Tairo OguraDownload PDFPatent Trials and Appeals BoardSep 16, 201914780077 - (D) (P.T.A.B. Sep. 16, 2019) 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. 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 ____________ Ex parte TAIRO OGURA ____________ 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 Copy with citationCopy as parenthetical citation