Ex Parte Bateman et al

Patent Trial and Appeal Board

Nov 29, 2016

12302177 (P.T.A.B. Nov. 29, 2016)

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.
12/302,177 09/02/2009 Robert Harold Bateman M-473-02 4879
43840 7590 12/01/2016
Waters; Teehnnlnaies; Pomoratinn
EXAMINER
Legal/IP Department
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12/01/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT HAROLD BATEMAN,
JEFFERY MARK BROWN, MARTIN GREEN,
JASON LEE WILDGOOSE, ANTHONY JAMES GILBERT,
and STEVEN DEREK PRINGLE
Appeal 2015-005936
Application 12/302,177
Technology Center 2800
Before MICHAEL P. COLAIANNI, MONTE T. SQUIRE, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
1 In our Opinion below, we refer to the Final Action mailed May 16, 2014
(“Final Act.”), the Appeal Brief filed November 13, 2014 (“App. Br.”), the
Examiner’s Answer mailed March 25, 2015 (“Ans.”), and the Reply Brief
filed May 21, 2015 (“Reply Br.”).
Appeal 2015-005936
Application 12/302,177
STATEMENT OF THE CASE
Appellants2 appeal under 35U.S.C. § 134 from a rejection of claims
1,16, 23, 25, 28, 32-34, 59, 80, 83, 88, and 97—104. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
The claims are directed to methods and apparatuses for mass
spectrometry comprising conversion of ion arrival times or ion intensities
into multiple intensities or arrival times. Claim 1, reproduced below with
the limitation in dispute highlighted, is illustrative of the claimed subject
matter:
1. A method of mass spectrometry comprising:
signal;
digitising a first signal output from an ion detector to
produce a first digitised signal;
determining or obtaining a second differential or a
second difference of said first digitised signal;
determining the arrival time To of one or more first ions
from said second differential or second difference of said first
digitised signal;
determining the intensity So of said one or more first
ions;
converting the determined arrival time To of said one or
more first ions into a first arrival time T„ and a second arrival
time T„+i and converting the determined intensity So of said
one or more first ions into a first intensity or area S„ and a
second intensity or area S„+i; and
storing said first arrival time Tn and said second arrival
time Tn+i and said first intensity or area Sn and said second
2 Appellants identify the real party in interest as Micromass UK Limited.
App. Br. 4.
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Appeal 2015-005936
Application 12/302,177
intensity or area Sn+i in two substantially neighbouring or
adjacent pre-determined time bins or memory locations.
App. Br. 33 (Claims App’x, emphasis added).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tomlinson US 5,121,443
Rather US 2003/0218129 A1
Nenonen et al. US 2005/0058343 A1
(“Nenonen”)
He et al. US 2005/0143982 Al
(“He”)
REJECTIONS
The claims stand rejected under 35 U.S.C. § 103(a) as follows: claims
1,16, 23, 25, 28, 32-34, 59, 80, 83, 88, 97, 98, and 103-104 over Rather
further in view of Tomlinson and He, and claims 99—102 over Rather further
in view of He. Final Act. 7, 18.
June 9, 1992
Nov. 27, 2003
Mar. 17, 2005
June 30, 2005
OPINION
The Examiner relies on Rather to teach most of the limitations of the
claims, on Tomlinson to teach extracting second derivatives from data (a
limitation present in all of the pending claims except 99—102), and on He to
teach “converting the determined arrival time To of said one or more first
ions into a first arrival time Tn and a second arrival time Tn+i and converting
the determined intensity So of said one or more first ions into a first intensity
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Appeal 2015-005936
Application 12/302,177
or area Sn and a second intensity or area Sn+i.” Final Act. 7—8. The
limitation that the Examiner says is taught by He is present in all of the
pending claims.3 App. Br. 33—38 (Claims App’x).
Appellants contend that the Examiner fails to make a prima facie case
of obviousness because there is no apparent reason for one of ordinary skill
in the art to combine known elements in the fashion claimed. Id. at 10
(citing KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
Appellants contend that neither Rather nor He teach binning methods
that meet the limitations of the claims. Id. at 13—14. Rather is said to
disclose a conventional binning arrangement in which the time of flight and
intensity of the signal are calculated for ion peaks in a mass spectrometer.
Id. at 13. According to Appellants, in Rather, the ion’s actual arrival time is
lost, due to the conventional binning. Id.
Appellants argue that He only deals with one-dimensional data (as
opposed to both time and intensity, used in the invention). Id. at 14.
Moreover, Appellants contend that He describes a re-binning process in
which histogram bins are distributed into a desired number of
complementary cumulative distribution function curve (CCDF) bins. Id.
Appellants urge that there is no reason for one of ordinary skill in the art at
the time of the invention to create a CCDF curve, as disclosed in He, in
connection with mass spectrometry, as discussed in Rather. Id. In addition,
according to Appellants, if one were to re-bin the histogram generated in
3 Claim 97, 98, 101, and 102 require “converting the determined arrival time
To or mass or mass to charge ratio Mo,” rather than only To, but the
Examiner’s arguments are identical for these claims which, therefore, are not
addressed separately.
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Application 12/302,177
Rather, the original time data would have already been lost and
unrecoverable. Id.
The Examiner contends that modification could be made of “the
apparatus of Rather and Tomlinson’s histogram ‘when the histogram bin
does not align with a single CCDF bin’ (He, [30]) or when the event being
detected does not align with a single histogram bin that it is desired to split it
into, and storing the new values in adjacent time bins or memory locations.”
Final Act. 8. According to the Examiner, one of ordinary skill in the art at
the time of the invention would have made the modification to allow a better
and more proportional distribution of ion intensity between ion arrival time
bins and a more precise peak layout on a mass spectrum because of the
improved binning division.
We agree with Appellants that the Examiner has not provided an
apparent reason to combine He’s techniques with Rather’s method and
apparatus. The Examiner provides no citation to the record in support of the
proposed combination, and has failed to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does. See, e.g., KSR, 550
U.S. at 418; In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”); In re
Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred when
the specific understanding or principal within the knowledge of one of
ordinary skill in the art leading to the modification of the prior art in order to
arrive at appellant’s claimed invention has not been explained).
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Application 12/302,177
Because all other claims on appeal recite the same disputed limitation,
our decision on claim 1 controls the outcome for all claims.
We reverse the Examiner’s prior art rejection under 35 U.S.C. §
103(a) for the reasons presents by Appellants and given above.
DECISION
For the above reasons, the Examiner’s prior art rejection of claims 1,
16, 23, 25, 28, 32-34, 59, 80, 83, 88, and 97—104 is reversed.
REVERSED
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