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 invention I in the reply filed on 6/8/26 is acknowledged.
Claims 6-8 and 14-16 are withdrawn.
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 1-5 and 9-13 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 1 recites three parameters of a linear Time of Flight mass spectrometer (ToF) and a result; specifically:
(1) d1/L<0.035, in which L is the sum of d1, d2, and d3;
(2) d2/L≥0.05; and
(3) e2/e1≤2.5
thereby achieving a mass resolving power (MRP) greater than 10,000 to ions independently having a mass-to-charge (m/z) ratio between 1,000 and 100,000.
Similarly, claim 9 recites two parameters of a linear ToF mass spectrometer and a result; specifically:
(1) d1/L≥0.035, in which L is the sum of d1, d2, and d3; and
(2) d2/L≥0.003;
thereby achieving a mass resolving power (MRP) greater than 10,000 to ions independently having a mass-to-charge (m/z) ratio between 1,000 and 100,000.
The courts have described the essential question to be addressed in a description requirement issue in a variety of ways. An objective standard for determining compliance with the written description requirement is, "does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). Under Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991), to satisfy the written description requirement, an applicant must convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention, and that the invention, in that context, is whatever is now claimed.
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed, In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc).
In the instant case, the claim defines the invention by functional language specifying a desired result to be obtained, namely: “thereby achieving a mass resolving power (MRP) greater than 10,000 to ions independently having a mass-to-charge (m/z) ratio between 1,000 and 100,000.” This function is supposedly described by the claimed ranges of claims 1 and 9, respectively. However, the disclosure does not provide equations for determining the various claimed lengths and electric field strengths. further, it is clear that not every collection of parameters within the claimed parameter ranges would achieve the desired result. Instead, the disclosure provides six examples. See table 1. Five of these examples are relevant to the ranges of claim 1, as d1/L<0.035, and one of the examples is relevant to claim 9, as d1/L≥0.035.
The five examples for claim 1 all exhibit the same ratio of d1/L, i.e., d1/L=0.013, and demonstrate the claimed MRPs at masses of 1,000, 10,000, and 100,000. As such, the totality of the written description describes three masses and one ratio of d1/L achieving the claimed function, while claiming 99,997 other masses (rounding to integers). The one example supporting claim 9 obviously only provides one mass and one example for each of the claimed ratios to achieve the claimed function, while claiming 99,999 other masses.
The limited disclosure noted above provides example parameters for achieving the claimed MRP at less that 0.01% of the claimed range. Furthermore, not every parameter within the claimed parameter ranges would achieve the desired result. Additionally, the disclosure provides no guidance, explanation, equations, or other evidence that the applicant possessed a linear ToF with parameters that would allow for the claimed MRP at the most of the claimed masses. Such a limited disclosure is insufficient guidance for one of ordinary skill in the art to identify how the function is performed or the result is achieved. As such, one of ordinary skill in the art would not recognize that the applicant had possession of linear ToFs having the above noted function throughout the claimed parameter ranges. Since one of ordinary skill in the art would not recognize that the applicant had possession of the claimed invention, the claims are rejected for failing the written description requirement.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
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, ROBERT KIM can be reached at 571 272 2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/ Primary Examiner, Art Unit 2881
Prosecution Insights