Ex Parte Ikegami et al

Patent Trial and Appeal Board

Jul 26, 2016

13254136 (P.T.A.B. Jul. 26, 2016)

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
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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.
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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:
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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").
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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
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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.
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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
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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
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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
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