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 .
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). By amendment on July 28, 2026, Applicant adds the receiving, trapping, and generating steps to create the images upon which the abstract idea is implemented. The act of generating an image by sensing the motion of trapped ions is conventional and serves this invention merely as data generation. Applicant was apprised of the presence of this method for data generation in an ion trap on January 14, 2026 since such technology is old and included in, for example, US 5,625,186 as cited by the Examiner and included on the form PTO-892 in the Jan. 14, 2026 mailing. Similar capture of ion information using motion of oscillating ions in trap is noted in previously pointed out US Patent Application 200/0191130, noted above.
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 calculations1 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.
Response to Arguments
Applicant's arguments filed 7/28/26 have been fully considered but they are not persuasive.
Applicant’s remarks at page 11 drawing attention to the newly added steps of claim are addressed in the 101 rejection above. The change in the claim necessitates the modification in the rejection. As noted, the three steps are contained in the prior art of record and serve as a conventional means to generate images in the field.
Applicant traverses the rejection of claims under 35 USC 101 on the grounds that the claims are directed to the manipulation of a physical signal. Signals are not tangible physical components per se and therefore no transformation of an article occurs. Claim 1 specifically prefaces the functions applied to the signal by stating “by a processor or computer”, thus requiring that the truncation is that of a digital signal within a computer. Hence, the remarks are not persuasive.
Applicant additionally argues at page 15 that the step of reconstruction of the time domain signal comprises an improvement directed to a practical application under step 2A, Prong 2 at the remarks beginning at page 15. The Examiner respectfully disagrees. The Applicant notes “The claims are not directed to mathematical functions” at page 15. However, the specification specifically states “The step of reconstructing a time-domain signal based on a selected one or more frequency-domain harmonic components of the truncated signal, may comprise calculating a time-domain signal using an inverse transform (e.g. inverse Fourier transform) of the frequency-domain transform applied to the truncated time domain signal to generate the aforesaid frequency-domain harmonic components of the truncated signal.” The procedure for executing truncation relies on Fourier transform and subtraction of data outside desired ranges to produce the truncated signal. Therefore, contrary to the assertion of the Applicant, the invention does not improve the underlying mass spectrometer because it uses existing technology to generate the data, and manipulate the data via conventional mathematical calculation. The resultant data output of the mathematical calculation may differ since the particular calculations differ from those applied in the prior art, but the fundamental operation of the spectrometer and/or processor executing the particular mathematical procedure are unchanged.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
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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 § 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.”
Prosecution Insights