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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/15/2025 has been entered.
Response to Amendment
The amendments and remarks, filed on 12/15/2025, has been entered. The claim amendments overcome the previous prior art rejection.
The amendments and remarks, filed on 12/15/2025, has been entered. The claim amendments overcome the previous 112(a) rejection of claim 1 and the 112(b) rejection of claims 1 and 4.
Claim Status
Claims 1-7 and 9-19 are pending with claims 1-7 being examined and claims 9-19 are withdrawn.
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: “a phase module” in claim 1; “a component module” in claim 1; and “one or more extraction modules” in claim 1.
Claim 1 invokes 112(f) and recites the limitation “a phase module” in line 3. In the instant specification, the phase module is described in para [11, 12, 41, 47, 48]. The specification describes the phase module being configured to identify a thermodynamic phase of the sample and wherein the processor is configured to activate the phase module 102. The instant specification does not provide a description in the specification of structure for the phase module. Thus, the specification fails to define the terminology.
Claim 1 invokes 112(f) and recites the limitation “a component module” in line 4. In the instant specification, the component module is described in para [7, 8, 9, 10, 41, 44, 45, 46]. The instant specification describes the component module to include a pressure gradient, and is configured to control transport of the chemical component from a collection chamber to a chemical identification component and configured to identify a chemical component of the target product. For purpose of prosecution, the examiner interprets the component module to comprise the pressure gradient and configured to transport the chemical component and identifying the target.
Claim 1 invokes 112(f) and recites the limitation “one or more extraction modules” in line 4. In the instant specification, the one or more extraction modules is described in para [6, 7, 12, 41, 48]. The specification describes the one or more extraction modules being configured to reduce phase analyte purity to during the cycle of operations. The instant specification does not provide a description in the specification of structure for the one or more extraction modules. Thus, the specification fails to define the terminology.
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 1-7 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 1 recites the limitation “wherein the analysis module comprises a Raman spectrometer, a gas chromatograph, and a gel permeation chromatograph” in lines 4-5. The amended limitations are unclear as to whether different analyzing units are required in order for the analysis module to operate. Specifically, a Raman spectrometer analyzes molecules/compounds through the use of light, gas chromatograph analyzes the compound by vaporizing mixtures and passing them through a heated column, and gel permeation chromatograph separates molecules through packed columns. The examiner notes that each of these analytical instruments require different elements/structures, thus it is unclear if the claimed system comprises all three instruments. Further, if all three analytical instruments are required, it is unclear as to how each operates with respect to one another. The Applicant provides support for the limitations in paragraph [0042] of the instant specification. However, it is unclear if Applicant intends for the analysis module to incorporate all three analytical instruments or if one were to be chosen from the list. Claims 2-7 are rejected by virtue of dependency on claim 1.
Claim limitations “a phase module” in claim 1, “a component module” in claim 1, and “one or more extraction modules” in claim 1 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. As described above, the phase module, the component module, and the one or more extraction modules do not comprise structures that correspond claimed functions. 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.
Response to Arguments
Applicant's arguments have been fully considered, and the arguments directed to the claim amendments are found to be persuasive. However, as noted above, the claim amendments invoke a 112(b) rejection of claim 1. Further, clarification of claim 1 is required. Examiner lists references teaching parts of the claim limitations discussed below.
References Cited
Sheng (CN 116124991 A; hereinafter “Sheng”; English translation previously attached; already of record). Sheng teaches an air quality detection device comprising the photovoltaic panel. One of ordinary skill in the art
Daniele et al (IT 202000027308 A1; hereinafter “Daniele”; English translation previously attached; already of record). Daniele teaches an air quality monitoring system comprising a Raman spectrometer.
Alan (CA 3043534 A1; hereinafter “Alan”). Alan teaches a measuring device for gas samples comprising a gas chromatograph.
Zhao et al (CN 106841490 A; hereinafter “Zhao”). Zhao teaches an air sampling device comprising a gel permeation chromatograph.
Mohan (US 20210006202 A1; hereinafter “Mohan”; already of record). Mohan teaches a cleaning module for a photovoltaic panel.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Austin Q Le whose telephone number is (571)272-7556. The examiner can normally be reached Monday - Friday 9am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Robinson can be reached at (571)272-7129. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.Q.L./Examiner, Art Unit 1796
/ELIZABETH A ROBINSON/Supervisory Patent Examiner, Art Unit 1796