Ex Parte Bateman et al

Patent Trial and Appeal Board

Dec 12, 2014

12094561 (P.T.A.B. Dec. 12, 2014)

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.
12/094,561 08/20/2008 Robert Harold Bateman M-464-02 3291
43840 7590 12/12/2014
Waters Technologies Corporation
34 MAPLE STREET - LG
MILFORD, MA 01757
EXAMINER
PURINTON, BROOKE J
ART UNIT PAPER NUMBER
2881
MAIL DATE DELIVERY MODE
12/12/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROBERT HAROLD BATEMAN, KEVIN GILES,
STEVEN DEREK PRINGLE, and JASON LEE WILDGOOSE1
____________

Appeal 2013-003157
Application 12/094,561
Technology Center 2800
____________

Before MARK NAGUMO, N. WHITNEY WILSON, and
JEFFREY W. ABRAHAM, Administrative Patent Judges.

ABRAHAM, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
decision of the Primary Examiner finally rejecting claims 1, 2, 8, 36, 46, 47,
49, 55, 58, 63, 64, 67, 82, and 89. We have jurisdiction pursuant to
35 U.S.C. § 6(b). We affirm-in-part.
BACKGROUND
Appellants’ claimed invention relates to a mass spectrometer and
methods of mass spectrometry that utilize a closed-loop ion guide

1 According to the Appeal Brief, the Real Party in Interest is Micromass UK
Limited. App. Br. 4.
Appeal 2013-003157
Application 12/094,561

2
comprising a plurality of electrodes to move ions along or around the closed-
loop ion guide. Spec. 5.
Claims 1, 36, and 47 are illustrative and are reproduced below from
the Claims Appendix (App. Br. 26; emphasis added):
1. A mass spectrometer comprising a closed-loop ion guide
comprising:
a plurality of electrodes, and
means for applying an AC or RF voltage to the plurality
of electrodes, said AC or RF voltage generating a
pseudo-potential well which acts to confine ions radially
within said closed-loop ion guide.
36. A mass spectrometer as claimed in claim 1, further
comprising means for progressively applying one [or]
more transient DC voltages or potentials or DC voltage
or potential waveforms to at least some of the electrodes
of the ion guide so as to drive or urge ions along or
around at least some of the length or ion guiding path of
said ion guide.
47. A mass spectrometer as claimed in claim 1, wherein one
or more portions of said ion guide comprise an ion
mobility spectrometer or separator portion, section or
stage wherein ions are caused to separate temporally
according to their ion mobility in said ion mobility
spectrometer or separator portion, section or stage.

The Examiner maintains, and Appellants appeal, the following
rejections:
1. Claims 1, 2, 8, 36, 46, 47, 55, 58, 67, 82, and 89 as unpatentable
under 35 U.S.C. § 103(a) over Yamaguchi (US 2005/0151076 A1,
published July 14, 2005), in view of Giles (US 2004/0031920 A1,
published Feb. 19, 2004).
Appeal 2013-003157
Application 12/094,561

3
2. Claims 49, 63 and 64 as unpatentable under 35 U.S.C. § 103(a)
over Yamaguchi in view of Giles, and further in view of Bateman
(US 2004/0026611 A1, published Feb. 12, 2004).

Appellants separately argue claims 1, 36, 46, 47, 49, 82, and 89.
Claim 1, an apparatus claim, and claim 82, a method claim, contain similar
requirements, and Appellants present essentially the same arguments
regarding the patentability of each. As a result, we include claim 82 in our
analysis of claim 1 below. Claim 89, another independent method claim,
includes requirements similar to those in claims 1, 36, and 47. Therefore,
we apply our analysis of claims 36 and 47 to claim 89, as set forth below.
OPINION
Claim 1
The Examiner finds that Yamaguchi teaches a mass spectrometer
having a closed-loop ion guide comprising a plurality of electrodes and
means for applying a voltage to the plurality of electrodes. Final Act. 4.
The Examiner acknowledges that Yamaguchi does not disclose applying an
AC or RF voltage, the AC or RF voltage generating a pseudo-potential well
which acts to confine ions radially. Id. The Examiner, however, finds that
Giles discloses this requirement, and determines that it would have been
obvious to a person of ordinary skill in the art to substitute the AC or RF
voltage from Giles for the unspecified voltage of Yamaguchi “since it would
Appeal 2013-003157
Application 12/094,561

4
have allowed an operator the ability to confine ions radially”2 and it “would
have been a simple substitution of one known element for another to obtain
the desired results.” Id.
Appellants argue that Yamaguchi and Giles are “entirely
contradictory,” and, therefore, a person of ordinary skill in the art would not
have had any reason to combine the references. App. Br. 9. Specifically,
Appellants contend that Yamaguchi is concerned with a time of flight mass
filter, which requires a high vacuum in order to increase resolution, whereas
Giles discloses an ion mobility separator, wherein ions are forced to move
against a counter flow gas. Id. According to Appellants, the two processes
are incompatible, as a time of flight separation device (as disclosed in
Yamaguchi) would be destroyed by the introduction of a gas. Id.
Appellants also argue that a person of ordinary skill in the art would not
have arrived at the claimed subject matter by combining these references,
and would have had to make certain modifications to Yamaguchi in order
for it to be suitable for producing a pseudo-potential well as required by
claim 1. Id. at 10.
In the Answer, the Examiner states that the rejection does not rely on
Giles for the addition of a counter flow gas to the closed-loop system of
Yamaguchi. Ans. 3. The Examiner takes the position that the pseudo-
potential well of Giles is not dependent on the gas to function, and can be
used without it. Id. The Examiner also notes that a person of ordinary skill
in the art would have known how to appropriately modify Yamaguchi to

2 The Examiner uses the term “radially” in various contexts to refer to
different types of confinement. Appellants, however, do not contest this
aspect of the Examiner’s rejection.
Appeal 2013-003157
Application 12/094,561

5
incorporate the teachings of Giles in order to apply an AC or RF voltage to
the electrodes of Yamaguchi to obtain a pseudo-potential well. Id. at 4.
After review of the arguments and evidence presented by Appellants
and the Examiner, we sustain the stated rejection.
Appellants do not contest that Yamaguchi teaches a mass
spectrometer having a closed-loop ion guide comprising a plurality of
electrodes and means for applying a voltage to the plurality of electrodes.
See Ans. 7; Yamaguchi, Fig. 1. Nor do Appellants contest that Giles
discloses an AC or RF voltage which generates a pseudo-potential well
which acts to confine ions radially. See Ans. 7; Giles ¶ 39.
Specifically, Giles teaches that RF ion guides are commonly used to
confine and transport ions. Giles ¶ 2. To accomplish this, an RF voltage is
applied between neighboring electrodes to produce a pseudo-potential well.
Id. According to Giles, an RF ion guide is capable of functioning at
“relatively high pressures where ions are likely to undergo frequent
collisions with residual gas molecules,” but that it is also known to use RF
ion guides to transport ions through vacuum chambers. Id. at ¶ 3.
The weight of the evidence is that the pseudo-potential well of Giles is
not dependent on the presence of a gas to function, and we therefore find
that the Examiner had a reasonable basis to conclude that a person of
ordinary skill in the art would have been motivated to combine the teachings
of Yamaguchi and Giles to arrive at the claimed subject matter. Appellants’
arguments regarding the incompatibility of a time of flight separation device
(as disclosed in Yamaguchi) with the counter flow gas used in an ion
mobility separator (as disclosed in Giles) are not pertinent to the Examiner’s
rejection, which is directed only to one particular aspect of Giles, namely the
Appeal 2013-003157
Application 12/094,561

6
use of the AC or RF voltage to create a pseudo-potential well. Appellants
have not directed us to any persuasive evidence demonstrating that this
aspect of Giles is limited to ion mobility separators such that it would be
incompatible with other types of separation devices. Nor have Appellants
directed us to anything other than attorney argument (as noted by the
Examiner) to support the assertion that a person of ordinary skill in the art
would not have been able to modify the Yamaguchi device to incorporate
the teachings of Giles.
Accordingly, we find that Appellants have not demonstrated any
harmful error in the Examiner’s rejection, and we sustain the rejection of
claim 1. Because Appellants do not separately argue the patentability of
claims 2, 8, 55, 58, 63, 64, or 67, we likewise affirm the rejection of these
claims. Additionally, because Appellants’ arguments regarding claim 82 are
essentially the same as those presented for claim 1 (see App. Br. 14–17), we
affirm the rejection of claim 82 for the same reasons we affirm the rejection
of claim 1.

Claims 36 and 46
Claims 36 and 46 depend from Claim 1. Claim 36 requires means for
applying “one [or] more transient DC voltages or potentials or DC voltage or
potential waveforms to at least some of the electrodes of the ion guide so as
to drive or urge ions along or around at least some of the length or ion
guiding path of said ion guide.” Claim 46 requires “means arranged to
maintain a constant non-zero DC voltage gradient along at least some of the
Appeal 2013-003157
Application 12/094,561

7
length or ion guiding path of said ion guide.”3 The Examiner finds that
Giles discloses the use of transient DC voltages or DC voltage waveforms to
separate ions, and also teaches the use of a non-zero DC electric field to
drive ions through an RF ion guide. Final Act. at 5–6 (citing Giles ¶¶ 6 and
9). According to the Examiner, a transient or non-zero DC voltage
would be a good backup for the closed loop ion guide of
Yamaguchi if, the ions of interest in the apparatus having
been already selected, the remaining ions were driven out
of the closed loop ion guide and discarded, a process
referred to at [27] of Yamaguchi. The utilization of any
added voltage, whether transient or constant, in order to
move the ions out after the analysis period, will decrease
the time it takes the ions to be discarded and increase the
amount of time the ion guide can be used for analysis.
Ans. 5–6.
Appellants argue that there would not have been any reason for a
person of ordinary skill in the art to apply a transient or non-zero DC voltage

3 We note that many of the appealed apparatus claims contain means plus
function language as permitted by 35 U.S.C. § 112, ¶ 6. The Examiner has
the burden in the first instance of interpreting the “means” clause by
determining the corresponding structure therefor in the Specification and
equivalents thereof in order to compare the thus claimed invention with the
prior art. See, e.g., In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994)
(en banc) (“[T]he PTO was required by statute to look to Schuler’s
specification and construe the ‘means’ language recited in the last segment of
claim 1 as limited to the corresponding structure disclosed in the
specification and equivalents thereof”). The Examiner does not appear to
have conducted a Donaldson analysis, nor has Appellant argued that the
rejections are deficient for this reason. If prosecution of this application
continues, the Examiner should set forth appropriate analyses of the various
means plus function clauses in the claims so as to clarify the scope of the
pertinent claim limitations.

Appeal 2013-003157
Application 12/094,561

8
to the ion guide in Yamaguchi. App. Br. 10–11; Reply Br. 2–3. Appellants
also contend that paragraph 27 simply states that Yamaguchi contains
deflecting electrodes that are used to “introduce and take out ions flying
through the loop ion guide.” Reply Br. 3.
The Examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. See In re Warner, 379 F.2d 1011,
1016 (CCPA 1967). The Examiner has not explained, however, why a
teaching of a way to introduce and remove ions one wants to analyze would
have suggested using such a transient or non-zero DC voltage to remove
unwanted ions from the loop. The Examiner does not direct us to any other
evidence demonstrating that a person of ordinary skill in the art would have
been motivated to incorporate a transient or non-zero DC voltage into the
Yamaguchi device “as a backup” to drive out and discard unwanted ions.
Accordingly, we find that the Examiner’s rejection is not adequately
supported. Because the Examiner has failed to provide sufficient factual
evidence to support a prima facie case of obviousness, we reverse the
rejection of claims 36 and 46.

Claim 47
Claim 47 also depends from claim 1, and requires that one or more
portions of the ion guide comprise an ion mobility spectrometer or separator
portion, “wherein ions are caused to separate temporally according to their
ion mobility.” The Examiner finds that Giles teaches this limitation, and
that “[m]odification would have entailed substituting an ion mobility section
in for the, or in addition to, the reflector of Yamaguchi.” Final Act. 6. The
Examiner concludes that it would have been obvious to modify Yamaguchi
Appeal 2013-003157
Application 12/094,561

9
in this regard because “it would have allowed the ions to be separated based
on multiple characteristics and given the operator more information about
the ion of interest.” Id.
Appellants argue that time of flight mass filters do not separate ions
based on ion mobility. App. Br. 11. Instead, ions separate according to their
mass-to-charge ratio due to differing times of flight. Id. at 12. Appellants
acknowledge that providing an ion mobility separator outside the closed
loop of Yamaguchi may allow ions to be separated according to multiple
characteristics. Id. at 13. According to Appellants, however, providing an
ion mobility separator inside the closed loop, as required by claim 47, would
interfere with the ability of the Yamaguchi device to separate ions according
to their mass-to-charge ratio using the time-of-flight technique. Id. at 13.
Appellants therefore contend that a person of ordinary skill in the art would
not have arrived at the claimed subject matter by combining the teachings of
Yamaguchi and Giles. Id. at 14.
As noted above, the initial burden is on the Examiner to provide
factual support for a prima facie conclusion of obviousness. Once again we
find that the Examiner failed to satisfy this burden.
The Examiner acknowledges that the devices in Yamaguchi and Giles
operate differently, at least to the extent that they allow ions to be separated
according to different characteristics. Therefore, even though it may be
possible to replace Yamaguchi’s reflector (which is outside of the closed
loop) with a device that separates ions according to their ion mobility, the
Examiner has not directed us to any persuasive factual evidence supporting
the conclusion that it would have been obvious to a person of ordinary skill
in the art (or even possible) to replace a portion of Yamaguchi’s closed loop,
Appeal 2013-003157
Application 12/094,561

10
which separates ions based on time-of-flight, with a portion that separates
ions according to their ion mobility.
Because the Examiner’s rejection lacks sufficient factual support, we
reverse the rejection of claim 47.
As noted above, claim 89 includes limitations similar to those found
in claims 36 (applying a transient DC voltage) and 47 (separating ions
according to their ion mobility). We therefore reverse the rejection of claim
89 for the same reasons we reverse the rejections of claims 36 and 47.

Claim 49
Claim 49 depends from claim 1, and requires the use of a buffer gas in
one or more sections of the ion guide. The Examiner acknowledges that
Yamaguchi and Giles fail to teach the use of a buffer gas in this regard, but
finds that Bateman teaches a buffer gas being provided within an ion guide.
Final Act. 8 (citing Bateman ¶ 130). According to the Examiner, it would
have been obvious to modify the teachings of Yamaguchi and Giles to
include a buffer gas “since it would have allowed the ions to have been
better confined in any potential wells (Bateman [130]).” Id. The Examiner
takes the position that a person of ordinary skill in the art would have known
that the use of a buffer gas would not destroy time of flight information, as
evidenced by Currell (US 2005/0199796 A1, published Sep. 15, 2005). Id.
at 4.
Appellants state that they “believe[] that using a buffer gas would be
entirely contrary to the aim of Yamaguchi,” and contend that Currell
provides a warning that at least some loss of flight information may be lost
when a buffer gas is used. App. Br. 24.
Appeal 2013-003157
Application 12/094,561

11
We are not persuaded by Appellants’ arguments.
In view of the uncontested disclosure of Bateman in combination with
Yamaguchi and Giles, we find that the Examiner reasonably concluded that
the subject matter of claim 49 would have been obvious to a person of
ordinary skill in the art. In response to the prima facie case of obviousness
set out by the Examiner, Appellants provide only attorney arguments and
“beliefs” instead of evidence supporting their position. Attorney argument,
however, cannot take the place of evidence. E.g., In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974). Absent persuasive factual evidence sufficient to
rebut the Examiner’s prima facie conclusion, we sustain the Examiner’s
rejection of claim 49.

CONCLUSION
For the reasons set forth above, we affirm the Primary Examiner’s
final rejection of claims 1, 2, 8, 49, 55, 58, 63, 64, 67, and 82 under 35
U.S.C. § 103, and reverse the Primary Examiner’s final rejection of claims
36, 46, 47, and 89 under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

lp