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 .
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 1-5 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 “configured to generate ions by a process involving an electric discharge between the discharging electrodes” is vague and indefinite because the claim does not provide a discernable boundary on what performs the function. The recited function does not follow from the structure recited in the claim i.e. no structure capable of providing such a discharge with said electrodes, and no structure to provide any input gases to ionize, so it is unclear whether the function requires some other structure or is simply a result of operating the device in a certain manner. Thus, one of ordinary skill in the art would not be able to draw a clear boundary between what is and is not covered by the claim. See MPEP 2173.05(g) for more information. Furthermore, ‘a process involving an electric discharge between the discharging electrodes’ does not specifically and distinctly claim what is required by the claim, as the claim does not clearly limit which processes are potentially required to be capable in such a structure. For example, the claim is broad enough to allow for processes in which the electric discharge itself does not provide the ionization, as well as various ionization processes that ‘involve’ an electric discharge between electrodes, which may or may not be adequately supported by applicant’s disclosure, and which could be potentially at odds with the disclosed functionality of applicant’s disclosure. While the specification discloses a particular process involving an electric discharge, as well as an additional example of non-limited alternative ionization, Examiner is not permitted to read limitations from the specification into the claim. Examiner notes that the claim appears to be broad enough to allow for various other potential electrical discharge processes for forming ions, and it is unclear whether the claim would require being configured to perform other processes (e.g., which, if any of PTR-MS, SIFT-MS, APCI, etc.). As such, it is not possible to adequately determine the metes and bounds of the claim, rendering it indefinite. For purposes of examination, this limitation is interpreted as requiring structure to apply the necessary voltages to achieve such discharges, and requiring some form of ionization actively involving the electric discharge of the discharge electrodes to provide the ions in the primary ion source.
Claims that depend on the above rejected claims are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Inomata (DOI: 10.1002/rcm.2405).
Examiner notes that Inomata is Applicant provided prior art via the IDS dated 12/31/2024.
Regarding claim 1, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Inomata teaches an ion source (See Fig. 1; Abstract; Introduction; Experimental Setup) having discharging electrodes (See Fig. 1, ED1-ED3; Experimental Setup) and configured to generate ions by a process involving an electric discharge between the discharging electrodes (Abstract; Introduction; Experimental Setup),
Inomata does not explicitly teach wherein a surface of an anode of the discharging electrodes is made of titanium, as Inomata discloses the electrodes as being formed from stainless steel.
Examiner notes that an ordinarily skilled artisan in the context of PTR-MS would have an advanced degree (e.g., PhD) in a physical science/engineering, or equivalent experience, and would thus have a relatively high level of ordinary skill and knowledge.
Titanium is a well-known alternative to stainless steel for electrodes (as well as other surfaces/elements such as housings, detectors, etc.) in ion source devices, as evidenced by Crooks (US 20180330934 A1), Kernan (US 20030178564 A1), and Okuda (US 8022362 B2), each of which discloses at least one embodiment of an ion electrode formed of titanium, and in the case of Kernan, forming the device from a single cylindrical element of titanium. Titanium provides similar durability and stability under harsh conditions to stainless steel, as discussed in Okuda, and as would be known by an ordinarily skilled artisan having the aforementioned relatively high level of ordinary skill/knowledge.
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Inomata to include wherein a surface of an anode of the discharging electrodes is made of titanium.
Doing so represents substituting a disclosed material of an element of an otherwise disclosed system for a known material having similar properties, that could be readily applied by an ordinarily skilled artisan with a reasonable expectation of success to achieve predictable results.
Regarding claim 2, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Inomata, as modified, teaches the ion source according to claim 1.
Inomata does not explicitly teach wherein the titanium is pure titanium.
However, the above cited prior art discloses such limitations, and accordingly, the limitation is obvious in view of Inomata as modified.
Regarding claim 3, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Inomata, as modified, teaches the ion source according to claim 1.
Inomata further teaches further comprising:
a primary ion source including the discharging electrodes and configured to generate a primary ion from a source gas by a process involving an electric discharge between the discharging electrodes (See Fig. 1, ED1-ED3 and H2O inlet; Abstract; Introduction; Experimental Setup); and
a secondary ion source configured to generate a secondary ion which is an ion of a sample molecule by a reaction between the primary ion and the sample molecule (See Fig. 1, sample inlet downstream of primary ion source, wherein sample molecules react with ions from primary source to form additional ions; Abstract; Introduction; Experimental Setup).
Regarding claim 4, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Inomata, as modified, teaches the ion source according to claim 1.
Inomata further teaches wherein the ion source is configured to generate ions by a proton transfer reaction (Abstract; Introduction; Experimental Setup).
Regarding claim 5, as best understood in view of the 35 U.S.C. 112(b) issues identified above, Inomata, as modified, teaches a mass spectrometer (Abstract; Introduction; Experimental Setup), comprising the ion source according to claim 1 (See claim 1 for ion source limitations; See Fig. 1, showing ion source integrated into TOFMS).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J GASSEN whose telephone number is (571)272-4363. The examiner can normally be reached M-F 9-5.
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 H 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.
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/CHRISTOPHER J GASSEN/Examiner, Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
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