Ex Parte Giles

Patent Trial and Appeal Board

Nov 30, 2016

11721729 (P.T.A.B. Nov. 30, 2016)

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.
11/721,729 07/02/2009 Kevin Giles M-1401-02 2781
43840 7590 12/02/2016
Waters; Teehnnlnaies; Pomoratinn
EXAMINER
Legal/IP Department
34 MAPLE STREET
IPPOLITO, NICOLE MARIE
MILFORD, MA 01757 ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
12/02/2016 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):
ipdocket@waters.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte KEVIN GILES
Appeal 2014—000484
Application 11/721,729
Technology Center 2800
Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant requests our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1, 5, 6, 12, 14, 17, 20, 22, 23, 25—29,
33—35, 43, 44, 67, 74—76, 78 and 79 set forth in the non-final Office Action
mailed February 28, 2013. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
Appeal 2014-000484
Application 11/721,729
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below:
1. An ion guide comprising:
a hollow, tubular or mesh electrically conducting device having a
wall; one or more electrodes arranged in, along, on or substantially adjacent
to a portion of said wall;
one or more apertures provided or arranged in a portion of said wall,
wherein in a mode of operation ions are arranged to exit said ion guide via
said one or more apertures; and
means arranged and adapted to maintain a DC potential difference
between at least a portion of said wall and some or all of said one or more
electrodes.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Keman et al.,
hereinafter “Keman
US 2003/0178564 Al published Sept. 25, 2003;
Vestal US 2005/0116162 Al published Jun. 2, 2005
Whitehouse et al., US 2005/0258364 Al
hereinafter “Whitehouse”
published Nov. 24, 2005
THE REJECTIONS
1. Claims 1, 5, 6, 12, 17, 20, 22, 23, 26, 29, 33, 34, 43, 44, 67, 7A-76, 78
and 79 are rejected under 35 U.S.C. §103(a) as being unpatentable over
Keman in view of Vestal.
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Appeal 2014-000484
Application 11/721,729
2. Claims 14, 25—28 and 35 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Keman and Vestal in view of Whitehouse.
ANALYSIS
Claim interpretation is one important aspect in the present case. On
the one hand, the Examiner interprets claim 1 as not requiring an electrically
conducting device. Ans. 13. The Examiner explains that the phrase of “a
hollow, tabular or mesh electrically conducting device” is ambiguous as to
which component is electrically conducting. Id. The Examiner believes this
claim language only requires the mesh to be electrically conducting. Id.
Appellant argues that this interpretation is incorrect for the reasons stated on
pages 4—7 of the Reply Brief. We agree with Appellant’s stated positon in
the record. We therefore interpret the claim language as requiring an
electrically conducting device (whether it be a hollow electrically
conducting device, a tubular electrically conducting device, or a mesh
electrically conducting device).
With regard to the aforementioned interpretation of claim 1, it is the
Examiner’s position that the primary reference of Keman teaches an ion
guide comprising a hollow, tubular or mesh electrically conducting device
having a wall (the Examiner refers to Keman’s Figures 2, 8, 13, etc., sleeve
90, 146, paragraphs 0078, etc., FIG. 35 and associated text discuss that the
outer hollow “wall” may likewise be an electrode). Ans. 2.
Appellant’s response to the Examiner’s aforementioned findings is
reproduced below:
The Examiner argues that the insulating sleeve element, 90 of Figure
2 or element 146 of Figure 13 constitutes a hollow, tubular or mesh
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Appeal 2014-000484
Application 11/721,729
device having a wall with an aperture therein. See for example Figure
2 reproduced below.
The Examiner argues that the language “one or more electrodes
arranged in, along, on or adjacent to a portion of the wall” reads on
electrode 154 and 156 of Figures 17 and 18, reproduced below.
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However, claim 1 requires an electrically conducting device having an
aperture therein and Keman and Vestal, whether taken singly or in
combination, simply do not disclose such an electrically conducting
device.
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Appeal 2014-000484
Application 11/721,729
Appeal Br. 12—13 (boldness omitted).
Appellant further states:
Earlier in the prosecution, in the Response to Arguments section of
the Final Rejection [dated July 3, 2012], the Examiner appears to
recognize the embodiments relied upon in the rejection do not disclose
the invention but the Examiner does not modify the rejection. Instead
the Examiner discusses a completely different embodiment shown in
Figure 35 and does not explain where in Figure 35 the various
elements of the claims are supposedly present. See Figure 35,
reproduced below.
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Appeal Br. 23—24.
Appellant argues that Figures 2, 13, 17, and 18 of Keman do not show
providing a hollow, tubular or mesh electrically conducting device having a
wall, one or more electrodes arranged in, along, on or substantially adjacent
to a portion of said wall and one or more apertures arranged in a portion of
said wall. Appeal Br. 24. Appellant argues that Figures 31 and 35 of
Keman do not either. Id. Appellant states that if the Examiner considers
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Appeal 2014-000484
Application 11/721,729
electrodes 278A and 278B (of Figure 31) to meet the limitation of a hollow,
tubular or mesh electrically conducting device, the Examiner does not
explain what structure in Figures 31 and 35 is being relied upon to meet the
limitations of the claimed electrodes or how the embodiment of Figures 2,
13,17 and 18 could be modified to have a wall and one or more electrodes
arranged in, along, on or substantially adjacent to a portion of the wall.1 Id.
On page 13 of the Answer, the Examiner understands Appellant’s
argument to be that the Examiner proposed combination of different
embodiments of Keman is deficient for lack of explanation and motivation.
In reply, the Examiner states:
[Paragraph 0115 of Keman discusses that “subsequent steps are then
used to remove material and/or define the various elements . . . .”
This implies, of course, that all of the embodiments of Kernan are
mere iterations of one another. It should finally be noted that the
independent claims have been written in such as fashion as to
1 We note that in the Advisory Action dated October 12, 2012, the
Examiner stated:
The Applicant[.s /6‘ s have] argued that the examiner did not address the
added limitation requiring that the hollow, tubular or mesh device is
electrically conducting. However, as one can see from the Final
Rejection dated 7/3/2012, this was indeed addressed. Keman does in
fact teach that the hollow, tubular device is electrically conducting.
With reference to FIG. 31, paragraph 0099 of Keman states that
component 264 is a multipole. Furthermore, paragraph 0100 teaches
that components 278A-B are electrodes. Electrodes are, of course,
electrically conducting. In reference to FIG. 35, paragraph 0115
teaches that components 322 and 324 are electrodes. It can clearly be
seen that these electrodes wrap around, forming a hollow, tubular,
electrically conducting device. As such, Keman does in fact teach
this limitation, and as such, likewise renders the argument that you
could not modify Keman to include this feature, as at least FIGS. 31
and 35 illustrate this feature explicitly.
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Appeal 2014-000484
Application 11/721,729
introduce ambiguity as to exactly which component must be
electrically conducting. As the claims are written it would be
acceptable, under the doctrine of broadest reasonable interpretation, to
interpret the claims as follows: a hollow [conducting or non­
conducting], tubular [conducting or non-conducting] or mesh
electrically conducting [conducting] device having a wall. In other
words, the claims are currently phrased only require the mesh to be
electrically conducting under the doctrine of broadest reasonable
interpretation. This obviously arises from both where the comma is
placed within the claim, and the alternate embodiment language as the
claim is written.2 For at least these reasons, the Examiner must
respectfully disagree with the arguments such as they are presented
for the independent claims.
Ans. 13.
In the Reply Brief, Appellant disputes the Examiner’s aforementioned
interpretation of paragraph [0115] of Keman. Appellant argues that the
sentence discussed by the Examiner is merely referring to the process of
making the multipole device, and does not mean that all of the embodiments
of Keman are merely iterations of one another (as asserted by the Examiner).
Reply Br. 3^4. We agree. As such, we also agree with Appellant that the
Examiner’s position lacks adequate reasoning, motivation, and explanation
as to how the separate embodiments of Keman are being combined to arrive
at the claimed invention, for the reasons provided by Appellant in the record.
See, e.g., Appeal Br. 24, Reply Br. 3. This is not to say that combining two
distinct embodiments in a prior art patent is inappropriate; rather, what is
lacking in the record as presented by the Examiner is how the proposed
modifications is implemented, how the proposed modification arrives at the
claimed invention, and what is the motivation for so doing. Because of the
2 With regard to the Examiner’s stated claim interpretation reproduced
herein, we discussed, supra, how this interpretation is in error.
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Appeal 2014-000484
Application 11/721,729
lack of detail in this regard, it goes unanswered, for example, as to whether
the two disclosures of Keman considered as a whole could or could not in
practice be readily combined because, e.g., of inherent incompatibility in
disclosed features essential to the invention of Keman. If the two
disclosures could not in practice be readily combined, the combining of
these disclosures would not be regarded as obvious. The idea that all of the
embodiments are mere iterations of one another, without more, is
i nsufficient to support the obviousness determination made by the Examiner.
In view of the above, we reverse Rejection 1. We also reverse
Rejection 2 because the Examiner did not rely upon the additional reference
to cure the deficiencies of the combination applied in Rejection 1.
DECISION
Each rejection is reversed.
ORDER
REVERSED
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