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
The preliminary amendment filed on April 23, 2024 is acknowledged. The application will be examined accordingly.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on May 15, 2024, June 27, 2024, November 6, 2024, February 7, 2025, May 20, 2025 and May 26, 2026 are being considered by the examiner.
Claim Objections
Claims 21, 28 and 30 are objected to because of the following informalities:
In claims 21, 28 and 30, multiple instances of the limitation “the liquid sample” should be changed to “the prepared liquid sample”, especially given that the penultimate line of the claim 21 explicitly recites “the prepared liquid sample”, thus distinguishing it from “liquid sample”. According to the claims, the liquid sample and the prepared liquid sample are distinct, and hence they should be referred to using the proper nomenclature.
Appropriate corrections are required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 28-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 1 and 3-5 of US 11,933,698 B2, respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US 11,933,698 B2 anticipate the respective claims of the instant application.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA (or as subject to pre-AIA ) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if 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.
Claims 21, 22, 24, 26, 28, 31 and 33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mitani et al. (“Mitani”) (US 5,504,010).
With respect to claim 21, Mitani discloses a system comprising (see Fig. 1):
a sample receiving line 12-1 configured for positioning at a first location (location of analyzer 13);
a remote sampling system configured for positioning at a second location remote from the first location (see lines 56-60, col. 3 disclosing that the analyzer 13 can be up to 500m away), the remote sampling system including a remote sampling device 2, the remote sampling system configured to receive a liquid sample and prepare the liquid sample for analysis via dilution to yield a prepared liquid sample (see lines 23-26, col. 4);
a sample transfer line 10 configured to be fluidically coupled between the first location and the second location, the sample transfer line 10 configured for coupling with a gas supply 11 that is configured to provide a pressurized gas stream (segment gas, see lines 7-10, col. 5) to transport and thereby drive the prepared liquid sample within the sample transfer line 10 from the second location to the first location (see lines 37-42, col. 5); and
a valve 9 configured to selectively couple the sample receiving line 12-1 with the sample transfer line 10 so that the sample receiving line 12-1 is in fluid communication with the sample transfer line 10, and wherein the valve 9 is in fluid communication with an analysis system 13 to supply a liquid sample segment of the prepared liquid sample to the analysis system 13 (see lines 50-55, col. 5), wherein the liquid sample segment contains a portion of the prepared liquid sample (see lines 45-50, col. 6 disclosing that a washing liquid washes the sample preparation device 3, meaning that residual prepared liquid sample remains in the sample preparation device 3).
With respect to claim 22, the system further comprises a detector configured to monitor the sample receiving line 12-1 to detect the presence of the liquid sample in the sample receiving line 12-1 (see line 30, col. 8);
With respect to claim 24, based on the fact that the liquid sample flows into sample preparation device 3 (see arrow in Fig. 1), it is evident that the remote sampling device 2 is functionally associated with a pump configured to load the liquid sample into the sample preparation device 3 (see also lines 11-26, col. 4 disclosing a system for sampling a specific quantity of the liquid sample).
With respect to claim 26, Mitani discloses that the analysis system 13 can perform plasma emission spectrometry (see lines 27-28, col. 7).
With respect to claim 28, Mitani discloses a system comprising (see Fig. 1):
a sample receiving line 12-1 configured for positioning at a first location (location of analyzer 13);
a remote sampling system configured for positioning at a second location remote from the first location (see lines 56-60, col. 3 disclosing that the analyzer 13 can be up to 500m away), the remote sampling system including a remote sampling device 2, the remote sampling system configured to receive a liquid sample and prepare the liquid sample for analysis via dilution to yield a prepared liquid sample (see lines 23-26, col. 4);
a sample transfer line 10 configured to be fluidically coupled between the first location and the second location, the sample transfer line 10 configured for coupling with a gas supply 11 that is configured to provide a pressurized gas stream (segment gas, see lines 7-10, col. 5) to transport and thereby drive the prepared liquid sample within the sample transfer line 10 from the second location to the first location (see lines 37-42, col. 5);
a detector configured to monitor the sample receiving line 12-1 to detect the presence of the liquid sample in the sample receiving line 12-1 (see line 30, col. 8); and
a valve (“sampling means”) configured to, responsive to detection of the presence of the liquid sample segment in the sample receiving line 10, fluidically couple the sample receiving line with an analysis system 13 to supply the liquid sample segment to the analysis system (see lines 28-32, col. 8 disclosing that the liquid sample segment is “injected” by the sampling means, meaning that the sampling means controls flow to the analysis system 13 like a valve), wherein the liquid sample segment constitutes a portion of the liquid sample (see lines 15-23, col. 4 disclosing that a predetermined amount of the liquid sample is transported for analysis and the rest of the sample is returned to line 1’, meaning the liquid sample segment is only a portion of the liquid sample collected by the remote sampling system).
With respect to claim 31, based on the fact that the liquid sample flows into sample preparation device 3 (see arrow in Fig. 1), it is evident that the remote sampling device 2 is functionally associated with a pump configured to load the liquid sample into the sample preparation device 3 (see also lines 11-26, col. 4 disclosing a system for sampling a specific quantity of the liquid sample).
With respect to claim 33, Mitani discloses that the analysis system 13 can perform plasma emission spectrometry (see lines 27-28, col. 7).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 23 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Mitani in view of Bowers et al. (“Bowers”) (US 7,399,447 B2).
With respect to claim 23, Mitani does not disclose details regarding the detector. That said, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used any conventional detector (e.g. conductivity sensor) capable of detecting the presence of a flowing liquid sample within a conduit, for example the sensor taught by Bowers (see lines 48-52, col. 7).
Claims 24, 25, 27, 31, 32 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Mitani.
With respect to claims 24 and 31, the claims are alternatively rejected under 35 U.S.C. 103. While Mitani does not explicitly disclose that the remote sampling device 2 comprises a pump, given that the liquid sample flows into sample preparation device 3 (see arrow in Fig. 1), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the remote sampling device 2 with a pump configured to load the liquid sample into the sample preparation device 3 (see also lines 11-26, col. 4 disclosing a system for sampling a specific quantity of the liquid sample).
With respect to claims 25 and 32, Mitani does not disclose the length of the sample transfer line 10. However, Mitani discloses that the analysis system 13 can be situated up to 500m away (see above) and that the combined lengths of the liquid sample segment, a carrier gas, a carrier liquid, and a washing liquid is 3m long (see lines 20-30, col. 8). Based on the disclosure, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the sample transfer line 10 with a length that exceeds 5m.
With respect to claims 27 and 34, Mitani does not disclose the volumetric ratio between the liquid sample and the liquid sample segment. However, Mitani discloses that a predetermined amount of the liquid sample (liquid sample segment) is transported for analysis and the rest of the collected sample (liquid sample) is returned to line 1’ (see lines 15-23, col. 4). In light of the disclosure, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have configured the system to produce a liquid sample segment having a volume that satisfies the claimed ratio.
Allowable Subject Matter
Claim 30 would be allowable if the obviousness double patenting rejection is overcome, the applicable objection set forth above is overcome, and it is further rewritten as an independent claim that includes 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:
As discussed above, Mitani discloses a system for analyzing a segmented liquid sample. The system further comprises a detector for sensing the presence of the segmented liquid sample such that the segmented liquid sample can be injected into an analyzer upon the segmented liquid sample reaching a predetermined location in the sample receiving line (see line 30, col. 8). However, Mitani does not disclose or suggest a detector comprising the features recited in claim 30, and there is no motivation to modify the disclosed detector to arrive at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL S HYUN whose telephone number is (571)272-8559. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL S HYUN/Primary Examiner, Art Unit 1796
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