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 7/6/26 have been fully considered but they are not persuasive.
Applicant’s traverse of the rejection of claims under 35 USC 112 are persuasive. The previously made rejection has been withdrawn. However, as necessitated by the Applicant’s amendment to the claims stripping the “circuitry” from the claim and employing the generic placeholder “processor”, new grounds of rejection are made of record.
Applicant’s traverse of the rejection of claims under 35 USC 101 is on the grounds that the claimed invention, taken as a whole, improves the function of a computer. The Applicant asserts at page 9 of the remarks:
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The disclosure of the instant invention does not disclose a “Gaussian fitting algorithm”.
One cannot therefore demonstrate the practical application of improving the function of a computer because nothing has been disclosed which may effect such improvement.
The remarks are therefore not persuasive and the rejection maintained and made FINAL.
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:
Processor in claim 1-9 and 11-21. The term corresponds to item 204 in the disclosure and appears to be a generic computation element. Claimed alongside the recited function of “process the digitized signal data, in real-time and based on use of Gaussian fitting, to generate result data corresponding to the TOF based mass spectrometry”, the term is interpreted under this heading since the claimed function is not coextensive with the processor itself.1 The term is interpreted in view of MPEP 2181(II)(B) as a computer implemented limitation.
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 1-9 and 11-21 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 “processor” 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 disclosure does not disclose an algorithm that uses Gaussian fitting as defined in the disclosure at [0046-0051].2 As interpreted in view of MPEP 2181(II)(B), the lack of disclosed algorithm corresponding to the claimed function of the processor renders the claim indefinite.3 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 1-9 and 11-21 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. The disclosure lacks description of the claimed algorithm for Gaussian fitting and therefore and further in view of MPEP 2163.03(VI), claims 1-9 and 11-21 lack written description.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-9 and 11-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) the collection of information and its analysis using mathematical techniques, which have been held to be abstract ideas. Claims 1 and 11, for example use conventional mass spectrometer technology as a data gathering tool to generate and collect information to subject to mathematical algorithms. Claims 1 and 11 require no more than, for example, the prior art of US Patent Application 2006/0016977. Note Fig. 5:
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Illustrated in the prior art above are an ion source (2), TOF mass spectrometer (3), ion detector (16), analog to digital converter (5), and processing circuitry (6). Since the base structure of the claimed invention is known in the prior art, the difference is noted in the terminal limitations of claims 1 and 11, which differ solely on the basis of the application of particular mathematical algorithms in the analysis of in the information collected.
As has been held, the mere collection and analysis of information of particular content has been held to be an abstract idea4. As is “analyzing information…by mathematical algorithms, without more.”5
Thus. the claimed “process the digitized data…based on use of Gaussian fitting…” is mere application of mathematical algorithm to analyze information of particular content. Thus, claims 1 and 11 recite nothing more than the abstract idea.
This judicial exception is not integrated into a practical application because there is no evidence of a particular machine being implemented, a novel algorithm being employed, or more than a conventional tool or data environment being relied upon to generate are carry out the claimed invention. As shown, the data generating mass spectrometer component is conventional, as is the use of a data processing circuity or computing element to analyze information. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because there is no evidence that the claimed invention improves the underlying function of a computer and the invention merely uses conventional technology as a tool to collect information on which particular mathematical algorithms are employed in analyzing such information, leaving no inventive concept other than the abstract idea itself.
Claims 2-6 and 12-16 merely prescribe additional mathematical algorithms/operations to be performed on the information collected and thus do not add more than the abstract idea itself.
Claims 7-9 and 17-21 recite the particulars of the ADC conversion element. This is insufficient to provide more to transform the abstract idea into patent eligible subject matter since the ADC is an intermediary prior to the data processing. Additionally, the prior art shows that the particulars of the ADC of claims 7-9 and 17-21 are conventional. Note conventional ADC from manufacturer Texas Instruments including products ADC32RF5x and ADC34RF55, the product sheets for which are attached to this action. In particular, the ADC34RF55 is a 14 bit, quad channel, 3 G samples per second ADC suitable for many applications including as a component in spectrum analysis such as mass spectrum analysis. Claims 7-9 and 17-21 can therefore not be said to show more since conventional ADC technology meets the required claimed criteria and do not show that the invention is practiced on a novel or particular machine.
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 “a microprocessor can serve as structure for a computer-implemented function only where the claimed function is ‘coextensive’ with a microprocessor itself.” EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 622, 114 USPQ2d 1711, 1714 (Fed. Cir. 2015)
2 Specification at [0047]: In this regard, Gaussian fitting entails use of curve fitting based processing for
constructing a curve or mathematical function, particularly Gaussian one, which may be the best fit to a series of data points, corresponding to, in the context of time-of-flight (TOF) mass spectrometry, digitized signals generated during the ion detection phase. Such curve fitting may entail complex operations or functions (e.g., interpolation, smoothing, etc.) for determining exact fit to the data is required, so that the Gaussian function that most accurately fits the data is constructed.
3 MPEP 2181(II)(B): For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b).
4 Electric Power, 830 F.3d at 1353.
5 Id. at 1354.
Prosecution Insights