Ex Parte Bateman et al

Patent Trial and Appeal Board

Jun 25, 2015

11720520 (P.T.A.B. Jun. 25, 2015)

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.
11/720,520 11/01/2007 Robert Harold Bateman M-1395-02 9732
43840 7590 06/25/2015
Waters Technologies Corporation
34 MAPLE STREET - LG
MILFORD, MA 01757
EXAMINER
CHANG, HANWAY
ART UNIT PAPER NUMBER
2881
MAIL DATE DELIVERY MODE
06/25/2015 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, and
STEVEN DEREK PRINGLE
____________

Appeal 2013-005922
Application 11/720,5201
Technology Center 2800
____________

Before PETER F. KRATZ, JEFFREY T. SMITH, and
N. WHITNEY WILSON, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

1 According to Appellants, the real party in interest is Micromass UK
Limited. App. Br. 4.
Appeal 2013-005922
Application 11/720,520

2
STATEMENT OF THE CASE
This is an appeal under the 35 U.S.C. § 134 from the May 1, 2012
Final rejection of claims 1–8, 10, 16–24, 26, 29–32,34–37, 43, 45, 46, 53,
63, 65, 71, 75, 77, 78, 81, 85–87, 97, and 98. We have jurisdiction under
35 U.S.C. § 6.
Appellants’ appealed invention relates to a device, such as an ion
guide, an ion mobility spectrometer or separator that preferably forms part of
a mass spectrometer. (Spec. 1.) Claim 1 is reproduced from the Appeal
Brief below:
1. A device comprising:
one or more layers of intermediate planar, plate or mesh
electrodes arranged generally or substantially in a plane in
which ions travel in use;
a first array of first electrodes disposed on a first side of
said one or more layers of intermediate planar, plate or mesh
electrodes; and
a voltage source arranged and adapted to progressively or
sequentially apply one or more transient DC voltages or one or
more transient DC voltage waveforms to said first array of first
electrodes in order to urge, propel, force or accelerate at least
some ions through or along at least a portion of said device.

The Examiner has maintained the following grounds of rejection:2
Claims 1, 2, 4–8, 10, 16–18, 20–24, 26, 29–32, 34–37, 43, 45, 46, 53,
63, 65, 75, 77, 78, 81, 85–87, 97, and 98 rejected under 35 U.S.C. § 103(a)
as unpatentable over Verentchikov (US 6,545,268 B1, issued Apr. 8, 2003)
in view of Bateman ’088 (US 2003/0001088 A1, published Jan. 2, 2003).

2 The Examiner haswithdrawn the obviousness-type double patenting
rejection of claims 1–8, 10, 16–24, 26, 29–32, 34–37, 43, 45, 46, 53, 63, 65,
71, 75, 77, 78, 81, 85–87, 97, and 98. (Ans. 2.)
Appeal 2013-005922
Application 11/720,520

3
Claims 3, 19, and 71 rejected under 35 U.S.C. § 103(a) as
unpatentable over Verentchikov, Bateman ’088 and further in view of
Bateman ’614 (US 2004/0026614, published Feb. 12, 2004).
OPINION
We have thoroughly reviewed each of Appellants’ arguments for
patentability. We will sustain the Examiner’s rejection for essentially those
reasons expressed in the Final Action and Answer.3 We add the following:
The Examiner found Verentchikov, Figure 4B, describes one or more
layers of intermediate planar electrodes parallel plates labeled (B, C, D, and
E), which form a segmented ion trap 45. The Examiner found Figure 4B,
describes a first array of electrodes disposed on a first side (A of segments
46, 47, and 48) of one or more layers of intermediate planar electrodes. The
Examiner found column 17, lines 19–59 to disclose a voltage being applied
to the electrodes (A of 46,47 and 48) in order to urge, propel, force, or
accelerate the ions through or along at least a first portion of the device.
(Final Act. 3.) The Examiner found the difference between Verentchikov
and the claimed invention is the application of “transient” DC voltages or
waveforms. The Examiner found Figure 3 of Bateman ’088 discloses the
use of pulsed DC voltages to force ions towards the exit end of an ion guide
(¶ 104). The Examiner concluded it would have been obvious to by
applying a transient DC voltage to Verentchikov’s electrodes of the ion

3 Appellants have not presented substantive arguments addressing every
claim on appeal. We limit our initial discussion to independent claim 1, but
substantively separately argued claims will be addressed. Appellants have
also not presented substantive arguments addressing the separate rejection of
claims 3, 19, and 71 (App. Br. 27). Consequently, our affirmance of the
rejection of these claims follows from our affirmance of the rejection of
independent claim 1.
Appeal 2013-005922
Application 11/720,520

4
guide for the purpose of creating a more discrete packet of ions for a higher
resolution of detection. (Final Act. 3–4.)
In rebuttal to the rejection, Appellants argue it would not have been
obvious to employ traveling waveforms to Verentchikov’s ion trap 45 as
suggested by the Examiner because it is not an ion guide but an ion trap that
employs lateral ejection from middle, second trap electrode 47. (App. Br. 9–
11.) Appellants further argue “[s]ince claim 1 recites progressively or
sequentially applying one or more transient DC voltages or one or more
transient DC voltage waveforms to the first array of electrodes in
combination with the other limitations of the claim, and such a limitation is
not rendered obvious by the cited references, the rejection should be
reversed.” (Id. at 11.)
Appellants’ arguments are not persuasive of reversible error in the
Examiner’s obviousness determination. It is not disputed that applying
transient DC voltages waveforms to an array of electrodes for movement of
ions was known to persons of ordinary skill in the art. (See Bateman ’088.)
It is not disputed that Verentchikov’s ion trap comprises an array of
electrodes to which voltage is applied for movement of ions. A person of
ordinary skill in the art would have sufficient skill to determine the
appropriate voltage to be applied to the array of electrodes in order to urge,
propel, force, or accelerate ions through or along at least a portion of
Verentchikov’s device for movement of the ions in the desired direction.
The language of claim 1 does not preclude the application of voltage to the
arrays which would have resulted in the lateral exit of the ions.

Appeal 2013-005922
Application 11/720,520

5
Claims 17, 77, 78, 81, 85–87, and 98
Appellants have relied on the arguments presented in response to
claim 1 as the basis of establishing the patentability of claims 17, 77, 78, 81,
85–87, and 98. These arguments were not found persuasive as presented by
the Examiner and discussed above. Consequently we also sustain the
Examiner’s rejection of these claims.

Claims 31, 32, 34, and 354
Claim 31 specifies the use of voltage to urge, propel, force, or
accelerate at least some ions through or along at least a portion or at least 5%
of said device. (App. Br. 12.) A person of ordinary skill in the art would
have sufficient skill to determine the appropriate voltage to apply to the
array of electrodes in order to urge, propel, force, or accelerate ions through
or along the desired portion of Verentchikov’s device. Moreover
Verentchikov’s device depicted in Figure 4B would appear to require the
application of voltage to urge, propel, force, or accelerate at least some ions
through or along at least a portion of the arrays to result in the lateral exit of
the ions.

Claim 97
Appellants argue the combination of Verentchikov and Bateman ’088
do not show an array of first electrodes disposed along one of the
intermediate electrodes as required by claim 97. The Examiner rejected the
subject matter of claim 97 for the same basis as claim 1. As stated above the

4 We will limit our discussion to claim 31 because Appellants have only
presented arguments directed to claim 31.
Appeal 2013-005922
Application 11/720,520

6
Examiner found Verentchikov, Figure 4B, describes one or more layers of
intermediate planar electrodes parallel plates labeled (B, C, D, and E), which
form a segmented ion trap 45 to disclose the intermediate planar electrodes.
Verentchikov does not disclose a multiple array of electrodes disposed along
one of the intermediate electrodes. However, a person of ordinary skill in
the art would have recognized the suitability of using a multiple array of
electrodes for propelling ions such as described by Bateman ’088. A person
of ordinary skill in the art would have reasonably expected that a multiple
array of electrodes disposed along one of the intermediate electrodes would
also have been suitable for propelling ions.
Accordingly, we affirm the Examiner’s decision to reject claims 1–8,
10, 16–24, 26, 29–32,34–37, 43, 45, 46, 53, 63, 65, 71, 75, 77, 78, 81, 85–
87, 97, and 98 for the reasons presented by the Examiner and given above.
ORDER
The Examiner’s obviousness rejections are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED
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