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 26 January 2026, with respect to the specification and the claims have been entered. Therefore, the objection to paragraph 0040 of the specification, the objection to the drawings under 37 CFR 1.84(p)(5), and the rejection of claim 6 under 35 U.S.C. 112(b) have been withdrawn. However, the objection to FIG. 6 for having a mis-labeled element (see Drawings below) and the objection to the listing of references in the specification (see Information Disclosure Statement below) have not been addressed by the applicant and are maintained.
Information Disclosure Statement
The listing of references in the specification (e.g., paragraph 0006, US 9,706,635 B2) is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
The drawings are objected to because of the following:
FIG. 6: element 6 is mis-labeled as element 3 (see, e.g., the discussion of FIG. 1 at paragraph 0040: “The system 1 comprises a sample preparation unit 3…”, compared to the discussion of FIG. 6 at paragraph 0047: “After the plasma 6 a skimmer cone 33 is arranged…”).
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.
Response to Arguments
Applicant’s arguments with respect to claims 1-17 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
Claims 1-3, 9-15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Ahern et al. (WO Patent No. 2007/008191 A1), hereinafter Ahern, in view of Koga et al. (U.S. Patent No. 5,252,827 A), hereinafter Koga.
Regarding claim 1, Ahern discloses a system for analyzing a sample, wherein the sample is an air composition or an aerosol (paragraph spanning the end of page 9 to the beginning of page 10), the system comprising:
a sample preparation unit (FIG. 1), including a sample inlet (FIG. 1, inlet of tube 106 inside spray chamber 104) and a plasma source (FIG. 1, element 118), configured such that the sample enters the system via the sample inlet (page 11, paragraph 3), wherein the plasma source is configured to produce a plasma that ionizes the sample such that ions and/or photons are generated (page 13, last paragraph);
a detector configured to detect the generated ions and/or photons (page 14, paragraph 2);
an interface configured to guide the generated ions and/or photons from the sample preparation unit towards the detector (page 14, paragraph 2); and
an evaluation unit configured to analyze the sample using the detected ions and/or photons (page 14, paragraphs 2-3).
Features of an apparatus may be recited either structurally or functionally (In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997)), but “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)(emphasis in original)). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim (Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)), i.e., a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the case at hand, the functional limitation “the plasma is adapted to aspirate the sample through the sample inlet” is understood to be met by the structure of a zone adjacent the plasma and opposite the interface having a negative pressure relative to a pressure of the sample inlet, as is disclosed in the instant specification at paragraph 0041 (“The plasma 6 comprises on one side of the plasma 6 a zone 23 with a negative pressure relative to the sample inlet 4. The zone 23 therefore allows for aspirating or sucking in the sample 2 through the sample inlet 4.”). Ahern teaches the structural limitations of the negative pressure zone, i.e., adjacent the plasma (FIG. 1, element 114) and opposite the interface (the interface is to the right of plasma 114 in FIG. 1; i.e., ‘opposite the interface’ is to the left of the plasma 114, e.g., at element 108), a zone of negative pressure is formed relative to a pressure of the sample inlet (page 11, paragraph 3, lines 18-19). Therefore, the limitation “the plasma is adapted to aspirate the sample through the sample inlet” is met.
Ahern fails to disclose that the plasma source is a plasma torch.
However, Koga discloses that the plasma source is a plasma torch (column 5, lines 34-41).
The disclosure of Koga demonstrates that the function of a plasma torch is known in the art of mass spectrometry. Koga also shows that substituting a plasma torch for another plasma source in a mass spectrometer yields the predictable result of ionizing a sample to be analyzed (column 5, lines 34-41). “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” United States v. Adams, 383 U.S. 39 (1966). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ahern to include that the plasma source is a plasma torch because it is not inventive to substitute one known element for another which yields predictable results to one of ordinary skill in the art. See MPEP 2143 I (B).
Regarding claim 2, Ahern in view of Koga as applied to claim 1 discloses the system according to claim 1.
In addition, Ahern discloses a sample introduction unit (FIG. 1, elements 102, 104) configured to introduce the sample into the sample inlet (FIG. 1, inlet of tube 106 inside spray chamber 104).
Regarding claim 3, Ahern in view of Koga as applied to claim 2 discloses the system according to claim 2.
In addition, Ahern discloses that the sample introduction unit comprises a transport apparatus (FIG. 1, element 102), which is configured to transport the sample towards the sample inlet (paragraph spanning the end of page 9 to the beginning of page 10), and a connecting unit (FIG. 1, element 104), which is connectable to the sample inlet (FIG. 1, inlet of tube 106 inside spray chamber 104).
Regarding claim 9, Ahern in view of Koga as applied to claim 1 discloses the system according to claim 1.
In addition, Koga discloses that the plasma torch is configured to sustain (column 2, lines 21-22) the plasma with air (column 7, lines 64-65), wherein the air enters the plasma torch through the sample inlet (FIG. 2, element 32).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ahern in view of Koga to include that the plasma torch is configured to sustain the plasma with air, wherein the air enters the plasma torch through the sample inlet, based on the additional teachings of Koga that this avoids the use of argon as the plasma sustaining gas, which is useful for specimen analysis applications (Koga, column 2, lines 21-26).
Regarding claim 10, Ahern in view of Koga as applied to claim 1 discloses the system according to claim 1.
In addition, Ahern discloses that the sample comprises particles, and wherein the evaluation unit is configured to analyze the particles in the sample with regard to their isotopic composition, size, concentration and/or number (paragraph spanning the end of page 14 to the beginning of page 15).
Regarding claim 11, Ahern in view of Koga as applied to claim 1 discloses the system according to claim 1.
In addition, Ahern discloses that the sample inlet (FIG. 1, inlet of tube 106 inside spray chamber 104) is arranged upstream of the plasma torch (FIG. 1, plasma 114) relative to a direction of a flow of the sample and of the generated ions and/or photons through the system (page 11, paragraph 3 discloses that the sample and the generated ions move from the left to the right through the elements of FIG. 1).
Regarding claim 12, Ahern in view of Koga as applied to claim 1 discloses the system according to claim 1.
In addition, Ahern discloses that the interface comprises a mass-analyzer and/or a wavelength selector (page 14, second paragraph).
Regarding claim 13, Ahern in view of Koga as applied to claim 1 discloses the system according to claim 1.
In addition, Ahern discloses that the system is embodied as a microwave inductively coupled atmospheric plasma mass spectrometer, a microwave inductively coupled atmospheric plasma optical emission spectrometer, a radio-frequency inductively coupled mass spectrometer, radio-frequency inductively coupled optical spectrometer, a glow discharge mass spectrometer, or a glow discharge optical spectrometer (page 6, third paragraph from last).
Regarding claim 14, Ahern in view of Koga as applied to claim 1 discloses the system according to claim 1.
In addition, Ahern discloses that the sample is produced by removal of material from a surface or object (page 10, first paragraph, lines 7-8; Merriam-Webster.com defines ‘object’ as “something material that may be perceived by the senses”; therefore, liquid drawn from a solution meets the claimed limitation of material removed from an object).
Regarding claim 15, Ahern in view of Koga as applied to claim 1 discloses the system according to claim 1.
In addition, Koga discloses that the sample is ambient air (column 2, lines 6-11).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ahern in view of Koga to include that the sample is ambient air, based on the additional teachings of Koga that analyzing ambient air for contaminants is important for applications requiring a high degree of purity in the ambient air (Koga, column 2, lines 6-11).
Regarding claim 17, Ahern in view of Koga as applied to claim 1 discloses the system according to claim 1.
In addition, Ahern discloses that the plasma source is configured such that, adjacent the plasma (FIG. 1, element 114) and opposite the interface (the interface is to the right of plasma 114 in FIG. 1; i.e., ‘opposite the interface’ is to the left of the plasma 114, e.g., at element 108), a zone of negative pressure is formed relative to a pressure of the sample inlet (page 11, paragraph 3, lines 18-19), whereby the sample is aspirated through the sample inlet.
Features of an apparatus may be recited either structurally or functionally (In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997)), but “apparatus claims cover what a device is, not what a device does” (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)(emphasis in original)). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim (Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)), i.e., a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the case at hand, the functional limitation “whereby the sample is aspirated through the sample inlet” is understood to be met by the structure of a zone adjacent the plasma and opposite the interface having a negative pressure relative to a pressure of the sample inlet, as is disclosed in the instant specification at paragraph 0041 (“The plasma 6 comprises on one side of the plasma 6 a zone 23 with a negative pressure relative to the sample inlet 4. The zone 23 therefore allows for aspirating or sucking in the sample 2 through the sample inlet 4.”). Ahern teaches the structural limitations of the claim as discussed supra. Therefore, the limitations of the claim are met.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Ahern in view of Koga as applied to claim 2 above, and further in view of Chen et al. (U.S. Patent Application Publication No. 2021/0268495 A1), hereinafter Chen, and Stephan et al. (U.S. Patent Application Publication No. 2020/0035475 A1), hereinafter Stephan.
Regarding claim 4, Ahern in view of Koga as applied to claim 2 discloses the system according to claim 2.
In addition, Ahern discloses that the sample comprises particles (paragraph spanning the end of page 14 to the beginning of page 15).
Ahern in view of Koga fails to disclose that the sample introduction unit comprises a belt conveyor, a dosage controller and a connecting unit, wherein the belt conveyor is configured to be loaded with the particles and to move the particles towards the sample inlet, wherein the dosage controller is configured to control the amount of the sample entering the sample inlet through the connecting unit.
However, Stephan discloses that the sample introduction unit comprises a dosage controller (FIG. 2, element 116) and a connecting unit (FIG. 2, element 114), wherein the dosage controller is configured to control the amount of the sample (paragraph 0048) entering the sample inlet (FIG. 5A, element 504) through the connecting unit (FIG. 2, element 114).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ahern in view of Koga to include that the sample introduction unit comprises a dosage controller and a connecting unit, wherein the dosage controller is configured to control the amount of the sample entering the sample inlet through the connecting unit, based on the teachings of Stephan that this ensures desired conditions for maximum gas exchange are achieved (Stephan, paragraph 0067).
Ahern in view of Koga and Stephan fails to disclose that the sample introduction unit comprises a belt conveyor, wherein the belt conveyor is configured to be loaded with the particles and to move the particles towards the sample inlet.
However, Chen discloses that the sample introduction unit comprises a belt conveyor (FIG. 1, element 33), wherein the belt conveyor is configured to be loaded with the particles (paragraph 0054, lines 24-29; Merriam-Webster.com defines ‘particle’ as ‘a relatively small or the smallest discrete portion or amount of something’; the sampling syringe 29 deposits a small portion of the sample solution into each cuvette 32 on the conveyor 33) and to move the particles towards the sample inlet (FIG. 1, element 31).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ahern in view of Koga and Stephan to include that the sample introduction unit comprises a belt conveyor, wherein the belt conveyor is configured to be loaded with the particles and to move the particles towards the sample inlet, based on the teachings of Chen that the conveyor assists in simplifying the operation of the device for faster analysis (Chen, paragraph 0046).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Ahern in view of Koga as applied to claim 1 above, and further in view of Mitrano et al. (“An Introduction to Flow Field Flow Fractionation and Coupling to ICP-MS”, 2011), hereinafter Mitrano.
Regarding claim 5, Ahern in view of Koga as applied to claim 1 discloses the system according to claim 1.
In addition, Ahern discloses that the sample comprises particles (paragraph spanning the end of page 14 to the beginning of page 15).
Ahern in view of Koga fails to disclose a classifier, and wherein the classifier is configured to separate smaller particles from larger particles within the sample and to guide the particles having a mass below a predefined upper mass limit to the sample inlet.
However, Mitrano discloses a classifier (FIG. 1), and wherein the classifier is configured to separate smaller particles from larger particles within the sample (FIG. 2) and to guide the particles having a mass below a predefined upper mass limit to the sample inlet (FIG. 2: smaller particles flow towards the sample inlet while larger particles remain in the container).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ahern in view of Koga to include a classifier, wherein the sample comprises particles, and wherein the classifier is configured to separate smaller particles from larger particles within the sample and to guide the particles having a mass below a predefined upper mass limit to the sample inlet, based on the teachings of Mitrano that this provides analysis at extremely small sizes, which is beneficial for environmental and toxicological analysis applications (Mitrano, page 2, column 1, paragraph 1).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ahern in view of Koga and Mitrano as applied to claim 5 above, and further in view of Snowsill (“Particle Sizing”, 2010), hereinafter Snowsill.
Regarding claim 6, Ahern in view of Koga and Mitrano as applied to claim 5 discloses the system according to claim 5.
In addition, Mitrano discloses that the classifier comprises a container (FIG. 1), including an inlet (FIG. 1, Focus Flow In) and an outlet (FIG. 1, Channel Flow Out), and a tube partially inserted into the container (FIG. 1, Tip Flow In), wherein the outlet is configured to be connectable to the sample inlet (FIG. 2D), wherein the tube is arranged and configured to flow the sample into the container such that the particles with a mass below a predefined upper mass limit flow towards the outlet (FIG. 2: smaller particles flow towards the sample inlet while larger particles remain in the container).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ahern in view of Koga and Mitrano to include that the classifier comprises a container, including an inlet and an outlet, and a tube partially inserted into the container, wherein the outlet is configured to be connectable to the sample inlet, wherein the tube is arranged and configured to flow the sample into the container such that the flow of the sample is opposed to the flow of the particles with a mass below a predefined upper mass limit towards the outlet, based on the additional teachings of Mitrano that this provides analysis at extremely small sizes, which is beneficial for environmental and toxicological analysis applications (Mitrano, page 2, column 1, paragraph 1).
Ahern in view of Koga and Mitrano fails to disclose that the inlet is connected to an air or gas source, wherein the flow of the sample into the container is opposed to the flow of the particles towards the outlet.
However, Snowsill discloses that the inlet is connected to an air or gas source (page 181, column 2, paragraph 2), wherein the flow of the sample into the container is opposed to the flow of the particles towards the outlet (page 185, column 2, last paragraph and FIG. 16.10: the sample is flowed in through Tap A using a rising current, then sediments and is washed back out through Tap A).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ahern in view of Koga and Mitrano to include that the inlet is connected to an air or gas source, based on the teachings of Snowsill that this prevents blinding and assists the motion of particles (Snowsill, page 181, column 2, paragraph 2).
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Ahern in view of Koga and Mitrano as applied to claim 5 above, and further in view of Wiederin et al. (U.S. Patent Application Publication No. 2019/0072464 A1), hereinafter Wiederin.
Regarding claim 7, Ahern in view of Koga and Mitrano as applied to claim 5 discloses the system according to claim 5.
Ahern in view of Koga and Mitrano fails to disclose that the classifier comprises a waste collector, which is arranged such that particles with a mass above the predefined upper mass limit are collected in the waste collector.
However, Wiederin discloses that the classifier comprises a waste collector, which is arranged such that particles with a mass above the predefined upper mass limit are collected in the waste collector (paragraph 0004, lines 12-14).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ahern in view of Koga and Mitrano to include that the classifier comprises a waste collector, which is arranged such that particles with a mass above the predefined upper mass limit are collected in the waste collector, based on the teachings of Wiederin that removing the larger particles is beneficial because the smaller particles are more suitable for plasma ionization (Wiederin, paragraph 0004).
Regarding claim 8, Ahern in view of Koga and Mitrano as applied to claim 5 discloses the system according to claim 5.
Ahern in view of Koga and Mitrano fails to disclose that the classifier is arranged between the sample introduction unit and the sample inlet.
However, Wiederin discloses that the classifier is arranged between the sample introduction unit and the sample inlet (paragraph 0004, lines 7-16).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ahern in view of Koga and Mitrano to include that the classifier is arranged between the sample introduction unit and the sample inlet, based on the teachings of Wiederin that this placement allows larger particles to be filtered out before reaching the analysis system, which streamlines the analysis process because the smaller particles are more suitable for plasma ionization (Wiederin, paragraph 0004).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Ahern in view of Koga as applied to claim 1 above, and further in view of Schlüter et al. (U.S. Patent Application Publication No. 2010/0271631 A1), hereinafter Schlüter.
Regarding claim 16, Ahern in view of Koga as applied to claim 1 discloses the system according to claim 1.
Ahern in view of Koga fails to disclose that the plasma torch is configured such that a flow rate of the sample through the sample inlet is adjustable via a change of parameters of the plasma.
However, Schlüter discloses that the plasma torch is configured such that a flow rate of the sample through the sample inlet is adjustable via a change of parameters of the plasma (paragraph 0066).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Ahern in view of Koga to include that the plasma torch is configured such that a flow rate of the sample through the sample inlet is adjustable via a change of parameters of the plasma, based on the teachings of Schlüter that adjusting the flow rate enhances the adaptability of the system to different requirements (Schlüter, paragraphs 0035-0036).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hoyes et al. (U.S. Patent Application Publication No. 2011/0266435 A1), hereinafter Hoyes, teaches a system for analyzing a sample, wherein the sample is an air composition or an aerosol, and the system is embodied as a glow discharge mass spectrometer.
Morrisroe (U.S. Patent No. 10,327,319 B1), hereinafter Morrisroe, teaches a system for analyzing a sample, wherein the sample is an air composition or an aerosol, the system comprising: a sample preparation unit, including a sample inlet and a plasma torch, configured such that the sample enters the system via the sample inlet, wherein the plasma torch is configured to produce a plasma that ionizes the sample such that ions and/or photons are generated.
Rempt et al. (U.S. Patent Application Publication No. 2024/0145227 A1), hereinafter Rempt, teaches a system for analyzing a sample, wherein the sample comprises particles, and wherein a sample introduction unit comprises a belt conveyor, wherein the belt conveyor is configured to be loaded with the particles and to move the particles towards a sample inlet.
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
/ROBERT H KIM/Supervisory Patent Examiner, Art Unit 2881