Baloghv.Fischer et al. V. Balogh

Patent Trials and Appeals Board

Apr 21, 2014

10245987 - (J) (P.T.A.B. Apr. 21, 2014)

BoxInterferences@uspto.gov
Tel: 571-272-4683 Entered: April 21, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

PATENT TRIAL AND APPEAL BOARD
_______________

Waters Technologies Corp.,
Junior Party
(Applications 10/470,648 and 10/514,098,
Inventor: Michael P. Balogh),

v.

Agilent Technologies, Inc.,
Senior Party
(Patent 6,646,257,
Inventors: Steven M. Fischer, Darrell L. Gourley, and
James L. Bertsch,).
_______________

Patent Interference 105,921 (RES)
(Technology Center 2800)
_______________

Judgment - Motions - 37 C.F.R. § 41.127

Before: RICHARD E. SCHAFER, JOHN G. NEW and HUNG H. BUI,
Administrative Patent Judges.

As a result of the decision on Motions entered this date, the junior party 1
Waters’ claims are either barred by 35 U.S.C. § 135(b)(1) or unpatentable over 2
prior art. Waters, therefore, is not entitled to claims corresponding to Count 1. 3
2

Under the circumstances of this proceeding it is unnecessary to proceed to a 1
priority phase. 2
Accordingly, it is: 3
ORDERED that Junior Party Waters Technologies Corp. and inventor 4
Michael P. Balogh are not entitled to a patent including the subject matter of 5
Claims 27-31 of Application 10/470,648 and Claims 20-38 of Application 6
10/514,098; 7
FURTHER ORDERED that Claims 27-31 of Application 10/470,648 and 8
Claims 20-38 of Application 10/514,098 are finally refused. 9
(35 U.S.C. § 135(a) (2010)); 10
FURTHER ORDERED that a copy of this judgment and the decision on 11
motions be placed in each of the administrative records of Applications 10/470,648 12
and 10/514,098 and Patent 6,646,257 ; 13
FURTHER ORDERED that if there is a settlement agreement, attention is 14
directed to 35 U.S.C. § 135(c); and 15
FURTHER ORDERED that a party seeking judicial review timely serve 16
notice on the Director of the United States Patent and Trademark Office. 17
37 C.F.R. §§ 90.1 and 104.2. 18
3

cc (electronic transmission):
Counsel for Waters Technologies Corp.:

George W. Neuner, Esq.
Nicholas J. DiCeglie, Jr., Esq.
George N. Chaclas, Esq.
Edwards Wildman Palmer, LLP
Email: gneuner@edwardswildman.com
Email: ndiceglie@edwardswildman.com
Email: gchaclas@edwardswildman.com
Email: patent@edwardswildman.com
Counsel for Agilent Technologies, Inc.:

Leonard R. Svensson, Esq.
Gerald M. Murphy, Jr., Esq.
Birch, Stewart, Kolasch & Birch, LLP
Email: lrs@bskb.com
Email: gmm@bskb.com
Email: mailroom@bskb.com

Ping Hwung, Esq.
Agilent Technologies, Inc.
Ping_hwung@agilent.com

BoxInterferences@uspto.gov
Tel: 571-272-4683 Entered: April 21, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

PATENT TRIAL AND APPEAL BOARD
_______________

Waters Technologies Corp.,
Junior Party
(Applications 10/470,648 and 10/514,098,
Inventor: Michael P. Balogh),

v.

Agilent Technologies, Inc.,
Senior Party
(Patent 6,646,257,
Inventors: Steven M. Fischer, Darrell L. Gourley, and
James L. Bertsch,).
_______________

Patent Interference 105,921 (RES)
(Technology Center 2800)
_______________

Decision - Motions - 37 C.F.R . § 41.125(a)

Before: RICHARD E. SCHAFER, JOHN G. NEW and HUNG H. BUI,
Administrative Patent Judges.

The interference is before a motions panel for consideration of non-priority 1
motions. 2
There was no oral argument. 3
2

Five motions are currently pending: 1
1. Waters Substantive Motion 1 (Paper 33) seeking the benefit of the 2
May 31, 2002, filing date of its Provisional Patent Application 60/385,419. 3
2. Agilent Substantive Motion 1 (Paper 27) requesting a judgment that 4
Waters’ involved claims are barred by 35 U.S.C. § 135(b) (2011). 5
3. Agilent Substantive Motion 2 (Paper 28) requesting a judgment that the 6
subject matter of Waters’ involved claims is not supported by an adequate 7
specification as required by 35 U.S.C. § 112 (1975) and included new matter 8
prohibited by 35 U.S.C. § 132. 9
4. Agilent Substantive Motion 3 (Paper 29) requesting a judgment that the 10
subject matter of Waters’ involved claims is unpatentable under 35 U.S.C § 102(e) 11
(2002). 12
5. Agilent Motion to Exclude Waters’ Evidence (Paper 59) asking to strike 13
Waters’ Sur-Reply 3 (Paper 58) or portions thereof and certain evidence relied 14
upon in the sur-reply. 15
We deny Waters Substantive Motion 1, grant-in-part Agilent Substantive 16
Motions 2 and 3. As a result of the partial grants, all of Waters’ involved claims 17
are either barred by § 135(b) or unpatentable under § 102(e). It is unnecessary, 18
therefore, to consider Agilent Substantive Motion 3 directed to unpatentability 19
under §§ 112 and 132. We dismiss Agilent’s Motion to Exclude Waters’ Evidence 20
as an unauthorized miscellaneous motion. 21
The denial of Waters Substantive Motion 1 results in Waters remaining the 22
junior party in this interference. As the junior party with no patentable claims, it is 23
appropriate to terminate the interference and enter judgment against Waters. 24
I. 25
The invention claimed by the parties relates to mass spectrometers and 26
particularly to generation of charged aerosols that include the material to be 27
3

analyzed. A variety of techniques and devices have been used to generate ions. 1
Each technique and device has advantages and disadvantages depending on the 2
material to be ionized. The parties’ claimed invention uses a “multimode” 3
ionization source for generating the ions, i.e. an ionization source capable of using 4
more than a single technique to generate the ions. The parties also have claims 5
directed to a mass spectrometer that includes a multimode ionization source and 6
the method of producing ions using a multimode ionization source. The parties’ 7
invention is represented by Count 1 which is Claim 13 of Agilent’s involved 8
patent. We reproduce Claim 13 below: 9
13. A multimode ionization source, comprising: 10
(a) a first atmospheric pressure ionization source for 11
providing a charged aerosol; 12
(b) a drying device adjacent to said first atmospheric 13
pressure ionization source for drying said charged aerosol; 14
(c) a second atmospheric pressure ionization source 15
downstream from said first atmospheric pressure ionization 16
source for further ionizing said dried charged aerosol; and 17
(d) a conduit adjacent to said second atmospheric 18
pressure ionization source and having an orifice for receiving 19
ions from said dried charged aerosol; 20
wherein the drying device includes a first electrode and a 21
second electrode, the second electrode assisting in steering ions 22
toward the conduit. 23
24
Ex. 1001, col. 12, ll. 44-60. All of Agilent’s claims, and all of the claims of 25
Water’s involved applications, have been designated as corresponding to the count. 26
Paper 1, pp. 3-4. 27
II. 28
Waters Substantive Motion 1 (Paper 33) requests that Waters be accorded 29
the benefit of the May 31, 2002, filing date of Provisional Application 60/385,419. 30
We deny the motion. 31
4

Waters ’098 Application is the national stage entry of PCT/US03/16892 1
having an international filing date of May 30, 2003. Waters ’648 Application is a 2
continuation of that same PCT. The PCT claims the benefit of the filing date of the 3
provisional application 60/385,419 filed on May 31, 2002. When this interference 4
was declared, Waters was not accorded benefit of the filing dates of any of its 5
earlier applications. 6
As the movant, Waters bears the burden of establishing that it should be 7
accorded benefit of the filing date of its provisional application. 37 C.F.R. 8
§§ 41.121(b) and 42.208(b); Fiers v. Revel, 984 F.2d 1164, 1169 (Fed. Cir. 1993). 9
“Accord[ed] benefit means Board recognition that a patent application provides a 10
proper constructive reduction to practice under 35 U.S.C. 102(g)(1).
1
” 37 C.F.R. 11
§ 41.201. A constructive reduction to practice is defined in the PTO’s regulations 12
as “a described and enabled anticipation under 35 U.S.C. 102(g)(1) in a patent 13
application of the subject matter of a count.” Id. Where a chain of applications is 14
relied upon the earliest constructive reduction to practice 15
means the first constructive reduction to practice that has been 16
continuously disclosed through a chain of patent applications 17
including in the involved application or patent. For the chain to 18
be continuous, each subsequent application must have been co-19
pending under 35 U.S.C. 120 or 121 or timely filed under 20
35 U.S.C. 119 or 365(a). 21
Id. In other words, in order to be accorded the benefit of the filing date of its 22
provisional application, Waters must show that its provisional application 23
described at least an enabled embodiment meeting all the limitations of the count. 24
See Falkner v. Inglis, 448 F.3d 1357, 1362 (Fed. Cir. 2006). An embodiment must 25

1
Patent interferences continue under the relevant statutes in effect on 15 March
2013. See Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011).
5

also be present in any necessary intermediate applications in the chain. See 1
Stevens v. Tamai, 366 F.3d 1325, 1330-31 (Fed. Cir. 2004). 2
Count 1 requires, inter alia, “a drying device adjacent to said first 3
atmospheric pressure ionization source for drying said charged aerosol . . . 4
wherein the drying device includes a first electrode and a second electrode, the 5
second electrode assisting in steering ions toward the conduit.” 6
The count is Claim 13 of Agilent’s patent. Agilent’s Claim 13 is identically 7
worded to Claim 36 of Waters ’098 Application. Compare Ex. 1001, col. 12, 8
ll. 44-60 with Paper 7, p. 14, ll. 7-16. Pursuant to 37 C.F.R. § 42.122(e), Waters 9
provided a claim chart attempting to show written descriptive support in the 10
provisional application for the subject matter of its claims, including Claim 36. 11
Paper 33, Appendix 4, pp. 34-36. 12
With respect to the requirement for “a drying device adjacent to said first 13
atmospheric pressure ionization source for drying said charged aerosol,” Waters 14
directs us to p. 8, lines 29 to 32 of its provisional application (Ex. 2002) and 15
portions of the testimony of inventor Michael P. Balogh (Ex. 2005). Paper 33, 16
Appendix 4, p. 35. 17
The referenced portion of the provisional application states: “The ion source 18
further includes a plurality [of] source block heaters 182 for heating the ionization 19
region, as well as a probe heater 186.” Ex. 2002, p. 8, ll. 30-32 (bracketing added). 20
A review of the figures that form part of the provisional application does not reveal 21
any elements identified by the numerals 182 and 186. Indeed, the provisional 22
refers to many numerals that do not appear in any of that application’s figures. 23
Waters also directs us to Balogh’s testimony (Ex. 2005) at ¶¶ 27-28. Balogh 24
references an annotated version of Figure 2A and testifies to the effect that certain 25
components shown in Figure 2A of the provisional application would be 26
recognized by one skilled in the art as the block heaters 182 and probe heater 186. 27
6

Ex. 2005, ¶ 28, pp. 8-9. He further testifies that “[a]s a result of heating these 1
elements, one of skill in the art would know that the resulting charged aerosol is 2
heated and becomes desolvated and dried. Thus, these elements are a drying 3
device adjacent the electrospray ionization.” Ex. 2005, ¶ 28, p. 9. 4
We are not persuaded by Balogh’s testimony on this point. Merely stating 5
that the “block heaters 182 would be recognized by one of ordinary skill in the art 6
and are adjacent the electrospray probe (see the attached Figure 2A)” (Ex. 2005, ¶ 7
28, pp. 8-9) without an explanation is conclusory. We afford it little evidentiary 8
weight. Figure 2A, as it appears in the provisional application, does not identify, 9
using a corresponding numeral from the written description or otherwise, any of 10
the components appearing in that figure. Ex. 2002, p. 22. Balogh does not provide 11
an explanation or direct us to sufficient evidence establishing that one skilled in the 12
art would have recognized and identified the heaters 182 and 186 or any of the 13
other unlabeled components depicted in Figure 2A, as it exists in the provisional 14
application. Balogh is the inventor and, unsurprisingly, would be able to identify 15
the components of his own invention. However, the provisional application does 16
not identify which components in Figure 2A are the heaters 182 and 186, or 17
identify the many other components depicted in that figure. Thus, Balogh’s 18
testimony on what one having ordinary skill in the art would have understood from 19
the disclosure of the provisional application is of little probative value. Waters has 20
not provided adequate evidence and argument to establish that one skilled in the art 21
would recognize that the Waters provisional application described a multimode 22
ionization source including “a drying device adjacent to said first atmospheric 23
pressure ionization source for drying said charged aerosol” as required by the 24
Count. 25
Waters argues that the amendment which added the drying limitation to the 26
’098 Application was objected to by the Examiner under 35 U.S.C. § 132 as adding 27
7

new matter and added Claims 30-37 were rejected under § 112, first paragraph, as 1
not supported by the written description. Paper 33, p. 11, l. 21 – p. 12, l. 3. Waters 2
also quotes the arguments made in response to the Examiner’s action and notes that 3
the Examiner withdrew the objection and rejection. Paper 33, p. 12, l. 4-p. 13, l. 4
12. 5
We fail to see the relevance of this argument to the question of entitlement 6
to the benefit of the filing date of the provisional application. The written 7
description and new matter issues before the Examiner were evaluated based on 8
the specification and drawings of the ’098 Application, not on the specification and 9
drawings of the provisional application. The relevant specification for determining 10
whether claims comply with the written description and enablement requirements 11
is the specification of which the amended claims form a part. See Reiffin v. 12
Microsoft Corp., 214 F.3d 1342, 1345-46 (Fed. Cir. 2000). The disclosure of 13
’098 Application is significantly different from that of the provisional application 14
in at least the identification of the components of the ionization source shown in 15
Figures. 2A-2C. Compare Waters ’098 Application Drawings (Ex. 1013), pp. 10-16
12 with Waters Provisional Application Drawings (Ex. 2002), pp. 22-24. 17
Waters has failed to establish that it is entitled to the filing date of its 18
Provisional Application 60/385,419. 37 C.F.R. § 41.208(b). Waters Substantive 19
Motion 1 (Paper 33) is denied. 20
III. 21
Agilent Substantive Motion 1 (Paper 27) moves for a judgment that all of 22
Waters’ involved claims are barred by 35 U.S.C. § 135(b)(1). That section 23
prohibits an applicant from adding a claim to its application that is the same or 24
substantially the same as the claim of a patent unless the claim is added within one 25
year of the issuance of the patent. 26
8

Agilent’s patent issued November 11, 2003. The critical date for the 1
purpose of § 135(b) is November 11, 2004. All of the claims of Agilent’s patent 2
require either “a drying device . . . for drying said charged aerosol” or the step of 3
“drying said charged aerosol.” Ex. 1001, col. 11, l. 10 – col. 14, l. 25. We refer to 4
these limitations as the “drying limitation.” 5
A. 6
Waters’ ‘648 Application was filed on the critical date, November 11, 2004. 7
None of Waters’ original claims (Claims 1-19) included the “drying limitation.” 8
Ex. 1020, pp. 25-27. A preliminary amendment, filed simultaneously with the 9
application, cancelled Claims 1-19 and added Claims 20-29. Ex. 1020, pp. 50-54. 10
None of the newly added claims included the drying limitation. Id. 11
Subsequently, an Examiner rejected new Claims 20-29, inter alia, on the 12
basis of obviousness-type double patenting of the claims of Waters involved ’098 13
Application. Ex. 1008, p. 3, ¶ 1. Waters responded to the rejection, amending 14
Claims 20-29 to add the “drying limitation.” Ex. 1007, pp. 4-6. As amended, 15
Waters’ Claims 20-29 were essentially identical to Claims 7-9 and 11-17 of 16
Agilent’s patent. Compare Ex. 1007, pp. 4-6 and Ex. 1001, pp. 12-13. That 17
amendment was filed November 13, 2007, more than four years after the critical 18
date. Ex. 1007, p. 1. Waters argued to the Examiner that the limitation overcame 19
the double patent rejection: 20
Please note that pending U.S. patent application No. 21
10/514,098 ('098 Application) also substantially copied claims 22
from Fisher et al. However, in view of the current 23
amendments, a clear line of demarcation exists between the 24
applications because the '098 Application does not include the 25
drying device or drying step in any of the independent claims. 26
9

Id. at p. 7 (emphasis added). In the next Office action, the Examiner entered a 1
final rejection. Ex. 3006.
2
The final, however, did not repeat the double patenting 2
rejection. The Examiner maintained a prior art rejection of Claims 20-26 and 3
indicated allowability of Claims 27-29. Ex. 3006, pp. 3-4. Waters responded by 4
cancelling Claims 20-26. Ex. 3001, p. 2. Waters also suggested an interference 5
with Agilent’s patent. Ex. 3001, p. 4. 6
Prosecution continued with several rounds of rejections and responses. The 7
only significant amendment was the addition of Claims 30 and 31 on May 6, 2011. 8
Ex. 1029, p. 3. The new claims also included the drying limitation. Ex. 1029, p. 3. 9
Prosecution continued without further amendment of the claims until the Examiner 10
determined that the claims were allowable and forwarded the application to the 11
Board for consideration of an interference with Agilent’s patent. 12
1. 13
Agilent argues that Claims 27-31 of Waters ’468 Application are barred by 14
35 U.S.C. § 135(b)(1). Paper 27, p. 4, l. 7 p. 7, l. 14. The critical date for the 15
purposes of § 135(b)(1) is November 11, 2004. 16
The prosecution history of the Water ’468 Application shows that Waters 17
Claims 27-31 were submitted long after the critical date of November 11, 2004. 18
Claims 27-29 were submitted on November 13, 2007. Ex. 1007, p. 6. Claims 30-19
31 were submitted even later on May 6, 2011. Ex. 1029, p. 3. 20
All of the claims of Waters ’468 Application include the drying limitation. 21
Waters’ Claims 27-29 are identical to Claims 15-17 of Agilent’s patent. Compare 22
Ex.1010, pp. 2-3 with Ex. 1001, col. 13-14. The subject matter of Waters’ Claims 23

2
Exhibits labeled with a 3000 series number are from the Official PTO Record of
Waters’ involved Applications and have been added to the record of this
interference by the Board. The following Exhibits have been added: Exs. 3001,
3006, 3010-11, and 3013-20.
10

30 and 31 differ from Agilent’s Claim 15 in reciting a “second ionization source” 1
(Claim 30) and that the “second ionization source is a photo-ionization source” 2
(Claim 31). Agilent’s Claim 15 requires that the second ionization source be an 3
“atmospheric photoionization source (APPI).” On this point we note that Agilent 4
does not contest that the subject matter of its Claims 30 and 31 are not substantially 5
the same as any of the claims of Agilent’s patent. Facially, we see no substantial 6
difference between the subject matter of Waters’ Claims 30 and 31 and Agilent’s 7
Claim 15. We hold that the Water’s Claims 30 and 31 are directed to substantially 8
the same subject matter as Agilent’s Claim 15. 9
2. 10
Because Waters Claims 27-31 are the same or substantially the same as 11
Agilent’s Claims 15-17 and were added to its application after the critical date, 12
Waters “must show that such claim[s are] not materially different from a pre-13
critical date claim present in [its] application or any predecessor thereto . . . .” 14
Adair v. Carter, 668 F.3d 1334, 1339 (Fed. Cir. 2012). On this point, Agilent 15
argues that the addition of the drying limitation was a material limitation because it 16
was added to overcome the double patenting rejection made by the Examiner. 17
Paper 27, p. 5. “The insertion of [a] limitation to overcome the examiner’s 18
rejection is strong, if not conclusive, evidence of materiality.” Parks v Fine, 773 19
F.2d 1577, 1579 (Fed. Cir. 1985). 20
Waters’ opposition (Paper 40) does not argue that the drying limitation in its 21
post-critical date claims presents only an immaterial difference from any of its pre-22
critical date claims. Indeed, Water’s opposition presents no argument at all as to 23
the claims in Waters’468 Application. 24
On the record before us, Waters’ Claims 27-31 of its involved Application 25
10/470,648 are barred by 35 U.S.C. § 135(b)(1) (2011). See In re Berger, 279 F.3d 26
975, 981 (Fed. Cir. 2002). 27
11

B. 1
The claims of Waters ’098 Application can be divided into two groups based 2
up the claimed subject matter: (1) Claims 30-38 and (2) Claims 20-29. The claims 3
of the first group include the drying limitation (Claims 30-37) or a heater adjacent 4
the electrospray ionization source (Claim 38).
3
The claims of the second group do 5
not include a drying limitation. 6
1. 7
We first address Claims 30-38 of Waters ’098 Application. 8
Claim 30 was added by amendment on November 13, 2007. Ex. 1013, p. 6. 9
Claims 31-37 were added by the amendment filed September 17, 2008. Ex. 1014, 10
pp. 5-6. Claim 38 was added by the amendment of September 24, 2009. Ex. 1038, 11
p. 6. All these dates are well after the critical date of November 11, 2004. 12
Claims 31-37 of Waters ’098 Application are essentially identical to 13
Agilent’s Claims 7-9 and 11-14, respectively. Compare Ex. 1001, col. 11, l. 61 – 14
col. 13, l. 3 and Ex. 1017, pp. 5-6. 15
Claims 30 and 38 of Waters ‘098 Application have some differences when 16
compared to Agilent’s Claim 7. Waters’ Claim 30 differs only in specifying that 17
the first and second electrodes and the drying device are elements of the multimode 18
ionization source. Ex. 1013, pp. 4 and 6. In Agilent’s Claim 7, the first and 19
second electrodes are specified to be elements of the drying device, which itself is 20
specified as an element of the multimode ionization device. Ex. 1001, col. 11, l. 61 21
- col. 12, l. 12. Waters’ Claim 38 is similar to its Claim 30, but recites a heater, 22
rather than a dryer, adjacent to the ionization source. Ex. 2008, p. 6. That claim 23

3
During prosecution the Examiner entered a § 112, ¶ 1, rejection that the drying
limitation of Waters Claims 30-37 was not described. Ex. 3010, p. 5. Waters
argued that the heater element disclosed in its specification supported the
limitation. Ex. 2008, pp. 7-8. The written description rejection was not repeated in
the next Office action. Ex. 3011.
12

also specifies that the heater is “for desolvating said charged aerosol.” Id. Agilent 1
Claim 7 recites a drying device for drying the aerosol. Ex. 1001, col. 11, ll. 66-67. 2
Agilent’s written description defines its “drying device” as including a heater. 3
Ex. 1001, col. 4, ll. 17-22. The heater is said to remove solvent, thus 4
“desolvating,” the aerosol. Id. at col. 9, ll. 24-26. On this record we see no 5
substantial difference between the subject matter of Waters’ Claims 30 and 38 and 6
Agilent’s Claims 7. 7
Waters’ Claims 30-38 are directed to the same or substantially the same 8
subject matter as Agilent’s Claims 7-9 and 11-14. 9
Because Waters added Claims 30-38 after the critical date, Waters “must 10
show that [those] claim[s are] not materially different from a pre-critical date claim 11
present in [its] application or any predecessor thereto . . . .” Adair, 668 F.3d at 12
1339. Waters opposition (Paper 40) does not attempt to make such a showing. 13
Because Claims 30-38 include limitations not present in any of Waters’ pre-critical 14
date claims and Waters has not shown or argued that those claims are supported by 15
any pre-critical date claims, Waters Claims 30-38 are barred by § 135(b)(1). 16
2. 17
We now address Claims 20-29 of Waters’ 098 Application. 18
a. 19
Agilent argues that those claims are barred by § 135(b)(1) because they were 20
not legally “made” by the critical date. According to Agilent, those claims were 21
not actually filed in Waters’ ’098 Application by the critical date of November 11, 22
2004. Paper 27, pp. 11-14. 23
Our review of the official record of Application 10/514,098 shows that 24
Claims 20-29 were entered on November 11, 2004, the critical date for the 25
purposes of Agilent’s involved patent and § 135(b)(1). 26
13

The official administrative record of a patent application is referred to as the 1
Image File Wrapper: 2
The USPTO adopted an electronic data processing system for 3
the storage and maintenance of all records associated with 4
patent applications. All new applications filed on or after 5
June 30, 2003 are stored in this system as an Image File 6
Wrapper (IFW), and the IFW is the official record of the 7
application. 8
Manual of Patent Examining Procedure, ¶ 103, Part I. See also Changes To 9
Implement Electronic Maintenance of Official Patent Application Records, Final 10
Rule, 68 Fed. Reg. 38611 (June 30, 2003) and Notification of United States Patent 11
and Trademark Office Patent Application Records being Stored and Processed in 12
Electronic Form, 1271 Off. Gaz. Pat. Office 100 (June 17, 2003). 13
The official record of Application 10/514,098 shows that the application was 14
filed November 10, 2004. Ex. 3013,
4
p. 1. The documents filed that date include a 15
“Transmittal of New Application, “Specification,” “Claims,” “Abstract” and 16
“Drawings-only black and white line drawings.” Ex. 3013, p. 1. Copies of those 17
documents as they appear in the IFW have been entered into the record as Exhibits 18
3017-3020. The first page of the “Transmittal” includes the assigned Application 19
No. 10/514098 and the designation “Rec’d PCT/PTO 10 NOV 2004.” Ex. 3017. 20
Page 3 of that document includes an Express Mail certificate of mailing on “10 21
November 2004.
5
” Ex. 3017, p. 3. The “Specification” is a 16 page document 22
numbered pages 1-16. Ex. 3018. The first page of the Specification also bears the 23
notations 10/514098 and the designation “Rec’d PCT/PTO 10 NOV 2004.” 24

4
Ex. 3013 is a copy of the contents of the Image File Wrapper of Application
10/514,098 appearing in the USPTO Public Pair Portal. The copy was created
March 24, 2014.
5
The date of receipt of correspondence by the USPS Express Mail Service is
considered the filing date of the correspondence in the PTO. 37 C.F.R.
§ 1.10(a)(1).
14

Ex. 3018, p. 1. The document described as “Claims” is a three page document 1
numbered pages 17-19. Ex. 3019. It includes 19 claims. Id. The document 2
designated “Abstract” identifies the inventor as Michael P. Balogh and indicates 3
the title of the invention as “A High Speed Combination Multi·Mode Ionization 4
Source for Mass Spectrometers.” Ex. 3020. 5
The official record also shows that additional documents were filed the next 6
day on November 11, 2004. These documents include three documents having the 7
Document Descriptions: “Preliminary Amendment,” “Claims” and “Applicant 8
Arguments/Remarks Made in an Amendment.” Ex. 3013, p. 1. Each has been 9
made of record in this interference as Exhibits 3014, 3015 and 3016, respectively. 10
Those three documents were apparently presented to the PTO as a single paper of 11
16 pages.
6
12
The document listed as “Preliminary Amendment” in Ex. 3013 and having a 13
Mail Room Date of “11-11-2004” is a single page document having the Document 14
Description “Preliminary Amendment.” Except for indicia related to this 15
interference, it is identical to the first page of Ex. 1028. It bears the designation 16
“10/514098.” Ex. 3014, p. 1; Ex. 1028, p. 1. It also bears the designation “Rec’d 17
PCT/PTO 11 NOV 2004.” It includes a certificate of Express Mailing dated 18
November 11, 2004. The typed portion of the document identifies the Application 19
No. as “Not Yet Assigned,” but also states that the application is that of Michael P. 20
Balogh filed on November 10, 2004, and identifies the title of the invention as “A 21
High Speed Combination Multi·Mode Ionization Source for Mass Spectrometers.” 22
The second document, identified as “Claims” in the IFW, consists of four pages. 23

6
Agilent’s Exhibit 1028 corresponds to and includes identical content to the three
documents referenced in the PTO’s electronic record. Following established PTO
practice, the paper was placed into the IFW as three papers for the purpose of
electronic indexing.
15

Ex. 3015; Ex. 1028, pp. 1-4. It bears page numbers 2-5. It lists Claims 1-19 as 1
canceled and presents new Claims 20-29. Id. The third document, described as 2
“Applicant Arguments/Remarks Made in an Amendment,” consists of eleven 3
pages numbered 6-16. Page 1 of the document (numbered Page 6) states 4
Applicant presents new claims 20-29, which have been copied 5
from U.S. Patent No.: 6,646,257 ("the '257 patent"), issued on 6
November 11, 2003, and facially assigned to Agilent 7
Technologies, Inc. Added claims 20-29 of the present 8
application are substantially similar to claims 7-9 and 11-17 of 9
the '257 patent. 10
Ex. 3016, p. 1; Ex. 1028, p. 6. 11
The PTO’s official record for Application 10/514,098 shows that Claims 20-12
29 of Waters ’098 Application were filed as part of a preliminary amendment on 13
November 11, 2004, the critical date under 35 U.S.C. § 135(b)(1) with respect to 14
Agilent’s patent. Those claims were thus “made” on the critical date. The fact that 15
the claims were associated with the ‘098 Application at a later date has no impact 16
on when the claims were “made” in the Office. Claims 20-29 of Waters ’098 17
Application are not barred under § 135(b)(1). 18
b. 19
Agilent argues that Claims 20-29 were not actually filed in Waters ’098 20
Application but were later placed in that application from another file as a copy to 21
explain a filing mistake by Waters in filing two other co-pending applications. 22
Paper 27, p. 11, ll. 17-23. Agilent further argues that, even if the claims were filed 23
in the ’098 Application, the claims were not in that application before the critical 24
date. Id. at ll. 23-24. 25
We fail to see how the assignment of an amendment to a particular 26
application, or when an amendment was associated with a particular application, 27
has any relevance as to whether Waters “made” claims directed to subject matter 28
16

copied from Agilent’s patent by the critical date. The simple fact is that Waters’ 1
preliminary amendment adding Claims 20-29, said to have been copied from 2
Agilent’s patent (Ex. 1028, p. 6) was filed in the PTO on November 11, 2004, the 3
critical date. That amendment was accepted by the PTO and is part of the official 4
record of Application 10/470,648. Ex. 3013. Waters thus “made” those claims on 5
that date. We additionally note that the Waters preliminary amendment included 6
sufficient information to associate the amendment with Application 10/514,098. 7
While the preliminary amendment did not provide an application number (because 8
one had yet to be assigned), it provided the filing date of the relevant application. 9
(November 10, 2004), the inventor’s name and the title of the invention. Ex. 1028, 10
p. 1. 11
Agilent has failed to meet its burden of proof to establish an adequate basis 12
for holding that the subject matter of Waters’ Claims 20-29 was not made prior to 13
one year from the issuance of Patent 6,646,257. Agilent’s motion is denied as to 14
Claims 20-29 of Waters Application 10/514,098. 15
IV. 16
Agilent Substantive Motion 3 (Paper 29) moves for a judgment that all of 17
Waters’ involved claims are unpatentable over prior art. We held above that the 18
subject matter of Claims 27-31 of Waters ’648 Application and Claims 30-38 of 19
Waters ’098 Application were barred by § 135(b). Therefore, it is only necessary 20
to address the subject matter of Claims 20-29 of Waters ’098 Application. 21
A. 22
Agilent argues Claims 20-29 are unpatentable under 35 U.S.C. § 102(e) over 23
US Patent 6,630,664 (Ex. 1031, “Syage”). Paper 29, p. 1, ll. 2-6. That patent 24
issued on October 7, 2003 and is prior art under § 102(e) by virtue of its June 14, 25
2000, filing date. Ex. 1031, p. 1. 26
17

Agilent’s motion provides a detailed limitation-by-limitation analysis 1
explaining why each of the claim limitations is described by the Syage patent. 2
Paper 29, p. 4, l. 26 – p. 8, l. 23. Appendix 3 to Agilent’s motion provides a claim 3
chart identifying where each limitation of each claim is disclosed by Syage. Paper 4
39, Appendix 3, pp. 1-13. Waters’ opposition (Paper 42) does not challenge 5
Agilent’s argument that each of the limitations recited in Claims 20-29 of Waters 6
’098 Application is disclosed by Syage. 7
We have reviewed Agilent’s comparison of the teachings of the Syange 8
reference with each limitation recited in Claims 20-29 of Waters ’098 Application. 9
We find that Agilent’s position as to the teachings of the Syage reference are 10
facially supported by the record. We are persuaded that Agilent has established 11
that the subject matter of Claims 20-29 of Waters ’098 Application is anticipated 12
by Syage. Those claims are unpatentable under 35 U.S.C. § 102(e). 13
B. 14
Waters only seriously challenges Agilent’s rebuttal presumption created by 15
37 C.F.R. § 41.207(c). That rule creates a rebuttable presumption when a motion 16
for unpatentability based upon prior art is granted against an opponent’s claims. 17
Under the presumption, all the movant’s claims corresponding to the same count 18
are also unpatentable. In its motion, Agilent addresses the presumption of § 19
41.207(c): 20
Syage ‘664 does not anticipate (or render obviousness) 21
Agilent’s US 6,646,257 claims 1-17 at least because each of 22
Agilent’s independent claims 1, 4, 7, 11 and 13-17 recite the 23
presence of a “drying device,” or a drying device that includes a 24
first electrode and a second electrode, or a “drying” step, that 25
are not taught by Syage ‘664. 26
Paper 29, p. 16, ll. 17-22. Waters disagrees arguing that a heating device or 27
heating step is inherent in Syage’s teachings: 28
18

Agilent has argued that Syage does not disclose a drying device 1
or a drying step for desolvating the ionized molecules and, thus 2
does not anticipate the Agilent claims. Waters strongly 3
disagrees. Syage inherently discloses that heating is generally 4
required to desolvate the Syage inherently discloses that heating 5
is generally required to desolvate the ionized molecules by 6
limiting the circumstances droplets can evaporate without 7
heating (AX 1031; col. 5, lines 9-13), particularly in view of the 8
knowledge and skill in the art (Third Balogh Dec (Ex. 2016) 9
¶¶ 10-22; Ex. 2014; Ex 2015). 10
Paper 42, p. 3, ll. 9-14. 11
C. 12
Inherency is a question of fact. Rapoport v. Dement, 254 F.3d 1053, 1063 13
(Fed. Cir. 2001). The proponent of the existence of a fact has the burden of 14
establishing that fact by a preponderance of the evidence. See Concrete Pipe & 15
Prods. of Cal., Inc. v. Constr. Laborers Pension Trust for S. Cal., 508 U.S. 602, 16
622 (1993) (The burden of showing something by a preponderance of the evidence 17
simply requires the trier of fact to believe that the existence of a fact is more 18
probable than its nonexistence before finding in favor of the party who has the 19
burden to persuade the judge of the fact's existence). A fact cannot be established 20
by a preponderance based on “possibilities.” Rather, it must be established based 21
on “probabilities.” The difference is significant in considering inherency. 22
Rapoport, 254 F.3d at 1063 (Fed. Cir. 2001) (inherency, a question of fact, cannot 23
be established by a preponderance of the evidence based on evidence that a certain 24
thing may result from a given set of circumstances); In re Robertson, 169 F.3d 743, 25
745 (Fed. Cir. 1999) (inherency cannot be established by the mere fact that a 26
certain thing may result from a given set of circumstances). Evidence must make 27
clear that the missing descriptive matter is necessarily present in the thing 28
described in the reference. Dayco Products, Inc. v. Total Containment, Inc., 329 29
F.3d 1358, 1369 (Fed. Cir. 2003). 30
19

D. 1
Waters directs us to col. 5, ll. 9-13 of Syage (Ex. 1031) as establishing that 2
heating is inherent. Paper 42, p. 9-14. That portion of Syage states: 3
The voltage potential may be set low enough to avoid forming 4
significant ionization of desired compounds dissolved in 5
solvent, but high enough to charge the liquid droplets so that 6
the droplets accelerate and evaporate without thermal heating. 7
Ex. 1031, col. 5, ll. 9-13. However, in our view, the above-quoted portion directly 8
contradicts Waters’ position that heating is inherent in stating that the voltage is 9
controlled to obtain ionization “without thermal heating.” 10
Waters also relies upon Declaration 3 of Michael P. Balogh (Ex. 2016). 11
Balogh, however, does not testify that a heating device or a heating step is 12
inherently present in Syage’s photo ionizer. Rather, Balogh testifies that the use of 13
heating to desolvate ionized aerosols is well known in the art. Ex. 2016, ¶¶ 10-22. 14
The fact that heating maybe well known to those working in the field, does not 15
establish that heating was necessarily present in the device and method described 16
by Syage. 17
We have not been directed to sufficient evidence to establish, by a 18
preponderance, that Syage’s disclosed device and method inherently included 19
heating the aerosol as argued by Waters. 20
E. 21
Waters also argues that the only possible difference between Waters claimed 22
subject matter and the device and method taught by the Syage patent resides in the 23
requirement for a drying device of drying step for drying the charged aerosol. 24
Waters argues that “setting forth a drying device or drying step is not a patentable 25
element.” Paper 42, p. 3, l. 3. In support of its position, Waters refers to the Syage 26
patent (Ex. 1031), Balogh’s testimony (Ex. 2016), a publication by Chowdhurry 27
(Ex. 2015) and US Patent 5,75,995 (Ex. 2014). Paper 42, p. 3, ll. 11-14. In Waters 28
20

view, the inclusion of a drying device or drying step would have been obvious. 1
Paper 42, p. 3, ll. 15-17. 2
We decline to consider this argument. Waters effectively raises a new 3
ground of unpatentability against Agilent’s claims. Such attacks ordinarily should 4
be raised by a substantive motion pursuant to 37 C.F.R. § 41.121(a). While Waters 5
apparently was not aware of the Syage reference until Agilent filed its motion, the 6
record does not show that Waters promptly sought authorization to file a belated 7
substantive motion attacking the patentability of Agilent’s claims. 8
There may be circumstances where it is appropriate as part of an opposition 9
to raise what effectively would be a motion for unpatentablity. In such 10
circumstances that opposition must meet the procedural requirements for a motion 11
to provide the movant and the Board with adequate notice of the basis and 12
evidence supporting the new ground. 37 C.F.R. § 41.122 (“Oppositions and replies 13
must comply with the content requirements for motions . . . .”). Because Waters 14
neither sought authorization to file a belated motion nor met the applicable 15
procedural requirements, we decline to consider Waters obviousness attack on 16
Agilent’s involved claims. Accordingly, we express no view on the merits of 17
Waters’ position that Agilent’s involved claims would have been obvious. Waters 18
may, however, wish to consider petitioning for inter partes review under 35 U.S.C. 19
§ 311 et seq. 20
Agilent’s motion asserting unpatentablity of Waters involved claims is 21
granted with respect to Waters Claims 20-29 and dismissed as moot with respect to 22
Waters’ other involved claims. 23
V. 24
Agilent filed a motion titled: “Agilent Motion to Exclude Waters Evidence.” 25
Paper 59. We dismiss the motion. 26
21

The Federal Rules of Evidence apply in interference proceedings. 37 C.F.R. 1
§ 41.152. As with other trial-type proceedings, a party may object to the 2
admissibility of evidence based upon the FRE. 37 C.F.R. § 41.155(b)(1). Where 3
a party has timely objected to the admissibility of certain evidence, it may file a 4
miscellaneous motion to exclude that evidence. 37 C.F.R. § 41.156(c). Such 5
motions must be limited to explaining why the evidence is not admissible: “A 6
motion to exclude must be limited to explaining why the evidence is not admissible 7
(e.g., relevance or hearsay).” Standing Order, Paper 2, ¶ 155.2.2. When a timely 8
objection to the admissibility of evidence is made, it is not necessary to seek 9
additional authorization to file the motion. Id. 10
Motions to exclude evidence are intended to address matters of admissibility 11
under the FRE. They are not intended to address other procedural matters such as, 12
for example, the filing of an unauthorized paper or the violation by an opponent of 13
a Board rule or order. In such circumstances, an appropriate motion would be a 14
miscellaneous motion to strike the paper or for other possible sanctions. Unlike a 15
motion to exclude evidence based upon a timely evidentiary objection, a motion to 16
strike or requesting other action is a miscellaneous motion that must be authorized 17
before filing. 37 C.F.R. § 41.123(b). 18
Agilent’s Motion (Paper 59) is not an evidentiary motion to strike the 19
evidence for violation of the FRE. It is actually a motion to strike all or parts of 20
Waters’ Sur-Reply (Paper 58): 21
Party Agilent requests that the Board exclude the Waters Sur-22
Reply filed on January 10, 2014 because it is replete with 23
reference[s] to belated and unauthorized evidence and issues, 24
or, in the alternative, that the Board exclude (a) Waters 25
Ex. 2018 and any references to Waters Ex. 2018 in the Sur-26
Reply and (b) Appendix 3 of the Waters Sur-Reply and any 27
references thereto as being belatedly filed and unauthorized. 28
29
22

Paper 59, p. 1, ll. 2-7. As such, it is an unauthorized miscellaneous motion and 1
will not be further considered. 2
“Agilent Motion to Exclude Waters Evidence” (Paper 59) is dismissed. 3
VI. 4
Agilent also moves for a judgment that all of Waters’ involved claims are 5
unpatentable under 35 U.S.C. §§ 112 and 132. Paper 28. Our decisions on 6
Agilent’s Substantive Motions 1 and 3 concluded that all of Waters involved 7
claims are unpatentable. Accordingly, it is unnecessary to address Agilent’s 8
Substantive Motion 2. We dismiss that motion as moot. 9
ORDER 10
1. Waters Substantive Motion 1 (Paper 33) seeking the benefit of the filing 11
date of Provisional Application 60/385,419 is denied; 12
2. Agilent’s Substantive Motion 1 (Paper 27) for a judgment that Waters’ 13
involved claims are barred by 35 U.S.C. § 135(b) is (1) granted with respect to 14
Claims 27-31 of Waters’ Application 10/470,648 and Claims 30-38 of Waters’ 15
Application 10/514,098 and (2) denied with respect to Claims 20-29 of Waters’ 16
Application 10/514,098; 17
3. Agilent’s Substantive Motion 3 (Paper 29) for a judgment that Waters’ 18
involved claims are unpatentable under 35 U.S.C. § 102(e) over US 19
Patent 6,630,664 is (1) granted with respect to Claims 20-29 of Waters Application 20
10/514,098 and (2) dismissed with respect to Claims 27-31 of Waters’ Application 21
10/470,648 and Claims 30-38 of Waters’ Application 10/514,098; 22
4. Agilent’s Substantive Motion 2 (Paper 28) for a judgment that Waters 23
involved claims are unpatentable under 35 U.S.C. § 112, paragraph 1 is dismissed 24
as moot in view of the decisions on Agilent’s Substantive Motions 1 and 3; and 25
5. Agilent Motion to Exclude Waters Evidence (Paper 59) is dismissed as an 26
unauthorized motion. 27
23

cc (electronic transmission):

Counsel for Waters Technologies Corp.:

George W. Neuner, Esq.
Nicholas J. DiCeglie, Jr., Esq.
George N. Chaclas, Esq.
Edwards Wildman Palmer, LLP
Email: gneuner@edwardswildman.com
Email: ndiceglie@edwardswildman.com
Email: gchaclas@edwardswildman.com
Email: patent@edwardswildman.com
Counsel for Agilent Technologies, Inc.:

Leonard R. Svensson, Esq.
Gerald M. Murphy, Jr., Esq.
Birch, Stewart, Kolasch & Birch, LLP
Email: lrs@bskb.com
Email: gmm@bskb.com
Email: mailroom@bskb.com

Ping Hwung, Esq.
Agilent Technologies, Inc.
Ping_hwung@agilent.com