Ex Parte Brown et al

Patent Trials and Appeals Board

Mar 25, 2019

14768376 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/768,376 08/17/2015
160377 7590 03/27/2019
Kacvinsky Daisak Bluni PLLC (8185)
50 Doaks Lane
Marblehead, MA 01945
FIRST NAMED INVENTOR
Jeffery Mark Brown
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8185.0038 1031
EXAMINER
SMYTH, ANDREW P
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
docketing@kdbfirm.com
mbotnaru@kdbfirm.com
ehysesani@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFERY MARK BROWN,
MARTIN RAYMOND GREEN,
STEVEN DEREK PRINGLE, and
JASON LEE WILDGOOSE
Appeal2018-005356
Application 14/768,376 1
Technology Center 2800
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-21.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the Applicant, Micromass UK Limited, which, according to
the Appeal Brief, is the real party in interest (Appeal Br. 4).
Appeal 2018-005356
Application 14/768,376
Independent claim 1 below is illustrative of the subject matter on
appeal ( emphasis added):
1. A collision or reaction device for a mass spectrometer
compnsmg:
a first device arranged and adapted to cause first ions to
collide or react with charged particles or neutral particles or
otherwise dissociate so as to form second ions; and
a second device arranged and adapted to apply a
broadband excitation with one or more frequency notches to
said first device so as to cause said second ions or ions derived
from said second ions to be substantially ejected from said first
device without causing said first ions to be substantially ejected
from said first device;
wherein said collision or reaction device is arranged and
adapted to transfer said second ions or ions derived from said
second ions out of said collision or reaction device for
subsequent analysis or further reaction.
Appeal Br. 27 (Claims App.)
The Examiner maintains the following rejections: 2
(a) claims 1-3, 5-8, and 11-21 under 35 U.S.C. § I03(a) as being
unpatentable over Zubarev et al. (US 6,924,478 Bl, issued Aug. 2, 2005)
("Zubarev"), in view of Plomley et al. (US 6,815,673 B2, issued Nov. 9,
2004) ("Plomley");
(b) claim 4 under 35 U.S.C. § I03(a) as being unpatentable over
Zubarev in view of Plomley and further in view of Green et al. (US
2010/0072360 Al, published Mar. 25, 2010) ("Green");
2 We refer to the Specification filed Aug. 17, 2015 ("Spec."), the Final
Office Action dated Feb. 7, 2017 ("Final Act."), the Appeal Brief filed Oct.
6, 2017 ("Appeal Br."), the Examiner's Answer dated Feb. 21, 2018
("Ans."), and the Reply Brief filed Apr. 23, 2018 ("Reply Br.").
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Application 14/768,376
(c) claim 9 under 35 U.S.C. § I03(a) as being unpatentable over
Zubarev in view of Plomley and further in view of GB 201019337 (GB
201019337 DO, published Dec. 29, 2010) ("GB '337"); and
(d) claim 10 under 35 U.S.C. § I03(a) as being unpatentable over
Zubarev in view of Plomley and further in view of Castro-Perez et al. (US
2009/0302210 Al, published Dec. 10, 2009) ("Castro Perez").
ANALYSIS
Obviousness Rejection over Zubarev and Plomley
Claims 1-3, 5-8, and 11-21 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Zubarev in view of Plomley.
Appellant argues claims 1-3, 5-8, 11-14, 16, and 17 as a first group,
claim 15 as a second group, claims 18 and 19 as a third group, claim 20 as a
fourth group, and claim 21 as a fifth group (Appeal Br. 7-23). We select
claim 1, claim 15, claim 18, claim 20, and claim 21 as representative claims
for the respective groups, which we address below.
Claims 1-3, 5-8, 11-14, 16, and 17
Appellant's principle argument on appeal is that there would have
been no reason to combine the applied references because ( 1) Plomley' s
notched broadband waveform is used to eject undesired precursor ions,
which are lost and not analyzed, so only a selected product ion is
accumulated in a trap while Zubarev's system ejects all product ions for
analysis but does not eject precursor ions, (2) Plomley's notched broadband
waveform results in radial ejection of excited atoms but Zubarev's system
ejects product ions in a manner that "requires more controlled manipulation
of the ions than mere radial ejection," (Appeal Br. 9), and (3) the purpose of
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Application 14/768,376
Plomley's notched broadband waveform is to eject undesired ions to
accumulate a specific ion and improve its intensity while Zubarev does not
use ejection to improve the intensity for one product ion but selectively
removes and analyzes product ions (Appeal Br. 7-9).
Appellant's arguments are unpersuasive. The Examiner finds
Zubarev discloses the device of claim 1 except for the second device
applying a broad band excitation with one or more frequency notches, as
recited in claim 1 (Final Act. 6-9). The Examiner finds Plomley discloses a
notched broadband waveform and concludes it would have been obvious to
modify the device of Zubarev to use Plomley's notched broadband
waveform to remove unwanted fragment ions and control the characteristics
of an ion population in a trap (id. at 10-11 ).
Zubarev discloses a mass spectrometry method in which precursor
ions are transported to an ion trap where the precursor ions are bombarded
with a beam of electrons to cause some of the precursor ions to dissociate
into fragments for analysis (Zubarev 4:26-41; 9:24--35). Zubarev discloses
then applying vibrational excitation to unreacted precursor ions to dissociate
those precursor ions into fragments that are then analyzed (Id. at 4:41--48;
9:37--44).
Plomley discloses injecting precursor ions into a collision cell 28,
which functions as an ion trap, where the precursor ions produce fragment
ions due to collisions with a gas (Plomley 5 :24--46). Plomley further
discloses applying a notched broadband waveform to the fragment ions
within the collision cell 28 so a narrow mass range of fragment ions is
selected with improved sensitivity (id. at 5:61-6:3).
In view of the above, the combination of Zubarev and Plomley
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discloses the structure recited in claim 1 because Zubarev discloses the
structure of claim 1, except that the second device applies a broadband
excitation with one or more frequency notches (Ans. 11 ), but this is
disclosed by Plomley (id.). The Examiner explains that the notched
broadband waveform of Plomley would be used in Zubarev's method to
select first fragment ions and eject any secondary fragment ions, which
would be ejected for further reaction (Ans. 10-11).3 As noted above, the
Examiner provides a reason for this proposed combination by concluding it
would have been obvious for one of ordinary skill in the art to modify
Zubarev's method to use Plomley's notched broadband waveform so
unwanted fragment ions are removed and the characteristics of an ion
population in a trap are controlled (Final Act. 10-11 ).
With regard to retaining precursor ions for a second dissociation
technique, as desired by Zubarev, we discern no evidence or persuasive
technical reasoning in the record to explain why this would have presented
an obstacle rendering the proposed combination nonobvious to one of
ordinary skill in the art. "A person of ordinary skill is also a person of
ordinary creativity, not an automaton." KSR Int 'l. Co. v. Teleflex Inc., 550
U.S. 398,421 (2007). Indeed, Appellant's arguments address this issue by
suggesting the use of a broadband waveform having notches so precursor
ions are not ejected. Specifically, Appellant asserts the proposed
3 We note that Zubarev's disclosure permits a period of time for the
accumulation of product ions by disclosing ejection of product ions for
detection after dissociation is conducted for "a period of time" (Zubarev
9:31--44). Thus, Plomley's notched broadband waveform would function to
select desired product ions produced by Zubarev's method but do so with
improved sensitivity (Plomley 5 :61---6:3).
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Application 14/768,376
combination of Zubarev and Plomley will not function, even assuming a
notched broadband waveform with notches for precursor ions is applied after
dissociation reactions, because the notched broadband waveform would
cause all product ions to eject at once and the detector would be saturated by
all product ions at once (Appeal Br. 9--10). The arguments that all product
ions would eject at once and cause detector saturation are mere attorney
argument. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
("Attorney's argument in a brief cannot take the place of evidence.").
Further, these unsupported arguments do not explain why these occurrences
would have presented an issue that would have made the proposed
combination nonobvious. Similarly, Appellant's argument that Plomley's
notched broadband waveform results in radial ejection of excited atoms
while Zubarev's system ejection "requires more controlled manipulation of
the ions than mere radial ejection" (Appeal Br. 9), is also mere attorney
argument and does not explain why the asserted difference amounts to a
nonobvious combination.
Appellant also argues the combination of Zubarev and Plomley does
not disclose or suggest the application of notched broadband frequency to
eject ions for subsequent analysis or further reaction, as recited in claim 1,
because Plomley's notched broadband waveform does not eject fragment
ions from Plomley's collision cell 28 and ions ejected for further reaction in
Plomley's system are not ejected via the notched broadband waveform
(Appeal Br. 10-11; Reply Br. 2-8).
Although "[a] patent applicant is free to recite features of an apparatus
either structurally or functionally[,] ... choosing to define an element
functionally, i.e., by what it does, carries with it a risk." In re Schreiber, 128
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F.3d 1473, 1478 (Fed. Cir. 1997). Where the Examiner establishes a
reasonable basis to believe that a property or characteristic recited in the
claims would have been inherent to the apparatus, the burden of proof shifts
to the Appellant to show that this characteristic or property is not possessed
by the prior art. Id. Here, Appellant does not direct us to sufficient evidence
or persuasive technical reasoning to refute the Examiner's reasonable
determination that the combination of Zubarev and Plomley would have
been capable of ejecting product ions out of a collision or reaction device
"for subsequent analysis or further reaction," as recited in claim 1.
Further, Appellant's own arguments characterize Plomley's notched
broadband waveform as ejecting undesired product ions ("[i]ons that are not
retained in the ion trap, because they are resonantly excited and ejected by
the notched broadband waveform, are lost to the system" (Appeal Br. 8
( emphasis added)); "Plomley teaches [the] use of a notched broadband
waveform to eject undesired ions" (id. at 9); "[r]emoved ions, even precursor
(parent) ions, are considered undesirable and are therefore ejected" (id. at
19)). As explained by the Examiner at pages 10-11 of the Examiner's
Answer, the broadest reasonable interpretation of transferring second ions
out of a collision or reaction device for "further reaction," as recited in claim
1, encompasses the function performed by Plomley's notched broadband
waveform of ejecting undesired product ions. Specifically, Plomley
discloses that ions falling within the notch of the notched broadband
waveform are retained in the trap while all others are lost, either through
neutralization or via further dissociation due to further collisions (Plomley
7:53---62).
Appellant does not cite a definition to distinguish the language
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"further reaction" from the neutralization or further dissociations disclosed
by Plomley for undesired ions ejected by the notched broadband waveform.
However, Zubarev's disclosure indicates that dissociation is a type of
reaction (Zubarev 9:31-33). Appellant argues that undesired ions "are not
subjected to further disassociation or analysis" (Reply Br. 4), but this
argument does not reflect the scope and language of claim 1, which recites
"further reaction." Based upon the record before us, we agree that "further
reaction" encompasses the loss of undesired product ions (via neutralization
or further dissociation) ejected by Plomley's notched broadband waveform.
As a result, Appellant's arguments do not identify a reversible error in
the Examiner's rejection of claim 1 over Zubarev and Plomley. Appellant
does not argue claims 2, 3, 5-8, 11-14, 16, and 17 separately from claim 1
(Appeal Br. 7-11).
Claim 15
Claim 15 depends from 1. Appellant argues "the Examiner has not
cited any portion of the specification of Zubarev" in the rejection of claim 15
and Appellant does not see any disclosure of the limitations of claim 15 by
Zubarev (Appeal Br. 11 ).
The Examiner explains how Zubarev's ion trap 36 in Figure 3
suggests the limitations of claim 15 at page 12 of the Examiner's Answer.
Appellant does not respond to this explanation. Therefore, Appellant's
arguments do not identify a reversible error in the Examiner's rejection of
claim 15 over Zubarev and Plomley.
Claims 18 and 19
Independent claim 18 recites a method with limitations similar in
scope to those of claim 1. Claim 19 depends from claim 18.
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Appellant presents arguments for claims 18 and 19 similar to those
asserted for claim 1 (Appeal Br. 11-15). For the reasons discussed above
with regard to claim 1, the combination of Zubarev and Plomley suggests the
limitations of claim 18, including transferring second ions out of a first
device for further reaction (i.e., due to Plomley's notched broadband
waveform ejecting undesired ions, which are lost due to neutralization or
further dissociation).
Therefore, Appellant's arguments do not identify a reversible error in
the Examiner's rejection of claims 18 and 19 over Zubarev and Plomley.
Claims 20 and 21
Although claims 20 and 21 are argued separately we address them
together here for purposes of efficiency.
Independent claim 20 recites a collision or reaction device arranged
and adapted to, among other things, "cause said fragment or product ions to
be auto-ejected from said device immediately after said fragment or product
ions are formed without auto-ejecting said parent ions." Appeal Br. 29
( Claims App.).
Independent claim 21 recites a method having limitations similar in
scope to those of claim 20.
As discussed above with regard to claim 1, it would have been
obvious to use Plomley's notched broadband waveform without ejecting
parent/precursor ions. With regard to the timing of ejecting undesired ions
via the notched broadband waveform, Plomley teaches that "unwanted
fragment ions formed during an axial acceleration collision activated
dissociation event are radially ejected as quickly as, or soon after they are
formed" (Plomley 9:56-62, 10:32-37; Ans. 12). Thus, Plomley suggests
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immediately auto-ejecting unwanted fragments ions, as recited in claims 20
and 21. As a result, Appellant's arguments do not identify a reversible error
in the Examiner's rejection of claims 20 and 21 over Zubarev and Plomley.
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103(a) rejection of claims 1-3, 5-8,
and 11-21.
Obviousness Rejections of Claims 4, 9, and 10
Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Zubarev in view of Plomley and further in view of Green.
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Zubarev in view of Plomley and further in view GB '337.
Claim 10 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Zubarev in view of Plomley and further in view of Castro-Perez.
For each of these rejections, Appellant argues "[t]he Examiner has
not provided any reason why one of ordinary skill in the art would have been
motivated to make the Examiner's proposed modification" (Appeal Br. 23-
25). These arguments do not address the Examiner's rejections, which each
contain a rationale for making the proposed modification (Final Act. 35, 37,
39). As a result, Appellant's arguments do not identify a reversible error in
the Examiner's rejection of claims 4, 9, and 10.
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103(a) rejections of claims 4, 9, and
10.
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DECISION
The Examiner's rejection of claims 1-21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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