Ex Parte Giles et al

Patent Trial and Appeal Board

Feb 19, 2016

11813221 (P.T.A.B. Feb. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111813,221 10/28/2009
43840 7590 02/19/2016
Waters Technologies Corporation
34 MAPLE STREET - LG
MILFORD, MA 01757
FIRST NAMED INVENTOR
Kevin Giles
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.
M-1453-02 9349
EXAMINER
IPPOLITO, NICOLE MARIE
ART UNIT PAPER NUMBER
2881
MAILDATE DELIVERY MODE
02/19/2016 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 KEVIN GILES, MARTIN GREEN, and JASON WILDGOOSE 1
Appeal2013-008638
Application 11/813 ,221
Technology Center 2800
Before CHUNG K. PAK, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision2 rejecting claims 1, 6, 8, 14--16, 18, 20-24, 26, 30, 34, 41--43,
48, 49, 56, 86, 87, 100-103, 108, 117, and 120-122, which are all of the claims
pending in the above-identified application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM-IN-PART.
1 The Real Party in Interest is said to be Micromass UK Limited. Appeal Brief
filed April 8, 2013 ("App. Br.") at 4.
2 Final Action entered September 6, 2012 (Final Act.") at 2-11.
Appeal2013-008638
Application 11/813 ,221
STATEMENT OF THE CASE
The subject matter on appeal is directed to an ion guiding or trapping device
and a method for guiding or trapping ions. App. Br. 4---6. Details of the appealed
subject matter are recited in illustrative claims 1 and 120, which appear below
from the Claims Appendix to the Appeal Brief.
1. An ion guide or ion trap comprising:
a plurality of electrodes;
AC or RF voltage means arranged and adapted to apply an AC
or RF voltage to at least some of said plurality of electrodes in order
to confine radially at least some ions within said ion guide or ion trap;
first means arranged and adapted to maintain one or more DC,
real or static potential wells or a substantially static inhomogeneous
electric field along at least a portion of the axial length of said ion
guide or ion trap in a first mode of operation; and
second means arranged and adapted to maintain a time varying
substantially homogeneous axial electric field along at least a portion
of the axial length of said ion guide or ion trap in said first mode of
operation wherein the electric field is varied with time so as to cause
ions to oscillate axially along the ion guide or ion trap such that at
least some ions are ejected from a trapping region of said ion guide
or ion trap in a substantially non-resonant manner whilst other ions
are arranged to remain substantially trapped within said trapping
region of said ion guide or ion trap.
120. A method of guiding or trapping ions comprising:
providing an ion guide or ion trap comprising a plurality of
electrodes;
applying an AC or RF voltage to at least some of said plurality
of electrodes in order to confine radially at least some ions within said
ion guide or ion trap;
maintaining one or more DC, real or static potential wells or a
substantially static inhomogeneous electric field along at least a
portion of the axial length of said ion guide or ion trap in a first mode
of operation; and
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Application 11/813 ,221
maintaining a time varying substantially homogeneous axial
electric field along at least a portion of the axial length of said ion
guide or ion trap in said first mode of operation
wherein the electric field is varied with time so as to cause ions
to oscillate axially along the ion guide or ion trap such that at least
some ions are ejected from a trapping region of said ion guide or ion
trap in a substantially non-resonant manner whilst other ions are
arranged to remain substantially trapped within said trapping region
of said ion guide or ion trap.
App. Br. 24 and 28 (emphasis added to the limitations relevant to the issues raised
by Appellants).
Appellants seek review of the following grounds of rejection maintained in
the Examiner's Answer mailed April 23, 2013 ("Ans."):
Claims 1, 8, 14--16, 18, 20, 22, 26, 30, 34, 41--43, 48, 49, 56, 86, 87, 100,
101, 108, 117, and 120-122 under 35 U.S.C. § 103(a) as unpatentable over US
2004/0011956 Al published in the name ofLondry et al. on January 22, 2004
("Londry") in view of US 6,177,668 Bl issued to Hager on January 23, 2001
("Hager");
Claims 6 and 21under35 U.S.C. § 103(a) as unpatentable over Londry in
view of Hager and US 2004/0222369 Al published in the name ofMakarov et al.
on November 11, 2004 ("Makarov");
Claims 23 and 24 under 35 U.S.C. § 103(a) as unpatentable over Londry in
view of Hager and US 5,089,703 issued to Schoen et al. on February 18, 1992
("Schoen"); and
Claims 102 and 103 under 35 U.S.C. § 103(a) as being unpatentable over
Londry in view of Hager and EP 1367633 A2 published in the name of Bateman et
al. on December 3, 2003 ("Bateman"). App. Br. 6-7.
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Appeal2013-008638
Application 11/813 ,221
DISCUSSION 3
In making a patentability determination, analysis must begin with the
question, "what is the invention claimed?" because "[ c ]laim interpretation, ... will
normally control the remainder of the decisional process." Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d 1561, 1567---68 (Fed. Cir. 1987). During
examination, claims terms are generally given their broadest reasonable
construction consistent with the Specification. In re Icon Health and Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) ("[T]he PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we look
to the specification to see if it provides a definition for claim terms but otherwise
apply a broad interpretation."). However, when a claim limitation is drafted in a
means-plus-function format, it is interpreted as the corresponding structure
described in the Specification or equivalents thereof. In re Donaldson Co., 16 F.3d
1189, 1193 (Fed. Cir. 1994) (en bane). 35 U.S.C. § 112, 6th paragraph, establishes
a quid pro quo whereby a patentee may conveniently claim an element using a
generic "means" for performing a function, provided the patentee's Specification
discloses structure capable of performing that function. Atmel Corp. v. Info.
Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999).
3 We limit our discussion to those claims separately argued, and the claims not
separately argued will stand or fall with the argued claims. 37 C.F.R.
§ 41.37(c)(l)(iv) ("When multiple claims subject to the same ground of rejection
are argued as a group or subgroup by appellant, the Board may select a single
claim from the group or subgroup and may decide the appeal as to the ground of
rejection with respect to the group or subgroup on the basis of the selected claim
alone.") To the extent that the Examiner relies upon the same arguments in
connection with a claim or claims subject to an earlier stated ground of rejection
for the claims subject to later stated different grounds of rejection, the reasoning
provided in connection with the earlier ground of rejection will apply to those
claims subject to the later stated different grounds of rejection.
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Appeal2013-008638
Application 11/813 ,221
Applying these precedents to the present case, we determine that the
disputed terms "first means," "second means," and "ejection means" recited in
claims 1, 6, 8, 15, 21, 22, 24, 26, 30, and 122 are means-plus-function elements to
which 35 U.S.C. § 112, sixth paragraph, applies. Thus, we look to the
Specification for the structures corresponding to the "first means," "second
means," and "ejection means" and equivalents thereof to determine the scope and
meaning of these claims.
According to the Specification, Appellants' ion guiding or trapping device
comprises first and second pairs of hyperbolic shaped and axially segmented
electrodes which are electrically connected to an AC or RF voltage source for
generating a radial pseudo-potential well to confine ions radially. Spec. 26, 11. 5-
15 and Figs. 1 and 2, elements la, lb, 2a, and 2b. The Specification further
describes that the first and second pairs of hyperbolic shaped and axially
segmented electrodes are also electrically connected to a DC voltage source for
generating one or more DC static potential wells and a time varying homogeneous
axial electric field along at least a portion of the axial length of the ion guiding or
trapping device to cause ions to oscillate axially and eject in a substantially non-
resonant manner. Spec. 19, 11. 33-36 and 20, 11. 4--11 and 17-24 and Figs. 1 and 2.
In particular, the Specification, at page 19, lines 33-36 and page 20, lines 4--11 and
17-24, states that:
A static DC axial potential well is preferably maintained along at least
a portion of the axial length of the preferred ion guide or ion trap.
Ions are preferably arranged to be trapped, in use, in the static axial
potential well.
The time varying homogeneous electric field has an electric field
strength which preferably remains substantially constant along the ion
trapping region of the preferred ion guide or ion trap. However, the
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Appeal2013-008638
Application 11/813 ,221
magnitude of the applied electric field preferably varies with time.
The time varying homogeneous axial electric field is preferably
provided by applying DC voltages to the electrodes forming the
preferred ion trap or ion guide.
The application of the time varying homogeneous electric field
according to the preferred embodiment in combination with a static
DC potential well will cause ions having different mass to charge
ratios to begin to oscillate along the axis of the preferred ion guide or
ion trap. Ions will oscillate with different characteristic amplitudes
which will depend upon the mass to charge ratio of the ion. This
principle enables ions to be ejected from the preferred ion guide or ion
trap in a substantially non-resonant manner.
Thus, in view of such written description in the Specification, we interpret
the "first means" recited in claims 1, 6, 8, and 122, "second means" recited in
claims 1, 15, 21, and 22, and 24, and "ejection means" recited in claims 26 and 30
as corresponding to first and second pairs of hyperbolic shaped and axially
segmented electrodes that are electrically connected to a DC voltage source for the
purposes of generating one or more DC static potential wells and a time varying
substantially homogeneous axial electric field along at least a portion of the axial
length of the ion guiding or trapping device, and axially oscillating and ejecting
ions from a trapping region in a substantially non-resonant manner. Appellants do
not provide any contrary claim interpretation. See generally App. Br., especially
App. Br. 7.
Concerning separately argued claims 1, 6, 8, 15, 21, 22, 24, 26, 30, and 122,
the Examiner finds, and Appellants do not dispute, that Londry teaches an ion
guiding or trapping device comprising multiple electrodes in multiple segments
which are electrically connected to an AC or RF voltage source and a DC voltage
source, respectively for the purposes of generating a radial pseudo-potential well to
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Application 11/813 ,221
confine ions radially and generating one or more DC static potential wells along at
least a portion of the axial length of the ion guiding or trapping device. Compare
Ans. 3--4 with App. Br. 8-11 and Reply Brief, mailed June 24, 2013 ("Reply Br.")
at 2; see also Londry Figs. 2, 7A, and 7B and i-fi-17,12 57, 79, and 89 and see also
Hagar, Figs. 10, 23 and col. 5, 11. 10-55 which describes axially segmented
electrodes electrically connected to DC, AC, and RF voltages. Londry also
illustrates the multiple electrodes which are hyperbolic shaped and axially
segmented. See Londry, Figs. 7A and 16. Further, Londry's multiple electrodes in
multiple segments can receive time varying DC voltages, which, according to
Appellants, are capable of generating different electric fields. Compare Londry,
Figs. 2 and 7 A and i-fi-157 and 79 with Spec. 20, 11. 4--11 and 17-24. In other
words, Londry teaches first and second pairs of hyperbolic shaped and axially
segmented electrodes that are electrically connected to a DC voltage source to
receive varying DC voltages, which are described in the Specification as
corresponding to the first, second, and ejection means recited in claims 1, 6, 8, 15,
21, 22, 24, 26, 30, and 122.
Appellants argue that Londry does not teach or suggest the recited "second
means" in claims 1, 15, 21, 22, and 24 and the recited "ejection means" of claims
26 and 30 for maintaining a time a varying substantially homogeneous axial
electric field that is varied with time so as to cause ions to oscillate axially along
the ion guiding or trapping device and to cause at least some of the ions to be
ejected from a trapping region in a substantially non-resonant manner. App. Br. 8-
12 and 22. Appellants also argue that Londry does not teach or suggest the first
means recited in claim 6 that is arranged and adapted to maintain one or more
substantially quadratic potential wells along at least a portion of the axial length of
the ion guiding or trapping device. App. Br. 20-21.
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Appeal2013-008638
Application 11/813 ,221
However, Appellants do not identify the structures corresponding to the
second means recited in claims 1, 15, 21, 22, and 24 and the ejection means recited
in claims 26 and 30, which are patentably different from the structures of Londry' s
ion guiding or trapping device. App. Br. 8-12 and 22. Nor do Appellants identify
the structure corresponding to the first means recited in claim 6, which is
patentably different from that of Londry' s ion guiding or trapping device. App. Br.
20-21. As explained supra, Londry teaches first and second pairs of hyperbolic
shaped and axially segmented electrodes that are electrically connected to a DC
voltage source, which are described in the Specification as corresponding to the
first, second, and ejection means recited in claims 1, 6, 8, 15, 21, 22, 24, 26, 30,
and 122.
Appellants' arguments focus on the functional aspects of the means-plus-
function limitations recited in claims 1, 6, 8, 15, 21, 22, 24, 26, 30, and 122, but
do not indicate how these functional aspects would have rendered the claimed ion
guiding or trapping device structurally different from the ion guiding or trapping
device taught by Londry. In particular, Appellants do not argue that the structures
corresponding to the recited means-plus-function limitations are different from
those of Londry's ion guiding or trapping device. In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997) (holding that a prior art disclosing a funnel used for oil
dispensing anticipated a claim to a funnel-like structure employed for dispensing
popcorn and that applicant had the burden to prove that the prior art funnel for
dispensing oil was not capable of dispensing popcorn once the Examiner
established a similarity in structure); Hewlett-Packard Co. v. Bausch & Lomb Inc.,
909 F.2d 1464, 1468 (Fed. Cir. 1990) ("[A]pparatus claims cover what a device is,
not what a device does.")
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Application 11/813 ,221
Accordingly, on this record, we find that Appellants do not identify any
reversible error in the Examiner's rejections of claims 1, 8, 14--16, 18, 20, 22, 26,
30, 34, 41--43, 48, 49, 56, 86, 87, 100, 101, 108, 117, and 122 under 35 U.S.C. §
103 (a) as being unpatentable over Lon dry in view of Hager, claims 6 and 21 under
35 U.S.C. § 103(a) as being unpatentable over Londry in view of Hager and
Makarov, claims 23 and 24 under 35 U.S.C. § 103(a) as being unpatentable over
Londry in view of Hager and Schoen, and claims 102 and 103 under 35 U.S.C. §
103(a) as being unpatentable over Londry in view of Hager and Bateman. In re
Jung, 637 F.3d 1356, 1365-66 (Fed. Cir. 2011) (explaining that even ifthe
Examiner had failed to make a prima facie case, the Board would not have erred in
framing the issue as one of reversible error because it has long been the Board's
practice to require Appellants to identify the alleged error in the Examiner's
rejection.)
As to claims 120 and 121, they are on a different footing. Claims 120 and
121, unlike the apparatus claims discussed supra, are directed to a process
involving, inter alia, a step of maintaining a time varying substantially
homogeneous axial electric field along at least a portion of the axial length of the
ion guiding or trapping device to cause ions to oscillate axially along the ion
guiding or trapping device such that at least some of the ions are ejected from a
trapping region in a substantially non-resonant manner. According to page 20,
line 34--page 21, line 2 of the Specification, ejecting ions in a substantially non-
resonant manner means that "ions are not being ejected from ... ion guide or ion
trap by exciting them with a voltage having a frequency which corresponds with
the inherent resonance or fundamental resonance frequency of the ions."
As evidence of obviousness of such process step recited in claims 120 and
121, the Examiner relies upon the collective teachings ofLondry and Hagar. Ans.
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Application 11/813 ,221
3--4. In reference to Figures 3 and 6 and paragraph 57 of Londry, the Examiner
finds that mass scanning constitutes a time varying substantially homogeneous
axial electric field. Ans. 4. The Examiner also refers to paragraphs 7-14, 24, 25,
50, 57, and 82 of Londry to teach some of the ions that are axially ejected from a
trapping region in a substantially non-resonant manner. Id. Although the
Examiner acknowledges that "Londry fails to teach that the electric field is varied
with time so as to cause some ions to oscillate axially along the ion guide or ion
trap such that at least some ions are ejected from a trapping region[,]" the
Examiner relies upon the abstract, column 8, lines 44--50, and column 8, lines 66-
column 9, line 11 of Hager to teach such feature. Ans. 3, 4 and 14. The Examiner
further refers to paragraph 80 of Londry relating to a discussion of the radial
ejection of ions in a resonant manner as implying that the axial ejection of ions
taught by Londry in paragraphs 7-14, 24, 25, 50, 57, and 82 is performed in a
substantially non-resonant manner. Ans. 13-14.
Brief:
However, as correctly explained by Appellants at page 9 of the Appeal
The paragraphs cited by the Examiner, with the exception of
paragraph 50, simply do not describe a mass scan and [none of]
paragraph[s] makes ... [any] mention of non-resonant ion ejection. In
paragraph 55, Londry does describe mass scanning to eject ions but
describes doing so by settling an auxiliary AC voltage to a
predetermined frequency known to effectuate axial ejection of ions.
See also Londry, Figs. 3 and 6 and paragraphs 50 and 55. The Examiner has not
demonstrated that Londry teaches maintaining a time varying homogeneous axial
electric field or ejecting ions in a substantially non-resonant manner. As also
explained by Appellants, the Examiner's reference to paragraph 80 ofLondry
relating to two modes of radial ejection of ions in a resonant manner does not
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Application 11/813 ,221
imply that the axial ejection of ions taught in paragraphs 7-14, 24, 25, 50, 57, and
82 of Londry is performed in a substantially non-resonant manner. See Reply Br.
2. Therefore, on this record, the Examiner has not shown that Londry implies or
would have suggested using a combination of a time varying homogeneous axial
electric field and a static DC potential well to cause the axial oscillation of ions or
the ejection of ions in a substantially non-resonant manner.
Nor do the passages of Hager relied upon by the Examiner remedy such
deficiencies. App. Br. 10-11. As also correctly explained by Appellants, contrary
to the Examiner's finding at page 4 of the Answer, Hager does not disclose the
application of a time varying homogeneous electric field to cause the axial
oscillation of ions. See App. Br. 9-10 and Reply Br. 3, together with Hager, the
abstract, column 8, lines 44--50, and column 8, lines 66-column 9, line 11. Nor
does the Examiner adequately explain how and why a person having ordinary skill
in the art would have been led to use Hager's axial oscillation of ions resulting
from the applied RF voltage with Londry's method to arrive at Applicants' method
of maintaining a time varying homogeneous electric field in combination with a
static DC potential well to cause the axial oscillation of ions or the ejection of ions
in a substantially non-resonant manner.
Accordingly, we are constrained to reverse the Examiner's rejection of
claims 120 and 121under35 U.S.C. § 103(a) as being unpatentable over Londry in
view of Hager.
ORDER
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1, 8, 14--16,
18,20,22,26,30,34,41--43,48,49,56, 86,87, 100, 101, 108, 117,and 122under
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Application 11/813 ,221
35 U.S.C. § 103(a) as being unpatentable over Londry in view of Hager, claims 6
and 21under35 U.S.C. § 103(a) as being unpatentable over Londry in view of
Hager and Makarov, claims 23 and 24 under 35 U.S.C. § 103(a) as being
unpatentable over Londry in view of Hager and Schoen, and claims 102 and 103
under 35 U.S.C. § 103(a) as being unpatentable over Londry in view of Hager and
Bateman is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner to reject claims
120 and 121under35 U.S.C. § 103(a) as being unpatentable over Londry in view
of Hager is REVERSED; and,
FURTHER ORDERED that 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).
AFFIRMED-IN-PART
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