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 .
Election/Restrictions
Applicant’s election without traverse of claims 11-20 in the reply filed on 1/20/26 is acknowledged.
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.
Claim 20 is 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 20: the LOD is recited as a range, which is unclear because a POSITA would consider LOD as low as possible, but the claim requires it to be within a range. Does this mean that an LOD <0.8 is excluded by the claim?
Argument is not persuasive. Claim 20 does not reflect the data on table 1. The LOD as claimed appears as a variable for each anion.
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 11-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 12085544 (application no. 17/498203). Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims anticipate instant claims – see table below:
Instant
claims
17/498203
Comments
11
11
Ref. claims anticipate instant claims
12
12
16
15
18
17
19
19
20
20
Other claims
Intended use/function/material worked upon.
Arguments traversing this rejection are not persuasive. The ions quantified are all anions, with significant overlap, and the other ions being obvious variations. Claims are directed to the same system. See claim 12.
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 11-20 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Dasgupta et al (US 2017/0199167).
Claims are directed to an apparatus. Therefore, analyte to be detected (the anions) as in clam 12, sample source (claims 13, 14, 19), eluent (claim 16, 19), organic modifier, etc., (claims 15, 19) are not patentable but related to the process or intended use or the materials worked upon. The user of the apparatus also can chose the fluids as desired for the intended process (like KOH instead of carbonate as eluent).
PNG
media_image1.png
539
1165
media_image1.png
Greyscale
Fig. 1 teaches a conventional conductometric anion exchange chromatography system with added elements. It has an eluent supply, injector, guard column, analytical column, a suppressor and a detector as claimed. Detectors D1 and D2 are conductometric. Dasgupta has extensive teaching about the suppressor, that suppressors are well-known and the use of reagents. Other parts of the apparatus are self-explanatory. The detector can detect multiple anions – see the figures and Table 2, which teach the LOD as within or less than the range claimed.
Claim 17: Sample loop volume is 10 micro liter [0091] and fig. 1. While Dasgupta is silent on the term “sample loop,” but the sampler is a capillary. See [0113] which teaches mixing coil associated with the injector, which is the sample loop. Also having capillary sample loops is very common in chromatography.
Claim 18: detector is conductometric. CO2 suppressor – [0024].
Claim(s) 11-20 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Srinivasan et al (US 2007/0065343)
PNG
media_image2.png
641
706
media_image2.png
Greyscale
Srinivasan teaches an anion chromatography system (see the figures) as claimed and intended for analyzing trace ions in environmental samples. The recited parts in the structure as labeled in the figure copied herein, including the sample loop. The suppressor can be any ion chromatography suppressor [0034]. Capability of analyzing plurality of ions – see matrix ions as well as chloride, sulfate, bromate etc. [0071].
Srinivasan is silent on sample loop volume and LOD range. However, sample loop volume can be optimized or minimized and is commonly known that volumes are in microliters – see rejection 1 for evidence. LOD limits should be similar to what applicant claims, or as in Dasgupta, rejection 1 – same conductometric detection.
Sample sources and eluent compositions are intended use or material worked upon, and are not patentable in the apparatus claims.
Claim(s) 11-20 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mohana Rangan et al (US 2022/0113287 Al, Apr. 14, 2022.)
This reference belongs to the applicant and is a 102(a1) reference with less than one year before the priority date of the instant application, and has a different inventive entity. The claims of this reference is applied in the ODP rejection above. Claim are anticipated by this reference because the disclosure and the claims are identical except for minor difference (overlapping) in the ions analyzed, but ions analyzed is an intended use, and is not a patentable difference.
Further explanation is not provided for brevity.
Claim(s) 11-20 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Mohana Rangan et al, “An Ion Chromatography Method for Simultaneous Quantification of Chromate, Arsenate, Selenate, Perchlorate, and Other Inorganic Anions in Environmental Media,” ENVIRONMENTAL ENGINEERING SCIENCE Volume 38, Number 7, 2021, Mary Ann Liebert, Inc. DOI: 10.1089/ees.2020.0347.
This reference belongs to the applicant and is a 102(a1) reference with more than one year before the priority date, and has common inventors in the inventive entity. Claims are anticipated by the reference. The reference’s teaching is similar to the instant disclosure. Since it is applicant’s own, no further explanation is provided for brevity, but will be provided if applicant would insist on it.
Response to Arguments
Applicant's arguments filed 5/20/26 have been fully considered but they are not persuasive.
The eluent, the organic modifier and the analytes are materials worked upon, or process related. Claims are directed to an apparatus. Applicant has not shown with any evidence how they become structural parts of the apparatus.
The term ‘simultaneous’ in simultaneous quantification, as applicant defines, “"Simultaneous" means that the presence or concentration of two or more analytes may be qualitatively or quantitatively determined with a single analytical method using the same column and eluent in a single run.” This is the normal operation of a chromatographic system, not a patentable element. Additional arguments over Mohana Rangan over the elution times are not commensurate in scope with the claims, but are also not otherwise patentable limitations because they are process elements. Elution times depend of many factors including composition of the analyte, column size, flow rate, etc.
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 KRISHNAN S MENON whose telephone number is (571)272-1143. The examiner can normally be reached Flexible, but generally Monday-Friday: 8:00AM-4:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem C Singh can be reached at 571-272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KRISHNAN S MENON/ Primary Examiner, Art Unit 1777
Prosecution Insights