Ex Parte Yasuno

Patent Trial and Appeal Board

Apr 13, 2018

13013668 (P.T.A.B. Apr. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/013,668
151297 7590
Chris Mizumoto
1150 Arbol Way
San Jose, CA 95126
FILING DATE FIRST NAMED INVENTOR
01125/2011 Motohide Y AS UNO
04/17/2018
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.
SMZ-03517314932001 9164
EXAMINER
SMITH, DAVIDE
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
04/17/2018 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 MOTOHIDE Y ASUN0 1
Appeal 2016-004965
Application 13/013,668
Technology Center 2800
Before CHRISTOPHER C. KENNEDY, JULIA HEANEY, and
JANEE. INGLESE, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-11. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
BACKGROUND
The subject matter on appeal relates to mass spectrometers. E.g.,
Spec. 1:3-5; Claim 1. Claim 1 is reproduced below from page 18 (Claims
Appendix) of the Appeal Brief:
1 The Appellant identifies Shimadzu Corp. as the real party in interest. App.
Br. 2.
Appeal 2016-004965
Application 13/013,668
1. A mass spectrometer comprising:
a first chamber in which an ion of a sample component is
produced by an ion source, the first chamber held at a first gas
pressure;
a second chamber containing a mass-analyzing unit to which the
ion is transported, the second chamber held at a second gas
pressure lower than the first gas pressure;
an ion-transport optical system including an electrode unit and a
voltage-applying unit, the electrode unit being disposed in a third
chamber under a vacuum atmosphere at a gas pressure lower than
the first gas pressure and higher than the second gas pressure, the
third chamber being placed between the first chamber and the
second chamber, the electrode unit having a funnel structure
composed of a plurality of ring electrodes arrayed in an ion-
transport direction, the ring electrodes having apertures whose
diameter gradually decreases at least within a partial section
along the ion-transport direction, the voltage-applying unit
applying radio-frequency voltages with reverse phases to each
pair of the ring electrodes neighboring each other in the ion-
transport direction and also applying a direct-current voltage to
each of the ring electrodes to create a potential gradient for
making the ion travel in the ion-transport direction; and
an ion-injecting unit for injecting the ion of the sample
component into a ring-electrode inner space surrounded by the
plurality of ring electrodes of the electrode unit, the ion being
injected in a direction substantially perpendicular to the ion-
transport direction and at a point farther than the ring electrode
located at a nearest end in the ion-transport direction,
wherein the ion-injecting unit includes a thin pipe passing
through a gap between neighboring ring electrodes and having
an exit end located inside the ring-electrode inner space and an
entrance end located at a point where the ion produced by the ion
source can be collected.
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Appeal 2016-004965
Application 13/013,668
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. Claims 1, 2, 4---6, 10, and 11 over Smith '628 (US 6,107,628,
issued Aug. 22, 2000), Park (US 2004/0159782 Al, published Aug. 19,
2004), and Franzen (US 2009/0039283 Al, published Feb. 12, 2009);
2. Claim 3 over Smith '628, Park, Franzen, and Smith '408 (US
6,583,408 B2, issued June 24, 2003);
3. Claim 7 over Smith '628, Park, Franzen, and Green (US
2009/0302209 Al, published Dec. 10, 2009);
4. Claim 8 over Smith '628, Park, Franzen, Green, and Smith '408.
5. Claim 9 over Smith '628, Park, Franzen, and Kim (US 7,495,212
B2, issued Feb. 24, 2009).
ANALYSIS
The Examiner finds that Smith '628 teaches a mass spectrometer
comprising many of the elements of claim 1 except that, inter alia, "Smith
does not teach that the ions are injected in a direction substantially
perpendicular to the ion transport direction." Final Act. 2--4.
The Examiner finds that Park teaches injection of ions perpendicular
to the ion transport direction. See id. at 4. The Examiner determines that it
would have been obvious to modify Smith '628 in view of Park to inject
ions perpendicular to the ion transport direction "in order to easily provide
ions from a source located above or below the ion transport optical system
and reduce the chance of ions escaping through the 'near' end of the ion
funnel." Id.
Largely for reasons stated by the Appellant, we do not find that
rationale to be persuasive. Park teaches a perpendicular injection direction
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Appeal 2016-004965
Application 13/013,668
to increase the length of the flight path of Park's ions. See Park i-f 46 ("By
reflecting the analyte ions back and forth between the is [sic] accelerator and
the reflectron several times, a much longer flight path can be
achieved .... "). As the Appellant explains, however, "[t]he parallel
arrangement of the capillary inlet 526 [of Smith '628 Fig. 5] is logical
because the ion funnel has successively smaller apertures to focus the ions in
the parallel direction." App. Br. 6. In the embodiment of Smith '628 relied
on by the Examiner, the ions are injected by inlet 526 in the direction in
which they are intended to travel. See, e.g., Smith '628 Fig. 5.
The Examiner's determination that a person of ordinary skill in the art
would have been motivated by Park to inject the ions of Smith '628 in a
direction perpendicular to the direction of intended travel to "reduce the
chance of ions escaping through the 'near' end of the ion funnel," see Final
Act. 4, is unpersuasive because the Examiner provides no evidence that an
ion injected in the perpendicular direction, rather than in the parallel
direction as taught by Smith '628, is less likely to escape the funnel. If
anything, and as the Appellant explains, see App. Br. 10, it appears that an
ion injected in the perpendicular direction, as proposed by the Examiner,
would have no initial velocity in the intended ion transport direction and,
therefore, would be more likely to escape the 'near' end of the funnel (i.e.,
the left end of Smith '628 Fig. 5), as compared to an ion injected in the
parallel direction that already has some positive velocity in the desired travel
direction, compare Smith '628 Fig. 5, with Park Fig. 7.
Even to the extent a person of ordinary skill in the art would have
been capable of adjusting the injection point and voltages to control the
velocity of the ions, see Ans. 3--4, the Examiner's stated rationale focuses
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Appeal 2016-004965
Application 13/013,668
more on whether the modification could have been made rather than on
whether a person of ordinary skill in the art would actually have been
motivated to make it or have expected any benefit from the proposed
modification. See Belden Inc. v. Berk-TekLLC, 805 F.3d 1064, 1073 (Fed.
Cir. 2015) ("[O]bviousness concerns whether a skilled artisan not only could
have made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention." (emphases in
original)). On this record, the Examiner has not persuasively established
that a person of ordinary skill would have been motivated to make the
combination for the reason stated by the Examiner.
We likewise are not persuaded that a person of ordinary skill in the art
would have been motivated to make the combination "in order to easily
provide ions from a source located above or below the ion transport optical
system," see Final Act. 4, or to "potentially mak[ e] the system more
compact," see Ans. 2. The Examiner provides no persuasive evidence or
technical reasoning to demonstrate ( 1) that a person of ordinary skill in the
art would have considered it desirable, or even appropriate, to modify Smith
'628 Fig. 5 to provide ions from above or below, or (2) that perpendicular
injection would result in a "more compact" device. Nor does the Examiner
persuasively refute the Appellant's explanation that "[t]he parallel
arrangement of the capillary inlet 526 [of Smith '628 Fig. 5] is logical
because the ion funnel has successively smaller apertures to focus the ions in
the parallel direction." See App. Br. 6. Absent a persuasive explanation as
to why a person of ordinary skill in the art would have had reason to inject
ions from above or below the ion transport optical system, and whether
perpendicular injection would have been appropriate in the context of Smith
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Appeal 2016-004965
Application 13/013,668
'628 Fig. 5 (as opposed to, for example, the context of Park, which
specifically desired increasing the length of the flight path of its ions), the
Examiner's rationale again appears to be focused on whether the
modification physically could have been made, and not on whether a person
of ordinary skill in the art actually would have had a reason to make it. See
Belden, 805 F.3d at 1073; see also Ex parte Chicago Rawhide Manuf Co.,
223 USPQ 351, 353, 1984 WL 63568, at *3 (BPAI 1984) ("The mere fact
that a worker in the art could rearrange the parts of the reference device to
meet the terms of the claims on appeal is not by itself sufficient to support a
finding of obviousness.").
On this record, a preponderance of the evidence does not support the
Examiner's findings concerning motivation to combine Smith '628 and
Park. Accordingly, we reverse the rejection of claim 1. Because the
rejection of all other claims on appeal relies on the combination of
Smith '628 and Park, and the Examiner's analysis of those claims does not
remedy the errors described above, we likewise reverse the rejections of
claims 2-11.
CONCLUSION
We REVERSE the Examiner's rejections of claims 1-11 under 35
U.S.C. § 103(a).
REVERSED
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