Ex Parte Takahashi et al

Patent Trial and Appeal Board

Dec 12, 2017

13260061 (P.T.A.B. Dec. 12, 2017)

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.
13/260,061 11/08/2011 Kazuteru Takahashi SMZ-017/7314782001 2665
151297 7590
Chris Mizumoto
1150 Arbol Way
San Jose, CA 95126
EXAMINER
OSENBAUGH-STEWART, ELIZA W
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
12/14/2017 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):
chris. mizumoto @ miztechlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUTERU TAKAHASHI, KIYOSHI OGAWA,
and MITSUTOSHI SETOU
Appeal 2017-001201
Application 13/260,061
Technology Center 2800
Before BRADLEY R. GARRIS, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
1 In our opinion, we refer to the Specification filed Sept. 23, 2011 (“Spec.”),
the Final Office Action dated Apr. 10, 2015 (“Final Act.”), the Appeal Brief
filed Nov. 10, 2015 as corrected Mar. 14, 2016 (“App. Br.”), the Examiner’s
Answer dated Aug. 29, 2016 (“Ans.”), and the Reply Brief filed Oct. 27,
2016 (“Reply Br.”).
Appeal 2017-001201
Application 13/260,061
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision to reject claims 1, 3-10, 15, 20, 21, 23, and 29 as obvious
under 35 U.S.C. § 103(a) over Ogawa3 in view of Aemi4 and Baykut5 plus
additional secondary references. App. Br. 4-11; Final Act. 2-10.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal relates to a mass spectrometer, which
includes a sample stage on which a sample is placed, a microscopic
observation position to which the sample can be moved, and an analysis
position where an ionization is performed by a matrix-assisted laser
desorption ionization (MALDI) method. Spec. 1,3. According to the
Specification, using conventional mass microscopes, a sample surface is
microscopically observed then taken out to perform a pretreatment such as
an application of a matrix, then set on the sample stage again. Id. ^ 7. This
can cause a positional error of the sample to occur, impeding an accurate
analysis of the initial measurement area. Id. Microscopic observation of a
sample surface with a matrix attached also poses difficulty in determining a
position to be analyzed because the matrix hides the microscopic shape and
blurs the color on the sample. Id. ^ 8. Appellants’ invention is said to be a
mass spectrometer capable of performing a pretreatment such as an
2 The real party in interest is identified by Appellants as Shimadzu
Corporation. App. Br. 2.
3 Kiyoshi Ogawa et al., Research and Development of Mass Microscope,
62, 3—4, 125-135 (2006) (“Ogawa”).
4 Hans-Rudolf Aemi et al., Automated Acoustic Matrix Deposition for
MALDI Sample Preparation, 78 Anal. Chem. 827 (2006) (“Aemi”).
5 Baykut et al., US 2008/0042055 Al, pub. Feb. 21, 2008 (“Baykut”).
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Application 13/260,061
application of matrix without removing the sample from the apparatus and
then continuing the analysis. Id. 9. Claim 1 below is illustrative (disputed
matter italicized):
1. A mass spectrometer, comprising:
a sample holder for holding a sample;
an imager for observing a surface of the sample held by
the sample holder;
an ionizer for ionizing a component at a specified position
on the sample held by the sample holder;
a mass analyzer for mass analyzing an ion generated by
the ionizer;
a pretreatment device having an ejector for performing a
pretreatment operation, to the sample, for making the sample
held by the sample holder ready to be ionized by the ionizer;
a chamber for containing an observation position where
the sample is observed by the imager, and separately a sample
operation position where the pretreatment operation is
performed, and still separately an analysis position where an
ionization is performed by the ionizer;
a mover for moving the sample holder in such a manner
that the sample is sequentially carried to the observation position,
the sample operation position, and the analysis position; and
a controller for allowing an operator to specify a position
or area for which a mass analysis is performed on a sample
surface image observed by the imager and for controlling the
mover in such a manner that the pretreatment operation is
performed for the position or area on the sample specified by the
operator and that the position or area is mass analyzed.
App. Br. 13 (Claims App’x.).
OPINION
The Examiner concludes that claims 1, 3-10, 15, 20, 21, 23, and 29
would have been obvious to one of ordinary skill in the art at the time of the
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invention for the reasons stated on pages 2-10 of the Final Action and 2—4
of the Answer.
Appellants do not separately argue the patentability of claims 1,4,6,
7, 20, 21, 23, and 29 over the combination of Ogawa, Aemi, and Baykut.
App. Br. 4-11. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), and in view
of the lack of separate arguments for the subsidiary rejections of dependent
claims 3, 5, 8-10, and 15 (App. Br. 11), claims 3-10, 15, 20, 21, 23, and 29
will stand or fall together with independent claim 1.
Appellants argue that the Examiner erred in rejecting claim 1 over the
combination of Ogawa, Aemi, and Baykut because Baykut teaches an ion
mobility spectrometer and nothing in either Ogawa or Baykut suggests
modifying Ogawa’s combination of an optical microscope and a MALDI
mass spectrometer by incorporating Baykut’s transfer chamber. App. Br. 5-
6. Appellants also contend that the combination of the references would
have interfered with Ogawa’s mass microscope’s intended purpose or
rendered Baykut’s ion mobility spectrometer unsatisfactory for its intended
purpose because the hexapole trap that Baykut’s generated ions are injected
into “could not have held a large enough amount of ions for observing their
positions . . . with a microscope after ions have been separated according to
their mobility.” Id. at 7. Even if the hexapole trap were made to hold a
large amount of ions for observation by a microscope, Appellants contend
that the ions would have diffused during their flight due to repulsion
between ions and could not have been correctly separated according to their
mobility. Id.
In addition, Appellants contend that the claimed invention is the
discovery of the positional error problem when the sample is taken out and
set again on the sample stage as described in paragraph 7 of the
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Specification, which Ogawa did not identify (Ogawa is also one of the
named inventors of the present application). Id. at 8. Finally, Appellants
contend that Ogawa’s mass microscope has no need for Baykuf s transfer
chamber because the transfer chamber is dependent on ion mobility
spectrometry and requires a vacuum lock, whereas no pressure difference
exists between Ogawa’s optical microscopic area and the laser desorption
area obviating the need for a vacuum lock. Id. at 9-10.
The Examiner responds that the general teaching of Baykut is to
position a matrix applicator after one analysis instrument and before a mass
spectrometer and explains that this teaching is applicable to Ogawa because
Ogawa discloses a mass spectrometer combined with another analysis
instrument. Ans. 3. The Examiner finds that Baykuf s purpose is to apply a
matrix to a sample to prepare it for ionization, but in a manner such that the
earlier analysis can be carried out without the matrix, and is not dependent
on the first analysis device being an ion mobility spectrometer. Id. The
Examiner further responds to Appellants’ intended purposes of the prior art
argument with the statement that the rejection is not based on the
incorporation of Baykuf s ion mobility spectrometer with Ogawa’s mass
microscope. Id.
Regarding Appellants’ argument regarding discovery of the positional
problem, the Examiner acknowledges that Ogawa does not disclose matrix
applicators but finds that Baykut and Aemi each teach matrix applicators
and, therefore, do not have the need to remove the sample for the purpose of
adding matrix material. Id. at 3—4. The Examiner determines that it would
have been obvious to a skilled artisan to apply matrix to a sample as taught
by Ogawa using the matrix applicators taught by Baykut and Aemi. Id. at 4.
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Regarding Appellants’ argument that Baykut’s transfer chamber is
unique to the lower pressure needs in the ion mobility spectrometer, the
Examiner finds that it would have been with the level of skill of a skilled
artisan to incorporate the pretreatment device of Baykut into the mass
microscope with the vacuum lock of Baykut. Id. Alternatively, the
Examiner finds that “the vacuum lock itself can be useful in the mass
microscope as the mass spectrometer may require or benefit from lowered
pressure.” Id.
In the Reply Brief, Appellants argue that obviousness is not
determined based on whether one thing can be easily incorporated into
another and maintain that there is no teaching, suggestion, or motivation to
combine or modify the mass microscope of Ogawa with the matrix
application device “plucked out” from Baykut. Reply Br. 4-5. Regarding
Baykut’s teachings being dependent on an ion mobility spectrometer,
Appellants argue that “[n]o teaching of Baykut contemplates a situation
where the ion mobility spectrometer is absent but the matrix application
device is present.” Id. at 5. According to Appellants, a skilled artisan would
not have incorporated any of Baykut’s teachings into Ogawa’s mass
spectrometer because “Baykut’s core teaching is the ion mobility
spectrometer.” Id. at 6. Appellants further argue that the Examiner’s only
reason for combining Baykut’s pretreatment device in Ogawa’s mass
microscope is because Ogawa does not have what Baykut has and that the
Examiner’s finding that a skilled artisan would have been able to do so is
only a conclusory statement. Id. at 7-8.
We are not persuaded by Appellants’ arguments that the Examiner
reversibly erred in rejecting claim 1 for the reasons stated by the Examiner
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in the Final Office Action and the Answer. We add the following for
emphasis.
Neither Appellants nor the Examiner has addressed the level of
ordinary skill in the pertinent arts of mass spectrometry and matrix-assisted
laser desorption ionization (MALDI). We will therefore consider the cited
prior art as representative of the level of ordinary skill in the art. See
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he absence
of specific findings on the level of skill in the art does not give rise to
reversible error ‘where the prior art itself reflects an appropriate level and a
need for testimony is not shown.’”) (quoting Litton Indus. Prods., Inc. v.
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). The significance
of the level of ordinary skill in the art is the role it plays in an obviousness
analysis. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966);
Okajima, 261 F.3d at 1355 (“[T]he level of skill in the art is a prism or lens
through which a judge, jury, or the Board views the prior art and the claimed
invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir.
1991) (“The importance of resolving the level of ordinary skill in the art lies
in the necessity of maintaining objectivity in the obviousness inquiry.”).
The Examiner’s finding that Baykut discloses a separate operation for
pretreating a sample held by a sample holder ready to be ionized in a
MALDI mass spectrometer is supported by the record. Final Act. 4; Baykut
^ 66. Also, the Examiner’s finding that Ogawa discloses a mass
spectrometer for performing the MALDI process, but does not disclose a
pretreatment device having an ejector for performing a pretreatment
operation, is supported by the record. Final Act. 3—4; Ogawa Abstract, Fig.
1. Appellants do not dispute these findings of the Examiner. See generally
App. Br.; Reply Br. Instead, Appellants’ arguments focus on the differences
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between claim 1 and the prior art, namely, (1) Baykut’s additional disclosure
of an ion mobility spectrometer before the pretreatment device and mass
MALDI spectrometer and (2) Ogawa’s disclosure of an optical microscope
before a MALDI mass spectrometer. App. Br. 5-6; Reply Br. 4-6. Simply
because the ion mobility spectrometer is presented first in Baykut before the
transfer chamber and matrix application device (Reply Br. 5) is insufficient
evidence that a person having ordinary skill in the art would not have
combined the teachings of Baykut with Ogawa without also incorporating
Baykut’s ion mobility spectrometer. Appellants’ argument is not credible in
view of the level of skill in the art as evidenced by the cited references
themselves. Moreover, in a determination of obviousness, a reference may
be relied upon for all that it would have reasonably suggested to one having
ordinary skill in the art. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude of
effective combinations does not render any particular formulation less
obvious.”).
Appellants’ arguments distinguishing the teachings of Baykut as being
limited to use with an ion mobility spectrometer also are unpersuasive
because “[t]he test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference. . . . Rather, the test is what the combined teachings of those
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.”); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the
teachings of references does not involve an ability to combine their specific
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structures.”). Appellants do not adequately explain why it would have been
beyond the skill of one of ordinary skill in the art to apply Baykut’s teaching
of a matrix application device between two analysis instruments, on the one
hand, to Ogawa’s combination of an optical microscope and a mass
spectrometer, on the other hand, to suggest an optical microscope and a mass
spectrometer having a matrix application device between them as described
by the Examiner (Ans. 3).
Appellants’ argument also is unpersuasive because providing an
automatic means to replace a manual activity to accomplish the same result
of applying matrix to a sample to perform MALDI is not sufficient to
distinguish over the prior art. See In re Venner, 262 F.2d 91, 95 (CCPA
1958) (claims to a permanent mold casting apparatus for molding trunk
pistons not patentable over cited art where the claimed invention combined
“old permanent-mold structures together with a timer and solenoid which
automatically actuates the known pressure valve system to release the inner
core after a predetermined time has elapsed.”).
In sum, we affirm the Examiner’s rejection of claim 1 as obvious over
the combination of Ogawa, Aemi, and Baykut.
CONCLUSION
We affirm the Examiner’s rejections of claims 1, 3-10, 15, 20, 21, 23,
and 29 as obvious under 35 U.S.C. § 103(a).
DECISION
The Examiner’s decision 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)(1).
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AFFIRMED
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