DETAILED ACTION
Status of Claims
Claim 4 is canceled. Claims 1-3 and 5-10 are pending. Claim 10 is withdrawn. Claims 1-3 and 5-9 are examined on the merits.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in France on 07/24/2023. It is noted, however, that applicant has not filed a certified copy of the French Application No. FR2307938 as required by 37 CFR 1.55.
Abstract
The abstract of the disclosure is objected to because it’s not in the form of a single paragraph. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for the abstract:
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Response to Amendments
The objection to abstract is maintained, as no amended abstract has been filed.
The claim objections and 35 USC 112(b) rejections are withdrawn.
Response to Arguments
Applicant’s 5/11/2026 arguments (“Remarks”) have been considered.
Applicant contends the following:
Applicant, however, disagrees with the Office's assertion that Fehr "teaches or at least reasonably suggest that the volume of solvent and the volume of gas being suctioned by the metering pump are known or predetermined."…To support this assertion, the Office suggests that Fehr "teaches that to the fact that, when supplying the gas and solvent alternately, the solvent valve is opened for a 'first length of time' and the gas valve is opened for a 'second length of time."…This teaching, however, does not correspond to a detection of the volume sucked in during the section step as required by claim 1. In Fehr, the dosage between the solvent and the gas is controlled based on a set time, rather than by monitoring the amount of solvent or gas drawn in using volume - let alone by using a sensor as required by claim 1.
This argument is not persuasive. First, Applicant’s argument does not rebut the prior-art rejection, which says FEHR does not explicitly teach “detection” of volume sucked in by the metering pump (see Non-Final at ¶ 43). The Non-Final Action never said FEHR teaches “detection” of volume. Second, Applicant’s argument amounts to a piecemeal analysis of the prior-art rejection: one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Here, Claim 1 is considered obvious over FEHR’s method as modified in view of specific teachings from AKAO and TURCZAK (see Non-Final at ¶¶ 44-46); in particular, it would’ve been obvious to modify FEHR’s method to incorporate the “detection” step in order to achieve a desired ratio of gas and solvent to optimize cleaning (see id. at ¶ 45). But Applicant’s arguments do not sufficiently address this combination of references.
Applicant’s arguments regarding TURCZAK and AKAO (see Remarks at 7-8) are not persuasive. First, the arguments are not commensurate in scope with the claim, as the claim language does not recite any specific placement of any sensor(s). Specifically, the claim language does not require “a single sensor associated with the metering pump.” Thus, Applicant’s arguments—directed to the placement of a single sensor—are not germane to the claimed invention and not germane to the prior-art rejection. Second, Applicant’s arguments amount to piecemeal analysis for the prior-art rejection: one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller; In re Merck & Co.
Regarding the new claim limitations introduced with the 5/11/2026 Amendment, those new limitations create extensive 35 USC § 112 issues that need to be resolved before any meaningful prior-art rejection can be adequately applied.
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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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), 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), 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), 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. See MPEP § 2181.I. Such claim limitation(s) is/are:
“monitoring module…configured to determine the quantity of volume entering the metering pump and the nature of the fluid entering the pump; and depending upon the configuration of each of the gas and solvent valves, to determine the quantity of each fluid entering the metering pump successively” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f), it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
“monitoring module…configured to determine…quantity…nature…quantity…” is interpreted as requiring the structure(s) of a processor having software program therein (see Spec. at pg. 9 lines 19-27), and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (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).
Claim Objections
In claim 1 line 13, a comma should be added between “pump” and “wherein.”
In claim 1 line 25, a comma should be added after “receive a signal sent by the sensor.”
Claim 1 line 21-23 recites: “a detection of the volume sucked in during the at least one suction step by the metering pump by the sensor, during the at least one suction step…” The clause “during the at least one suction step” is recited twice. If the step of suction and the step of detection are both performed at/around the same time, then only one clause is needed.
In claim 1 line 29, “the pump” should be “the metering pump” for consistency.
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 1-3 and 5-9 are rejected under 35 U.S.C. 112(a) 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 had possession of the claimed invention at the time of filing.
Claim 1 recites (at line 28-29) “a monitoring module…configured to determine… the nature of the fluid entering the pump,” which is a computer-implemented functional limitation. As explained above, “monitoring module” is interpreted as a processor with software program. The above computer-implemented functional limitation is not sufficiently described in the specification to reasonably convey that the inventor(s) had possession of the claimed subject matter at the time of filing.
First, the specification does not define the term “nature,” which appears only once in the specification on pg. 9 lines 14-16. In other words, it’s unclear what’s meant by the “nature” of the fluid entering the pump.
Second, the specification fails to disclose the algorithm used by the monitoring module to determine the nature of the fluid entering the pump. According to MPEP § 2161.01.I., if the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. 112(a) for lack of written description must be made. A computer-implemented functional limitation may violate 112(a) “when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.” See MPEP § 2161.01.I.
The remaining claims are rejected because they depend on Claim 1.
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 1-3 and 5-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 uses the word “volume” in a confusing and inconsistent manner, so it’s unclear what’s meant by “volume.” In particular, it’s unclear if “volume” means (1) a fluid (the word “fluid” means a gas or a liquid); or (2) a quantity or amount; or (3) something else.
In claim 1 line 28, “the quantity of volume” seems to suggest that the word “volume” means fluid, i.e., the quantity of fluid. Otherwise, “the quantity of quantity” or “the quantity of amount” makes little sense.
In claim 1 line 19-20, “the volume sucked in…comprises alternately gas and solvent” seems to suggest that “volume” means fluid, i.e., the fluid sucked in…comprises alternately gas and solvent.
Claim 1 line 11 recites: “a sensor for a volume entering the metering pump.” Does “volume” here mean fluid, i.e., a sensor for a fluid entering the metering pump? Or does “volume” mean quantity/amount, i.e., a sensor for a quantity/amount entering the pump? How can “quantity/amount” enter the pump?
Claim 1 line 13-14 recites: “said parameter depends directly on the volume entering the metering pump.” Does “volume” here mean fluid, i.e., said parameter depends on the fluid entering the pump? Or does “volume” mean quantity/amount, i.e., said parameter depends on the quantity/amount entering the pump? How can “quantity/amount” enter the pump?
Claim 1 line 16 recites “suction by the metering pump of a volume.” Does this phrase mean suction by the pump of a fluid? Or does it mean suction by the pump of a quantity or amount? Or does it mean something else?
Claim 1 line 21-22 recites “a detection of the volume…by the sensor.” Does this phrase mean a detection of the fluid by the sensor? Or does it mean a detection of the quantity or amount by the sensor? Or something else?
Claim 1 recites “a sensor for a volume…” at line 11. It’s unclear what action or function is performed by the sensor. For example, is the sensor detecting a volume? Measuring a volume? Clarification is requested.
Claim 1 recites “a sensor for a displacement…” at line 11-12. It’s unclear what action or function is performed by the sensor. For example, is the sensor detecting a displacement? Measuring a displacement? Clarification is requested.
Claim 1 recites the following limitations:
a sensor for a volume entering the metering pump, or a sensor for a displacement of the metering pump, or a sensor adapted to detect a parameter relating to the metering pump wherein said parameter depends directly on the volume entering the metering pump (lines 11-14);
a detection of the volume sucked in during the at least one suction step by the metering pump by the sensor, during the at least one suction step…(lines 21-23)
It’s unclear which sensor out of the three alternative sensors (recited in lines 11-14) is considered “the sensor” at lines 21-23. Also, it’s unclear whether “the sensor” (lines 21-23) is required to be the “sensor for a volume” (recited in lines 11-14). Although the method requires a detection of “volume” (lines 21-23), the three sensors are for different things: first sensor is for “volume,” second sensor is for “displacement,” and third sensor is adapted to detect a “parameter.” So it’s unclear which sensor is required at lines 21-23. Clarification is requested.
Claim 1 recites at lines 15-24:
the method comprising: … a detection of the volume sucked in during the at least one suction step by the metering pump by the sensor, during the at least one suction step, wherein: the quantity of sucked solvent is monitored by a monitoring module…
It’s unclear whether or not “the quantity of sucked solvent is monitored by a monitoring module” is a requisite step of the claimed method. Clarification is requested.
The Examiner notes that detecting a fluid (by a sensor) and determining the fluid’s quantity (by the monitoring module) are two distinct steps performed by two distinct structures. Although Claim 1 recites the method comprising a detection step performed by the sensor (see lines 15, 21-22), Claim 1 does not recite the method comprises a step of determining the fluid’s quantity by the monitoring module. If Applicant intends the “determining” step to be a requisite step of the claimed method, then the “determining” step must be positively recited.
Claim 1 recites from pg. 2 line 21 to pg. 3 line 3:
a detection of the volume sucked in during the at least one suction step by the metering pump by the sensor, during the at least one suction step, wherein:
the quantity of sucked solvent is monitored by a monitoring module, the monitoring module being configured to receive a signal sent by the sensor wherein the signal comprises the measurements made by the sensor, the monitoring module being configured to determine:
the quantity of volume entering the metering pump and the nature of the fluid entering the pump; and
depending upon the configuration of each of the gas and solvent valves, to determine the quantity of each fluid entering the metering pump successively…
First, it’s unclear whether or not the recited function of “receive a signal sent by the sensor” is a requisite step of the claimed method. Just because the monitoring module is configured to perform an action does not necessarily mean such action is required by the claimed method. Second, it’s unclear whether or not the recited function of “determine the quantity of volume…the nature of the fluid…determine the quantity of each fluid…” is a requisite step of the claimed method. Just because the monitoring module is configured to perform an action does not necessarily mean such action is required by the claimed method.
Claim 1 recites “the measurements” at line 26. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites “the configuration” on pg. 3 line 1. It’s unclear which configuration is required here, because claim 1 earlier recites “at least one closed configuration” and “at least one open configuration” for each valve (see lines 8-9).
Claim 1 recites from pg. 2 line 21 to pg. 3 line 3:
a detection of the volume sucked in during the at least one suction step by the metering pump by the sensor, during the at least one suction step, wherein:
the quantity of sucked solvent is monitored by a monitoring module, the monitoring module being configured to receive a signal sent by the sensor wherein the signal comprises the measurements made by the sensor,
the monitoring module being configured to determine:
the quantity of volume entering the metering pump and the nature of the fluid entering the pump; and
depending upon the configuration of each of the gas and solvent valves, to determine the quantity of each fluid entering the metering pump successively…
First, it’s unclear what action(s) are performed by the sensor. Is the sensor detecting volume, or measuring volume, or both? And what’s the difference between detecting and measuring? Second, it’s unclear what action(s) are performed by the monitoring module. If the sensor already detects and measures volume, how is that any different from the step of determining quantity of fluid performed by the monitoring module? Clarification is requested.
Claim 1 recites “the nature” at line 28. First, there is insufficient antecedent basis for this limitation. Second, it’s unclear what “the nature” means. Clarification is requested.
Claim 1 recites “a monitoring module…configured to determine…the nature of the fluid entering the pump” (lines 24-29). As explained above, “monitoring module” is interpreted under 35 USC 112(f) as a processor. Because the specification fails to disclose the algorithm for the computer-implemented 112(f) limitation, such limitation is deemed indefinite under 35 USC 112(b). See MPEP § 2181.II.B.
Claim 1 recites from pg. 2 line 26 to pg. 3 line 3:
the monitoring module being configured to determine:
the quantity of volume entering the metering pump and the nature of the fluid entering the pump; and
depending upon the configuration of each of the gas and solvent valves, to determine the quantity of each fluid entering the metering pump successively
Here, the claim recites both “volume” entering the metering pump and “fluid” entering the metering pump. It’s unclear whether “volume” and “fluid” have the same or different meaning. Clarification is requested.
Claim 1 recites “the sensor” at line 22, at line 25, and at line 26. Because claim 1 recites three alternative sensors at line 11-14, it’s unclear which of the three sensors is considered “the” sensor at lines 22, 25, 26. Clarification is requested.
Claim 1 recites “the fluid” at line 29. There is insufficient antecedent basis for this limitation in the claim. There’s no prior recitation of “a fluid.”
Claim 1 recites “at least one step of suction” at line 16 and “at least one suction phase” at line 17. The scope of “step” and the scope of “phase” are unclear. Also, the distinction between “step” and “phase” is unclear. Clarification is requested.
For example, Claim 1 recites “the volume sucked in during the at least one suction phase comprises alternately gas and solvent” at lines 19-20. Does this mean that a suction “step” constitutes the suction of either gas or solvent? Or does suction “step” constitutes the suction of both gas and solvent? If suction of gas constitutes one “step” and suction of solvent constitutes another “step,” then doesn’t the claim actually require at least two steps of suction? Clarification is requested.
Claim 2 recites “a first volume” at line 3-4. As explained above, the meaning of “volume” is unclear. Clarification is requested.
Claim 2 recites “a second volume” at line 6. As explained above, the meaning of “volume” is unclear. Clarification is requested.
Claim 3 requires the following limitations:
at least one step of suction by the metering pump of a volume during at least one suction phase of the metering pump, the gas valve and the solvent valve being alternately in the at least one open configuration during the at least one suction phase, so that the volume sucked in during the at least one suction phase comprises alternately gas and solvent (recited in Claim 1 lines 16-20)
wherein the at least one suction phase comprises a suction cycle comprising a suction of gas and a suction of solvent by the metering pump, said suction cycle being repeated throughout the at least one suction phase (recited in Claim 3).
When gas and solvent are alternately suctioned, is that one suction “step” or two suction “steps”? Clarification is requested. If they count as two suction steps, then “at least one step of suction” should be changed to “at least two steps of suction.”
The remaining claims are rejected because they depend on claim 1.
Examiner’s Comments
Given the extensive 35 USC § 112 issues, the Examiner is unable to formulate and apply any meaningful prior-art rejections at this time. Once the § 112 issues are resolved such that the metes and bounds of the claimed method are clear, the Examiner will be able to evaluate the claimed invention under 35 USC §§ 102, 103 on the merits.
The claim language should be amended to clarify, for example:
The meaning of “volume” (e.g., a fluid or a quantity/amount);
The difference between detecting and measuring;
Which action (performed by which structure) is required by the claimed method;
When gas and solvent are alternately suctioned, is that one suction “step” or two suction “steps”?;
The difference between suction “step,” suction “cycle,” and suction “phase”;
Whether the metering device “comprises” a sensor (i.e., other sensors are not excluded) or “consists of” a sensor (i.e., other sensors are excluded).
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.
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/R.Z.Z./Examiner, Art Unit 1714
/KAJ K OLSEN/Supervisory Patent Examiner, Art Unit 1714
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