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 .
Election/Restrictions
Applicant’s election without traverse of Group III, claims 15-20, in the reply filed on 8/7/2026 is acknowledged. Claims 1-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Information Disclosure Statement
The information disclosure statements submitted on 1/8/2024, 5/29/2025 and 8/7/2026 have been considered by the examiner.
Claim Objections
Claim 19 is objected to because of the following informalities:
Claim 19 lacks a period at the end of the claim.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 15-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 15 recites “combining brain machine interface signals with the separated constituent components; and elucidating a chemical structure and a concentration of individual components based on the separated constituent components.” The specification discloses that these steps can be performed by hardware, software or a combination thereof. The specification provides no description of structure of the hardware that would allow the hardware to perform the claimed steps. The specification provides no description of the software, or any algorithms performed by the software, that would allow the software (when executed by any suitable processor or collection of processors) to perform the claimed steps. The algorithm or steps/procedure taken to perform the functions must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP 2161.01(I). The lack of disclosure leads the examiner to conclude that at the time the application was filed, Applicant was not in possession of the claimed invention.
Claims 16-20 depend on claim 15 and are rejected for inheriting the same problems.
Claim 18 recites “identifying the constituent components in the mixtures.” Like the rejection of claim 15 above, the examiner notes that the lack of disclosure as to how the identifying is performed leads the examiner to conclude that at the time the application was filed, Applicant was not in possession of the claimed invention.
Claim 19 recites “diagnosing a disease based on the constituent components in the mixtures.” Like the rejection of claim 15 above, the examiner notes that the lack of disclosure as to how the diagnosing is performed leads the examiner to conclude that at the time the application was filed, Applicant was not in possession of the claimed invention.
Claim 20 recites “identifying a signature of a health state corresponding the constituent components in the mixtures.” Like the rejection of claim 15 above, the examiner notes that the lack of disclosure as to how the identifying is performed leads the examiner to conclude that at the time the application was filed, Applicant was not in possession of the claimed invention.
Claim Rejections - 35 USC § 103
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 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.
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.
Claims 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 209/0227053 by Rinberg et al. (“Rinberg”) in view of “Cantilever based gas chromatography” by IBM Corp (“IBM”) and U.S. Patent Application Publication 2019/0284476 by Gaber et al. (“Gaber”).
As for claim 15, Rinberg discloses a method of identifying volatile compounds, comprising:
combining brain machine interface signals with constituent components (paragraphs [0032], [0038], [0045], [0052], [0053], [0063]); and
elucidating a concentration of individual components based on constituent components (paragraph [0063]).
Rinberg does not disclose separating constituent components in mixtures based on physicochemical properties.
However, IBM discloses separating constituent components in mixtures based on physicochemical properties (using gas chromatography; see the paragraph beginning “A combination of a separation system …”).
It would have been obvious for one having ordinary skill in the art before the effective filing date of the present application to modify the method of Rinberg by including the step of separating as disclosed by IBM in order to provide a more powerful instrument (IBM: see the paragraph beginning “A combination of a separation system …”).
Rinberg as modified by IBM does not disclose elucidating a chemical structure based on the separated constituent components.
However, Gaber discloses elucidating a chemical structure based on separated constituent components (i.e. based on the retention times of the separated constituent components; paragraph [0194]).
Gaber and the Rinberg-IBM combination included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference. One of ordinary skill in the art could have combined the method of the Rinberg-IBM combination with the step of elucidating a chemical structure of Gaber by determining the structure of the components by matching the retention times of the components with a computerized database as suggested by Gaber (paragraph [0194]), and that in combination, the method of the Rinberg-IBM combination and the step of Gaber merely perform the same functions as each does separately. Therefore, it would have been obvious for one having ordinary skill in the art before the effective filing date of the present application to modify the method of Rinberg and IBM to include the step of elucidating a chemical structure as disclosed by Gaber in order to achieve the predictable result of providing the chemical structure of the components of the volatile compounds.
As for claim 16, Rinberg as modified by IBM and Gaber discloses that the brain machine interface signals are generated from a brain machine interface (Rinberg: paragraphs [0029]-[0032]).
As for claim 17, Rinberg as modified by IBM and Gaber discloses that the brain machine interface signals are generated from a brain machine interface comprising:
an electrode assembly (Rinberg: paragraph [0030]); and
a chemical detector comprising an olfactory system in communication with the electrode assembly (Rinberg: paragraph [0030]).
As for claim 18, Rinberg as modified by IBM and Gaber discloses identifying the constituent components in the mixtures (Rinberg: paragraphs [0032], [0038], [0063]).
As for claim 19, Rinberg as modified by IBM and Gaber discloses diagnosing a disease based on the constituent components in the mixtures (Rinberg: paragraph [0050]).
As for claim 20, Rinberg as modified by IBM and Gaber discloses identifying a signature of a health state corresponding the constituent components in the mixtures (Rinberg: paragraph [0050]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent 11,243,195 issued to White et al. (“White”) is cited for all that it discloses including a gas chromatography system combined with a biological or electronic nose.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN N OLAMIT whose telephone number is (571)270-1969. The examiner can normally be reached M-F, 8 am - 5 pm (Pacific).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephen Meier can be reached at (571) 272-2149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUSTIN N OLAMIT/Primary Examiner, Art Unit 2853
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