Ex Parte Badiei et al

Patent Trial and Appeal Board

Nov 3, 2017

14293457 (P.T.A.B. Nov. 3, 2017)

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.
14/293,457 06/02/2014 Hamid Badiei 2010467-0079 PRK-027US 4025
24280 7590 11/07/2017
CHOATE, HALL & STEWART LLP
TWO INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
LOGIE, MICHAEL J
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
11/07/2017 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):
patentdocket @ choate. com
jnease@choate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAMID BADIEI and KENNETH NEUBAUER1
Appeal 2017-001765
Application 14/293,457
Technology Center 2800
Before BRADLEY R. GARRIS, DONNA M. PRAISS,
and MERRELL C. CASHION, JR., Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 13—16, 18, and 21—27. We have jurisdiction under
35 U.S.C. § 6.
We REVERSE.
Appellants claim a method for producing a stream of ions for
detection and/or quantification of silicon in a petrochemical sample
comprising the use of carbon dioxide as a reaction gas for one or more
1 PerkinElmer Health Sciences, Inc. is identified as the real party in interest.
App. Br. 2.
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Application 14/293,457
interferer ionic species in the ionized sample stream (sole independent claim
13).
A copy of representative claim 13, taken from the Claims Appendix of
the Appeal Brief, appears below.
13. A method for producing a stream of ions for
detection and/or quantification of silicon (Si) in a petrochemical
sample, the method comprising:
introducing a petrochemical sample to an ionization
source, thereby producing an ionized sample stream comprising
a plurality of ionic species, said plurality of ionic species
comprising:
(i) one or more analyte ionic species, said one or
more analyte ionic species being an ionized form of one or
more species of interest present in the petrochemical sample,
said one or more species of interest comprising silicon, and said
one or more analyte ionic species comprising Si+; and
(ii) one or more interferer ionic species, said one
or more interferer ionic species having nominal m/z
substantially equivalent to that of Si+;
admitting the ionized sample stream into a chamber to
thereby contact the ionized sample stream with a reaction gas
stream comprising CO2, thereby reacting the CO2 with at least
one of the one or more interferer ionic species and producing
one or more products that are not interferer ionic species; and,
following contact of the ionized sample stream with the
reaction gas stream comprising CO2, directing the resulting
product stream to a mass analyzer and detector for detection
and/or quantification of silicon in the petrochemical sample.
The Examiner rejects all appealed claims under 35 U.S.C. § 103(a) as
unpatentable over Barger (Will Barger, Field Application Report ICP-Mass
Spectrometry, Analysis of Petroleum Products with the ELAN DRCICP-MS,
PerkinElmer Life and Analytical Sciences, © 2007 PerkinElmer, Inc.,
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Application 14/293,457
www.perkinelmer.com) and either Brochure (PerkinElmer SCIEX™
Expanding the Capabilities of ICP-MS, © 2004—2009 PerkinElmer, Inc.), or
Bouchoux (G. Bouchoux, et al., Theoretical Investigation of Selenium
Interferences in Inductively Coupled Plasma Mass Spectrometry, 116 J.
Phys. Chem. A 9058—9070 (2012)), as evidenced by Hui-tao (Hui-tao Liu et
al., Dynamic reaction cell inductively coupled plasma mass spectrometry for
determination of silicon in steel, 58 Spectrochimica Acta Part B 153—157
(2003)) (see, e.g., Ans. 2—6).2
The Examiner finds that Barger teaches a method of detecting silicon
in a petrochemical sample using ammonia rather than the claimed carbon
dioxide as a reaction gas for interferer ionic species (id. at 3—5) but
concludes that it would have been obvious “to use the C02 reaction gas of
Brochure or Bouchoux in the method of Barger because testing of various
reaction gases for detection of silicon was known, as evidenced by Hui-toa
[sic, Hui-tao] (abstract section 3.1), in order to determine the ability of the
reaction gas to remove interferer ions from a silicon sample” (id. at 5).
Appellants argue that “none of the cited references teaches or suggests
using CO2 as a reaction gas for detecting Si in any sample” (App. Br. 9). In
this regard, Appellants explain that “all of the cited art that mention CO2 as a
reaction gas [i.e., Brochure and Bouchoux] are directed to applications that
involve completely different chemical elements from those that are relevant
to Si detection” (id. at 18—19). For this reason, Appellants contend that their
claimed method “is not the result of a predictable combination of the cited
2 The other prior art rejections presented in the Final Office Action have
been withdrawn by the Examiner (Ans. 6—7)
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Application 14/293,457
art” (App. Br. 9) and that the applied references provide no anticipation, or
reasonable expectation, of success for using CO2 for Si detection in a
petrochemical or any other sample {id. at 8, Reply Br. 14).
The Examiner agrees that none of the applied references teaches or
suggests using CO2 for detecting Si in any sample (Ans. 10) but urges that
“it would have been obvious to one of ordinary skill in the art to experiment
with other reaction gases (such as by the method in Hui-toa [sic, Hui-tao]) to
discover the ability of CO2 (a known reaction gas [as taught by Brochure or
Bouchoux]) to suppress interferer ions [in Barger’s method of detecting Si]”
{id. at 11). The Examiner emphasizes that “[ijndeed, such testing could be
extended to any known reaction gas” {id. at 12).
The Examiner’s obviousness position is incompatible with well-
established legal precedent.
It may be possible to evince the obviousness of trying to experiment
with known reaction gases “[w]hen there is a design need or market pressure
to solve a problem and there are a finite number of identified, predictable
solutions.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In this
case, however, the applied references fail to establish a finite number of
identified, predictable reaction-gas solutions that include CO2 in the
detection of Si in a sample. As indicated above, Appellants point out that
“the method of instant independent claim 13 is not the result of a predictable
combination of the cited art” (App. Br. 9, emphasis added), and the
Examiner does not contend otherwise.
Stated differently and consistent with Appellants’ undisputed
contention discussed earlier, the applied references do not provide a
reasonable expectation of success for using CO2 as a reaction gas for
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Application 14/293,457
detecting Si in a petrochemical sample. “[T]o have a reasonable expectation
of success, one must be motivated to do more than merely to vary all
parameters or try each of numerous possible choices until one possibly
arrived at a successful result, where the prior art gave either no indication of
which parameters were critical or no direction as to which of many possible
choices is likely to be successful.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d
1348, 1365 (Fed. Cir. 2007) quoting Medichem, S.A. v. Rolabo, S.L., 437
F.3d 1157, 1165 (Fed. Cir. 2006). Here, the Examiner’s position is based on
the proposition that it would have been obvious to try experimenting with
“any known reaction gas” (Ans. 12) “to discover the ability of CO2 ... to
suppress interferer ions [in the detection of Si in a petrochemical sample]”
(id. at 11). The deficiency of this position is revealed by the Examiner’s
implicit concession that the applied prior art gives no indication CO2 is
likely to be successful as a reaction gas for interferer species in detecting Si
in a petrochemical sample.
Under these circumstances, we do not sustain the § 103 rejection of
the appealed claims over Barger and either Brochure or Bouchoux, as
evidenced by Hui-tao.
The decision of the Examiner is reversed.
REVERSED
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