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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on January 16th, 2024; September 4th, 2024; and November 11th, 2024 have 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 claims 4-12. 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.
Claims 4-12 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.
Claims 4-12 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. 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.
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 (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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(2) as being clearly anticipated by US Patent Application Publication 2020/0111654.
The applied reference has a common assignee and inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 1, ‘654 utilizes an apparatus to articulate the claimed method. Note Fig. 1:
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a step of introducing a precursor ion into a reaction chamber;
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a step of generating a radical in a radical generation chamber;
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a step of generating a product ion by irradiating the precursor ion in the reaction chamber with the radical;
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and a step of measuring a mass of the product ion,
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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.
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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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 2021/0050198 in view of Official Notice taken by the Examiner.
Regarding claim 2, ‘198 discloses all the required limitations of claim 1 noted above, but does disclose the mass spectrometry method according to claim 1, wherein the supply of at least one of the material gas and the radio-frequency power is stopped after a lapse of a predetermined time from a start of the generation of the radical.
The claimed limitation is broadly written so as to terminate the radical generation of claim 1 after any arbitrary period.
The level of common knowledge and understanding in the art would suggest to one having ordinary skill that such a radical generation process should not run in perpetuity.
Having the common level of skill and understanding in the art at the time the invention was made, it would be obvious to one of ordinary skill to stop the flow of radical generating material gas and the supply of RF power to the radical generating chamber after any predetermined time because one would recognize that at some point, the process should conclude and run in perpetuity.
Claim(s) 4-5 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 2021/0050198.
Regarding claim 4, ‘198 discloses a mass spectrometer comprising:
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a reaction chamber into which a precursor ion is introduced (Note Fig. 1, bounded by entrance and exit 23,25);
a radical generation chamber (Item 51);
a material gas supply part configured to supply a material gas into the radical generation chamber(Fig. 1 Item 52);
a radio-frequency power supply part configured to supply radio-frequency power for generating plasma inside the radical generation chamber (Fig. 1 Item 53);
an electron supply part configured to supply an electron into the radical generation chamber (Needle electrode 543, [0048];
and a control part (Fig 1, Item 8,10), configured to control operations of the material gas supply part, the radio-frequency power supply part, and the electron supply part so as to supply the material gas to the radical generation chamber, supply the radio-frequency power simultaneously with or after introducing the precursor ion into the reaction chamber, and supply the electron from the electron supply part into the radical generation chamber in a state where the radio-frequency power is supplied.
‘198 does not disclose a control part articulating the specific functions, and more specifically the mass analysis program.
‘198 discloses that the data processing element is a general purpose computer, similar to the control part in the instant invention.
It would have been obvious to one having ordinary skill in the art to run all manner of programs on a general purpose computer to effect various control processes, as evidenced in the prior art. Computers are conventional tools for automating the functions of mass spectrometers.
Regarding claim 5, ‘198 discloses a storage means (Item 11 below). The information stored thereon does not materially affect the structure of the apparatus itself. The clocking part is an inherent component of the generic computer disclosed in ‘198 and the plasma generation control part is software as noted in the instant disclosure and above with respect to the rejections under 35 USC § 112(f, a, and b).
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Regarding claim 12, ‘198 discloses at least hydrogen, oxygen, and/or nitrogen radical generation.
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Allowable Subject Matter
Claims 3, 6-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 3 modifies the process of claim 1 to require photon stimulated electron emission to generate a plasma for radical generation. The prior art utilizes a needle discharge coupled to an RF supply to effect corona discharge to achieve the same result. That being said, there is not a teaching or suggestion to introduce a photoelectric discharge source into the radical generating chamber in the prior art.
Claim 6 requires in addition to the elements in claim 4, a photodetector in the radical generation chamber, to detect photons produced from the plasma generated in the chamber. There is no teaching or suggestion in the prior art as a whole to incorporate in the radical generation chamber of a mass analyzer, a photodetector to monitor the plasma. Claim 7 is similarly allowable by virtue of their dependency.
Regarding claims 8-11, the prior art fails to teach or fairly suggest the apparatus of claim 4 wherein the electron supply part is a light emission part configured to emit light having a predetermined wavelength according to a material forming the radical generation chamber. Claims 9-11 are indicated as having allowable subject matter by virtue of their dependency.
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.
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 2881
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.