Ex Parte Bateman

Patent Trial and Appeal Board

Aug 21, 2017

11568167 (P.T.A.B. Aug. 21, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/568,167 10/03/2007 Robert Harold Bateman M-1253-02 1475
14707 7590 08/23/2017
Diederiks & Whitelaw, PLC
13885 Hedge wood Drive
Suite 317
Woodbridge, VA 22193-7932
EXAMINER
SMITH, DAVID E
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
08/23/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mail@dwpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT HAROLD BATEMAN1
Appeal 2015-008158
Application 11/568,167
Technology Center 2800
Before BEVERLY A. FRANKLIN, RAE LYNN P. GUEST, and
BRIAN D. RANGE, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant identifies the real party in interest as Micromass UK Limited.
Appeal Br. 4.
Appeal 2015-008158
Application 11/568,167
Appellant requests our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1, 4, 9, 14, 16, 24, 30, 35, 37, 42, 44—
46, 60,61,82,91,96, 98, 111-113, 117-120, 133-138, 143-145, 150-155,
and 162—167. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant’s subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. An apparatus comprising:
a first device for separating ions according to their rate of
change of ion mobility with electric field strength, said first
device comprising a Field Asymmetric Ion Mobility
Spectrometry ("FAIMS") device with a central axis;
a second device for separating ions according to their ion
mobility, said second device comprising an ion mobility
separator or ion mobility spectrometer [IMS], and said second
device being arranged downstream of said first device along a
central axis that is substantially orthogonal to the central axis of
said first device;
an acceleration electrode for substantially orthogonally
accelerating ions leaving the first device into the second device;
wherein the second device comprises an entrance region
and a mesh electrode located in the entrance region wherein, in
use, an electric field is maintained between the acceleration
electrode and the mesh electrode and accelerates the ions
leaving the first device through the mesh electrode, and
wherein said second device comprises a plurality of
electrodes and wherein, in use, one or more transient DC
voltages or one or more transient DC voltage waveforms are
progressively applied to said plurality of electrodes so that at
least some ions having a first ion mobility are separated from
other ions having a second different ion mobility.
2
Appeal 2015-008158
Application 11/568,167
THE REJECTIONS
1. Claims 1, 4, 9, 14, 16, 24, 30, 35, 37, 42, 4AA6, 60, 61, 82, 91,
96, 98, 111-113, 117-120, 133-138, 143, 144, 150-155, and 162-167 are
rejected under 35 U.S.C. § 103(a) as being obvious over Guevremont (US
2003/0089847 Al, pub. May 15, 2003) in view of Giles (US 2004/0031920
Al, pub. Feb. 19, 2004) and in further view of Okumura (US 2003/0222211
Al, pub. Dec. 4, 2003) and Whitehouse (US 6,040,575, iss. Mar. 21, 2000).
2. Claim 145 is rejected under 35 U.S.C. § 103(a) as being obvious
over Guevremont in view of Giles, Okumura, and Whitehouse, and in
further view of Loboda (US 2002/0070338 Al, pub. June 13, 2002).
ANALYSIS
Appellant argues, inter alia, that proper motivation is lacking
regarding the combination of applied references, with particular emphasis
regarding the teachings of Guevremont in view of Giles, which is our focus
hereafter.
More specifically, Appellant argues that Guevremont does not operate
by way of selective transmission of ions between FAIMS and IMS devices.
Appeal Br. 8. As an example, Appellant points to |57 of Guervremont for
teaching that all of the ions that pass through the analyzer region 15 (see
Figure 4 of Guevremont) be directed to the orthogonal device. Appeal Br.
11. This requires no selective transmission of ions between FAIMS and
IMS devices.
The Examiner admits that Guevremont “does not teach selective
transmission of ions between FAIMS and IMS devices.” Ans. 22. The
Examiner states, however, that modification of Guevremont as proposed
3
Appeal 2015-008158
Application 11/568,167
would not “destroy[] the functionality of the device of Guevremont.” Id.
Appellant disagrees with this position for the reasons presented on pages 3^4
of the Reply Brief. Therein, Appellant reiterates the fact that according to
Guevremont, all ions are transmitted from the FAIMS device to the second
device. Reply Br. 3. As such, Appellant argues that the Examiner’s
proposed modification would change the basic principle under which the
Guevremont device was designed to operate because not all ions are
transmitted according to the proposed modification. Reply Br. 4.
Appellant further points out that the secondary reference of Giles
teaches that ion mobility separator 1 according to Giles provides for duty
cycles approaching 100%, whereas the use of a FAIMS device loses ions,
the implication being that use of FAIMS is undesired as compared to ion
mobility separator 1 of Giles. Appeal Br. 9—10. Appellant refers to 1139 of
Giles in this regard.2
Each of the above-mentioned circumstances collectively supports the
observation that, on the present record, the Examiner has not adequately
established sufficient reason to make the proposed modification as set forth
in the rejection.3 Setting forth aprima facie case of obviousness requires
establishing that the applied prior art would have provided one of ordinary
skill in the art with an apparent reason to modify the prior art to arrive at the
2 The Examiner replies by stating that this is a preferred embodiment of
Giles and therefore optional. Ans. 21. However, Appellant validly replies
that the Examiner’s rejection relies upon 1138 (Final Act. 3) that involves
ion sweeping which is the embodiment discussed in 1139. Reply Br. 2.
3 The Examiner’s provided reason, that the modification reduces the power
consumed by the device (Final Act. 3), overlooks the fact that adding the
transient DC voltage arrangement, as proposed, adds to the total power
consumption of the modified configuration.
4
Appeal 2015-008158
Application 11/568,167
claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
In view of the above, we reverse Rejection 1. The Examiner does not
rely upon the additional references applied in Rejection 2 to cure the stated
deficiencies of the combination of references applied in Rejection 1, so we
also reverse Rejection 2 for similar reasons.
DECISION
Each rejection is reversed.
ORDER
REVERSED
5