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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the control circuitry must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
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: control circuitry in claim 1-17. The term control circuitry is used as a generic placeholder and is coupled to functional language via a transitional phrase in claims 1, 4, 5, 6, 7, 8, 9, 10, 16, and 17. The disclosure does not describe any structure of the control circuitry and describes the control circuitry in purely functional terms.
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 § 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 1-17 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claims 1-17 recite “control circuitry” configured to :
control the ion accelerator to perform a first pulse sequence that pulses a first plurality of packets of ions into the ion mirrors
control the reflectors such that ions in said plurality of packets are reflected back and forth in the second dimension by the reflectors at the same time
control the range of mass to charge ratios that is able to be transmitted by the mass filter or mass separator to the ion accelerator, and the timings at which the first reflector is activated and deactivated, such that substantially all of the ions from said plurality of packets of ions undergo the same number of reflections in the second dimension before being received at the detector.
After review of the application as a whole, the content of the application raises a question as to whether the claimed control circuity has corresponding sufficient disclosure so as to enable one of ordinary skill to make and use such claimed “control circuity”.
Regarding the In re Wands factors, the factors are addressed below:
(A) The breadth of the claims: The claims are directed to a mass spectrometer whose operation is governed by control circuitry. The general format of the claimed control circuity employs a phrase, “control circuitry” coupled to functional language via a transitional phrase. Taking the term “control circuitry” on its face and using its BRI, the term may encompass any and all “circuits”, the implicit meaning being an electronic circuit. This would range from a microprocessor to an electrical circuit composed of conventional elements such as resistors, capacitors, etc. Since there is no teaching in the disclosure towards the control circuitry structure, it is impossible to say what the term includes or excludes.
(B) The nature of the invention: The nature of the invention is the particular control and operation of what appears to be a conventional TOF using ion mirrors for mulit dimensional ion reflection. As noted below, the particular components, save the claimed control circuit, are contemplated in the prior art.
(C) The state of the prior art. The general arrangement of a mass spectrometer comprising ion mirrors, accelerators, separators and the like to provide for reflecting ions in multiple dimensions is known in the art. Note for example, US Patent Application Publication 2020/0083034. The component lacking is the specific control circuitry in the prior art. However, since the instant application does not describe the claimed control circuitry, it is not possible to determine both what the control circuitry in the instant claim actually constitutes or how to make or use it.
(D) The level of one of ordinary skill. One of ordinary skill would have adequate skill to construct an electronic circuit or program a computer to enable general control of a mass spectrometer apparatus. The missing information regarding the control circuity claimed in the instant application however would require undue experimentation to produce a control circuitry accomplishing the claimed functions.
(E) The level of predictability in the art. While the field of mass spectrometry in general has a high level of predictability, the particulars of the claimed control circuitry are not contained in the application, described in general and in functional terms. Since the claims specifically require a “control circuity” implying an electronic circuit, at least the components and their arrangement for carrying out the claimed function would be required to make or use the same. Since there is no depicted circuit, or description of the circuit in the written description, though circuits in general are predictable in their operation, the disclosure does not enable one skilled in the art to make and use the same control circuitry claimed.
(F) The amount of direction provided by the inventor: The inventor has provided no direction regarding the construction, components, arrangement, or description of the structure of the claimed control circuitry.
(G) The existence of working examples: The application contains no working examples of the claimed control circuitry.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: The disclosure of the instant application is missing information about the claimed “control circuitry” which one skilled in the art could not develop without undue experimentation. After review of MPEP 2164, attention is drawn to MPEP 2164.06(a). The instant application recites in claims 1-17 control circuitry coupled to functional language. There is no discussion of the structure of the control circuity. There is no listing of components. There is no depiction or illustration of the control circuitry in the drawings. Therefore, given the examples merely contained in the MPEP at § 2164.06(a) 1, the lack of even greater degrees of information regarding the claimed control circuitry in the instant application exceeds the missing information threshold for lack of enablement and requiring undue experimentation.
For the reasons above, the control circuitry of claims 1-17 fails the enablement test and the written description lacks sufficient written description for one having ordinary skill in the art to make and use the same control circuitry claimed.
Claims 1-17 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. Claims 1-17 recite the claimed structure of the control circuitry of at least claim 1 and recite additional function ascribed to the control circuitry. Since there is no corresponding description of the control circuitry and the term interpreted in view of 35 USC § 112 (f) necessitates rejection under 35 USC § 112(b) below, the claims are additionally rejected under 35 USC § 112 (a) in view of MPEP 2163.03(VI).
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim limitation “control circuitry” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The term control circuitry has no corresponding structural description in the written description or illustration or circuit diagram. The term is employed in the disclosure in purely functional terms. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Conclusion
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 2164.06(a): “A disclosure of an electrical circuit apparatus, depicted in the drawings by block diagrams with functional labels, was held to be nonenabling in In reGunn, 537 F.2d 1123, 1129, 190 USPQ 402, 406 (CCPA 1976), where there was no indication in the specification as to whether the parts represented by boxes were “off the shelf” or must be specifically constructed or modified for applicant’s system. Also there were no details in the specification of how the parts should be interconnected, timed and controlled so as to obtain the specific operations desired by the applicant. In In reDonohue, 550 F.2d 1269, 193 USPQ 136 (CCPA 1977), the lack of enablement was caused by lack of information in the specification about a single block labeled “LOGIC” in the drawings. See also Union Pac. Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684, 57 USPQ2d 1293 (Fed. Cir. 2001) (Claims directed to a method of determining the location of a horizontal borehole in the earth failed to comply with enablement requirement of 35 U.S.C. 112 because certain computer programming details used to perform claimed method were not disclosed in the specification, and the record showed that a person of skill in art would not understand how to “compare” or “rescale” data as recited in the claims in order to perform the claimed method.).”