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 .
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 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.
Priority
Acknowledgment is made that this application is a continuation of parent application 17/126,236 (USPN 11835496).
Information Disclosure Statement
While it is not necessary for the Applicant to submit an information disclosure statement that lists the prior art reference(s) previously cited by the Examiner in the parent application for the latter filed continuing application claiming the benefit under 35 U.S.C. 120 to said parent application (other than an international application that designated the U.S.), the information will not be printed on any patent issuing from the continuing application unless cited by the Applicant on an IDS or by the Examiner on a PTO-892 for the present application. See MPEP § 609.02. While the Examiner has reviewed the reference(s) of the parent application(s), the Examiner has not verified that all of the reference(s) listed in the parent application(s) appear on the present IDS and/or PTO-892.
The information disclosure statement(s) (IDS) submitted on 10/30/2023, 03/27/2024, & 08/19/2025 is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the Examiner.
Election/Restrictions
Applicant’s election with traverse of Species 2 (alledged claims 1-20; figure 4) in the reply filed on 12/17/2025 is acknowledged.
The traversal is on the ground(s) that independent claim 1 is a generic claim and therefore all Species are required to be considered. This is not found persuasive because analysis of a single independent claim does not negate the Examiner’s previous thorough analysis. MPEP § 808.01(a) states in part that “Election of species may be required prior to a search on the merits (A) in applications containing claims to a plurality of species with no generic claims, and (B) in applications containing both species claims and generic or Markush claims”. In the present case, at least claim(s) 6-8 and 14-15 are clearly directed to a non-elected Species, the Examiner exemplary noting that each of claim 6 and claim 14 require a sample valve and accompanying configuration containing said valve (e.g., see non-elected Species shown in fig. 7) which differs from the elected invention (see fig. 4).
Claim(s) 6-8 is/are (at least temporarily) withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore (technically) made FINAL. However, the Examiner considers the necessity of withdrawing Claim(s) 14-15 as moot in view of independent claim 9 being indicated as allowed. It is the Examiner’s present intention that upon Allowance the restriction will be withdrawn in its entirety and the aforementioned claims 6-8 will be rejoined. Suggestions for overcoming the present rejections are put forth in the section on Allowable Subject matter.
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.
Instant claim(s) 1 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over reference patented claim(s) 6 of U.S. Patent No. 11,835,496.
Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons put forth in the table below:
One-Way Double Patenting Analysis Table
18/497,302
(instant)
USPN 11,835,496
(reference)
Obviousness Analysis of instant claim over reference claim
1
6
A fluidic network for acquiring and injecting a chromatographic sample comprising (A fluidic network for acquiring and injecting a chromatographic sample comprising):
a metering pump module comprising a metering pump and a pressure transducer in serial fluidic communication with each other, the metering pump module having a first pump port and a second pump port (a metering pump module comprising a metering pump and a pressure transducer in serial fluidic communication with each other, the metering pump module having a first pump port and a second pump port);
a sample needle having a needle tip (a sample needle having a needle tip);
a needle seal configured to receive the needle tip of the sample needle (a needle seal configured to receive the needle tip of the sample needle); and
a valve operable in at least a first valve state and a second valve state, and being in fluidic communication with the metering pump module and the needle seal (a merge valve operable in at least a first valve state and a second valve state, and being in fluidic communication with the sample valve and the needle seal),
wherein, when the valve is in the first valve state, the metering pump is operable to acquire a sample through the sample needle (wherein, when the sample valve is in the second valve state and the merge valve is in the first valve state, the metering pump is operable to acquire a sample through the sample needle),
wherein, when the valve is in the first valve state and the needle tip is in the needle seal, the metering pump is operable to pressurize the fluidic network to a system pressure (wherein, when the sample valve is in the second valve state, the merge valve is in the first valve state and the needle tip is in the needle seal, the metering pump is operable to pressurize the fluidic network to a system pressure),
wherein, when the valve is in the second valve state and the needle tip is in the needle seal, a system flow passes through the fluidic network such that the sample acquired through the sample needle is merged into the system flow (wherein, when the sample valve is in the second valve state, the merge valve is in the second valve state and the needle tip is in the needle seal, a system flow passes through the fluidic network such that the sample acquired through the sample needle is merged into the system flow), and
wherein, in each of the first valve state and the second valve state, the valve includes a plurality of coupling paths between a plurality of valve ports that are of an equal length (wherein, in each of the first valve state and the second valve state, the merge valve includes a plurality of coupling paths between a plurality of valve ports that are of an equal length).
The Examiner notes that the patented claim is narrower in scope than the instant application claim in that the patented claim effectively recites all of the recitations of said instant application claim and some additional recitations, with any other differences being merely nominal nomenclatural differences or grammatical variations not amounting to patentable distinction.
The Double Patenting Rejections will not be held in abeyance. See MPEP § 804 & 714.02.
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.
(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.
Claim(s) 16-20 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Applicant cited Burnett et al (US 20180364203 A1; hereafter “Burnett”).
Regarding independent claim 16,
Burnett discloses a fluidic network (fluid network of liquid chromatography system) for acquiring and injecting a chromatographic sample (sample in a liquid chromatography system) (Title “ONLINE DILUTION FOR A LIQUID CHROMATOGRAPHY SYSTEM USING A SAMPLE METERING PUMP”; [0018]-[0022] descriptions of figs. 2-7 and relationship thereamong) comprising:
a metering pump module (figs. 2-7, metering pump 32 with pressure transducer 34) ([0034]) comprising a metering pump (figs. 2-7, metering pump 32) and a pressure transducer (figs. 2-7, pressure transducer 34) in serial fluidic communication with each other ([0037]), the metering pump module (figs. 2-7, metering pump 32 with pressure transducer 34) having a first pump port (first pump port of metering pump 32) and a second pump port (second pump port of metering pump 32) ([0013] “The metering pump has a first pump port and a second pump port. The pressure transducer is in fluid communication with the second pump port of the metering pump”);
a sample needle (figs. 2-7, sample needle 42) having a needle tip (tip of sample needle 42);
a needle seal (figs. 2-7, needle seal of the needle and wash port module 44) configured to receive the needle tip (tip of sample needle 42) of the sample needle (figs. 2-7, sample needle 42); and
an injection valve (figs. 2-7, injection and dilution “merge” valve 40) having a plurality of valve ports,
a first one (40-5) of the valve ports being in fluidic communication with the first pump port (first pump port of metering pump 32) and a second one (40-1) of the valve ports being in fluidic communication with the needle seal (figs. 2-7, needle seal of the needle and wash port module 44),
the injection valve (figs. 2-7, injection and dilution “merge” valve 40) being operable in at least two valve states ([0039] “Both the sample valve 36 and the merge valve 40 are in communication with one or more valve control modules (not shown) and can be configured in their various valve states”; Abstract “merge valve configurable in different states”; [0006] “The sample valve is operable in one of a first state and a second state”; [0036] “fluid circuitry may be utilized to define fluid paths” and “fluid paths are determined by the particular configuration of each valve”; [0037] “operable in at least two states such that a change between states can be used to reconfigure fluid paths within the liquid chromatography system”),
wherein,
when the injection valve (figs. 2-7, injection and dilution “merge” valve 40) is in the first valve state (see fig. 5) ([0042]), the injection valve (figs. 2-7, injection and dilution “merge” valve 40) is configured to fluidically terminate (via 40-1 and 40-5) the first and second pump ports (first and second pump ports of metering pump 32) ([0042]) and,
when the injection valve (figs. 2-7, injection and dilution “merge” valve 40) is in the second valve state (see fig. 7) ([0045]), the injection valve (figs. 2-7, injection and dilution “merge” valve 40) is configured to fluidically couple a third valve port (40-3) to the first valve port (40-5) and to fluidically couple a fourth valve port (40-2) to the second valve port (40-1).
Regarding claim 17, which depends on claim 16,
Burnett discloses wherein the third valve port (40-3) is fluidically coupled to a source of a solvent flow (see FROM SOLVENT MANAGER) and the fourth valve port (40-2) is fluidically coupled to a chromatographic column (see TO COLUMN) ([0038] “port 40-2 is coupled to the chromatographic column, ports 40-3 is coupled to a source of mobile phase (e.g., solvent manager 16 in FIG. 1)”).
Regarding claim 18, which depends on claim 16,
Burnett discloses wherein, when the needle tip (tip of sample needle 42) of the sample needle (figs. 2-7, sample needle 42) is received in the needle seal (figs. 2-7, needle seal of the needle and wash port module 44), a continuous fluidic path is defined from the first valve port (40-5) through the metering pump module (figs. 2-7, metering pump 32 with pressure transducer 34), sample needle (figs. 2-7, sample needle 42) and needle seal (figs. 2-7, needle seal of the needle and wash port module 44) to the second valve port (40-1) (see fig. 6).
Regarding claim 19, which depends on claim 18,
Burnett discloses wherein, when the needle tip (tip of sample needle 42) of the sample needle (figs. 2-7, sample needle 42) is received in the needle seal (figs. 2-7, needle seal of the needle and wash port module 44) and the injection valve (figs. 2-7, injection and dilution “merge” valve 40) is in the first valve state (see fig. 5), the metering pump (figs. 2-7, metering pump 32) is operable to generate a pressure in the continuous fluidic path that exceeds 1,000 psi ([0030] “pressure, for example, greater than 18,000 psi (125 MPa)”; [0037] “high system pressure (e.g., 18,000 psi (125 MPa))”).
Regarding claim 20, which depends on claim 18,
Burnett discloses wherein, when the needle tip (tip of sample needle 42) of the sample needle (figs. 2-7, sample needle 42) is received in the needle seal (figs. 2-7, needle seal of the needle and wash port module 44) and the injection valve (figs. 2-7, injection and dilution “merge” valve 40) is in the first valve state (see fig. 5), the metering pump (figs. 2-7, metering pump 32) is operable to generate a pressure in the continuous fluidic path that exceeds 10,000 psi ([0030] “pressure, for example, greater than 18,000 psi (125 MPa)”; [0037] “high system pressure (e.g., 18,000 psi (125 MPa))”).
Allowable Subject Matter
Claim(s) 9-15 is/are allowed.
Claim(s) 2-5 is/are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
When this application is finally acted upon and allowed (i.e., the Notice of Allowance), the Examiner will determine, at the same time, whether the reasons why the application is being allowed are sufficiently evident from the record; see MPEP § 1302.14(I).
The Examiner notes with respect to independent claim 1 that a proper Terminal Disclaimer would overcome the rejection thereof, and claim(s) 6-8 would be rejoinable and allowable therewith and the restriction withdrawable. The Examiner notes with respect to independent claim 16 that the inclusion of the limitation “in each of the first valve state and the second valve state, the injection valve includes a plurality of coupling paths between a plurality of valve ports that are of an equal length” (substantially similar to a subject matter limitation of claims 1 and 9) would overcome the rejection thereof.
When this application is finally acted upon and allowed (i.e., the Notice of Allowance), the Examiner will determine, at the same time, whether the reasons why the application is being allowed are sufficiently evident from the record; see MPEP § 1302.14(I). Any comments considered necessary by Applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. Applicant is invited to review the PTO- 892 listing Prior Art relevant to the instant invention.
Examiner interviews are available via telephone 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.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to DAVID L SINGER whose telephone number is 303-297-4317. The Examiner can normally be reached Monday - Friday 8:00 am - 6:00pm CT, EXCEPT alternating Friday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, John Breene can be reached on 571-272-4107. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID L SINGER/Primary Examiner, Art Unit 2855 06FEB2026