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 Fig. 1a, 4, and 11 are blurry and difficult to read. 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.
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 9-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. Claim 9 recites “establishing one or more parameters for sample analysis”, “conducting analysis of the prepared oil sample”, “assigning molecular formulae to the raw spectrum data of an oil sample" and "identifying aromatic hydrocarbons or diamondoids in the sample based on the molecular formulae”. The courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed via a computer (MPEP 2106.04(a)(2) section Ill). The limitations stated above, as drafted, are processes that, under their broadest reasonable interpretation, cover performance of the limitations in the mind.
The limitation of establishing parameters for sample analysis is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, the context of this claim encompasses the user deciding experimental conditions under which to gather information.
Similarly, the limitation of conducting analysis of an oil sample is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, the context of this claim encompasses the user gathering information.
Similarly, the limitation of assigning molecular formulae to spectrum data of an oil sample is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, the context of this claim encompasses the user manually determining molecular formulae which corresponds to spectrum peaks from a data table.
Similarly, the limitation of identifying aromatic hydrocarbons/diamondoids in a sample based on molecular formulae is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, the context of this claim encompasses recognizing known compositions based on collected data.
Accordingly, since the steps above are evaluations and/or observations that can be done mentally, they fall within the “Mental Processes” grouping of abstract ideas. Thus, claim 9 recites an abstract idea.
Further, this judicial exception is not integrated into a practical application. The claim recites “generating spectra”, “recalibrating the spectrum data”, and “identifying” steps. The courts have indicated that gathering and analyzing information using conventional techniques and displaying the result is not sufficient to show an improvement to technology. MPEP 2106.05(a)(II) (discussing TLI Communications LLC V. AV Auto., LLC, 823 F.3d 607, 612-13 (Fed. Cir. 2016)). Hence, the claim is not patent eligible based on the above reasoning and rationale.
Claim 9 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the other elements of the claim other than the abstract idea are not beyond what is well understood, routine and conventional within the prior art, such as “preparing an oil sample”.
Claims 14-17 further define parameters of the APPI technique but without further defining claim 9 beyond that of an abstract idea. That is not considered an inventive concept because no details are provided on how molecular formulae is assigned using the element ranges. The claim is not patent eligible.
Dependent claims 10-17 are rejected as being dependent on independent claim 9.
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.
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.
Claim 16 is rejected under 35 U.S.C. 112(b) because the scope of the claim is not clear because it depends on itself. In the interest of compact prosecution, the examiner interprets Claim 16 to depend from Claim 9.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 9, 10, 11, 12, 14, 15, 16, and 17 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Koseoglu et al. (U.S. Patent No. 20170363602).
Regarding Claim 9, Koseoglu teaches a method for detecting aromatic hydrocarbons including preparing an oil sample for analysis (para 0035), establishing one or more parameters for sample analysis (paragraph 0059), conducting analysis of the prepared oil sample (para 0054), generating spectra corresponding to the oil sample (para 0030), recalibrating the spectrum data using at least one homologous series of known oil constituents (para 0077), assigning molecular formulae to the recalibrated raw spectrum data (para 0035), and identifying aromatic hydrocarbons present in the oil sample based on the assigned molecular formulae (para 0034). For examination purposes, it is interpreted by the examiner that the “spectra” and the “spectrum data” are the same because the spectrum data makes up the spectra and therefore examiner interprets these to be the same.
Regarding Claim 10, Koseoglu teaches preparing an oil sample by diluting oil in toluene and adding methanol to the oil diluted with toluene to an oil concentration of 500 mg/ml (para 0055).
Regarding Claim 11, Koseoglu teaches using Fourier transform ion cyclotronic resonance mass spectrometry coupled with an atmospheric pressure photoionization source (APPI(+)-FT-ICR MS) to analyze the prepared oil sample (para 0054).
Regarding Claim 12, Koseoglu teaches the oil sample is a crude oil sample (para 0054).
Regarding Claim 14, Koseoglu teaches establishing one or more parameters by setting the Ion source gas temperature 400 °C (para 0065).
Regarding Claim 15, Koseoglu teaches assigning molecular formulae to the recalibrated raw spectrum data by using the following parameters such as DBE range: 0.0-40.0 (Table 4).
Regarding Claim 16, Koseoglu teaches assigning molecular formulae to the recalibrated raw spectrum data is accomplished using the following elements Carbon, Hydrogen, Nitrogen, Oxygen, and Sulfur (para 0034).
Regarding Claim 17, Koseoglu teaches assigning molecular formulae to the recalibrated raw spectrum data comprises assigning molecular formulae to signals in the spectrum data that have a peak intensity that is at least 3 times higher than a spectrum noise (para 0073).
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.
Koseoglu teaches about conducting analysis of the prepared oil sample using APPI(+)-FT-ICR MS as described in the prior art above.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Koseoglu et al. (U.S. Patent No. 20170363602) in view of Mennito et al. (U.S. Patent No.20130206980).
Koseoglu does not teach about the resolving power of the APPI(+)-FT-ICR MS being about 800,000.
In the analogous art of oil and petroleum composition analysis, Mennito teaches about the resolving power of the FT-ICR MS being more than 100,000 for the benefit of resolving overlapping masses in the spectrum (para 0054). Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify Koseoglu with the resolving power of the APPI(+)-FT-ICR MS being 800,000 as taught by Mennito for the benefit of better resolution of overlapping masses in the spectrum.
Conclusion
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached at (571) 270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/H.R.B./Examiner, Art Unit 1798
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
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