Ex Parte Bateman et al

Patent Trial and Appeal BoardOct 31, 2012

11513185 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/513,185 08/31/2006 Robert Harold Bateman DEH012C 3316 7590 10/31/2012 DIEDERIKS & WHITELAW, PLC #301 12471 Dillingham Square Woodbridge, VA 22192 EXAMINER JOHNSTON, PHILLIP A ART UNIT PAPER NUMBER 2881 MAIL DATE DELIVERY MODE 10/31/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT HAROLD BATEMAN, JOHN BRIAN HOYES, JAMES IAN LANGRIDGE and JASON LEE WILDGOOSE ____________ Appeal 2010-004759 Application 11/513,185 Technology Center 2800 ____________ Before PETER F. KRATZ, MICHAEL P. COLAIANNI, and JEFFREY B. ROBERTSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. Appeal 2010-004759 Application 11/513,185 2 DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of pending claims 59, 61-67, and 84.1 (Br. 2.) We have jurisdiction pursuant to 35 U.S.C. § 6(b). We AFFIRM. The present application claims to be a continuation of Application 10/176,072, in which the Board reversed the Examiner’s rejection of certain claims as being anticipated by Clemmer US 2002/0014586 A1. (Decision in Appeal No. 2009-1131, Decided April 28, 2009.) The claims in the 10/176,072 Application were directed to a method of mass spectrometry. In the present appeal, Appellants’ claims are directed to an ion mobility spectrometer. (Spec. 11, ll. 19-35.) Claims 59 and 84, representative of the subject matter on appeal, are reproduced below: 59. An ion mobility spectrometer for separating ions according to their ion mobility, said ion mobility spectrometer comprising: an upstream section comprising a first plurality of electrodes having apertures arranged in a first vacuum chamber, wherein a DC voltage gradient is maintained across at least a portion of said upstream section and at least some of said first plurality of electrodes are connected to an AC or RF voltage supply; and a downstream section comprising a second plurality of electrodes having apertures arranged in a second vacuum chamber, wherein a DC voltage gradient is maintained across at least a portion of said downstream section and at least some of said second plurality of electrodes are connected to an AC or 1 Claims 1-58, 60, and 68-83 have been cancelled. (Appeal Brief filed on January 22, 2009, hereinafter “Br.,” 3.) Appeal 2010-004759 Application 11/513,185 3 RF voltage, said first and second vacuum chambers being separated by a differential pumping aperture. 84. An ion mobility spectrometer as claimed in claim 59, further comprising, in combination: a mass filter; and a controller arranged to continuously vary a mass filtering characteristic of the mass filter so that multiply charged ions having a first charge state are onwardly transmitted in preference to singly charged ions. (Br., Claim Appendix.) The prior art relied upon by the Examiner in rejecting the claims on appeal is: Clemmer US 2002/0014586 A1 Feb. 7, 2002 Smith US 6,107,628 Aug. 22, 2000 The Examiner rejected claims 59, 61-67, and 84 under 35 U.S.C. § 103(a) as obvious over Clemmer and Smith. The Examiner found that Clemmer discloses an ion mobility mass spectrometer (IMS) where ions are separated as a function of ion mobility having the structure in claim 59 including a voltage gradient. (Examiner’s Answer entered June 12, 2009, hereinafter “Ans.,” 4-6.) The Examiner stated that one of ordinary skill in the art would have recognized that the voltage gradient has to be one of DC, AC, or RF sources. (Ans. 6.) The Examiner additionally found that Smith discloses an ion funnel having a DC voltage gradient and an RF voltage applied to electrodes in the ion funnel. (Ans. 6.) The Examiner concluded that it would have been obvious to apply a DC potential gradient across some electrodes and to apply RF voltages to other electrodes in Clemmer as taught by Smith in order to more effectively Appeal 2010-004759 Application 11/513,185 4 focus and transmit the ion beam into the acceleration region of an adjoining mass spectrometer to improve ion separation and identification of substances with ion mobility analysis. (Ans. 6-7.) Appellants contend that Clemmer discloses that the electric field applied in the ion mobility spectrometer is constant, which suggests that there is no RF voltage that should be applied.2 (Br. 9, Reply Brief filed August 12, 2009, “Rep.” at 2-3.) In addition, Appellants argue that Clemmer suggests that if an RF voltage is applied to an ion mobility spectrometer, lighter ions would come into contact with the electrodes supplying the electric field and as a consequence be prevented from passing through the ion mobility spectrometer. (Br. 8-9.) Appellants argue that there is no indication that such a modification would be desirable for ion mobility spectrometry. Appellants also argue that Smith is directed to introducing ions into a mass analyzer, and not what happens within an ion mobility spectrometer. (Br. 9; Rep., 3, 5-6.) ISSUE Based on the contentions of the Examiner and the Appellants, an issue on appeal is: 2 In the Reply Brief, Appellants argue that the Examiner has “changed the rejection significantly” such that the “Examiner has provided what essentially amounts to a new ground of rejection.” (Rep. 1.) We note that the issue of whether or not the Examiner has made a new ground of rejection is a petitionable matter under 37 C.F.R. § 1.181. In addition, Appellants have relied on similar arguments in the Reply Brief in many cases to rebut the Examiner’s statements made in the Answer as presented in the Appeal Brief. Appeal 2010-004759 Application 11/513,185 5 1. Did the Examiner err in concluding that it would have been obvious to have included an AC or RF voltage supply along with a DC voltage gradient along a plurality of electrodes in an ion mobility spectrometer in view of Clemmer and Smith? We answer this question in the negative. FINDINGS OF FACT The record supports the following Findings of Fact (FF) by a preponderance of the evidence. 1. Clemmer discloses an embodiment where two ion mobility spectrometers are used and where the electric fields applied therein may be configured to establish an electric field gradient to allow for additional ion separation. (Para. [0133], [0135]; Fig. 19.) 2. Clemmer discloses that the pressure of the buffer gas in the drift tube of the IMS device ranges from between “one and a few thousand Torr.” (Para. [0063].) 3. Smith discloses a method for driving charged particles through an ion funnel by providing a DC potential gradient across adjacent elements of an ion funnel as well as applying RF voltages to the elements. (Col. 4, l. 66 – col. 5, l. 11.) 4. Smith discloses that an ion funnel “may be utilized in a wide variety of settings” including in mass spectrometers and is not limited to incorporation in any particular application, device, or embodiment. (Col. 5, ll. 40-43; col. 6, ll. 25-35.) Appeal 2010-004759 Application 11/513,185 6 5. Smith discloses that RF frequencies include those ranging between about 100 KHz and 1 MHz. (Col. 9, ll. 65-67.) Additional findings of fact may appear in the Analysis below. ANALYSIS Although Appellants have listed certain claims under separate headings, Appellants have presented similar arguments for those claims. Accordingly, we select claims 59, 61, 62, 67, and 84 as representative of Appellants’ arguments pursuant to 37. C.F.R. § 41.37(c)(1)(vii). Issue 1 Upon careful review of the record, we agree with the Examiner that the ion mobility spectrometer recited in claim 59 would have been obvious over Clemmer and Smith. Initially, we do not subscribe to Appellants’ view that because Clemmer discloses embodiments where a constant electric field is applied to the drift tube of the ion mobility spectrometer, one of ordinary skill in the art would not have applied an RF voltage to improve ion separation and as a result the identification of substances as articulated by the Examiner. While Clemmer discloses that the constant electric field is established to accelerate ions toward the tube end (para. [0060]), Clemmer also discloses that an electric field gradient may be established through both ion mobility spectrometers in the embodiment shown in Figure 19 for additional ion separation. (FF 1.) We do not view these teachings of Clemmer as a teaching away from applying an RF voltage as taught in Smith. Specifically, Appeal 2010-004759 Application 11/513,185 7 Smith discloses application of RF voltage in addition to DC voltage. (FF 3.) Thus, Smith is not inconsistent with the teachings of Clemmer, while providing additional benefits provided by applying RF voltage. Moreover, we agree with the Examiner that both Clemmer and Smith share a common goal of improving ion separation in mass spectra in order to identify the structure or composition of substances. (Ans. 14.) Therefore, we agree with the Examiner that one of ordinary skill in the art would have considered Smith with Clemmer in improving ion mobility spectrometers. In this regard, Appellants have not established that Smith fails to disclose the applicability of the disclosed ion funnel to an ion mobility mass spectrometer, as Smith generally teaches that ion funnels may be utilized in a wide variety of settings, including mass spectrometers, in order to direct charged ions. (FF 4.) Thus, Appellants’ argument that Smith’s ion funnel is more analogous to the ion source in Clemmer does not consider what Smith as a whole would convey to one of ordinary skill in the art. In addition, as the Examiner points out, the ion funnel disclosed in Smith is similar to the ion tunnel device disclosed in Appellant’s Specification. (Ans. 14.) We are also unpersuaded by Appellants’ arguments that one of ordinary skill in the art would not have applied an RF voltage to an ion mobility spectrometer in view of the particular embodiment in Clemmer directed to a quadropole mass filter utilizing a combination of RF and DC voltages to achieve a filtering effect. Appellants characterize such an application as undesirable (Br. 8-9), but do not adequately explain why this one embodiment would have rendered the combination undesirable. Appellants have also not sufficiently explained why the Examiner’s rationale based on Smith that providing RF voltage would aid in optimizing the ion Appeal 2010-004759 Application 11/513,185 8 mobility spectrum and mass spectrum, which is consistent with the overall goal of Clemmer’s instrument, is in error. (Ans. 15-16.) Regarding Appellants’ argument that Smith does not disclose upstream and downstream application of the ion funnel device, Appellants focus on the individual teachings of Smith rather than the prior art as a whole. Clemmer discloses the upstream and downstream portions of the ion mobility mass spectrometer as outlined by the Examiner. (Ans. 4-6.) Moreover, Smith discloses the application of multiple ion funnels in a series. (Col. 6, ll. 56-63.) Accordingly, for the above reasons, we are not persuaded that the Examiner erred in concluding that claim 59 would have been obvious over Clemmer in view of Smith. Claim 61 Claim 61 recites that at least some of the electrodes are supplied with an AC or RF voltage within the range of 0.1-3 MHz. The Examiner found that Smith disclosed RF voltages ranging from 100 KHz to 1 MHz. (Ans. 7- 8.) Appellants contend that the Examiner has failed to establish a prima facie case of obviousness because the voltages recited in Smith are not applied to an ion mobility spectrometer. (Br. 10, 11; Rep. 3-4.) Appellants also argue that the RF voltages described in Smith are broad ranges that are not disclosed with sufficient specificity to render the claims unpatentable. (Br. 10, 11.) We are not persuaded by Appellants arguments. Initially, as discussed supra, Smith discloses the application of the disclosed ion funnel to mass spectrometry techniques and that the application of the ion funnel is not Appeal 2010-004759 Application 11/513,185 9 limited. Thus, one of ordinary skill in the art would have been expected to apply the ranges of RF voltages disclosed in Smith depending on the specific results desired for the particular application. (See Ans. 7-8.) Appellants’ argument that the ranges are not disclosed with sufficient specificity, Appellants’ citation to the Manual of Patent Examining Procedure (MPEP) is directed to the anticipation of ranges, whereas the present rejection is based on obviousness. In the instant case, the ranges disclosed in the claims are fully encompassed by the prior art establishing a prima facie case of obviousness and shifting the burden to Appellants to show that the range would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed Cir. 2003). In addition, the Examiner has pointed to further portions of Smith that disclose express voltages within the ranges claimed in claim 61. (Ans. 17.) Accordingly, we are not persuaded by Appellants’ arguments. Claim 62 Claim 62 recites that the pressure is maintained within the range of 0.1 - 10 mbar. The Examiner relies on Clemmer’s disclosure of pressures in a range between one to a few thousand Torr. (Ans. 8; citing Clemmer, Para. [0063].) Appellants again argue that the pressures disclosed in Clemmer do not anticipate the pressures in the claim because the pressures are broad and not disclosed with sufficient specificity. (Br. 11-12.) However, Appellants have not adequately explained why the specific pressures recited in the claims would not have been obvious in view of the pressures disclosed in Clemmer. (Ans. 18.) Accordingly, Appellants’ arguments are not persuasive. Appeal 2010-004759 Application 11/513,185 10 Claim 67 Claim 67 recites, inter alia, that at least 60% of the electrodes have apertures which are substantially the same size or area. The Examiner found that Clemmer discloses all of the ring electrodes have the same size apertures. (Ans. 9, 19; citing Clemmer, Para [0100].) Appellants contend that the Examiner is improperly picking and choosing aspects of Clemmer and Smith by switching out the electrodes of Clemmer with those of Smith. (Br. 12.) We agree with the Examiner. The Examiner has relied on Smith for the concept of additionally applying an RF voltage to the structure of Clemmer. (Ans. 6-7, 15-16.) There is no indication that the Examiner has based the rejection on a substitution of the particular structure of Smith to Clemmer or that Clemmer’s electrodes would need to be substituted to receive an RF voltage. Claim 84 The Examiner concluded that claim 84 would have been obvious because Smith discloses a linear relationship between charge state transmission efficiency and RF voltage amplitude and that one of ordinary skill in the art would have recognized that lowering the RF voltage amplitude for an ion of interest would shift the mass or charge state cutoff so that multiply charged ions are transmitted and singly charged ions are not. (Ans. 9-12, 19-20.) Appellants contend that Smith discloses that as the RF amplitude is increased, the lower change states sequentially increases in relative Appeal 2010-004759 Application 11/513,185 11 abundance, which contrary to what is recited in claim 84. (Rep. 4-5, Col. 19, ll. 57-59.) We agree with the Examiner. Smith discloses that RF amplitude has a direct effect on the m/z cutoff, where the more the RF amplitudes are increased the more the high charge states are unable to be transmitted. (Col. 19, ll. 62; Fig. 10A-H.) Although Smith discussing increasing RF amplitudes, Figures 10A-H cited by the Examiner provide support that higher charge states can also be selectively transmitted. (See Ans. 10-12.) Accordingly, Smith provides support for the Examiner’s rationale that one of ordinary skill in the art would have been able to selectively transmit multiply charged ions as desired. CONCLUSION The Examiner did not err in concluding that it would have been obvious to have included an AC or RF voltage supply along with a DC voltage gradient along a plurality of electrodes in an ion mobility spectrometer in view of Clemmer and Smith. ORDER We affirm the Examiner’s decision rejecting claims 1, 3, 5, 6, 8-31, 33, 35, 36, and 68-71 under 35 U.S.C. § 103(a) as obvious over Clemmer in view of Smith. AFFIRMED Appeal 2010-004759 Application 11/513,185 12 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1). cu