Tairo Ogura

Patent Trials and Appeals Board

Sep 16, 2019

14780077 - (D) (P.T.A.B. Sep. 16, 2019)

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.
14/780,077 09/25/2015 Tairo OGURA Q221484 7480
23373 7590 09/16/2019
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
MASKELL, MICHAEL P
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
09/16/2019 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TAIRO OGURA
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Appeal 2018–007567
Application 14/780,0771
Technology Center 2800
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
MARK NAGUMO, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

1 SHIMADZU CORPORATION is the applicant and real party in interest.
(See App. Br. 2).
Appeal 2018–007567
Application 14/780,077

2
STATEMENT OF THE CASE
This decides an appeal under 35 U.S.C. § 134(a) from the May 19,
2017 final rejection of claims 1–13. We have jurisdiction under 35 U.S.C.
§ 6(b).
Appellant’s invention is directed generally to a mass spectrometer
capable of an MSn analysis, where n is any integer equal to or more than 3,
involving a dissociation operation conducted in at least n-1 stages. (Spec. ¶
30). The mass spectrometer has an automatic MSn analysis function of
executing, given an MSm , where m is an integer, spectrum obtained through
an MSm analysis, an operation of: selecting an ion that satisfies a
predetermined condition as a precursor ion for an MSm+l analysis from the
MSm spectrum (Spec. ¶32); and dissociating the precursor ion and
performing a mass analysis, until a value of m becomes n-1 in order from 1
(Spec. ¶ 33). Claim 1 is illustrative of the subject matter on appeal and is
reproduced from the Claims Appendix of the Appeal Brief below:2
1. A mass spectrometer capable of an MSn analysis (whose n is
any integer equal to or more than 3) involving a dissociation
operation conducted in at least n-1 stages, the mass spectrometer
having an automatic MSn analysis function of executing, given
an MSm (whose m is an integer) spectrum obtained through an
MSm analysis, an operation of: selecting an ion that satisfy a
predetermined condition as a precursor ion for an MSm+l analysis
from the MSm spectrum; and dissociating the precursor ion and
performing a mass analysis, until a value of m becomes n-1 in
order from 1, the mass spectrometer comprising:

2 Independent claim 13 is a method claim that recites similar features to
claim 1.
Appeal 2018–007567
Application 14/780,077

3
a) a precursor ion information memory unit for holding
information on mass-to-charge ratios of precursor ions to be
dissociated in first to mth stages for the MSm+l analysis, in
association with one another; and
b) an analysis controller configured to acquire an MSn
spectrum by executing, up to the MSn analysis, including
b1) a first stage precursor ion determiner for
determining whether or not an ion that is held as a precursor ion
to be dissociated in the first stage in the precursor ion information
memory unit exists on an MS1 spectrum obtained at a time of
executing an analysis;
b2) a MS2 analysis performer for performing an
MS2 analysis in which the ion is set as a precursor ion, if the ion
exists;
b3) a second stage precursor ion determiner for
determining whether or not an ion that is held as a precursor ion
to be dissociated in the second stage in association with the
precursor ion to be dissociated in the first stage in the precursor
ion information memory unit exists on an MS2 spectrum obtained
through the MS2 analysis; and
b4) a MS3 analysis performer for performing an
MS3 analysis in which the ion are set as a precursor ion, if the ion
exists;
wherein the ion information memory unit includes
information regarding whether the precursor ion to be dissociated
in the second stage can be acquired by the first stage dissociation.
The following rejection is presented for our review.
Claims 1–13 are rejected under 35 U.S.C. § 102(a)(1) as unpatentable
over Ishimaru (US 2006/0255263 A1).
Appeal 2018–007567
Application 14/780,077

4
OPINION
We REVERSE.
We limit our discussion to independent claim 1.3
The Examiner finds lshimaru discloses a mass spectrometer capable
of MSn analysis (whose n is any integer equal to or more than 3) involving a
dissociation operation conducted in at least n-1 stages that anticipates the
claimed invention. (Final Act. 2–3; lshimaru Fig. 4; ¶ 53).
Appellant argues Ishimaru does not anticipate the claimed invention
because Ishimaru does not disclose that the mass-to-charge ratio of a product
ion that is the precursor ion for the next stage is known and held in a
precursor ion information memory unit. (App. Br. 6). Appellant further
argues:
Ishimaru does not disclose that the mass-to-charge ratio of a product
ion that is the precursor ion for the next stage is known and held in a
precursor ion information memory unit. There is no need in Ishimaru
to know the mass-to-charge ratio of the product ion because Ishimaru
performs calculations to determine the combination of product ions
and does not need to include information on mass-to-charge ratios of
precursor ions to be dissociated in first to mth stages for the MSm+ 1
analysis, in association with one another and information regarding
whether the precursor ion to be dissociated in the second stage can be
acquired by the first stage dissociation.
(App. Br. 6).

In response to Appellant’s arguments, the Examiner contends that the
first phase of Ishimaru anticipates the claimed subject matter. Specifically
the Examiner states:
[T]he application of Ishimaru to the present claims is better shown by
the embodiment depicted in Fig. 11 and described in paragraphs 0095-

3 Our analysis also applies to independent claim 13.
Appeal 2018–007567
Application 14/780,077

5
0096. The process described in this embodiment involves two phases:
in the first phase, (steps S21-S24), a “suitable fragment ion” for
identifying an oligosaccharide is found by searching MS^2 data for a
fragment ion that is only formed by desorbing monosaccharide and, if
such a fragment ion is found, selecting that ion for MS^3 analysis. The
MS^3 data is then searched for a fragment ion that is only formed by
desorbing monosaccharide, and if such a fragment ion is found, that
ion is selected for MS^4 analysis, and so on, until the spectrum
contains only fragments that result from breaking of intramolecular
bindings instead of by desorption of monosaccharide. lshimaru,
paragraphs 0095-0096 and 0100.
(Ans. 6).

We cannot sustain the Examiner’s rejection. The Examiner has not
identified where Ishimaru describes the mass-to-charge ratio of the product
ion is known and kept in memory. In the embodiment depicted in Figs. 11
and 12, Ishimaru performs calculations to determine the combination of
product ions and does not include information on mass-to-charge ratios of
precursor ions to be dissociated in first to mth stages for the MSn+ 1 analysis,
in association with one another and information regarding whether the
precursor ion to be dissociated in the second stage can be acquired by the
first stage dissociation.

For the foregoing reasons and those provided by the Appellant we
reverse the appealed rejection.
ORDER
The rejection of claims 1–13 under 35 U.S.C. § 102(a)(1) is reversed.

REVERSED