Ex Parte LI

Patent Trial and Appeal BoardMay 29, 2013

11442232 (P.T.A.B. May. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GANGQIANG LI ____________________ Appeal 2010-008573 Application 11/442,232 Technology Center 2800 ____________________ Before DEBRA K. STEPHENS, JOHN G. NEW, and GREGG I. ANDERSON, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-008573 Application 11/442,232 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1, 5-13, and 15-20. We have jurisdiction under 35 U.S.C. § 6(b). Claims 2-4, 14, and 21 have been cancelled. We AFFIRM. Introduction According to Appellant, the invention relates to a high-field asymmetric waveform ion mobility spectrometer (FAIMS) with enhanced ion focusing (Abstract). STATEMENT OF THE CASE Exemplary Claim Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus for separating ions, comprising: an analyzer region comprising an inner electrode and an outer electrode, the inner electrode comprising an inner electrode external surface, the outer electrode comprising an outer electrode inner surface and a central region, wherein the inner electrode is disposed in the central region of the outer electrode forming a non-uniform gap between the inner electrode external surface and the outer electrode inner surface, and the non- uniform gap comprises a wide gap region and a narrow gap region; the outer electrode comprising: a first aperture positioned adjacent the wide gap region and comprising an entrance orifice configured to admit ions into the non-uniform gap; and a second aperture positioned adjacent the narrow gap region and comprising an exit orifice configured to transmit ions from the non-uniform gap; Appeal 2010-008573 Application 11/442,232 3 a first contact configured to apply an asymmetric waveform to only one of the inner electrode or the outer electrode; and a second contact configured to apply a compensation voltage to only the other one of the inner electrode or the outer electrode. REFERENCES : Guevremont US 6,787,765 B2 Sep. 7, 2004 (hereinafter “Guevremont ‘765”) Guevremont US 2005/0151072 A1 Jul. 14, 2005 (hereinafter “Guevremont ‘072”) Guevremont US 2006/0060773 A1 Mar. 23, 2006 (hereinafter “Guevremont ‘773”) REJECTIONS The Examiner made the following rejections: (1) Claims 1-5, 7, 8, 10-13, and 15-20 stand rejected under 35 U.S.C §. 103(a) as being unpatentable over Appellant’s Admitted Prior Art (“AAPA”) and Guevremont ‘773 (Ans. 3). 1 (2) Claim 6 stands rejected under 35 U.S.C §103(a) as being unpatentable over AAPA, Guevremont ‘773, and Guevremont ‘072 (Ans. 12). 1 The Examiner appears to have inadvertently included claim 14 in the statement of rejection in the Answer. Since this claim has been canceled as acknowledged by Appellant (App. Br. 2), claim 14 is not before us (see Final Rej. Cover Sheet). Appeal 2010-008573 Application 11/442,232 4 (3) Claim 9 stands rejected under 35 U.S.C §103(a) as being unpatentable over AAPA, Guevremont ‘773, and Guevremont ‘765 (Ans. 12). We have only considered those arguments that Appellant actually raised in the Briefs. Arguments Appellant could have made but chose not to make in the Briefs have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). ISSUE 1 35 U.S.C. § 103(a): claims 1, 5, 7, 8, and 10 Appellant asserts the invention is not obvious over AAPA and Guevremont ‘773 because the description in Figure 3 of Guevremont ‘773 teaches away from the present invention (App. Br. 8). Specifically, Appellant contends Guevremont ‘773 teaches “the non-uniform gap provides a wide gap region in the gap region in the analyzer and a narrow gap region in the extraction region” (App. Br. 7). However, Appellant argues the structure in Figure 3 is described in terms of its disadvantages while Figures 1c, 4a, and 4b are not (App. Br. 7-8). According to Appellant, Guevremont ‘773 describes the main disadvantage of the structure of Figure 3 is the translation of the inner electrode toward or away from the ion outlet may affect the changing of the width of the analyzer region elsewhere in the device and not just in the vicinity of the ion outlet 20 (App. Br. 8-9). Thus, Appellant argues, this change in the width elsewhere in the device clearly discourages one skilled in the art from following the teachings of Figure 3 (Reply Br. 4). Appeal 2010-008573 Application 11/442,232 5 Issue 1: Has the Examiner erred in finding Guevremont ‘773 does not teach away from the invention as recited in claim 1? ANALYSIS We agree with the Examiner. Merely disclosing more than one alternative does not teach away from any of these alternatives if the disclosure does not criticize, discredit, or otherwise discourage the alternatives. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Contrary to Appellant’s assertions, we find Guevremont ‘773 does not teach away from the present invention. Instead, Guevremont ‘773 discloses an invention and points out its advantages and disadvantages. Indeed, Guevremont ‘773 describes Figure 3 as “an end cross sectional view of a side-to-side FAIMS including a translatable inner electrode according to the instant invention” (pg. 2, [0025] emphasis added). As noted by the Examiner, Guevremont ‘773 discusses various embodiments of Appellant’s invention and their respective advantages and disadvantages (Ans. 15-16,). Discussing various embodiments of their invention and the respective advantages and disadvantages is not “teaching away,” but instead, providing an ordinarily skilled artisan various alternatives from which to choose based on design considerations. Thus, we do not find Guevremont ‘773’s disclosure would lead a person of ordinary skill in the art to be discouraged from following the path set out in the reference or to be led in a direction divergent from the path that was taken by Appellant. (See Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008)(citations omitted)). Appeal 2010-008573 Application 11/442,232 6 Accordingly, the Examiner did not err in finding Guevremont ‘773 does not teach away from the invention as recited in claim 1 and claims 1-5, 7, 8, and 10, not separately argued. Therefore, the Examiner did not err in rejecting claims 1-5, 7, 8, and 10 under 35 U.S.C. § 103(a) for obviousness over AAPA and Guevremont ‘773. ISSUE 2 35 U.S.C. § 103(a): claims 11-13 and 16-20 Appellant asserts their invention as recited in claim 11 is not obvious over AAPA and Guevremont ‘773 because Figure 3 teaches away and Figures 4d and 4e disclose the deviation in the inner electrode 102, the inner electrode has no center axis due to its irregular shape (App. Br. 10). Issue 2: Has the Examiner erred in finding Guevremont ‘773 does not teach away from the present invention as recited in independent claims 11 and 17; and in finding Guevremont discloses “ the center axis of the inner electrode and the center axis of the outer electrode are parallel and non- coincident?” ANALYSIS As set forth above, Appellant has not persuaded us Guevremont ‘773 teaches away from the present invention. The Examiner relied on the teachings of Figure 3 and Appellant has not presented sufficient evidence or argument to persuade us Figure 3 does not teach the disputed limitation. Further, we are not persuaded by Appellant’s arguments that Figures 4a-4e of Guevremont ‘773 does not disclose the disputed limitation (App. Br. 10). Indeed, the Examiner relies on Figure 3 to teach this feature. Accordingly, Appeal 2010-008573 Application 11/442,232 7 the Examiner did not err in finding Guevremont ‘773 does not teach away from the present invention and discloses “the center axis of the inner electrode and the center axis of the outer electrode are parallel and non- coincident” as recited in independent claims 11 and 17. Dependent claims 12, 13, 15, 16, and 18-20 were not separately argued and thus fall with their respective independent claims. Therefore, the Examiner did not err in rejecting claims 11-13, and 15-20 under 35 U.S.C. § 103(a) for obviousness over AAPA and Guevremont ‘773. ISSUE 3 35 U.S.C. § 103(a): claims 6 and 9 Appellant has not separately argued claims 6 and 9. Therefore, for the reasons set forth above, we find the Examiner did not err in rejecting claim 6 and 9 under 35 U.S.C. § 103(a) for obviousness. DECISION The Examiner’s rejection of claims 1-5, 7, 8, and 10-21 under 35 U.S.C. § 103(a) as being unpatentable over AAPA and Guevremont ‘773 is affirmed. The Examiner’s rejection of claim 6 under 35 U.S.C. § 103(a) as being unpatentable over AAPA, Guevremont ‘773, and Guevremont ‘072 is affirmed. The Examiner’s rejection of claim 9 under 35 U.S.C. § 103(a) as being unpatentable over AAPA, Guevremont ‘773, and Guevremont ‘765 is affirmed. Appeal 2010-008573 Application 11/442,232 8 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED ELD