Ex Parte Bateman et alDownload PDFPatent Trial and Appeal BoardNov 29, 201612302177 (P.T.A.B. Nov. 29, 2016) Copy Citation 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 34 MAPLE STREET PURINTON, BROOKE J MILFORD, MA 01757 ART UNIT PAPER NUMBER 2881 NOTIFICATION DATE DELIVERY MODE 12/01/2016 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): ipdocket@waters.com 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. 2 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 3 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. 4 Appeal 2015-005936 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). 5 Appeal 2015-005936 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 6 Copy with citationCopy as parenthetical citation