Ex Parte Giles et al

Patent Trial and Appeal Board

Feb 21, 2014

11722970 (P.T.A.B. Feb. 21, 2014)

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.
11/722,970 01/22/2008 Kevin Giles M-1405-02 4864
43840 7590 02/24/2014
Waters Technologies Corporation
34 MAPLE STREET - LG
MILFORD, MA 01757
EXAMINER
IPPOLITO, NICOLE MARIE
ART UNIT PAPER NUMBER
2881
MAIL DATE DELIVERY MODE
02/24/2014 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 LEE WILDGOOSE
__________

Appeal 2011-012860
Application 11/722,970
Technology Center 2800
____________

Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 6, 10, 11, 13, 14, 16, 19, 20, 22, 23, 26, 32, 34, 35, 39, 40, 47, 78, 92, 99,
and 111. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appellants’ invention is directed to an ion guide or ion trap, a mass
spectrometer and a method of guiding or trapping ions (Spec. 1).

Appeal 2011-012860
Application 11/722,970

2
Claim 1 is illustrative:
1. An ion guide or ion trap comprising:
a plurality of electrodes;
an RF voltage source applying an 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;
a voltage supply maintaining one or more substantially quadratic
potential wells along at least a portion of the axial length of said ion guide or
ion trap in a first mode of operation, said one or more substantially quadratic
potential wells having a minimum;
a modulator oscillating the position of said one or more substantially
quadratic potential wells in a substantially periodic manner about a reference
point and along at least a portion of the axial length of said ion guide or ion
trap; and
an ejector in said first mode of operation ejecting at least some ions
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.

Appellants appeal the following rejections:
1. Claims 1, 6, 10, 11, 13, 14, 26, 34, 39, 40, 47, 78, 92, 99, and 111 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Kirchner
(US 5,206,506, issued Apr. 27, 1993) in view of Wells (US
2006/01063468 A1, published Jul. 27, 2006)1.
2. Claims 16, 19, 20, 22, 23, 32 and 35 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kirchner in view of Wells and
Schoen (US 5,089,703 issued Feb. 18, 1992).

1 The Examiner includes claims 32 and 35 in the statement of rejection (1)
although the Examiner acknowledges that claims 32 and 35 are rejected and
addressed solely under the combination of Kirchner, Wells and Schoen
(Ans. 17). We, therefore, understand that claims 32 and 35 are not to be
included in rejection (1).
Appeal 2011-012860
Application 11/722,970

3
REJECTION (1)
Appellants separately argue the subject matter of independent claims
1, 111, and dependent claims 13, 14 (App. Br. 7-15).

ISSUE
Did the Examiner reversibly err in concluding that the combined teachings
of Kirchner and Wells would have rendered obvious the subject matter of
claims 1 and 111? We decide this issue in the negative.

FINDINGS OF FACT & ANALYSIS
The Examiner finds that Kirchner teaches the subject matter of claims
1 and 111 except that Kirchner fails to teach oscillating the position of the
one or more substantially quadratic potential wells in a substantially periodic
manner about a reference point (Ans. 5). The Examiner finds that Wells
discloses oscillating the position of one or more substantially quadratic
potential wells in a substantially periodic manner about a reference point
(Ans. 5). The Examiner concludes that it would have been obvious to
include oscillating the position of the one or more substantially quadratic
potential wells in a substantially periodic manner about a reference point in
order to further separate “ions into discrete bundles so that, when the time
arises for ejection of the ions, a higher degree of separation between m/z
values will occur, and hence a higher resolution of the device as a whole
may be achieved” (Ans. 6).
Appellants argue that the Examiner failed to provide an apparent
reason to combine the teachings of Kirchner and Wells and even if the
references are combined they fail to teach all the limitations of the claims
Appeal 2011-012860
Application 11/722,970

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(App. Br. 7). Appellants contend that neither Kirchner nor Wells discloses a
modulator oscillating the position of one or more substantially quadratic
potential wells in a substantially periodic manner about a reference point and
along at least a portion of an axial length of an ion guide or ion trap (App.
Br. 8). Appellants contend that Wells teaches that the potential oscillates in
a radial manner and not in an axial direction (App. Br. 9). Appellants argue
that Wells does not disclose axial motion of a potential well (App. Br. 10).
Appellants contend that even if the teachings of Wells would have been
combined with Kirchner’s teachings there is still no disclosure of a quadratic
potential well oscillating along the axial length of the ion guide (App. Br.
10).
Appellants’ arguments are not persuasive because they attack the
references individually instead of addressing what the combined teachings of
the references would have suggested to one of ordinary skill in the art. In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Appellants’ arguments never
specifically address the particular combination or reasoning presented by the
Examiner. Appellants’ focus on whether or not Wells teaches oscillating the
position of quadratic wells along at least a portion of the axial length of the
ion guide fails to address the Examiner’s finding that Kirchner teaches such
an oscillation of the position of quadratic wells along at least a portion of the
axial length of the ion trap. The Examiner’s rejection is based upon
combining the concept of oscillating the position of a quadratic potential
well about a reference point as taught by Wells with Kirchner’s disclosure of
a modulator that oscillates the position of quadratic potential wells along at
least a portion of the axial length of the ion guide or trap (Ans. 5-6).
Appeal 2011-012860
Application 11/722,970

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Appellants contend that combining Wells’ teachings regarding
oscillating of the position of the quadratic wells would have resulted in no
modification of Kirchner because Wells’ teachings regarding the radio
frequency (RF) potential refers to radial confinement, which Kirchner
already uses to confine the ions (App. Br. 10). This argument fails to
address the Examiner’s rejection that is based upon including Wells’ concept
to oscillate the position of one or more quadratic wells in a substantially
periodic manner about a reference point with Kirchner’s structure that
oscillates the quadratic potential wells along at least a portion of the axial
length of the ion guide or trap (Ans. 5-6). Plainly, the Examiner’s finding
that Wells discloses oscillating the position of quadratic potential wells
about a reference point was intended to modify Kirchner’s disclosure to
modulate or oscillate the position of quadratic potential wells along the
length of the axis.
We agree with the Examiner that modifying Kirchner’s structure or
method to include structure that oscillates the position of the quadratic wells
about a reference point as taught by Wells would have been obvious.
Contrary to Appellants’ argument the Examiner proffers a reason for the
modification based upon the teachings of the references, which Appellants
do not contest (Ans. 6).

Dependent claims 13 and 14
Regarding claim 13, Appellants argue that the Examiner failed to
show where the prior art teaches that the quadratic potential wells are DC
potential wells (App. Br. 10; Reply Br. 4).
Appeal 2011-012860
Application 11/722,970

6
Appellants do not point us to where they describe or define “DC
potential well” in their Specification. Nevertheless, on page 24-26 of the
Specification, Appellants describe that the quadratic wells may be formed
from radio frequency (RF) and DC potentials. The DC potential provides
the axial quadratic DC potential well (Spec. 26). Accordingly, DC potential
wells include quadratic potential wells formed from DC and radio frequency
(RF) or alternating current (AC) potentials.
In light of this disclosure, Appellants have not explained how the
Examiner’s findings that Kirchner discloses using DC offsets to all the
electrodes and that Wells discloses a potential well formed by DC potential
do not establish that DC potential wells were known in the art. Contrary to
Appellants’ argument, the Examiner cites column 23 lines 3-55 of Kirchner
as teaching that DC offsets are used in controlling the potential barriers in
the potential wells (Ans. 7).

Regarding claim 14, Appellants argue that the Examiner has not
particularly shown where the prior art discloses that the modulator is
arranged and adapted to continually oscillate the position of said one or
more quadratic potential wells in a substantially periodic manner (App. Br.
11). Appellants contend that even if the equations in Kirchner potentially
permit any form of motion of the ions, the Examiner has not provided any
apparent reason why this particular motion is disclosed, let alone considered
desirable (Reply Br. 4).
We agree with the Examiner that Kirchner’s columns 21-23
disclosures teach the translation via modulation of the quadratic potential
wells in a periodic manner. Kirchner’s columns 21 to 22 disclose that
Appeal 2011-012860
Application 11/722,970

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Figures 12A through 12J depict the movement of ion particles via translation
of the quadratic potential wells. Appellants have not shown error in the
Examiner’s finding that columns 21 to 23 of Kirchner disclose the subject
matter of claim 14.
On this record, we affirm the Examiner’s § 103 rejection over
Kirchner in view of Wells.

REJECTION (2)
Appellants argue claims 16, 19, 20 22, 23, 32, and 35 (App. Br. 15-
18). Because claims 19 and 20 and claims 22 and 23 are argued together,
we select claims 19 and 22 as representative of each of the respective claim
groupings.

Claims 16, 19, & 22
Claim 16 depends from claim 1 and recites that the “modulator is
arranged and adapted to oscillate the position of said one or more
substantially quadratic potential wells with or at a first frequency f1, wherein
said first frequency f1 is greater than the resonance or fundamental harmonic
frequency at least 5% . . . or 100% of the ions located within an ion trapping
region within said ion guide or ion trap.”
Claim 19 depends from claim 1 and recites “wherein said ejector is
arranged and adapted to vary the amplitude of the oscillation of the position
of said one or more quadratic potential wells.”
Claim 22 depends from claim 1 and recites “wherein said ejector is
arranged and adapted to vary the frequency of oscillation of the position of
said one or more quadratic potential wells.”
Appeal 2011-012860
Application 11/722,970

8
Appellants argue that the Examiner has not shown how Schoen’s
disclosures in columns 15 to 24 relate to forcing ions further down the trap
and teach using a frequency exceeding the harmonic frequency (App. Br. 16-
17). Appellants contend that Schoen discloses using an RF-only multipole
mass spectrometer unlike Kirchner that the Examiner finds uses a DC
modulator. Id. Appellants contend that Schoen’s RF-only multipole has
different principals of operation and it would not have been obvious to
modify a DC modulator with a RF-only multipole control. Id.
The Examiner responds that Schoen teaches in columns 15 to 24 ways
to overcome the harmonic frequency discussed earlier in the patent at
columns 8 and 13 (Ans. 18). The Examiner finds that Shoen teaches to
modulate at a frequency greater than a resonance frequency because if the
frequency did not exceed the resonance or harmonic frequency the ions
would not move down the trap (Ans. 10-11). The Examiner explains that
adjusting frequency to remove ions from the trap would be the simplest way
to achieve that result (Ans. 11).
We find that the preponderance of the evidence favors the Appellants’
argument of non-obviousness. Schoen describes moving the ions from one
quadrupole to another quadrupole by using different frequencies (col. 21,
lines 58-68, col. 22, lines 1-11). Schoen further describes at column 24,
lines 29-31 that the RF-only quadrupole is an ideal mass filter because there
are no DC voltages present in the device. Schoen further compares an ion
trap with a RF/DC operation mode to the disclosed RF-only quadrupole and
Schoen discloses that the RF-only quadrupole provides greater sensitivity
and intensity in terms of ion current at the detector (col. 24, ll. 18-23).
Appeal 2011-012860
Application 11/722,970

9
The Examiner does not specifically respond to Appellants’ argument
that Schoen’s teaching regarding the frequency of an RF-only quadrupole
device is fundamentally different than the DC modulated ion traps of the
applied prior art such that one would not have modified Kirchner’s ion trap
based upon Shoen’s disclosures. The Examiner has not established why one
of ordinary skill in the art would have considered Schoen’s teachings
regarding the frequencies or amplitudes applied to an RF-only quadrupole to
be relevant to an ion trap with a DC modulator.
On this record, we reverse the Examiner’s § 103 rejection of claims
16, 19, 20, 22 and 23 over Kirchner in view of Wells and Schoen.

Claim 32 and 35
Claim 32 depends from claim 1 and recites “said ejector is arranged
and adapted in said first mode of operation to eject ions substantially axially
from said ion guide or ion trap.”
Claim 35 depends from claim 1 and recites “said ion guide or ion trap
comprises a multipole rod set ion guide or ion trap.”
Appellants rely on the argument made regarding claim 16, that there
is no reason to combine Schoen’s teachings directed to an RF-only ion trap
with Kirchner and Wells that use DC based electrode system (App. Br. 18).
However, the Examiner does not rely solely on the teachings of
Schoen as the basis for modifying Kirchner as modified by Wells to arrive at
the subject matter of claims 32 and 35. Regarding claim 32, the Examiner
finds that Kirchner teaches a linear ion trap where axial ejection is the only
reasonable ejection geometry. Regarding claim 35, the Examiner finds that
Appeal 2011-012860
Application 11/722,970

10
Kirchner discloses that the ion trap may be modeled as a hexapole (i.e.,
multipole) as suggesting forming the ion trap as a multipole.
Appellants’ arguments do not address or otherwise show error in these
findings and conclusions of the Examiner. Therefore, on this record, we
affirm the Examiner’s § 103 rejection of claims 32 and 35.

DECISION
The Examiner’s decision is affirmed-in-part.

ORDER
AFFIRMED-IN-PART

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