Ex Parte Colby et al

Patent Trial and Appeal Board

Feb 4, 2016

13093471 (P.T.A.B. Feb. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/093,471
43198 7590
STEVEN M. COLBY
P. 0. BOX 60092
04/25/2011
02/08/2016
PALO ALTO, CA 94306
FIRST NAMED INVENTOR
Steven M. Colby
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
SMC-74-Cl 8767
EXAMINER
IPPOLITO, NICOLE MARIE
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
02/08/2016 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):
scolby@petersverny.com
melinda@petersverny.com
smcarchive@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN M. COLBY and 0. DAVID SPARKMAN
Appeal2014-003023
Application 13/093,471
Technology Center 2800
Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
AVEL YN M. ROSS Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-32. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b ).
1 In our opinion below, we refer to the Office Action appealed from, filed
April 12, 2013 (Office Action), the Appeal Brief filed September 13, 2013
(Appeal Br.), the Examiner's Answer filed October 15, 2013 (Ans.), and the
Appellant's Reply Brief filed December 17, 2013 (Reply Br.).
2 Appellants identify the real party in interest as Steven M. Colby and 0.
David Sparkman, individuals. Appeal Br. 2.
Appeal2014-003023
Application 13/093,471
STATEMENT OF CASE
The claims are directed to systems and methods for generating ions by
using metastables in Collisional Induced Dissociation (CID) in mass
spectrometry. Claims 1, 21, and 29, reproduced below, are illustrative of the
claimed subject matter:
1. (Original) A system comprising:
a first m/z analyzer configured to analyze ions according
to their m/z values;
an effusive source of excited metastables; and
a collision induced dissociation region configured to
receive the excited metastables, and configured to facilitate
collisions between the ions and the excited metastables, the
collisions resulting in generation of product ions from the ions.
21. (Original) A method comprising:
generating excited metastables;
generating first ions;
separating the first ions to produce separated ions;
colliding the separated ions with the metastables to
produce product ions; and
separating the product ions.
29. (Original) A system comprising:
a passageway configured for a person or an article to pass
through;
at least one metastable source configured to generate
metastable species;
a first MS inlet configured to receive ions generated as a
result of the metastable species striking the person or the article
as the person or the article passes through the passageway; and
at least one mass spectrometer configured to receive the
ions from the first MS inlet.
Claims Appendix at Appeal Br. 24, 27, and 28.
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Application 13/093,471
REJECTIONS
The Examiner made the following rejections:
A. Claims 1-32 stand rejected under 35 U.S.C § 112 second
paragraph as being indefinite. Office Action 2.
B. Claims 1, 2, 5-7, 10-12, 14, and 19 stand rejected under
35 U.S.C § 103(a) as being unpatentable over Bateman3 in
view of Bertrand et al. 4 Id. at 4.
C. Claims 21, 22, 26, and 28 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Bateman as modified
by Bertrand and in view ofChristyakov. 5 Id. at 10.
D. Claims 3, 4, 15-17, 24, and 25 stand rejected under
35 U.S.C § 103(a) as being unpatentable over Bateman as
modified by Bertrand and Christyakov and in view of
Zhu. 6 Id. at 12.
E. Claims 8, 9, 13, and 18 stand rejected under 35 U.S.C
§ 103(a) as being unpatentable over Bateman as modified
by Bertrand and further in view of Berkout et al. 7 Id. at
15.
3 Bateman, US 2006/0138320 Al, published June 29, 2006 (hereinafter
"Bateman").
4 Bertrand et al., US 6,124,675, issued September 26, 2000 (hereinafter
"Bertrand").
5 Christyakov, US 2005/0034666 Al, published February 17, 2005
(hereinafter "Christyakov").
6 Zhu, US 5,192,865, issued March 9, 1993 (hereinafter "Zhu").
7 Berkout et al., US 2005/0258353 Al, published November 24, 2005
(hereinafter "Berkout").
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F. Claim 23 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Bateman as modified by Bertrand and
Christyakov and further in view of Miller et al. 8 Id. at 1 7.
G. Claim 27 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over Bateman as modified by Bertrand and
Christyakov and further in view of Cody et al. 9 Id. at 18.
H. Claims 29 and 30 stand rejected under 35 U.S.C § 103(a)
as being unpatentable over Davies 10 and in view of Zhu.
Id. at 19.
I. Claims 31 and 32 stand rejected under 35 U.S.C § 103(a)
as being unpatentable over Davies as modified by Zhu and
in further view of Crowley et al. 11 Id. at 20.
Upon consideration of the record before us, we find that Appellants
have shown reversible error in the Examiner's rejection of Claims 1-32
under 35 U.S.C § 112 i-f 2 (rejection A) and in the Examiner's rejection of
Claims 29-32 under 35 U.S.C. § 103 (rejections H andI). However, and
with regard to the remaining obviousness rejections B-G above, we find that
Appellants have failed to carry their requisite burden. Our reasons follow.
8 Miller et al., US 2003/0132380 Al, published July 17, 2003 (hereinafter
"Miller").
9 Robert B. Cody et al., Versatile New Ion Source for the Analysis of
Materials in Open Air under Ambient Conditions, 77 Analytical Chem.
2297-2302 (2005) (hereinafter "Cody").
10 Davies, US 2003/0041573 Al, published March 6, 2003 (hereinafter
"Davies").
11 Crowley et al., US 2006/0255798 Al, published November 16, 2006
(hereinafter "Crowley").
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OPINION
Indefiniteness-Rejection A
The Examiner rejects claims 1-32, 12 under 35 U.S.C § 112 i-f 2, as
being indefinite because the term "effusive," found in claims 1 and 10, is not
defined by the claims or Specification. Office Action 2-3. The Examiner
posits that the accepted meaning of "effusive" is "'expressing feelings of
gratitude, pleasure or approval in an unrestrained or heartfelt manner' or
'poured out."' Id. at 3. The Examiner finds that, as used in the claims,
"effusive" means "many or much" (id.) as it is the "only synonym that
would make sense as it pertains to the generation of ion beams." Ans. 4.
Appellants respond that: ( 1) the Examiner is viewing the term
"effusive" in isolation from the phrase "effusive source" and "effusive
metastable source" and (2) the Examiner's ad hoc definition of "many or
much" is not found within the Examiner's "accepted meaning" and is
without support. Appeal Br. 8-9. Appellants explain "effusive source" has
a particularized meaning in mass spectrometry and "denotes a specific type
of source having specific flow characteristics." Id. at 9. In support of their
position, Appellants submit the Declaration of Patrick R. Jones (hereinafter
"Jones Deel.") who explains that "the terms 'effusive source' and 'beam
source' ... have specific meaning[] in the art" and that these terms are "used
to characterize gas sources having mutually exclusive flow properties." Id.
at 10; Jones Deel., i-fi-116-17.
12 The Examiner includes, within this rejection, claims that do not include
the "effusive" language that is the subject of the indefiniteness rejection.
The claims that are not properly subject to the rejection under 35 U.S.C
§ 112 i-f 2 include: Claims 21-25 and 27-32.
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When interpreting claim language, it is appropriate to look to the
specification for guidance. The test for definiteness is whether one skilled in
the art, at the time the application was filed, would understand the bounds of
the claim when read in light of the specification and prosecution history.
Nautilus, Inc. v. Biosig Inst., Inc., _U.S._, 134 S.Ct. 2120, 2128 (2014).
We agree with Appellants. In this instance, we conclude that those
skilled in the art would have no uncertainty concerning the subject matter
and scope of the claims. The Specification explains, with respect to the
"effusive source" that:
an effusive source of electrons or metastables [is] configured to
deliver the electrons or metastables to the analysis region [Spec.
ii 12] [and]
are distinguished from other sources by the presence of a carrier
gas, by operation at near atmospheric pressures, and/or by
velocities that are principally dependent of the local temperature
[id. ii 122] (emphasis added) [and]
include, for example, the DESI source, DAPCI, ELDI, and
ASAP sources described in "Ambient Mass Spectrometry" by
Cooks et al. in Science 17 March 2006, vol. 311 pg. 1566-1570.
[Id.]
The disclosure in the Specification is further supported by the Jones
Declaration that an "effusive source" is characterized by its "gas flow
properties." Jones Deel. ii 17.
Thus, one if skill in the art would have little difficulty ascertaining the
subject matter and scope of the claims. Accordingly, we conclude that
claims 1-20, and 26 are not indefinite.
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Obviousness-Rejection B
The Examiner rejects claims 1, 2, 5-7, 10-12, 14, and 19, under
35 U.S.C § 103(a), as being unpatentable over Bateman in view of
Bertrand. 13 The Examiner finds that Bateman teaches all elements of claims
1 and 10 with the exception that "Bateman fails to teach an effusive source
of excited metastables, i.e., Bateman does not teach now the metastables
arise." Office Action 5, 7. According to the Examiner, Bertrand teaches an
effusive source of excited metastables. Id. And, with respect to claims 11
and 12, the Examiner finds the addition of a valve or skimmer to control the
flow of metastables to be likewise obvious. According to the Examiner,
while Bateman and Bertrand fail to teach a valve per se, Bateman teaches an
orifice, "which sets up a pressure differential between the CID and the rest
of the device." Id. at 8. And, "Bertrand teaches the use of skimmers and
deflector electrodes to control the flow of metastables." Id. Therefore,
according to the Examiner, it would have been obvious to use a valve or a
skimmer to control the flow of metastables. Id.
The Appellants respond that Bateman and Bertrand are not properly
combinable because one skilled in the art would understand the suggested
combination would not work as planned. Appeal Br. 11-12; Reply Br. 7-8.
Specifically, Appellants contend that the Bateman/Bertrand combination
would not possess the advantages identified by the Examiner in combining
13 Appellants do not separately argue claims 2, 5, 7-9, 13, 14, and 19 but
rather explains that these claims stand or fall with the independent claims
from which they depend. Appeal Br. 16. Therefore our discussion, for the
most part, focuses on Claims 1 and 10. Appellants also identify Claim 18, in
this listing of claims, as opposed to Claim 19. Id. But, it is believed
Appellants intended Claim 19 to be identified and, in any event, Appellants
also do not argue claim 18 separately.
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the references nor would there be any expectation of success. Appeal Br.
11-12. Appellants also assert that one skilled in the art would understand
that Bertrand teaches a "beam source" as opposed to an "effusive source."
Id. at 13. As a result, the combination does not teach the invention of claims
1 and 10. Further, and with respect to claims 11 and 12-requiring a valve
or skimmer (respectively) to control the flow of metastables-Appellants
argue that one of skill in the art would not consider the addition of a valve or
skimmer to Bertrand. Id. 15-16. Specifically for claim 11, Appellants argue
that the presence of a valve would disrupt the beam and impede the
operation of the metastable source in Bertrand. Id. And, for claim 12,
Appellants complain that because Bertrand already has an orifice, the
addition of the skimmer would serve no purpose. Id. at 16. As a result, says
Appellants, a person of ordinary skill would not consider the addition of a
valve or skimmer to Bertrand. Id. at 15-16.
The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). One of ordinary skill can use his
or her ordinary skill, creativity, and common sense to make the necessary
adjustments and further modifications to result in a properly functioning
device. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) ("a
court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ"). Furthermore, "if a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
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using the technique is obvious unless its actual application is beyond his or
her skill." See id. at 41 7.
"In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant." In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the following factors:
(1) the scope and content of the prior art; (2) the differences between the
prior art and the claims at issue; (3) the level of ordinary skill in the relevant
art; and (4) objective evidence of nonobviousness, if present. Graham v.
John Deere Co., 383 U.S. 1, 17 (1966).
Initially, we find that the combination of Bateman and Bertrand is
proper and the skilled artisan would be motivated to combine their
teachings. Bateman and Bertrand both relate to analytical methods-
specifically mass spectrometry-and using excited metastables of gases,
such as helium, argon, and nitrogen, to collide with a sample. See Bateman
Abstract, i-fi-16-10, i178 and Bertrand col. 1, 11. 44---65 and col. 5, 11. 64---65.
Appellants initially argue against the combination explaining that
because "beam sources" and "effusive sources" have mutually exclusive
flow properties, one skilled in the art would not be motivated to combine the
beam source of Bertrand with Bateman. But, while Bertrand prefers a beam
source, Bertrand teaches other techniques to produce metastables including:
"electron ionization; proton transfer reactions, such as those used in
chemical ionization; or photoionization with lasers or other intense light
sources" none of which are addressed by Appellants. Bertrand col. 1, 11. 29--
32. And, as discussed above, Appellants provide specific examples of
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Application 13/093,471
effusive sources such as "the DESI [Desorption Electrospray Ionization]
source, DAPCI [Desorption Atmospheric Pressure Chemical Ionization],
ELDI [Electrospray-assisted Laser Desorption Ionization], and ASAP
[Atmospheric Solids Analysis Probe] sources." Spec. i-f 122. Bateman
expressly teaches use of a DESI source, one the sources described by
Appellants as an "effusive source." See Bateman i-f 73 (Bateman also
discusses APCI-similar to DAPCI).
With respect to claims 11 and 12, Appellants separately argue against
the motivation to combine Bateman and Bertrand. In this regard, the
Examiner correctly finds that skimmers and valves, like the orifice of
Bateman, are known methods for controlling the flow of metastables. Office
Action 7-8. Appellants do not contest that skimmers, valves, and orifices
are known structures to control flow. In fact, Appellants seemingly agree
that an orifice and skimmer are configured to limit gas flow. Appeal Br. 16
(because the orifice of Bertrand is configured to limit gas flow "[a ]ddition of
a skimmer would have no further purpose."). Therefore, we find no error in
the Examiner's finding that a motivation to combine Bateman and Bertrand
exists.
Turning now to the specifics of the Examiner's obviousness rejection,
Appellants contend that because the "beam source" of Bertrand is not an
"effusive source," the proffered combination fails to teach the elements of
claims 1 and 10. But, as discussed in the preceding paragraph, Bertrand
teaches other methods for generating metastables, not addressed by
Appellants, and Bateman itself teaches use of a DESI source-an admitted
"effusive source."
Accordingly, the Examiner's rejection of claims 1, 2, 5-7, 10-12, 14,
and 19 is affirmed.
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Obviousness-Rejection C
The Examiner rejects claims 21, 22, 26, and 28, under 35 U.S.C
§ 103(a), as being unpatentable over Bateman as modified by Bertrand and
further in view of Christyakov. 14 The Examiner finds that:
Bateman teaches generating excited metastables (paragraph
0228 discloses ion-metastable reactions in the system; therefore
the metastables must come from some source), generating first
ions (FIG. 1, ion source 1, paragraph 0226), separating the first
ions to produce separated ions (FIG. 1, quadrupole mass filter 3,
paragraphs 0226-0231 ), colliding the separated ions with the
metastables to produce product ions (see in particular paragraph
0228) and separating the product ions (FIG. 1, Time of Flight
mass analyzer 5, paragraph 0231 ).
Office Action 10.
Appellants argue instead that "Christyakov is in a substantially
different field of art than that of Bateman and Bertrand" and thus one of skill
in the art would not combine the teachings of these references. Appeal Br.
18. And, even if properly combined, Appellants contend that the
combination would yield no expectation of success. Id.
Appellants fail to address the Examiner's specific findings with
respect to Bateman's teachings. The Examiner correctly found that Bateman
discloses each of the method steps found in claim 21, without need for
Christyakov. We adopt the Examiner's undisputed findings as our own and
conclude that claims 21 is obvious in light of Bateman and Bertrand.
14 Appellants do not separately argue claims 22 and 28 but rather explain
that these claims stand or fall with the Independent Claim 21 from which
they depend. Appeal Br. 19.
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Application 13/093,471
Appellants also argue for the separate patentability of claim 26 which
includes an "effusive source." 15 But, for the reasons discussed above with
respect to claims 1 and 10, reversal of the Examiner's rejection of claim 26
is not warranted.
Accordingly, Appellants have not identified reversible error in the
Examiner's findings regarding Bateman, or obviousness conclusions based
thereon. We therefore, sustain the Examiner's rejection of claims 21, 22, 26,
and 28 as obvious.
Obviousness-Rejection D
The Examiner rejects claims 3, 4, 15-17, 24, and 25 16, under 35 U.S.C
§ 103(a), as being unpatentable over Bateman as modified by Bertrand and
Christyakov and further in view of Zhu. According to the Examiner, The
Bateman/Bertrand/Christyakov combination teaches all elements of claims
3, 4, and 15-17 except an "effusive source[] configured to be operated at
greater than 50 Torr" or "greater than l 00 Torr" (claims 3 and 4
respectively) and "metastables [] included in a carrier gas having a pressure
greater than 100 Torr" (claims 15 and 16) or "greater than 50 Torr" (claim
17). Office Action 12-14. But, the Examiner finds that Zhu teaches an
effusive source operated at atmospheric pressure, i.e., greater than 50 and
100 Torr. Id. at 12. And, Claims 24 and 25 require varying the internal
energy (claim 24) 17 or external energy (claim 25) of the excited metastables.
15 Appellants argue that reversal is warranted for both claims 21 and 26
because Bertrand does not teach an effusive source. Appeal Br. 1 7. But,
claim 21 is broader in scope and does not require an "effusive metastable
source."
16 A new ground of rejection is entered for claim 25.
17 The language of claim 24 has it depending from claim 20.
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The Examiner finds these elements are met by the teachings of Zhu. Id. at
12-14.
Appellants, in tum, refute the existence of a motivation to combine
the teachings of Bateman, Bertrand, Christyakov, and Zhu. Appellants
explain that
like Christyakov [sic], the source of Zhu produces a large number
of ions as well as metastables ... [and] [a]s with Christyakov
[sic] these ions would interfere if used in a collision region in
which parent ions have already been separated and daughter ions
are generated. The excess ions from the Zhu source would
interfere with the analyte ions.
Appeal Br. 19. Therefore, the systems would not work as intended. Id. at
20. Addressing claims 24 and 25, Appellants contend that Zhu fails to
disclose the step of "varying the [internal or external] energy of the excited
metastables to vary the product ions produced." Id.
As discussed further below, we affirm the Examiner's rejection of
claims 3, 4, 15-17, and 24 and enter a new ground of rejection for claim 25
(see infra pp. 18-19).
We find that the combination tendered by the Examiner possesses the
proper motivation to combine. Zhu, like Bateman and Bertrand, relates to
analytical methods-specifically mass spectrometry-and uses excited
metastables of gases, such as helium, argon, and nitrogen, to collide with a
sample. See, e.g., Zhu col. 1, 11. 8-16, col. 3, 11. 16-25, 28-32, col. 8, 11. 30-
42 and col. 11, 11. 50-54. Christyakov teaches producing a plasma
metastable species from noble gases including argon. See Christyakov i-f 35,
i-f 43, and i-fi-151-52. The Examiner correctly finds, in response to
Appellants' criticism that Christyakov would produce "too many ions for the
system to function," that "it is well known that plasma sources are in fact
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commonly used within the field of mass spectrometry." Ans. 7. The
Examiner also finds that the same reasoning applies to Zhu. Id. Appellants
do not dispute this finding.
Moreover, we find that the teachings of both Bateman and Bertrand
teach an "effusive source [] configured to be operated at greater than 50 [or
100] Torr" and "metastables []included in a carrier gas having a pressure
greater than 100 [or 50] Torr." Bateman expressly provides that "[t]he
source of ions may preferably yield mainly molecular ions . . . . Examples of
such sources include atmospheric pressure ionisation sources (e.g.
Electrospray and APCI) and Matrix Assisted Laser Desorption Ionisation
(MALD I)." Bateman i-f 193 (emphasis added). And, Bertrand teaches that
"[ t ]he pressure in the first chamber 120 is of the order of 10-100 torr while
the pressure in the bottom end second chamber 122 which is differentially
pumped is less than one torr." Bertrand col. 5, 11. 54--59; see also Bertrand
claim 9 ("said source gas generates a pressure of about 10 to 100 Torr in said
first chamber"). Therefore, we find no error in the Examiner's finding that a
motivation to combine Bateman, Bertrand, Christyakov, and Zhu exists.
Thus, we find that the Examiner did not err in combining Bateman,
Bertrand, Christyakov and Zhu.
Turning to the Examiner's rejection of claim 24, the Examiner
accurately finds that Zhu teaches "varying the internal energy of the excited
metastables to vary the product ions produced." In relevant part, Zhu
explains:
[a Jn intermediate result can be achieved by capacitive or
inductive application of adjustable, (as regards intensity and/or
frequency of operation), electrical energy to a matrix carrier gas
to produce metastable species, the energy in which metastable
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species can in tum interact with sample when it is released during
relaxation of said metastable species to a lower energy state.
Zhu col. 8, 11. 30-37 (emphasis added). Appellants admit that the cited
portions of Zhu refer to the internal energy of the metastables but overlook
that Zhu teaches this internal energy is adjustable, or varied. Appeal Br. 20.
The Examiner's rejection of claims 3, 4, 15-17, and 24 is affirmed. 18
Obviousness-Rejection E
The Examiner rejects claims 8, 9, 13, and 18, under 35 U.S.C
§ 103(a), as being unpatentable over Bateman as modified by Bertrand and
further in view of Berkout. Appellants provide no substantive argument as
to the separate patentability of claims 8, 9, 13, and 18. Thus, claims 8, 9, 13,
and 18 will stand or fall with the independent claim from which they
depend. See Appeal Br. 16. Because we affirm the Examiner's rejection of
claim 10, we affirm the Examiner's rejection of claims 8, 9, 13, and 18.
Obviousness-Rejection F
The Examiner rejects claim 23, under 35 U.S.C § 103(a), as being
unpatentable over Bateman as modified by Bertrand and Christyakov and
further in view of Miller. Appellants provide no substantive argument as to
the separate patentability of claim 23. Thus, claim 23 will stand or fall with
the independent claim from which it depends. Because we affirm the
Examiner's rejection of claim 21, we affirm the Examiner's rejection of
claim 23.
18 The new matter rejection of claim 25 is discussed later at pages 18 through
19.
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Obviousness-Rejection G
The Examiner rejects claim 27, under 35 U.S.C § 103(a), as being
unpatentable over Bateman as modified by Bertrand and Christyakov and
further in view of Cody. Claim 27 provides an additional limitation (over
claim 21) where the "metastables are generated using a DART source,"
which the Examiner finds is supplied by Cody.
Appellants challenge the Examiner's motivation to combine Cody
with Bateman. Appeal Br. 21. Specifically, Appellants contend that the
advantage identified by the Examiner would not be met as "[t]he mass
analyzers of Bateman would still have the same vacuum requirements." Id.
And, the Appellants complain that the Examiner "appears to be confusing
the use of metastables in the source of an instrument with the use in a
collision region." Id.
We agree with the Examiner. As the Examiner explains, "the source
of Bateman could be substituted for a DART source." Ans. 7 (emphasis
omitted). After all, Bateman identifies numerous sources within his
Specification and that one skilled in the art would elect the substitute source
of Cody is obvious. Id. at 7-8. Appellants' arguments do not address
whether the source of Cody could be substitute for the source in Bateman.
Accordingly, we affirm the Examiner's rejection of claim 2 7.
Obviousness-Rejection H
The Examiner rejects claims 29 and 30, under 35 U.S.C § 103(a), as
being unpatentable over Davies and in view of Zhu. 19 According to the
19 Appellants do not separately argue claims 30, 31, and 32 but rather
explain that these claims stand or fall with independent claim 29 from which
they depend. Appeal Br. 23.
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Examiner, "Davies teaches a passageway configured for a person or article
to pass through, a first MS inlet configured to receive ions, and at least one
mass spectrometer configured to receive the ions from the first MS inlet
(paragraph 0007)." Office Action 19. But, the Examiner explains, "Davies
fails to teach at least one metastable source configured to generate
metastable species, as well as that the ions the MS device receives are a
result of the metastable species striking the person or article as the person
passes through the passageway." Id. The Examiner relies on Zhu to supply
"at least one metastable source configured to generate metastable species."
Id.
Appellants challenge that "Davies does not, in fact teach a 'first MS
inlet' or 'at least one mass spectrometer' as recited in Claim 29 ." Appeal
Br. 22. Rather, according to Appellants, Davies teaches an ion mobility
spectrometer and not an ion mass spectrometer. Id. Appellants also dispute
the motivation to combine Zhu and Davies, as it would achieve an
undesirable result. Id. at 22-23.
We agree with Appellants. Claim 29, in relevant part, requires an
"MS inlet" and "at least one mass spectrometer." The Examiner incorrectly
directs attention to Davies, and in particular paragraph 7, to supply these
features. Office Action 22. But, neither paragraph 7, nor the remainder of
the Davies Specification, teach either an "MS inlet" or "at least one mass
spectrometer" as claimed by the Appellants. Rather an ion mobility
spectrometer (IMS) is taught. Davies i-f 7. Because the Examiner has failed
to establish a prima facie case of obviousness, we reverse the rejection of
claims 2 9 and 3 0.
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Obviousness-Rejection I
The Examiner rejects claims 31 and 32, under 35 U.S.C § 103(a), as
being unpatentable over Davies as modified by Zhu and in further view of
Crowley. Appellants provide no substantive argument as to the separate
patentability of claims 31 and 32. Thus, claims 31 and 32 will stand or fall
with the independent claim from which they depend. Because we reverse
the Examiner's rejection of claim 29, we reverse the Examiner's rejection of
claims 3 1 and 3 2.
New Ground Rejection
As set forth below, pursuant to our authority under 37 C.F.R. §
41.50(b ), we enter a new ground of rejection of claim 25 as indefinite under
35 U.S.C. § 112, second paragraph. In light of this new rejection, we do not
reach the merits of the rejection of claim 25 under 35 U.S.C. § 103(a).
Before a proper review of the rejections under§ 103(a) can be conducted,
the subject matter encompassed by the claims on appeal must be reasonably
understood without resort to speculation. Because the claims fail to satisfy
the requirements of 35 U.S.C. § 112, second paragraph, we reverse, pro
forma, the Examiner's rejections of claim 25 under 35 U.S.C. § 103(a). See
In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be
sustained if the hypothetical person of ordinary skill in the art would have to
make speculative assumptions concerning the meaning of claim language.).
Our decision is based solely on the indefiniteness of claim 25, and does not
reflect on the merits of the underlying rejections.
The test for indefiniteness is whether one skilled in the art, at the time
of the application, would understand the bounds of the claim when read in
light of the specification and prosecution history. Natulis, _U.S._, 134
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S.Ct. at 2128. "It is the applicants' burden to precisely define the invention,
not the PTO's." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
Here, claim 25 requires that the method "further includ[ e] varying the
external energy of the excited metastables to vary the product ions
produced" (emphasis added). Claims Appendix at Appeal Br. 27. But, claim
25 and paragraph 11 7 of the Specification provide the only discussion of the
term "external energy," by the Appellants, and they are insufficient to
apprise the skilled artisan of the scope of the claims. Accordingly, we find
claim 25 indefinite.
CONCLUSION
The Examiner's decision to reject claims 1-32, under 35 U.S.C § 112
second paragraph, as being indefinite is reversed.
The Examiner's decision to reject claims 1, 2, 5-7, 10-12, 14, and 19,
under 35 U.S.C § 103(a), as being unpatentable over Bateman in view of
Bertrand is affirmed.
The Examiner's decision to reject claims 21, 22, 26, and 28, under
35 U.S.C § 103(a), as being unpatentable over Bateman as modified by
Bertrand and in view of Christyakov is affirmed.
The Examiner's decision to reject claims 3, 4, 15-17 and 24, under 35
U.S.C § 103(a), as being unpatentable over Bateman as modified by
Bertrand and Christyakov and in view of Zhu is affirmed.
The Examiner's rejection of claim 25 under 35 U.S.C. § 103(a) is
reversed proforma.
A NEW GROUND OF REJECTION has been entered for claim 25 as
indefinite under 35 U.S.C § 112, second paragraph.
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The Examiner's decision to reject claims 8, 9, 13, and 18, under
35 U.S.C § 103(a), as being unpatentable over Bateman as modified by
Bertrand and further in view of Berkout is affirmed.
The Examiner's decision to reject claim 23, under 35 U.S.C § 103(a),
as being unpatentable over Bateman as modified by Bertrand and
Christyakov and further in view of Miller is affirmed.
The Examiner's decision to reject claim 27, under 35 U.S.C § 103(a),
as being unpatentable over Bateman as modified by Bertrand and
Christyakov and further in view of Cody is affirmed.
The Examiner's decision to reject claims 29 and 30, under 35 U.S.C
§ 103(a), as being unpatentable over Davies and in view of Zhu is reversed.
The Examiner's decision to reject claims 31 and 32, under 35 U.S.C
§ 103(a), as being unpatentable over Davies as modified by Zhu and in
further view of Crowley is reversed.
DECISION
For the above reasons, we affirm the Examiner's rejections of claims
1-28 under 35 U.S.C § 103(a).
We enter a new ground of rejection for claim 25, under 35 U.S.C.
§ 112, if2.
We reverse the Examiner's rejection of claims 29-32 under 35 U.S.C
§ 103(a).
Regarding the affirmed rejection(s) that have not been denominated as
a new ground of rejection, 37 C.F.R. § 41.52(a)(l) provides that "Appellant
may file a single request for rehearing within two months of the date of the
original decision of the Board."
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In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a NEW GROUND OF REJECTION pursuant
to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
exammer ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
Should Appellants elect to prosecute further before the Examiner
pursuant to 3 7 C.F .R. § 41. 50(b )( 1 ), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for Final
Action on the affirmed rejection, including any timely request for rehearing
thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
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AFFIRMED-IN-PART; 37 C.F.R. § 41.50
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