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 Arguments
Applicant's arguments filed April 14th, 2026 have been fully considered but they are not persuasive.
Applicant traverses the interpretation of claim terms under 35 USC 112(f) at page 12 on the grounds that replacing the term “signal processing unit” with “processor or a computer” overcomes the issue. The term “processor” or “computer” indicates a generic computation element providing only sufficient structure for carrying out the basic functions of a computing element such as basic arithmetic operation. As has been held a “processor” or “controller” provides structure for a computer implemented function only where the claimed function is coextensive with the processor itself.1 The claims recite specific computer implemented functions and disclose only a general purpose computer (Page 15 of the instant disclosure, Lines 32-38). Therefore, in view of MPEP 2181(II)(b), the claimed “processor” or “computer” lack sufficient structure to carry out the claimed specific functions since it is not apparent that the functions claims are coextensive with the generic computation means disclosed. The interpretation of claim terms is maintained and modified by necessity of Applicant’s amendment below.
Applicant’s traverse of the rejection under 35 USC 112(b) and amendment of claims 20 and 23 with respect to the trade name Orbitrap.sup.RTM is persuasive and the rejection on these grounds withdrawn.
Applicant’s traverse of the rejection under 35 USC 112(b) and amendment of claim 19 overcomes the previously applied rejection.
Applicant’s traverse of the rejection of claims under 35 USC 101 is not persuasive. Applicant’s traverses on the grounds that the rejection fails at step 2A prong one because the recited steps are performing physical actions on a physical recording of a signal. There is no disclosure in any improvement in the underlying function of a computer nor is there any detail of the physical process to which the Applicant draws attention. Nor is there reference to any such disclosure of physical manipulation of a physical signal. The claimed process takes place in the technological environment of the generic computer disclosed and the steps are mere mathematical calculation. For example, the act of truncating a signal is merely the application of mathematical function, i.e. Fourier transform, noted at [0041]. The act of reconstruction a time domain is similarly mere mathematical calculation noted at [0053] which is the application of a Fourier transform. The evidence in the disclosure therefore shows that the claimed steps are mere mathematical calculation implemented in the technological environment of a generic computer. Applicant’s remarks that the independent claims do not recite mathematical concepts are simply confounded by the disclosure itself.
The rejection of claims under 35 USC 101 is maintained and made final.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“Processor or a computer” in claim 1-24. The term processor or a computer, coupled to functional language and described at page 15, “The signal processing unit may comprise a processor or computer programmed or programmable (e.g. comprising a computer-readable medium containing a computer program) to implement the configured to execute the computer-executable instructions.” Thus the element is interpreted as a generic computer processing element since the functions ascribed thereto are not coextensive in with the structure of the generic processor or computer contained in the disclosure.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) the judicial exception of mathematical calculation. Claims 1-18 are drawn to a process. Claims 19-23 are drawn to an apparatus. Claim 24 is drawn to a computer product on a computer readable medium for implementing the method of claim 1. In each of these groups of claimed statutory class of invention, the step or acts implemented are the application of mathematical algorithms to a signal produced from the detection of the interactions of ions within a mass analysis apparatus. Turning to claims 1 and 21, the acquisition of the image current signal in an ion analyzer is a conventional step. Note for example US Patent Application Publication 2008/0191130 which details the process, in particular at [0183-0184]. ‘130 utilizes an ion trap to generate such an image current indicated the oscillation of ions. Similarly, US Patent Application Publication 2009/0032696 discloses another arrangement for generating an image current signal based on the detection of ion oscillation including an ion cyclotron resonance trap (Fig. 1) and coupled to a convention computing means (Fig. 1, Items 40, 42, 44, 46).
The prior art therefore shows that the acts and means contained in the disclosure for producing the signal worked upon by the steps/acts claimed are not new.
The steps/acts recited as applied to the determined signal include determining a value for a period, truncating a signal, reconstructing a signal, and determining a magnitude of a signal, and calculating a value representing charge. Though noted here as reference in abbreviated form, the steps/acts recited in, for example, claims 1, 9, and 21, these steps/acts are the mere application of mathematical algorithms and calculation to a signal. As noted above, the means and methods for acquiring such an image current signal is conventional and not new. These steps therefore recite mathematical calculations2 as applied to a signal.
Since the means for generating and acquiring the signal worked upon by the claimed mathematical calculation acts are not new, and the remaining steps/acts recited are the application of mathematical operation to a signal, the broadest reasonable interpretation of the claim(s) is that they are directed to mathematical calculations, and there is nothing more recited in the claims but such mathematical calculations.
This judicial exception is not integrated into a practical application because the claims recite only the steps/acts of performing mathematical calculation. In particular, the application of combinations of basic arithmetic functions up to and including Fourier and inverse Fourier transformations. There is no evidence that the claimed invention improves the overall function of a computer, effects particular treatment, transforms an article. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claimed invention utilizes convention ion analysis technology and computing technology as a tool to generate a signal and perform mathematical calculation upon such a signal.
Claims 2-20, 22-23, and 24 recite insignificant extra-solution activity adding additional mathematical operations, the content of the signal itself, or conventional elements for carrying out the claimed steps/acts and are included in the prior art noted above and made of record with this action.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DAVID A VANORE whose telephone number is (571)272-2483. The examiner can normally be reached Monday to Friday 7AM to 6 PM.
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, Georgia EPPS can be reached at (571) 272-2328. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DAVID A. VANORE
Primary Examiner
Art Unit 2881
/DAVID A VANORE/ Primary Examiner, Art Unit 2878
1 MPEP 2181(II)(B): For a computer-implemented means-plus-function claim limitation invoking 35 U.S.C. 112(f) the Federal Circuit has stated that “a microprocessor can serve as structure for a computer-implemented function only where the claimed function is ‘coextensive’ with a microprocessor itself.” EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 622, 114 USPQ2d 1711, 1714 (Fed. Cir. 2015), citing In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316, 97 USPQ2d 1737, 1747 (Fed. Cir. 2011). “‘It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed.’” EON Corp., 785 F.3d at 621, 114 USPQ2 at 1714, quoting Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365, 102 USPQ2d 1122, 1125 (Fed. Cir. 2012). “‘[S]pecial programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer.” EON Corp., 785 F.3d at 623, 114 USPQ2d at 1715 (citations omitted). “Examples of such coextensive functions are ‘receiving’ data, ‘storing’ data, and ‘processing’ data—the only three functions on which the Katz court vacated the district court’s decision and remanded for the district court to determine whether disclosure of a microprocessor was sufficient.” 785 F.3d at 622, 114 USPQ2d at 1714. Thus, “[a] microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm.” Id., 114 USPQ2d at 1714
2 MPEP § 2106(a)(2): “A claim that recites a mathematical calculation, when the claim is given its broadest reasonable interpretation in light of the specification, will be considered as falling within the “mathematical concepts” grouping. A mathematical calculation is a mathematical operation (such as multiplication) or an act of calculating using mathematical methods to determine a variable or number, e.g., performing an arithmetic operation such as exponentiation. There is no particular word or set of words that indicates a claim recites a mathematical calculation. That is, a claim does not have to recite the word “calculating” in order to be considered a mathematical calculation. For example, a step of “determining” a variable or number using mathematical methods or “performing” a mathematical operation may also be considered mathematical calculations when the broadest reasonable interpretation of the claim in light of the specification encompasses a mathematical calculation.”
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