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 5/28/2026 have been fully considered but they are not persuasive.
With respect to claims 1 and 4 and the respective cancellation of claims 3 and 6 and their incorporation into claims 1 and 4 respectively, the Applicant’s comments as applied to the prior art rejection under 35 USC 102 are persuasive. Similarly, the removal of the “control part” language in claims 1 and 4 has rendered them allowable.
Applicant’s remarks traversing the rejection of claims 5, 7, and 13 under 35 USC 112(b) is not persuasive. By amendment the Applicant has stated that the recited “parts” comprise a processor. This is contradicted by the disclosure at [0033]. The various disclosed “parts” are listed as emergent “functional blocks” of a computer running a program, not a tangible component comprising a processor. Therefore, the amendment has introduced new matter and necessitates new grounds of rejection, or modification to existing grounds.
Additionally, the Applicant has moved the previously recited “control part” to new claim 13 and argues that a sufficient algorithm can be found in Fig. 4 for performing the claimed functions. The Examiner disagrees. The steps noted do not supply an algorithm for causing a generic processor to carry out the claimed functions. The disclosure lacks any detail regarding such an algorithm causing the control part to perform these functions as required in MPEP 2181(II)(B).
Allowable Subject Matter
Claims 1-2, 4, and 8-12 are allowed.
The following is an examiner’s statement of reasons for allowance:
The prior art fails to teach or suggest a mass spectrometry method comprising: a step of introducing a precursor ion into a reaction chamber; a step of generating a radical in a radical generation chamber; a step of generating a product ion by irradiating the precursor ion in the reaction chamber with the radical; and a step of measuring a mass of the product ion, the step of generating a radical including: a step of introducing a material gas into the radical generation chamber; a step of supplying radio-frequency power to the material gas simultaneously with or after introducing the precursor ion into the reaction chamber; and a step of supplying an electron to the material gas in a state where the radio- frequency power is supplied to generate plasma emission, and irradiating the material gas with the plasma emission to generate the radical, wherein the electron is generated by irradiating a material forming an inside of the radical generation chamber with light having a wavelength for generating the electron as recited in claim 1 or similarly in claim 4. Applicant’s amendment incorporating the subject matter of claims 3 and 6 and cancelling these claims necessitated the change in grounds to allowability for these claims. Claims 2, and 8-12 are indicated as allowable by virtue of their dependency.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/14/26 has been considered by the examiner.
Specification
The claim-like clauses at [0082-0103] are not descriptive material and appear to be those referred to in the EPO Guidelines for Examination at § F(IV)(4.4)1. Where these statements do not describe the invention but present another set of claim-like clauses obscuring the meaning of the actual claims in the application, no weight is given to these statements.
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:
Control part in claim 13. The term is a nonce phrase, coupled to functional language. Note [0033]. The control part is a general personal computer and is interpreted in view of MPEP 2181(II)(b).
Similarly, limitations including a measurement condition setting part 73, a measurement control part 74, a determination part 75, a plasma generation control part 76, a plasma detection part 77, and a warning output part 78 are “functional blocks” and the consequence of a computer program. As shown in Fig. 1, they are merely a computer program.
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 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.
Claim 13 is 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 part” 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 part is a generic computer. It is described as implementing a mass analysis program which is not disclosed. Similarly, the claims recite a measurement condition setting part 73, a measurement control part 74, a determination part 75, a plasma generation control part 76, a plasma detection part 77, and a warning output part 78 which are functions of the mass analysis program. Since the program itself is not disclosed and there is no disclosure for the discrete algorithm for executing each function or causing each of a measurement condition setting part 73, a measurement control part 74, a determination part 75, a plasma generation control part 76, a plasma detection part 77, and a warning output part 78 to produce their claimed functions, the control part and each of its claimed functional blocks including a measurement condition setting part 73, a measurement control part 74, a determination part 75, a plasma generation control part 76, a plasma detection part 77, and a warning output part 78 do not meet the requirements of MPEP § 2181(II)(B). 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.
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.
Claim 13 is 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. Taking the rationale under 35 USC § 112(b) above and in view of MPEP § 2163.03(VI), claims 4-12 similarly fail to meet the description requirement.
Claims 5 and 7 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. Applicant has amended claim 5 to state that the “plasma generation control part” comprises a processor. The plasma generation control part as defined at [0033] is an resultant functional block of the execution of a computer program and is not a tangible component and cannot comprise a processor, this necessitates new matter. The same rational is applicable to claim 7 which appends the claimed “plasma detection part” and “warning output part”.
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 EPO Guidelines for Examination, Part F, Section IV, 4.4 General statements, "spirit of the invention", claim-like clauses
General statements in the description which imply that the extent of protection may be expanded in some vague and not precisely defined way are not allowed. In particular, any statement which refers to the extent of protection being expanded to cover the "spirit of the invention" or "all equivalents" of the claims must be deleted.
Statements that refer to the extent of protection covering the "scope of the claims" or the invention being "defined in the claims" are allowed. This does not preclude the removal of inconsistencies (F‑IV, 4.3).
Where the claims are directed to a combination of features, any statement that seems to imply that protection is nevertheless sought not only for the combination as a whole but also for individual features or sub-combinations of them must be deleted.
Finally, claim-like clauses must also be deleted or amended to avoid claim-like language prior to grant since they otherwise may lead to unclarity on the subject-matter for which protection is sought.
"Claim-like" clauses are clauses present in the description which, despite not being identified as a claim, appear as such and usually comprise an independent clause followed by a number of clauses referring to previous clauses. These claim-like clauses are usually found at the end of the description and/or in the form of numbered paragraphs, particularly in divisional or Euro-PCT applications where the original set of claims from the parent or PCT application is appended to the description.
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