Ex Parte Yamaguchi

Patent Trial and Appeal Board

Jan 31, 2017

13122718 (P.T.A.B. Jan. 31, 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.
13/122,718 04/05/2011 Shinichi Yamaguchi SMZ-014/7314752001 1958
23517 7590 02/02/2017
MORGAN, LEWIS & BOCKIUS LLP (BO)
1111 PENNSYLVANIA AVENUE, N.W.
WASHINGTON, DC 20004
EXAMINER
MCCORMACK, JASON L
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINICHIYAMAGUCHI
Appeal 2015-004327
Application 13/122,718
Technology Center 2800
Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
DEBRA L. DENNETT, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter the “Appellant”)1 2appeals under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 1—7.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 The Appellant states that the real party in interest is “Shimadzu
Corporation” (Appeal Brief filed October 28, 2014, hereinafter “Appeal
Br.” 2).
2 Appeal Br. 1, 6—20; Reply Brief filed February 27, 2015, hereinafter
“Reply Br.,” 2—7; Final Office Action (notice sent electronically on March
28, 2014), hereinafter “Final Act.,” 1—9; Examiner’s Answer (notice sent
electronically on December 29, 2014), hereinafter “Ans.,” 2—12.
Appeal 2015-004327
Application 13/122,718
BACKGROUND
The subject matter on appeal relates to a time-of-flight mass
spectrometer (Specification, hereinafter “Spec.,” 11). According to the
Specification {id. 110), the Appellant’s objective is to provide a mass
spectrometer “that is easy to design and can be compactified while ensuring
a long flight distance so as to achieve high levels of mass accuracy and mass
resolving power.”
Representative claims 1 and 4 are reproduced from page 22 and pages
23—24 of the Appeal Brief (Claims Appendix), respectively, with key
disputed limitations highlighted in bolded, italicized text, as follows:
1. A time-of-flight mass spectrometer for making
ions fly in a flight space by giving a predetermined amount of
energy to the ions, for temporally separating the ions according
to their mass during their flight, and for detecting the separated
ions with an ion detector, comprising:
a plurality of in-plane basic ion optical systems and a
plurality of inter-plane basic ion optical systems, each basic ion
optical system having one ion inlet, one ion outlet and a flight
orbit on a same plane, wherein the flight orbit is formed by a
plurality of sector-shaped electric fields in such a manner that
the ions entering from the ion inlet will turn 360 degrees or
more, satisfying a temporal focusing condition at the ion outlet;
and
N sets of the in-plane basic ion optical systems
separately stacked at predetermined intervals where N is an
integer equal to or greater than two, wherein among all the N
sets of the in-plane basic ion optical systems, the ion outlet of
one of the in-plane basic ion optical systems and the ion inlet of
another one of the in-plane basic ion optical systems are
connected by one of the inter-plane basic ion optical systems so
as to create a loop-type orbit in which the N sets of the in-plane
basic ion optical systems and the N sets of the inter-plane basic
ion optical systems are alternately and sequentially connected.
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Appeal 2015-004327
Application 13/122,718
4. A time-of-flight mass spectrometer for making
ions fly in a flight space by giving a predetermined amount of
energy to the ions, for temporally separating the ions according
to their mass during their flight, and for detecting the separated
ions with an ion detector, comprising:
a first basic ion optical system and a second basic ion
optical system, each basic ion optical system having one ion
inlet, one ion outlet and a flight orbit on a same plane, wherein
the flight orbit is formed by a plurality of sector-shaped electric
fields in such a manner that an ion entering from the ion inlet
will turn 360 degrees or more, satisfying a temporal focusing
condition at the ion outlet, and
wherein a plane on which one set of the first ion optical
system lies, and a plane on which another set of the first ion
optical system located in a subsequent stage lies, are oriented so
that these two planes make an orthogonal or an oblique angle,
and the ion outlet of the aforementioned one set of the first ion
optical system is connected to the inlet of the aforementioned
another set of the first ion optical system by the second ion
optical system.
REJECTIONS ON APPEAL
The Examiner rejected the claims as follows:
I. Claims 1—5 under pre-AlA 35 U.S.C. § 103(a) as
unpatentable over Brown3 in view of Kovtoun et al.4
(hereinafter “Kovtoun”);
II. Claims 6 and 7 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Brown in view of Kovtoun and further
in view of Buttrill, Jr.5; and
III. Claims 1 and 4 under the judicially-created doctrine of
3 US 2009/0314934 Al, published December 24, 2009.
4 US 2009/0179150 Al, published July 16, 2009.
5 US 2004/0056190 Al, published March 25, 2004.
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Appeal 2015-004327
Application 13/122,718
obviousness-type double patenting over claim 1 of
Yamaguchi et al.6 (hereinafter “Yamaguchi”).
(Final Act. 2—9; Ans. 2—11.)
DISCUSSION
Rejection I
Claims 1—3
The Examiner finds that Brown’s Figure 3 discloses every limitation
recited in claim 1 “except that there is no explicit disclosure of causing ions
to turn 360 degrees” (Final Act. 2—3). To account for this difference, the
Examiner relies on Kovtoun. Specifically, the Examiner finds that
Kovtoun’s Abstract and Figure 4 disclose the limitations missing in Brown
(id. at 3). The Examiner concludes from these findings that “[i]t would have
been obvious to one possessing ordinary skill in the art... to have combined
Brown and Kovtoun in order to increase the flight space of ions by causing
the ions to orbit for a greater period of time in each plane before being
ejected to the next plane” (id.).
The Appellant contends, inter alia, that Brown’s smaller electric
sectors 33a—33e and single electric sector 32 may correspond to the
Appellant’s specified “in-plane basic ion optical systems” and “inter-plane
basic ion optical systems,” respectively, but that, in contrast to claim 1,
Brown does not disclose “a plurality of inter-plane basic ion optical
systems” (Appeal Br. 9). The Appellant further argues that Brown’s smaller
electric sectors 33a—33e are staggered, not “stacked” as required by claim 1
(id. at 10).
6 US 8,026,480 B2, issued September 27, 2011.
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Appeal 2015-004327
Application 13/122,718
The Examiner responds that “[cjlaim 1 does not limit the in-plane and
inter-plane optical systems to be individual electric sector electrode systems”
(Ans. 2). According to the Examiner, Brown’s Figure 3 illustrates three
basic ion optical systems 33a, 33c, and 33e, which are present in a common
plane (i.e., “in-plane”) (id. at 4). Alternatively, the Examiner states that “it
may reasonably be alternatively considered that the six basic ion optical
systems (32) are ‘in-plane’ while the five basic ion optical systems (33a, b,
c, d, e) are ‘inter-plane’ . . . (id. at 4—5). Regarding the “stacked”
limitation, the Examiner states that the term “does not necessarily require
that the basic ion optical systems be located directly on top of one another”
(id. at 5).
We agree with the Appellant that the Examiner’s rejection is not
well-founded. Brown’s Figure 3 is reproduced as follows:
333
Brown’s Figure 3 above depicts a mass analyzer including an ion source 30,
a MALDI (“Matrix Assisted Laser Desorption Ionisation”) source or target
plate 31, first elongated electric sector 32, and a plurality of smaller electric
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Application 13/122,718
sectors 33 a—33 e arranged in an orthogonal or staggered manner relative to
the first elongated electric sector 32, wherein the ion path is indicated by the
arrows flflf 151, 167—176).
As the Appellant points out (Reply Br. 3), Brown’s elongated electric
sector 32 is a single elongated sector—i.e., a single system—with a single
sector-shaped electric field. One skilled in the relevant art would not
interpret “a plurality of in-plane basic ion optical systems” or “a plurality of
inter-plane basic ion optical systems” (emphasis added) in claim 1 to read on
Brown’s single elongated sector 32. In re Suitco Surface, Inc., 603 F.3d
1255, 1259-60 (Fed. Cir. 2010) (The PTO’s “construction [must] be
‘consistent with the specification, . . . and . . . claim language should be read
in light of the specification as it would be interpreted by one of ordinary skill
in the art’” (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990))).
Furthermore, although the Examiner is correct that the term “stacked”
does not require the in-plane systems to be directly on top of each other,
smaller electric sectors 33a—33e do not appear to be stacked at all relative
to each other. Therefore, to the extent that the Examiner is relying on
Brown’s sectors 33a—33e as the “N sets of the in-plane basic ion optical
systems” specified in claim 1, the sectors would not be “separately stacked”
as required by the claim.
For these reasons, we cannot uphold the rejection of claims 1—3.
Claims 4 & 5
Claims 4 and 5, unlike claim 1, do not require a plurality of in-plane
ion optical systems or a plurality of inter-plane ion optical systems. Rather,
claims 4 and 5 merely require “a first basic ion optical system” and “a
second basic ion optical system.”
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Application 13/122,718
The Appellant does not dispute the Examiner’s findings regarding
Kovtoun’s scope and content and the rationale for combining Kovtoun with
Brown. Instead, the Appellant argues that “Brown describes an orbital
system using compact sectors where the preferred turning angle is 180° and
teaches away from looping the ions so that the ions lap each other on the
same plane . . . (Appeal Br. 15—16) (emphasis added). According to the
Appellant {id. at 16), “Brown explains in paragraph [0007] that lengthening
the flight path will result in increasing the diameter of the final packet and
this will in turn require the need for a larger detector, making such a mass
analyser impractical for commercialization.”
We do not find the Appellant’s arguments persuasive. The prior art’s
preference for a particular embodiment does not constitute a teaching away
as to other less preferred embodiments. In re Fulton, 391 F.3d 1195, 1200
(Fed. Cir. 2004) (“[C]ase law does not require that a particular combination
must be the preferred, or the most desirable, combination described in the
prior art in order to provide [the] motivation [or reason] for the current
invention.”).
Moreover, the mere fact that a prior art reference may disclose that a
particular embodiment is not the most economical due to size and cost does
not necessarily render a claim to that embodiment patentable. In re
Farrenkopf 713 F.2d 714, 718 (Fed. Cir. 1983) (“That a given combination
would not be made by businessmen for economic reasons does not mean that
persons skilled in the art would not make the combination because of some
technological incompatibility. Only the latter fact would be relevant.”).
For these reasons, we uphold the rejection of claims 4 and 5.
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Application 13/122,718
Rejection II
Claim 6 depends from claim 1 (Appeal Br. 24). Claim 7 is an
independent claim, but, like claim 1, requires “a plurality of in-plane basic
ion optical systems,” “a plurality of inter-plane basic ion optical systems,”
and that “N sets of the in-plane basic ion optical systems separately stacked
at predetermined intervals” (id.). Therefore, our reasons for reversal as to
claim 1 apply equally to claims 6 and 7.
Rejection III
The Appellant does not offer any argument against Rejection III.
Therefore, we summarily affirm Rejection III. Cf. Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008).
SUMMARY
The Examiner’s final decision to reject claims 1, 4, and 5 is affirmed.
The Examiner’s final decision to reject claims 2, 3, 6, and 7 is reversed.
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).
AFFIRMED-IN-PART
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