DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Amendment
1- The amendment filed on 03/03/2026 has been entered and fully considered. Claims 1-14 remain pending in the application, where the independent claims have been amended.
Response to Arguments
2- Examiner has considered Applicants’ proposed amendments and acknowledges they overcome the 35 USC 112 rejection of the pending claims as set forth in the non-final office action mailed on 12/15/2025. The above rejections are therefore withdrawn.
3- Applicants’ arguments with respect to the rejection(s) of pending claims under 35 USC § 102 and 103 have been fully considered but are found not persuasive. The arguments to the 35 USC § 112 claim interpretation are also not persuasive.
4- Here is a brief response to the Arguments presented by the Applicants to explain further the rationale behind the new rejections and the Examiner’s interpretations.
Applicants argue in their response (pp. 7-8) that Schachinger does not disclose “a housing configured to the filling unit, the irradiation unit and the propagation unit… the housing must be structurally distinct from the units it houses… Instead, .. expressly teaches physically separate structures.. intentionally separated…” [and that] ““wall of 103 and that of volume cell 118” … does not describe a single housing containing all of the claimed units.”
The Examiner respectfully disagrees with Applicants and insists on Schachinger housing as construed from (annotated Figs. 2) appears to read onto the claimed housing, per the definition of the term “housing” as a structure used to contain elements, and therefore being separate from the volume, area, such as the processing area, and the elements it contains, as shown in Figures 2. Moreover, and importantly so, nothing in the claim language points to the “housing” as a single, organically uninterrupted or broken structure containing all the claimed units.
Similarly, the argument about the purging gas is not persuasive. The Examiner respectfully disagrees with the argument that Schachinger fails to teach the limitation of introducing a purge gas into the propagation space. Schachinger clearly discloses, in ¶ 12-19 for ex.; that an explosion-preventing gas, inert gas 106, is introduced into 104/108. This introduced gas is considered to be initially purged into the internal space of the housing since nothing in the claim language pertains to the active introduction of the gas during a measurement or the like.
The Applicant states that the usage of the primary reference that is presented in the rejection is one of the hindsight reasoning, and not the knowledge of one of ordinary skill in the art at the time the invention was made.
It is respectfully pointed out to applicant that the construction of the concepts of housing and the use of purging gas into the housing pertains to a mere rationale of the broadest reasonable interpretation of the disclosure, given the claim language of the instant application.
Hindsight reasoning: In response to applicant's argument that the examiner's conclusion is based upon improper hindsight reasoning, it must be recognized that any judgment on a broad teaching/suggestion from a reference is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Finally, and as for the 112(f) claim interpretation of the clauses: Filling unit, irradiation unit, propagation unit, purge gas introduction unit, and Separation unit, the Examiner respectfully disagrees again with the Applicants and submits that the three prongs of a 112(f) claim interpretation have been verified for all of the cited clauses. Although the clauses do not cite the term “means”, all of those claimed elements, are cited using a generic placeholder nonce term, i.e. “unit”, associated with a corresponding function without a specific and/or known structure permitting the performance of the respective function.
“Filling”, “irradiation”, “propagation”, “purge gas introduction”, and “separation” appear as mere additional descriptive functional languages rather than structural descriptions, i.e. sufficient structure, or material, limiting the respective generic “unit”(s) for performing the claimed function.
For at least these reasons, the rejections and the claim interpretations in the previous office action are here maintained.
Claim Interpretation - 35 USC § 112
5- 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.
6- 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:
Filling unit, irradiation unit, propagation unit, purge gas introduction unit in claims 1-4, 7-8, 12, 14,
Separation unit in claims 9-11,
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.
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[AltContent: textbox (Housing)][AltContent: arrow][AltContent: arrow]Annotated Fig. 2
Annotated Fig. 2’
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 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 (MPEP 706.02(m)).
7- 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.
In addition, the functional recitation in the claims (e.g. "configured to" or "adapted to" or the like) that does not limit a claim limitation to a particular structure does not limit the scope of the claim. It has been held that the recitation that an element is "adapted to", "configured to", "designed to", or "operable to" perform a function is not a positive limitation but only requires the ability to so perform and may not constitute a limitation in a patentable sense. In re Hutchinson, 69 USPQ 139. (See MPEP 2111.04); see also In In re Giannelli, 739 F.3d 1375, 1378, 109 USPQ2d 1333, 1336 (Fed. Cir. 2014).
Also, it should be noted that it has been held that a recitation with respect to the manner in which a claimed device is intended to be employed does not differentiate the claimed device from a prior art apparatus satisfying the claimed structural limitations Ex-parte Masham 2 USPQ2d 1647 1987).
The claimed system in the instant application is capable of performing the claimed functionality, as is the prior art used in the present office action. The Examiner notes that where the patent office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinehart and sfiligoj, 169 USPQ 226 (C.C.P.A. 1971).
8- Claims 1-5, 9 and 13-14 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Schachinger (PGPUB No. 2016/0091418, cited by Applicants), hereinafter Rosemount.
As to claims 1 and 14, Rosemount teaches an analysis device, and its method of use for analyzing a gas to be measured (Abstract and Figs. 1-2), comprising: a filling unit (processing area/sample cell 118) configured to be filled with a sample gas containing the gas to be measured (¶ 11-12, 16-17); an irradiation unit (devices inside 104 in addition to light source 110/122) configured to emit measurement light to be used for analyzing the gas to be measured (¶ 11-12, 16-17); a propagation unit (108/115 and corresponding optics such as 116) disposed between the filling unit and the irradiation unit to form a propagation space that is configured to propagate the measurement light emitted from the irradiation unit to propagate to the filling unit (Fig. 2); a housing (wall of 104 and that of volume cell 118) configured to house the filling unit, the irradiation unit, and the propagation unit (Annotated Fig. 2 or Annotated Fig. 2’ added to explained further the construction of the taught housing); a purge gas introduction unit configured to introduce a purge gas into the propagation space; and an explosion-proof gas introduction unit configured to introduce an explosion-proof gas into an internal space of the housing(¶ 5, 12-19 for ex.; since the whole housing is considered to comprise the propagation space, the explosion-preventing gas, inert gas 106, introduced into 104/108 is considered to be initially purged into the internal space of the housing)
(claim 2) further comprising a partition plate configured to separate the internal space of the housing into a first internal space in which the irradiation unit and the propagation unit exist, and a second internal space in which the filling unit exists (Annotated Fig. 2; with the separation plate between 103/108 and 118).
(claim 3) wherein the housing and the propagation unit are constituted as an internal pressure explosion-proof container (¶10, 17 for ex.)
(claims 4-5) further comprising a pressure switch configured to detect whether or not a pressure in the filling unit has become equal to or higher than a predetermined pressure lower than a pressure in the internal space of the housing; (claim 5) further comprising a first differential pressure gauge configured to measure a difference between a pressure adjacent to a purge gas outlet in the propagation space and a pressure in the internal space of the housing.
(¶ 17-18; pressure sensors are used within the housing to monitor the pressure in any section of the housing and to necessarily detect pressure values for the housing to withstand explosive pressures, i.e. predetermined threshold pressure levels).
(claim 9) further comprising a separating unit configured to separate the purge gas from a gas (¶14 suggests the inert gas 106 to be isolated from the gas the be measured in 118).
(claim 13) wherein the gas to be measured is carbon dioxide, carbon monoxide, methane, sulfur dioxide, ammonia, nitrogen oxides, hydrogen chloride, water, ethane, acetylene, propane, ethylene, hexane, propylene, hydrogen sulfide, isobutene, methanol, phosgene, butane, chloroethylene, methyl nitrite, cyclohexane, butadiene, isobutane, isopentane, toluene, hydrogen, hydrogen fluoride, or trifluoropropene (the gases are considered as“material or article worked upon” which “does not limit apparatus claims”. See MPEP 2115).
Claim Rejections - 35 USC § 103
9- 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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
10- Claims 6, 8, 10-12 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Rosemount
As to claims 6, 12, Rosemount teaches the analysis device according to claim 1.
Rosemount does not teach expressly further comprising a second differential pressure gauge configured to measure a difference between a pressure adjacent to an explosion-proof gas outlet in the internal space of the housing and a pressure outside the housing; (claim 12) further comprising: a first differential pressure gauge configured to measure a difference between a pressure adjacent to a purge gas outlet in the propagation space and a pressure in the internal space of the housing (even though one can consider the rejection of claim 5); a second differential pressure gauge configured to measure a difference between a pressure adjacent to an explosion-proof gas outlet in the internal space of the housing and a pressure outside the housing; and a pressure switch configured to detect whether or not a pressure in the filling unit has become equal to or more than a predetermined pressure lower than the pressure in the internal space of the housing (even though one can consider the rejection of claim 4), wherein the first differential pressure gauge, the second differential pressure gauge, and the pressure switch measure a magnitude relationship between the pressure in the internal space of the housing and the pressure outside the housing, a magnitude relationship between the pressure in the propagation space and the pressure in the internal space of the housing, a magnitude relationship between the pressure in the propagation space and the pressure in the internal space of the filling unit, and a magnitude relationship between the pressure in the internal space of the housing and the pressure in the internal space of the filling unit.
However, Rosemount teaches using multiple pressure sensors in the different sections of the housing (¶ 18-19 for ex.) to measure different pressure values at different locations, i.e. necessarily presenting differential values, in order to prevent damaging explosive pressures. One PHOSITA would find it obvious to use the sensors, i.e. gauges, to measure differences between the pressure at a gas outlet and the atmospheric pressure, or between the different compartments of the device, to monitor pressure peaks and avoid accidental damages of the device (See MPEP § 2143 Sect. I. B-D).
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus of Rosemount in view of general art considerations so that the device further comprise a second differential pressure gauge configured to measure a difference between a pressure adjacent to an explosion-proof gas outlet in the internal space of the housing and a pressure outside the housing; further comprising: a first differential pressure gauge configured to measure a difference between a pressure adjacent to a purge gas outlet in the propagation space and a pressure in the internal space of the housing; a second differential pressure gauge configured to measure a difference between a pressure adjacent to an explosion-proof gas outlet in the internal space of the housing and a pressure outside the housing; and a pressure switch configured to detect whether or not a pressure in the filling unit has become equal to or more than a predetermined pressure lower than the pressure in the internal space of the housing, wherein the first differential pressure gauge, the second differential pressure gauge, and the pressure switch measure a magnitude relationship between the pressure in the internal space of the housing and the pressure outside the housing, a magnitude relationship between the pressure in the propagation space and the pressure in the internal space of the housing, a magnitude relationship between the pressure in the propagation space and the pressure in the internal space of the filling unit, and a magnitude relationship between the pressure in the internal space of the housing and the pressure in the internal space of the filling unit, with the advantage of effectively monitoring the pressures and avoid accidental damages.
As to claims 8, 10-11, Rosemount teaches the analysis device according to claim 1.
Rosemount does not teach expressly further comprising a fixing plate configured to fix the filling unit, the irradiation unit, and the propagation unit are fixed; (claim 10-11) wherein the separating unit is disposed outside the housing; wherein the separating unit is disposed inside the housing, and among components generated by separation of the gas using the separating unit, a remnant gas other than the purge gas is used as the explosion-proof gas.
However, Rosemount teaches, in Fig. 2, all the optical components, i.e. electronics, light source/detector, optical windows and mirrors, and additional sensor to be fixed to interior surface or plates of the housing to prevent mechanical vibrations to independently misalign the components with respect to each other and alter the quality of the optical signals (See MPEP § 2143 Sect. I. B-D). Also, one PHOSITA would find it obvious to dispose the separation unit with handles outside of the housing for control/accessibility goals, or inside the housing to separate the different gases and select inert components as explosion-proof gases (See MPEP § 2143 Sect. I. B-D).
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus of Rosemount in view of general art considerations so that the device further comprises a fixing plate configured to fix the filling unit, the irradiation unit, and the propagation unit are fixed; wherein the separating unit is disposed outside the housing; wherein the separating unit is disposed inside the housing, and among components generated by separation of the gas using the separating unit, a remnant gas other than the purge gas is used as the explosion-proof gas, with the advantage of effectively reducing optical misalignments, thusly optimizing the optical measurements, and the advantage of separating the explosion-proof gases from the sample gases, respectively.
11- Claim 7 is rejected under AIA 35 U.S.C. 103 as being unpatentable over Rosemount in view of Shinoyama (JP 2013003303, cited by Applicants and of which an English translation is here used and enclosed)
As to claim 7, Rosemount teaches the analysis device according to claim 1.
Rosemount does not teach expressly wherein the propagation unit includes a mirror disposed in the propagation space to guide the measurement light to the filling unit, and the analysis device further comprises a jig configured to allow a tool that is configured to adjust the mirror to reach a position of the mirror in the propagation space.
However, in a similar field of endeavor, Shinoyama discloses a photometer for a spectrometer (Abstract and Figs. 1-12), wherein mirrors (2 and 4 for ex.) are used to direct light within a propagation section (Figs. 1-12) and wherein a jig (34) is used for mechanical adjustment of optical components (¶ 7-8, 10, 23 for ex.)
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the apparatus of Rosemount in view of Shinoyama’s suggestions so that the propagation unit includes a mirror disposed in the propagation space to guide the measurement light to the filling unit, and the analysis device further comprises a jig configured to allow a tool that is configured to adjust the mirror to reach a position of the mirror in the propagation space, with the advantage of effectively adjusting the alignment of the optical components.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
The examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicant should consider the entire prior art as applicable as to the limitations of the claims. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire references as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED AMARA whose telephone number is (571)272-7847. The examiner can normally be reached on Monday-Friday: 9:00-17:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur Chowdhury can be reached on (571)272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Mohamed K AMARA/
Primary Examiner, Art Unit 2877
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