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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,055,530. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are drawn to a broader genus into which the patent claims fall; therefore, the patent claims anticipate the present claims.
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 36-40 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 36 recites the limitation "a third multi-port valve fluidly connected with the second multi-port valve" in line 8 of the claim. There is insufficient antecedent basis for this limitation in the claim. Claims 37-40 inherit the indefiniteness of claim 36 by dependence.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 21-23, 26, 31, 34 and 35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Unnerstall, et al (U.S. Patent Application Publication 2019/0079061 A1).
Regarding claim 21, Unnerstall discloses a valve system (Fig. 1C) fluidly coupled with one or more ion-exchange columns (204; paragraph 0041) and configured to receive a sample and to selectably direct the sample through a given ion-exchange column of the one or more ion exchange columns (Figs 1E and 1F; paragraphs 0043-0044, note that there is an apparent typographical error in the reference: paragraph 0043 is supposed to refer to Fig. 1E rather than Fig. 1D, and paragraph 0044 is supposed to refer to Fig. 1F rather than Fig. 1E) or bypass the one or more ion exchange columns (Fig. 1G; paragraph 0045, note that there is apparently a typographical error in the reference: paragraph 0045 is supposed to refer to Fig. 1G rather than Fig. 1F), the sample directed through a given ion-exchange column as part of a speciation mode of operation to remove a matrix material from the sample (paragraph 0041 – the speciation system separates silicon species from phosphoric acid; paragraph 0050 – the phosphoric acid is a matrix material), the sample directed to bypass any ion-exchange column as part of an infusion mode of operation (paragraph 0045); and
A time-of-flight mass spectrometer fluidly connected to the valve system (paragraph 0054).
Regarding claim 22, Unnerstall discloses wherein the given ion-exchange column is one of a cation exchange column or an anion exchange column (paragraph 0054).
Regarding claim 23, Unnerstall discloses wherein, when operating in the speciation mode, the analysis system is configured to confirm a chemical composition of the sample through a combination of a retention time in the given ion-exchange column and a mass to charge ratio (m/z) determined by the TOF-MS (paragraphs 0053-0054).
Regarding claim 26, Unnerstall discloses a software configured to simultaneously detect for multiple organic components (paragraphs 0046, 0078).
Regarding claim 31, Unnerstall discloses wherein the analysis system is configured to perform at least one of autocalibration or autodilution (paragraph 0040).
Regarding claim 34, Unnerstall discloses a sample preparation unit configured to dilute a sample by up to 10% by volume to improve at least one of sample transfer or recovery of any organic components (paragraph 0040).
Regarding claim 35, Unnerstall discloses an ICP-MS configured to detect at least one of a metal or particle component, the TOF-MS configured to detect at least one organic component (paragraphs 0053-0054).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P MASKELL whose telephone number is (571)270-3210. The examiner can normally be reached M-F 10A-6P.
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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/MICHAEL MASKELL/Primary Examiner, Art Unit 2878 25 June 2026
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