Ex Parte Balogh et alDownload PDFPatent Trial and Appeal BoardJul 24, 201713469613 (P.T.A.B. Jul. 24, 2017) Copy Citation 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. 13/469,613 05/11/2012 Michael P. BALOGH WCS-037US (W-768-3) 1355 12448 7590 07/24/2017 Muirhead and Satumelli, LLC 200 Friberg Parkway Suite 1001 Wes thorough, MA 01581 EXAMINER OSENBAUGH-STEWART, ELIZA W ART UNIT PAPER NUMBER 2881 MAIL DATE DELIVERY MODE 07/24/2017 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 MICHAEL P. BALOGH, MARC V. GORENSTEIN, and MARIAN TWOHIG1 Appeal 2016-007999 Application 13/469,613 Technology Center 2800 Before PETER F. KRATZ, KAREN M. HASTINGS, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the Examiner’s Non-Final rejection of claims 1—28. We have jurisdiction under 35 U.S.C. §6. We AFFIRM. Claim 1 is illustrative of the subject matter on appeal and is reproduced below (emphasis added to highlight disputed features): 1 The real party in interest is identified as Waters Technologies Corporation. App. Br. 2. Appeal 2016-007999 Application 13/469,613 1. A method of performing sample analysis comprising: causing thermal desorption of components of the sample at atmospheric pressure at a plurality of times by applying one of a plurality of temperatures included in a temperature gradient at each of said plurality of times to a surface of said sample, wherein desorption of each of the components occurs at a different one of said plurality of temperatures thereby allowing differentiation of the components based on one of the plurality of times corresponding to the different one of the temperatures at which desorption occurs for said each component; generating ions from said thermally desorbed components; generating mass spectra from the ions; and analyzing said mass spectra to determine mass spectral features about said components, wherein said analyzing includes associating one of the ions with one of said components whereby said one ion is determined as derived from said one component if said one ion has an ion intensity apex or peak that is detected in the mass spectra and occurs at a first of the plurality of times corresponding to a first of the plurality of temperatures at which thermal desorption occurs for said one component. Appellants (App. Br. 7) request review of the following rejections from the Examiner’s Non-Final Office Action (mailed May 29, 2015, hereinafter “Non-Final Act.”): (a) claims 1, 2, 4—8, 10-16, 18, 20—24, and 26—28 rejected under 35 U.S.C. § 102(b) as anticipated by Fi et al. (WO 2010/121518 Al, published October 28, 2010, and relying on US 2012/0037797 Al, published February 16, 2012 as the English equivalent); and (b) claims 3, 9, 17, 19, and 25 rejected under 35 U.S.C. 103(a) as unpatentable over Fi and Gorenstein et al. (US 2009/0294645 Al, published December 3, 2009, hereinafter “Gorenstein”). 2 Appeal 2016-007999 Application 13/469,613 OPINION Rejection under 35 U.S.C. § 102(b) Appellants present arguments addressing the rejection of independent claim 1. See generally Appeal Brief. In addressing independent claim 21, Appellants rely on substantially the same line of arguments presented when discussing claim 1 as well as present additional arguments for this claim. Id. at 12. Appellants also rely on the argument presented when discussing claims 1 and 21 to address the rejection of dependent claims 2, 4—8, 10-16, 18, 20, 22—24, and 26—28. Id. at 11, 13. Accordingly, we select claim 1 as representative of the subject matter for review on appeal. Claims 2, 4—8, 10-16, 18, and 20 stand or fall with claim 1. The additional arguments for claim 21 will be addressed separately. Therefore, claims 22—24, and 26—28 stand or fall with claim 21. After review of the respective positions provided by Appellants and the Examiner, we AFFIRM the Examiner’s prior art rejection under 35 U.S.C. § 102(b) for the reasons presented by the Examiner and add the following for emphasis. Independent claim 1 is directed to a method of performing sample analysis where mass spectra generated from ions of thermally desorbed components are analyzed to determine mass spectral features about said components by associating one of the ions with one of said components to determine if said one ion is derived from said one component. This determination is based on whether the ion intensity apex or peak detected in the mass spectra for the said one ion occurs at a first of the plurality of times corresponding to a first of the plurality of temperatures at which thermal desorption occurs for said one component. That is, the components of the 3 Appeal 2016-007999 Application 13/469,613 sample undergoing analysis are identified by comparison of the spectral data for the said ion with spectral data of known components matching the spectral data of the said ion based on a common thermal desorption temperature. Spec. 32. The Examiner finds Li describes a method of performing sample analysis where mass spectra generated from ions of thermally desorbed components are analyzed to determine mass spectral features about said components by associating one of the ions with one of said components to determine if said one ion is derived from said one component. Non-Final Act. 3^4 (citing Li || 7, 9, and 33). According to the Examiner, Li’s Figure 5 shows spectrum Si having two major peaks at approximately 80 m/z and 125 m/z measured at temperature Ti that are known to be associated with a component desorbed at temperature Ti at a given point in time. Ans. 3 (citing Li 133). The Examiner further asserts Figure 5 describes differentiating contents Pi and P2, both having a peak occurring at 125 m/z, based on their different desorption temperatures. Non-Final Act. 4; see also Ans. 3 (citing Li | 33). Thus, based on this disclosure, the Examiner concludes that Li anticipates the subject matter of the claimed invention. Non-Final Act. 3^4; see also Ans. 3. Appellants argue, while Li seems to disclose that ions (contents Pi and P2) having the same mass to charge ratio can be distinguished based on the different desorption temperatures of each of the two ions, Li is silent regarding associating an ion with a sample component based on temperatures at which thermal desorption occurs for said one component, as set forth in Claim 1. App. Br. 10. 4 Appeal 2016-007999 Application 13/469,613 We are unpersuaded by this argument. In order to anticipate, a reference must identify something falling within the claimed subject matter with sufficient specificity to constitute a description thereof within the purview of § 102. In re Schaumann, 572 F.2d 312, 317 (CCPA 1978). It is well established that specific examples of the claimed subject matter are not necessary to establish anticipation. Rather, to anticipate, one skilled in the art must be able to “at once envisage” the claimed subject matter in the prior art disclosure. In re Petering, 301 F.2d 676, 681 (CCPA 1962). Further, in evaluating references, it is proper to take into account not only the specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968) (It is well established that in evaluating references it is proper to take into account not only the specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.). As noted by the Examiner, Li’s Figure 5 shows distinguishing contents Pi and P2 (ions) based on their respective desorption temperatures. Non-Final Act. 4; see also Ans. 3 (citing Li 133). Thus, one skilled in the art would infer from Li’s Figure 5 that Li’s method of performing sample analysis identifies ions by associating the ion intensity peak for an unknown ion (Pi and P2) at a particular desorption temperature at a given point in time with a component sharing that same characteristic. Based on this inference, we agree with the Examiner’s assertion that Li’s method of performing sample analysis analyzes mass spectrum generated from an ion of a thermally desorbed component (the characteristic of an ion intensity apex or peak detected at a given desorption temperature at a given point in time) by 5 Appeal 2016-007999 Application 13/469,613 associating this ion with a component to determine if the ion is derived from said component as claimed. Ans. 3. Appellants further argue that the Examiner’s interpretation of Li’s Figure 5 as describing association of the ions as claimed is not supported any written description in Li. Reply Br. 4—5. During examination, claim terms are given their broadest reasonable construction consistent with the Specification. In general, the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the [Appellants’] [Specification. In re Morris, 127 F.3d 1048, 105A-55 (Fed. Cir. 1997). In this case, Appellants do not direct us to a specific definition for the term “associating” in the Specification. See generally App. Br. 5. Further, Appellants have not shown how the term “associating” as used in claim 1 does not encompass Li’s disclosure as represented in Figure 5. For claim 21, Appellants additionally argue the computer nor any other component in Li’s Figures 1—2 discloses or fairly suggests the claimed means for analyzing mass spectra as claimed. App. Br. 12. We are unpersuaded by this argument and, given the inference discussed above, a preponderance of the evidence supports the Examiner’s obviousness determination. Ans. 4. 6 Appeal 2016-007999 Application 13/469,613 Accordingly, we sustain the Examiner’s prior art rejection under 35 U.S.C. § 102(b) for the reasons presented by the Examiner and given above. Rejection under 35 U.S.C. § 103(a) Appellants’ arguments for Rejection (b) do not address the rejection of claims 3,9, 17, 19, and 25 based on the reasons presented by the Examiner. Ap. Br. 15—17; see a Iso Non-Final Act. 10-13. Instead, the arguments focus on whether the secondary reference to Gorenstein addresses alleged deficiencies of Li. App. Br. 15—17. That is, Appellants’arguments are premised on the teachings of Li not anticipating the subject matter of independent claim 1. As discussed above, such is not the case. Accordingly, we sustain the Examiner’s prior art rejection under 35 U.S.C. § 103(a) for the reasons presented by the Examiner and given above. DECISION The Examiner’s prior art rejection under 35 U.S.C. § 102(b) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED 7 Copy with citationCopy as parenthetical citation