Ex Parte Bateman et al

Board of Patent Appeals and Interferences

Apr 28, 2009

10176072 (B.P.A.I. Apr. 28, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT HAROLD BATEMAN, JOHN BRIAN HOYES,
JAMES IAN LANGRIDGE and JASON LEE WILDGOOSE
____________

Appeal 2009-1131
Application 10/176,072
Technology Center 2800
____________

Decided:1 April 28, 2009
____________

Before PETER F. FRATZ, MICHAEL P. COLAIANNI, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-1131
Application 10/176,072

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of pending claims 1, 3, 5, 6, 8-31, 33, 35, 36, and 68-71.2 (Br. 2).
We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.
Appellants describe methods and apparatuses for mass spectrometry
where ions are separated temporally according to ion mobility and then mass
filtering the ions according to their mass to charge ratio, in order to
onwardly transmit ions having a first charge state in preference to ions
having a second different charge state. (Spec. 3, l. 13 – 4, l. 4).
Claims 1 and 26 are representative of the subject matter on appeal,
and recite:
1. A method of mass spectrometry comprising:
providing a pulse of ions and performing the following
steps before providing another pulse of ions:
(a) temporally separating at least some of said ions
according to their ion mobility in a first device;
(b) mass filtering at least some of said ions according to
their mass to charge ratio in a second device; and
(c) continuously varying a mass filtering characteristic of
said second device so that multiply charged ions having a first
charge state are onwardly transmitted in preference to singly
charged ions.

26. A method of mass spectrometry comprising: providing a
pulse of ions;

2 Claims 2, 4, 6, 32, 34, 37, 57-67, and 72-83 have been cancelled. (Appeal
Brief filed on August 31, 2007, hereinafter “Br.,” 2).
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Application 10/176,072

separating at least some of said ions according to their
ion mobility in an ion mobility spectrometer;
using a mass filter having a variable mass to charge ratio
cut-off to mass filter at least some of said ions; and
continuously increasing said mass to charge ratio cut-off
in synchronisation with said ion mobility spectrometer.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Clemmer US 2002/0014586 A1 Feb. 7, 2002

The Examiner rejected claims 1, 3, 5, 6, 8-31, 33, 35, 36, and 68-71
under 35 U.S.C. § 102(a) as being anticipated by Clemmer. The Examiner
found that Clemmer discloses a method and apparatus for mass spectrometry
where ions are separated as a function of ion mobility and filtered.
(Examiner’s Answer entered January 25, 2008, hereinafter “Ans.,” 4). The
Examiner found that Clemmer discloses preferential separation of either
multiply charged ions or singly charged ions. (Ans. 6). The Examiner also
found that Clemmer discloses continuously pulsing a time of flight mass
spectrometer in a band pass mode or free running mode, which includes
continuously increasing the mass to charge ratio cut-off. (Ans. 8).
Appellants contend that Clemmer does not disclose selectively
separating multiple charged ions from singly charged ions, but discloses
manipulating ions so that they consist of principally singly charged ions.
(Br. 13-14). Appellants argue that in contrast to the claimed methods, both
singly charged and multiple charged ions are detected in Clemmer. (Br. 15).
Appellants also contend that Clemmer does not disclose increasing the mass
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Application 10/176,072

to charge ratio in synchronization with an ion mobility spectrometer, but
Clemmer only observes spectrums of different ion flight times. (Br. 18).

ISSUES
Based on the contentions of the Examiner and the Appellants, the
issues presented are:
Have Appellants shown reversible error in the Examiner’s finding that
Clemmer discloses preferentially separating and onwardly transmitting
either multiply charged ions or singly charged ions?
Have Appellants shown reversible error in the Examiner’s finding that
Clemmer discloses continuously increasing the mass to charge ratio cut-off
in synchronization with the ion mobility spectrometer?
We answer these questions in the affirmative.

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence.

1. Clemmer describes a method of mass spectrometry where an ion
mobility spectrometer (IMS) is coupled to a quadruple mass filter
(QMF). (Para. [0095], [0098]; Fig. 9).
2. Clemmer describes that the QMF may be controlled to “pass ions
having any m/z [mass to charge] value therethrough” or “to allow
passage therethrough only of ions having desired mass-to-charge
ratios.” (Para. [0105], [0120]).
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Application 10/176,072

3. Clemmer describes that when generating ions from a biological
source, a distribution of ions in various charge states with
excessive overlap in mass peak information is obtained, where ions
having a charge state of +1 have mass peaks only slightly different
from ions having a charge state of +2. (Para. [0163]; Fig. 26A).
4. Clemmer describes that a charge reduction or neutralization unit is
included in the apparatus, which normalizes the charge states of all
ions being passed to a mass spectrometer to a +1 charge state.
(Para. [0163]).
5. Clemmer discloses that the charge reduction or neutralization unit
increases the mass-to-charge separation of ions having a charge
state of +1 and ions having a charge state of +2 to reduce mass
peak congestion. (Para. [0163]; Fig. 26B).
6. Both the ions having a +1 charge state and ions initially having a
+2 charge state are detected by the mass spectrometer. (See FF 3-
5).
7. Clemmer discloses that the ion acceleration region of the mass
spectrometer may be continuously pulsed to operate the mass
spectrometer in a free running mode. (Para. [0106]).
8. Clemmer discloses that in free running mode, ions or parts of ions
are periodically accelerated toward the ion detector. (Para.
[0107]).
9. Clemmer discloses that in a band pass mode, only ions of having a
mass to charge ratio above a minimum value and below a
maximum value are allowed to pass through the QMF. (Para.
[0103]).
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Application 10/176,072

10. Clemmer does not describe that the mass to charge ratio cut-off is
increased in synchronization with the ion mobility spectrometer in
free running mode or band pass mode. (See FF 7-9).

PRINCIPLES OF LAW
For a rejection under 35 U.S.C. 102 to be proper, the prior art “must
clearly and unequivocally disclose the claimed [invention] or direct those
skilled in the art to the [invention] without any need for picking, choosing,
and combining various disclosures not directly related to each other by the
teachings of the cited reference.” In re Arkley, 455 F.2d 586 (CCPA 1972)
(emphasis in original).

ANALYSIS
The Examiner has failed to provide reasonable basis for finding that
Clemmer discloses preferentially separating and onwardly transmitting
either multiply charged ions or singly charged ions. Clemmer discloses that
mass peaks of ions having different charge states, such as ions having a +1
state and ions having a +2 state, may be separated by reducing or removing
the charges of the ions having a multiply charged state through a charge
reduction or neutralization unit in order to reduce mass peak congestion.
(FF 3-5). Clemmer separately discloses that ions may be mass filtered
according to certain mass to charge ratios. (FF 2). However, in this portion
of the reference, Clemmer does not specifically disclose that singly charged
ions or multiply charged ions are subject to mass filtering. Thus, the
Examiner relies on two disclosures that are not directly related to each other
by the teachings of the reference. Configuring Clemmer’s method of mass
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Application 10/176,072

spectrometry to meet the recited limitation would require picking and
choosing from various disclosures of the reference. Therefore, Clemmer
does not disclose either multiply charged ions or singly charged ions are
onwardly transmitted in preference to the other as recited in the claims.
The Examiner also has failed to provide a reasonable basis for finding
that Clemmer discloses continuously increasing the mass to charge cut-off of
a mass filter in synchronization with the ion mobility spectrometer.
Clemmer discloses a band pass mode and a free running mode. (FF 7-9).
The band pass mode may be operated to select particular ranges of ions of
certain mass to charge ratios. (FF 9). Clemmer does not expressly disclose
that either mode may be configured to continuously increase the mass to
charge ratio cut-off as recited in the claims.
Because all of the pending claims include at least one of the two
limitations discussed above, we will not sustain the Examiner’s rejection.

CONCLUSION
Appellants have shown error in the Examiner’s finding that Clemmer
discloses preferentially separating and onwardly transmitting either multiply
charged ions or singly charged ions.
Appellants have shown error in the Examiner’s finding that Clemmer
discloses continuously increasing the mass to charge ratio cut-off in
synchronization with the ion mobility spectrometer.

ORDER
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Application 10/176,072

We reverse the Examiner’s decision rejecting claims 1, 3, 5, 6, 8-31,
33, 35, 36, and 68-71 under 35 U.S.C. § 102(a) as being anticipated by
Clemmer.
REVERSED

tc

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