance with the interpretation of this claim limitation under 35 U.S.C. 112(f) above);
a signal processing circuit (FIG. 1, element 90) to measure and process the signal output from each ion detector, the signal processing circuit further having one or several signal processing modes (paragraph 0054, lines 24-34; digital signal processing mode); and
an image current processing circuit (FIG. 1, element 80) to amplify (paragraph 0055, lines 63-65) and measure the image current (paragraph 0051) and compare it against one or more reference thresholds (paragraph 0055, lines 11-17).
However, Kholomeev fails to teach automatically determining which said one or more ion detectors the ion beam should be directed to and which the signal processing mode should be used. Therefore, the prior art of record fails to teach “an image current processing circuit to amplify and measure the image current and compare it against one or more reference thresholds to automatically determine which said one or more ion detectors the ion beam should be directed to and which the signal processing mode should be used” as currently claimed.
Claims 2-29 are allowable over the prior art because of their dependence on claim 1.
Claim 30 contains allowable subject matter because the prior art of record fails to teach “an image current processing circuit to amplify and measure an image current and compare it against one or more reference thresholds to automatically determine which said one or more ion detectors the ion beam is directed to and which the signal processing mode is used” in combination with the additional limitations of claim 30.
The closest prior art of record, Kholomeev, teaches a method for detection of positive and negative ions (paragraph 0069) in a mass spectrometer (paragraph 0001), the mass spectrometer comprising one or more ion detectors (paragraph 0069; FIG. 1, element 70), a signal processing circuit (FIG. 1, element 90) to measure and process the signal output from each ion detector, the signal processing circuit further having one or several signal processing modes (paragraph 0054, lines 24-34; digital signal processing mode), an image current processing circuit (FIG. 1, element 80) to amplify (paragraph 0055, lines 63-65) and measure an image current (paragraph 0051) and compare it against one or more reference thresholds (paragraph 0055, lines 11-17), comprising steps of:
placing an aperture plate (FIG. 1, element 21) that is conductive and ungrounded (paragraph 0051) on the path of an ion beam having a polarity and a current density (paragraph 0050, lines 12-13; polarity and current density are inherent characteristics of an ion beam) that is emerging from a mass analyzer (FIG. 1, element 10) and can pass through the aperture plate(paragraphs 0050-0051 disclose electron packets as the secondary particles converted from the ion packets passing aperture plate 21; paragraphs 0016-0019 disclose that the converted secondary particles may be secondary ions; therefore, secondary ions as an ion beam can pass through aperture plate 21), thereby inducing an image current into the aperture plate which is proportional to the current density and polarity of the ion beam (paragraph 0050, 0055, lines 16-17: the first output from the aperture plate, i.e., the image current (paragraph 0051), is proportional to the original ion packet);
placing the ion detector that is a discrete or continuous dynode electron multiplier (FIG. 1, discrete dynode electron multiplier comprising dynodes 23), and
placing a conversion dynode (FIG. 1, element 22).
However, Kholomeev fails to teach automatically determining which said one or more ion detectors the ion beam is directed to and which the signal processing mode is used. Therefore, the prior art of record fails to teach “an image current processing circuit to amplify and measure an image current and compare it against one or more reference thresholds to automatically determine which said one or more ion detectors the ion beam is directed to and which the signal processing mode is used” as currently claimed.
Claim 31 is allowable over the prior art because of its dependence on claim 30.
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 ALINA R KALISZEWSKI whose telephone number is (703)756-5581. The examiner can normally be reached Monday - Friday 8:00am - 5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert 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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/A.K./Examiner, Art Unit 2881
/DAVID E SMITH/Examiner, Art Unit 2881
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