Ex Parte Takahashi et alDownload PDFPatent Trial and Appeal BoardDec 12, 201713260061 (P.T.A.B. Dec. 12, 2017) 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. 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”). 2 Appeal 2017-001201 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 3 Appeal 2017-001201 Application 13/260,061 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 4 Appeal 2017-001201 Application 13/260,061 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. 5 Appeal 2017-001201 Application 13/260,061 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 6 Appeal 2017-001201 Application 13/260,061 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 7 Appeal 2017-001201 Application 13/260,061 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 8 Appeal 2017-001201 Application 13/260,061 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). 9 Appeal 2017-001201 Application 13/260,061 AFFIRMED 10 Copy with citationCopy as parenthetical citation