Ex Parte Ikegami et alDownload PDFPatent Trial and Appeal BoardJul 26, 201613254136 (P.T.A.B. Jul. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/254,136 08/31/2011 23517 7590 07/28/2016 MORGAN, LEWIS & BOCKIUS LLP (BO) 1111 PENNSYLVANIA A VENUE, N.W. WASHINGTON, DC 20004 FIRST NAMED INVENTOR Masahiro Ikegami 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. SMZ-02317314842001 6323 EXAMINER CHUNG, KEVIN T ART UNIT PAPER NUMBER 2881 NOTIFICATION DATE DELIVERY MODE 07/28/2016 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): kcatalano@morganlewis.com patents@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAHIRO IKEGAMI, KIYOSHI OGAWA, and TAKAHIRO HARADA Appeal2015-000794 Application 13/254, 13 6 Technology Center 2800 Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. PERCURIAM. DECISION ON APPEAL 1 Appellants2 filed an appeal under 35 U.S.C. § 134(a) from the Examiner's decision finally rejecting claims 1-16. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Our decision refers to Appellants' Specification (Spec.) filed August 31, 2011, Appellants' Appeal Brief (Appeal Br.) filed May 4, 2014, the Examiner's Answer (Ans.) mailed August 11, 2014, and Appellants' Reply Brief (Reply Br.) filed October 11, 2014. 2 Appellants identify the real party in interest as Shimadzu Corporation. Appeal Br. 2. Appeal2015-000794 Application 13/254, 136 STATEMENT OF THE CASE The subject matter on appeal relates to mass spectrometers, mass spectrometer methods, and mass spectrometer systems (see, e.g., claims 1, 6, and 11). Figure 1 of Appellants' disclosure is reproduced below. OPERAJ!ON 36-~,,. • UN ff ............................. ...,..... ........................ ... ~ ., .. ! I FIG.1 VA.CU UM PUMP Figure 1 depicts an overall configuration of a mass microscope. The mass microscope depicted in Figure 1 includes a sealed chamber 1 housing a specimen stage 2 for a specimen 4. 3 Spec. if 24. A drive mechanism 6 drives the specimen stage along an X-direction, such as 3 Throughout this Opinion, for clarity, we present labels to elements in figures in bold font, regardless of their presentation in the original document. 2 Appeal2015-000794 Application 13/254, 136 between an observation position A and an analysis position B, and along an orthogonal Y-direction. Id. An image pickup unit 7 is disposed above the observation position A to produce an image of the specimen 4. Spec. i-f 25. A laser irradiation unit 10 and laser focusing optical system 11 are disposed above the analysis position B to irradiate the specimen 4 with laser light and create ions from the specimen 4, which in tum are transported to a mass spectrometer 26. Spec. i-fi-126 and 27. Independent claim 1, reproduced below from the Claims Appendix to Appellant's Appeal Brief, is illustrative of the subject matter on appeal. The limitations at issue are italicized. 1. A mass spectrometer comprising: a) a microscopic observation means for acquiring microscopic observation images of a two-dimensional region on a specimen at an observation position in a chamber; b) a moving means for moving either or both the specimen or the microscopic observation means so as to move the position of said two-dimensional region on the specimen; c) an image capturing control means for controlling said microscopic observation means and said moving means so that said microscopic observation means acquires microscopic observation images whenever the relative position of the specimen and the microscopic observation means is changed by said moving means; d) an image forming means for forming and displaying on a display screen a specimen observation image for a region that is larger than each microscopic observation image by joining a plurality of microscopic observation images that correspond to different two-dimensional regions that are acquired under the control of said image capturing control means; e) a specifying means for allowing a user to specify a measurement region in a specimen observation image that is displayed by said image forming means; and t) a mass spectrometry means comprising: 3 Appeal2015-000794 Application 13/254, 136 an ionization means for ionizing components present in measurement ranges, each range within the specified measurement region of the specimen that is at an analysis position in the chamber, the specimen having been moved by the moving means from the observation position; a mass separation and detection means for separating and detecting ions that are generated according to mass/charge ratio; a position scanning means for two-dimensionally scanning said measurement ranges within the specified measurement region; and an analysis control means for controlling the ionization means, mass separation and detection means and position scanning means so as to perform a two- dimensional mass spectrometry in the specified measurement region specified by said specifying means. Appeal Br. 23. The claims on appeal stand rejected as follows: 4 (1) claim 1under35 U.S.C. § 102(e) as being anticipated by Troche· 5 ' (2) claims 2-5 under 35 U.S.C. § 103(a) as being unpatentable over Troche in view of Takahashi; 6 and (3) claims 6-16 under 35 U.S.C. § 103(a) as being unpatentable over Troche in view of Schmid. 7 4 A rejection of claims 1-16 under 35 U.S.C. § 112, second paragraph, as being indefinite has been withdrawn by the Examiner. Ans. 14 (see also, the Examiner's Final Office Action, delivered April 5, 2013, pp. 3--4). 5 Troche et al., US 2006/0289734 Al, published Dec. 28, 2006 ("Troche"). 6 Takahashi et al., US 7 ,064,813 B2, issued June 20, 2006 ("Takahashi"). 7 Schmid et al., US 2006/0133657 Al, published June 22, 2006 ("Schmid"). 4 Appeal2015-000794 Application 13/254, 136 ANALYSIS Rejection under§ 102 over Truche Claim 1 is rejected under 35 U.S.C. § 102(e) as being anticipated by Troche. The dispositive issue on appeal is whether Appellants have shown reversible error in the Examiner's finding that Troche discloses a mass spectrometer comprising a moving means that moves a specimen from an observation position to an analysis position, as recited in claim 1. As an initial matter, we interpret the language "at an analysis position in the chamber, the specimen having been moved by the moving means from the observation position" of claim 1. As claim 1 is directed to an apparatus, we concern ourselves with the structure this claim recites with regard to the observation position and the analysis position. However, we note claim 1 recites no further limitations for the observation position and the analysis position, such as whether the positions are separate or different positions in the chamber of the mass spectrometer. Therefore, the language "at an analysis position in the chamber, the specimen having been moved by the moving means from the observation position" requires that the moving means functions to move a specimen, which is initially at an analysis position in a chamber of a mass spectrometer, to an observation position, although those positions need not be entirely separate, distinct locations within the chamber. Turning to the rejection on appeal, the Examiner finds Troche discloses a mass spectrometer comprising a microscopic observation means, a moving means for moving either or both of a specimen and the microscopic observation means, an image capturing control means, an image forming means, and a specifying means. Ans. 8-9. The Examiner further 5 Appeal2015-000794 Application 13/254, 136 finds Troche discloses a mass spectrometry means comprising an ionization means for ionizing components of a specimen at an analysis position, wherein the specimen has been moved by the moving means from the observation position. Ans. 9--10. The Examiner interprets Troche' s motorized sample plate holder disclosed in paragraph 56 as the moving means. Ans. 9. Significantly, Appellants do not dispute whether the motorized sample plate has a corresponding structure to the moving means of claim 1 or is an equivalent thereof. The Examiner finds paragraph 7 4 of Troche discloses a method including (emphasis added): positioning a sample in a field of view of a [sic] imaging device; producing a plurality of images of a sample having different in-focus regions; generating an in-focus image of the sample using the images; positioning the sample plate such that the ionizing laser of the ion source will impact the sample, and ionizing the sample. Ans. 15. The Examiner further cites paragraph 79 of Troche, which discloses (emphasis added): The position of a sample-containing area of a sample plate may therefore be viewed in relation to the point of impact of the ionizing laser on the sample plate, and the position of the sample plate can be adjusted accordingly (e.g., manually or using software) to ensure that the laser impacts a sample containing area (or any feature of a sample-containing area) when fired. Id. Based upon these disclosures of Troche, the Examiner finds Troche discloses a specimen at observation position (i.e., being imaged by an imaging device) that is then moved to an analysis position for ionization. Id. 6 Appeal2015-000794 Application 13/254, 136 Appellants traverse the § 102(e) rejection of claim 1 by asserting Figure 5 of Troche depicts imaging and ionization occurring at the same location because a laser beam 102 impinges on the same location of a sample 104 being observed by an imaging device. Appeal Br. 13-14; Reply Br. 5. Appellants argue Troche discloses a sample plate that may be moved but does not disclose an observation position and an analysis position as separate, different positions. Appeal Br. 14--18; Reply Br. 4--7. The language "at an analysis position in the chamber, the specimen having been moved by the moving means from the observation position" of claim 1 requires that the moving means functions to move a specimen, which is initially at an analysis position in a chamber of a mass spectrometer, to an observation position. Troche discloses a sample plate movable in an x-y plane, positioning the sample for observation, i.e., imaging, and positioning the sample plate so the sample can be analyzed, i.e., ionized. Troche i-fi-156, 74, and 79. In other words, Troche creates a plurality of images of the specimen which are then used for positioning, i.e., moving, the sample plate so that the desired region of the specimen is ionize for analysis. Therefore, the disclosure of Troche supports the Examiner's findings. Moreover, although the positions at which the sample of Troche is observed and analyzed via ionization may be coincident, as explained above, claim 1 does not require the observation position and the analysis position to be separate or different positions within the chamber of a mass spectrometer. As a result, Appellants' arguments are not persuasive of reversible error in the Examiner's finding that Troche discloses a mass spectrometer comprising a moving means that moves a specimen from an observation 7 Appeal2015-000794 Application 13/254, 136 position to an analysis position, as recited in claim 1. For the reasons discussed above and for the reasons expressed in the Answer, the Examiner's § 102( e) rejection of claim 1 over Troche is sustained. Rejections under§ 103 over the combination of Truce and Takahashi and the combination of Truche and Schmid Claims 2-5 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Troche in view of Takahashi. Appellants contend claims 2-5 are patentable over the combination of Troche and Takahashi for the same reasons asserted above for claim 1 and that Takahashi does not remedy the deficiencies of Troche. Appeal Br. 18 and Reply Br. 4. For the reasons discussed above and for the reasons expressed in the Answer, these arguments do not present a reversible error in the Examiner's rejection of claims 2-5. Claims 6-16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Troche in view of Schmid. Appellants argue claims 6-16 are patentable over the combination of Troche and Schmid for the reasons discussed above for claim 1, with Schmid failing to remedy the deficiencies of Troche. Appeal Br. 18-21 and Reply Br. 4. Independent claim 6 recites a mass spectrometer method comprising, among other things, "setting a specimen on a specimen stage and instructing to move the specimen on the specimen stage to an observation position within a chamber" and "moving the specimen on the specimen stage to an analysis position within the chamber based on the specified measurement region." Independent claim 11 recites a mass spectrometer system 8 Appeal2015-000794 Application 13/254, 136 comprising, among other things, "a driver mechanism for moving the specimen stage between the observation position and the analysis position." Thus, claim 11 recites a structure that functions to move a specimen stage between an observation position and an analysis position. Similarly to claim 1, claims 6 and 11 do not recite that the observation position and the analysis position are separate or different positions. Therefore, as discussed above with regard to claim 1, the motorized sample plate holder disclosed by Troche functions to move a specimen stage, which can include a specimen, between an observation position and an analysis position, as recited in claims 6 and 11. Dependent claims 7-10 and 12-16 are not argued separately from claims 6 and 11. Appeal Br. 21. As a result, the Examiner's§ 103(a) rejection of claims 2-5 over the combination ofTruche and Takahashi and the§ 103(a) rejection of claims 6-16 over the combination of Troche and Schmid are sustained. DECISION On the record before us and for the reasons in the Examiner's Answer and above, the Examiner's rejections are affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). AFFIRMED 9 Copy with citationCopy as parenthetical citation