Water Technologies Corporation

Patent Trials and Appeals Board

Dec 13, 2021

2021000657 (P.T.A.B. Dec. 13, 2021)

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.
15/316,575 12/06/2016 Daniel GOLICK 8185.0074 9417
160377 7590 12/13/2021
Kacvinsky Daisak Bluni PLLC (8185)
2601 Weston Parkway
Suite 103
Cary, NC 27513
EXAMINER
LUCK, SEAN M
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
12/13/2021 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):
docketing@kdbfirm.com
ehysesani@kdbfirm.com
mbotnaru@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL GOLICK, SCOTT GEROMANOS,
MARC V GORENSTEIN, STEVEN J CIAVARINI, and KEITH FADGEN
Appeal 2021-000657
Application 15/316,575
Technology Center 2800
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
JEFFREY R. SNAY, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 11, 13–15, 17–21, 30, 31, 34, and
42–44. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Waters
Technologies Corporation. (Appeal Br. 3.)
Appeal 2021-000657
Application 15/316,575

2
CLAIMED SUBJECT MATTER
The claims are directed to a mass spectrometer and methods of mass
spectrometry comprising mass analyzing an eluent from a chromatography
device and obtaining a plurality of parent ion data sets and a plurality of
corresponding product ion data sets; and determining whether, in a first
product ion data set of the plurality of product ion data sets, one or more
product ions are present that are related to one or more parent ions in a
corresponding first parent ion data set of the plurality of parent ion data sets,
based on the mass to charge ratios and/or intensities of the one or more
product ions and the one or more parent ions. (Spec. 3.) Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method of mass spectrometry comprising:
ionising an eluent from a chromatography device to
produce parent ions;
mass analysing at least some of the parent ions;
fragmenting or reacting at least some of the parent ions to
produce product ions, and mass analysing the product ions;
assigning product ions to parent ions so as to obtain a
plurality of product ion data sets, wherein each product ion data
set of the plurality of product ion data sets is assigned to one or
more parent ions such that a first product ion data set of the
plurality of product ion data sets is assigned to one or more first
parent ions, and a second product ion data set of the plurality of
product ion data sets is assigned to one or more second different
parent ions, wherein the first and second parent ions are co-
eluting parent ions; and then
removing, from said second product ion data set, one or
more product ions that are unrelated to the said one or more
second parent ions by:
determining whether one or more product ions are present
in the first product ion data set that are related to the one or more
first parent ions based on the mass to charge ratios or on the mass
to charge ratios and intensities of one or more product ions in the
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Application 15/316,575

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first product ion data set and based on the mass to charge ratios
or on the mass to charge ratios and intensities of said one or more
first parent ions; and
if it is determined that one or more product ions that are
related to the one or more first parent ions are present in the first
product ion data set, removing said one or more product ions
from said one or more second product ion data sets to produce
one or more second modified product ion data sets.
Appeal Brief Claim Appendix2
REJECTIONS
I. Claims 1–3, 13–15, 17–21, 30, 31, 34, and 42–44 are rejected under
35 U.S.C. § 102 (a)(1) as anticipated by Gorenstein, US 2011/0226941 A1,
published Sept. 22, 2011.
II. Claim 11 is rejected under 35 U.S.C. § 103 as obvious over
Gorenstein in view of Brown, WO 2013/005060 A2, published Jan. 10,
2013.
OPINION
After review of the respective positions the Appellant provides in the
Appeal Brief and Reply Brief and the Examiner provides in the Final Action
and the Answer, we reverse the Examiner’s anticipation rejection of claims
1–3, 13–15, 17–21, 30, 31, 34, and 42–44 under 35 U.S.C. § 102 (a)(1) and
obviousness rejection of 11 under 35 U.S.C. § 103 for essentially the reasons
Appellant presents. We add the following for emphasis.
The dispositive issues on appeal are:
Did the Examiner reversibly err in determining that Gorenstein

2 Reproduced from supplemental Appeal Brief filed March 6, 2020.
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Application 15/316,575

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describes a method of mass spectrometry comprising ionising an eluent from
a chromatography device to produce parent ions and determining whether
one or more product ions are present in the first product ion data set that are
related to the one or more first parent ions based on the mass to charge ratios
or on the mass to charge ratios and intensities of one or more product ions in
the first product ion data set and based on the mass to charge ratios or on the
mass to charge ratios and intensities of the one or more first parent ions as
required by independent claims 1 and 3?
Did the Examiner reversibly err in determining that Gorenstein
describes a mass spectrometer comprising a control system arranged and
adapted (to perform a method of mass spectrometry) comprising ionising an
eluent from a chromatography device to produce parent ions and
determining whether one or more product ions are present in the first
product ion data set that are related to the one or more first parent ions based
on the mass to charge ratios or on the mass to charge ratios and intensities of
one or more product ions in the first product ion data set and based on the
mass to charge ratios or on the mass to charge ratios and intensities of the
one or more first parent ions as required by independent claim 34?
After review of the respective positions provided by Appellant and the
Examiner, we answer these questions in the affirmative. We limit our
discussion to Rejection I and independent claim 1 with the understanding
that our analysis also applies to independent claims 3 and 34.3

3 The additional prior art reference in Rejections II was cited only to address
limitations of the rejected dependent claim 11.

Appeal 2021-000657
Application 15/316,575

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The Examiner finds Gorenstein describes a method of mass
spectrometry comprising ionising an eluent from a chromatography device
to produce parent ions and determining whether one or more product ions
are present in the first product ion data set that are related to the one or more
first parent ions based on the mass to charge ratios or on the mass to charge
ratios and intensities of one or more product ions in the first product ion data
set and based on the mass to charge ratios or on the mass to charge ratios
and intensities of the one or more first parent ions as required by
independent claim 1. (Final Act. 4; Gorenstein ¶¶ 12, 43, 44, 47.) The
Examiner further determines Gorenstein Figures 10 and 11 show that mass
to charge ratios are used along with retention time in the matching of parent
ions with product ions. (Ans. 9.) The Examiner specifically states:
Specifically the figures (and associated descriptions) show
parent and product ions that co-elute in some of the data sets
and addresses how to separate which product ion(s) belong with
which parent ion(s). Since all of these ions are shown as having
the same retention time 1240 in figure 11a, retention time alone
is clearly insufficient for distinguishing the difference between
these ions. Or to rephrase, if we disregarded the mass to charge
ratio of P1, P2, A, B, C and only used the retention time to
identify them, we would be unable to tell them apart since they
all have the same retention time. This is why Gorenstein only
uses retention time as part of the matching process between
product and parent ions and in combination with mass to charge
ratios.

(Ans. 9.)
Appellant argues Gorenstein describes a retention time matching
process that is devoid of using mass-to-charge ratio and/or intensity to match
product ions to precursor ions. Appellant specifically argues:
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Gorenstein discloses a process that includes a first step in which
mass spectra for precursor and product ions are generated so as
to obtain “input data sets” that are processed according to a
second step in which “the input data set [is] processed in
accordance with the techniques herein to perform retention time
matching of precursors and related product ions.”

(Appeal Br. 10; Gorenstein ¶ 47, FIG. 1.)
Appellant has identified reversible error in the Examiner’s finding of
anticipation. The Examiner’s reliance on Gorenstein’s ¶¶ 12, 43, 44, 47 and
Figures 10 and 11 to establish anticipation is misplaced. The cited
disclosures in Gorenstein are silent regarding using mass-to-charge ratios
(alone or in combination with intensities) of product ions in a first product
ion set to determine whether the product ions are related to the
corresponding parent ions of the first product ion set as required by the
claimed invention. The discussion of “mass” is not the same as mass-to-
charge ratios. Gorenstein does discuss mass-to-charge ratios (Gorenstein ¶¶
41, 77, 80.) However, as Appellant points out, these discussions do not
describe the utilization of mass-to-charge ratios of product ions in a first
product ion set to determine whether the product ions are related to the
corresponding parent ions of the first product ion set. (Appeal Br. 11-12;
Reply Br. generally)Therefore, a preponderance of the evidence support’s
Appellant’s position that the Examiner failed to establish that Gorenstein
anticipates the claimed invention.
For the foregoing reasons and those Appellant presents, we do not
sustain the Examiner’s anticipation rejection of claim 1 as well as claims 2,
3, 13–15, 17–21, 30, 31, 34, and 42–44. We likewise reverse the
obviousness rejection of claim 11. The Examiner relies upon Gorenstein in
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combination with Brown to reject the subject matter of claim 11. However,
the Examiner does not rely upon Brown to address the limitations of
independent claim 1 as we discuss above.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 13–15,
17–21, 30,
31, 34, 42–
44
102(a)(1) Gorenstein 1–3, 13–15,
17–21, 30,
31, 34, 42–
44
11 103 Gorenstein, Brown 11
Overall
Outcome
1–3, 11,
13–15, 17–
21, 30, 31,
34, 42–44

REVERSED