Ex Parte Yamaguchi

Patent Trial and Appeal Board

May 27, 2016

12173399 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/173,399 07/15/2008
23373 7590 06/01/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Shinichi Y AMA GU CHI
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.
Ql07476 6762
EXAMINER
HARWARD, SOREN T
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINICHI Y AMA GU CHI
Appeal2014-002767
Application 12/173,399
Technology Center 1600
Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and RICHARD J.
SMITH, Administrative Patent Judges.
MILLS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.
STATEMENT OF CASE
The following claim is representative.
1. A chromatograph mass analysis data processing
apparatus for processing data collected by a chromatograph
mass spectrometer in which a chromatograph for separating a
sample into components and a mass spectrometer for mass-
analyzing the sample components separated by the
chromatograph are combined, comprising:
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Application 12/173,399
a) a graph creator for creating, for each sample, a graph having a
retention time and a mass-to-charge ratio on two axes on a
plane with a signal intensity represented in contour or
represented by an intensity-discriminable expression equivalent
to the contour, on the basis of data collected by a
chromatograph mass analysis of one or more samples;
b) a multivariate analysis result displayer for performing a
multivariate analysis of the data collected by the chromatograph
mass analysis of the aforementioned one or more samples, and
for displaying a result of the multivariate analysis as a loading
plot;
c) a point selector for allowing a user to select one or more data
points, or a range including one or more data points, on the
loading plot result of the multivariate analysis displayed by the
multivariate analysis result displayer; and
d) a graph display processor for displaying the graph created by
the graph creator, superposing an indicator on the graph to
indicate which member or members of the graph having a
retention time and a mass=to=charge ratio on t\,'1/0 axes
correspond to the aforementioned one or more data points
selected by the point selector or included in the range selected
by the point selector.
Cited References
Tilton et al., WO 03/037250 A2 May 08, 2003
Xcalibur Mass Frontier 5. 0 User's Guide. Thermo Electron Corporation
159-200 (2006).
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Application 12/173,399
Grounds ofRejection
Claims 1, 2, and 5-8 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Xcalibur MassFrontier 5.0 User's Guide (hereinafter
"MassFrontier") and Tilton, et al., (WO 03/037250 A2). 1
FINDINGS OF FACT
The Examiner's findings of fact are set forth in the Answer at pages
3-6, and Final Rejection, pages 2-6. The following facts are highlighted.
1. MassFrontier, Fig. 104 is reproduced below.
Chrnmatognun
Processor Window
1 U.S. Equivalent is Pub. NO. US 2005/0065732 Al, March 24, 2005,
claiming priority to PCT/US02/34121, Oct. 25, 2002.
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Appeal2014-002767
Application 12/173,399
Fig. 104 shows a chromatogram processor window for the Mass
Frontier software, including component or scan selection and show
scan points functions.
2. MassFrontier, Fig. 99 is reproduced below.
,'
/ :.~ -~ ,._,.,:.::}"
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;!(.
Fig. 99 shows a MassFrontier Spectra Projector display spectra as
points on a two-dimensional plane or in a three-dimensional space.
A combination of two principal components, which make up the 2-
D projection plane, can be selected in the tab control. If you are
viewing PCA results using the 3-D projection mode, you can select
a combination of the three associated principal components.
Fig. 99 shows a plot with a contour around selected points, and
point indicators around specific plot points. MassFrontier, pp.
178-179.
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office). The Board "determines the scope of claims in patent
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Appeal2014-002767
Application 12/173,399
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction 'in light of the specification as
it would be interpreted by one of ordinary skill in the art."'
Phillips v. AWHCorp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (quoting In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
"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).
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Obviousness Rejection
We agree with the Examiner's fact finding, statement of the rejection,
and responses to Appellant's arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment to the
Examiner's argument set forth in the Final Rejection and Answer.
With respect to the Examiner's prima facie case, the Examiner finds
that MassFrontier teaches each element claimed except
The chromatogram display taught by MassFrontier superficially
differs from the claimed chromatogram display: the display
taught by MassFrontier depicts the chromatogram and the
corresponding mass spectrum as two separate 2D plots, whereas
the claimed display puts the retention time and the m/z ratio as
two axes of the same plot. MassFrontier teaches that the
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Appeal2014-002767
Application 12/173,399
chromatographic data can be presented in a 3D view (p.195),
but does not teach what the form of that 3D view is.
Final Act. 3-4.
Tilton is relied on by the Examiner for teaching, "a 3D
chromatographic mass spectrometry plot having the retention time on one
horizontal axis, mass on the second horizontal axis, and intensity on the
vertical axis; intensity constitutes 'an intensity-discriminable expression
equivalent to the contour."' Final Act. 4.
The Examiner concludes that
At the time of invention, said practitioner could have
substituted a 3D plot, as taught by Tilton, for two 2D plots, as
taught by MassFrontier. Since the two types of plots present the
same data in different superficial formats, and since both are
computer-generated, and since MassFrontier teaches that a "3D
View" of the chromatographic data is possible, said practitioner
would have readily predicted that the substitution would
successfully result in a 3D display of the chromatographic data
analogous to the form presented by Tilton.
Final Act. 4-5.
In response, Appellant primarily presents two arguments.
1. Appellant argues that none of the applied references, either alone or in
combination, discloses superposing an indicator on the graph having a
retention time and a mass-to-charge ratio on two axes on a plane with
a signal intensity represented in contour. Br. 4.
2. Appellant argues that the combination of applied references also fails
to disclose superposing an indicator on the graph to indicate the
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Application 12/173,399
graphed member corresponding to the data point selected by the point
selector in the loading plot. Br. 4.
Appellant does not take issue with the motivation to combine
MassFrontier with Tilton indicated by the Examiner on pages 4-5 of the
Final Act. Such arguments not made are waived. Instead, Appellant argues
that the above claimed features are not taught by the cited references in
combination. We are not persuaded.
Tilton describes in Fig. 1,
A representative three-dimensional plot of LC-MS (i.e.,
liquid chromatography-mass spec) data illustrating the
signature landscape profile of a botanical multi component
extract. Retention time (in minutes) on a Cl8 column is plotted
along one dimension, high resolution mass (in atomic mass
units) is plotted along a second dimension and the MS intensity
(log (Ion Count)) is plotted in the third dimension.
Tilton ,-i32. "Tilton teaches a 3D data plot having 'Retention Time' and
'!vfass (atomic mass units)' as tv"10 axes of the horizontal plane of the plot,
with 'MS Intensity' as the vertical axis; the intensity peaks constitute the
'signal intensity ... represented by an intensity-discriminable
expression equivalent to the contour."' Ans. 2. Thus Tilton discloses a data
processing apparatus with the claimed a graph having a retention time and a
mass-to-charge ratio on two axes on a plane with a signal intensity. The
Examiner also finds that
one of ordinary skill in the art at the time of invention would
have considered mass and mass-to-charge (hereinafter m/z) to
be trivially interchangeable in the context of displaying mass
spectrometric data. The art regards these two quantities as
trivially interchangeable because the ions of small organic
molecules almost always carry a charge of+ 1, so the m/z value
of the ion as measured by the mass spectrometer is almost
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Appeal2014-002767
Application 12/173,399
always numerically equivalent to the molecular mass of the ion
(e.g. a m/z of 78 means that the molecular mass of its fragment
ion is 78 amu).
MassFrontier implicitly illustrates this relationship by showing
the structure of theophylline-7- acetic acid, its molecular mass
of 238 amu, and its mass spectrum, which has a molecular ion
At:::::; 238 m/z (p. 174, lower-left window of Fig. 98).
Ans. 3. The Appellant does not respond to this argument of the Examiner.
Further, as to the graph "contour" MassFrontier, page 195, Fig. 104
provides the capability of selecting scans or components or showing scan
points. See, e.g. inverted triangle points in Fig. 104. Ans. 4.
Appellant argues that
there is nothing in MassFrontier teaching or suggesting that a
selection of components in a loadings plot triggers the display
of an indicator that designates members of the "graph", the
graph having the form of "a graph having a retention time and a
mass-to-charge ratio on two axes on a plane with a signal
intensity represented in contour or represented by an intensity-
discriminable expression equivalent to the contour.
We are not convinced by Appellant's argument. The pending claims
say nothing about the "triggering" of a display indicator. Claim 1 step d)
requires that the a chromatograph mass analysis data processing apparatus
d) [has] a graph display processor for displaying the graph
created by the graph creator, superposing an indicator on the
graph to indicate which member or members of the graph
having a retention time and a mass-to-charge ratio on two axes
correspond to the aforementioned one or more data points
selected by the point selector or included in the range selected
by the point selector. [Emphasis added.]
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Application 12/173,399
Thus, according to one embodiment within the scope of claim 1, one of
ordinary skill in the art may select a single point contour from a loading plot
and then superpose an indicator onto a 2D plot corresponding to the selected
single data point of the loading plot. The graph display processor of
MassFrontier is capable of displaying an indicator in a 2D plot, e.g.
displaying a selected component or scan point as in Fig. 104. FF2. The
display indicator of a 2D plot may correspond to an indicator in a loadings
plot. Appellant has presented no evidence that graph display processor of
MassFrontier is incapable of displaying graph points which "correspond to
the one or more data points selected by the point selector or included in the
range selected by the point selector."
Therefore, the obviousness rejection is affirmed.
CONCLUSION OF LAW
The cited references support the Examiner's obviousness rejection,
which is affirmed for the reasons of record. All pending claims, 1, 2, and 5-
8 fall.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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