Martin Raymond. Green et al.

Patent Trials and Appeals Board

Aug 22, 2019

14774820 - (D) (P.T.A.B. Aug. 22, 2019)

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.
14/774,820 09/11/2015 Martin Raymond Green DEH284US 5072
14707 7590 08/22/2019
Diederiks & Whitelaw, PLC
13885 Hedgewood Drive
Suite 317
Woodbridge, VA 22193-7932
EXAMINER
SMYTH, ANDREW P
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
08/22/2019 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):
ipdocket@waters.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARTIN RAYMOND GREEN and KEITH RICHARDSON
____________

Appeal 2018-001607
Application 14/774,820
Technology Center 2800
____________

Before JENNIFER S. BISK, JOYCE CRAIG, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–10, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b). Appellants’ counsel presented arguments at an oral
hearing on August 13, 2019.
We reverse.

1 Appellants identify the real party in interest as Micromass UK Limited.
App. Br. 3.
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Application 14/774,820

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STATEMENT OF THE CASE
The Invention
According to the Specification, the “invention relates to a method of
mass spectrometry and a mass spectrometer.” Spec. 1:8–9.2 The invention
endeavors to provide “an improved method of mass spectrometry and an
improved mass spectrometer” by, among other things, “obtaining first data
at a first time and/or location and second data at a second subsequent time
and/or location” and then “predicting a future trend or rate of change in the
data from the first and second data.” Id. at 2:35–3:4.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A method of mass spectrometry comprising:
obtaining first data at a first time or location and second
data at a second subsequent time or location;
predicting a future trend or rate of change of data from
said first and second data; and
adjusting an attenuation factor of an attenuation device or
otherwise adjusting the transmission of ions in response to said
predicted future trend or rate of change of data so as to maintain
operation of a detector or detector system within a dynamic
range of said detector or detector system or to prevent
saturation of said detector or detector system.
App. Br. 15 (Claims App.).

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed September 11, 2015; “Final Act.” for the Final Office
Action, mailed December 13, 2016; “App. Br.” for the Appeal Brief, filed
August 18, 2017; “Ans.” for the Examiner’s Answer, mailed October 5,
2017; and “Reply Br.” for the Reply Brief, filed December 4, 2017.
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Application 14/774,820

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The Rejection on Appeal and the Prior Art
Claims 1–10 stand rejected under 35 U.S.C. § 102(b) as anticipated by
U.S. Patent No. 5,572,022, issued November 5, 1996, to Schwartz et al.
(“Schwartz”). Final Act. 5–15.
ANALYSIS
We have reviewed the rejection of claims 1–10 in light of Appellants’
arguments that the Examiner erred. Based on the record before us and for
the reasons explained below, we concur with Appellants’ contention that the
Examiner erred in finding that the cited portions of Schwartz describe every
element of independent claims 1 and 6 arranged as required by each claim.
See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
2008).
Independent Claims 1 and 6
Appellants argue that the Examiner erred in rejecting claims 1 and 6
because “Schwartz does not use data from multiple sequences to predict a
trend or rate of change and then use this trend or rate of change to select a
desired value for another sequence” as required by each claim. App. Br. 6,
10; see Reply Br. 2–3. Specifically, Appellants assert that “Schwartz
generally operates in the same manner as” conventional systems by gating
ions into a mass spectrometer for an initial preselected gating time,
analyzing the ions gated into the mass spectrometer, calculating a new
gating time based on the analysis, and then repeating the ion-gating, ion-
analyzing, and gating-time-calculating steps. App. Br. 5–6, 10 (citing
Schwartz 10:3–8, 10:17–40); see Reply Br. 2–3. Appellants concede that
Schwartz “use[s] multiple pieces of data to calculate multiple gate times
over the course of analyzing a sample.” App. Br. 7, 11; Reply Br. 3. But
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Appellants contend that Schwartz “does not use multiple pieces of data to
calculate a given gate time” as necessary to anticipate claims 1 and 6. App.
Br. 7, 11; Reply Br. 3.
In response, the Examiner finds that Schwartz “discloses predicting a
future trend” or “rate of change of data” for a detector’s saturation “caused
by total ion count . . . from first data,” i.e., “measured total ion count” at the
detector, “obtained at a first time or location” and “second data,” i.e.,
“another measured total ion count” at the detector, “obtained at a second
subsequent time or location” for adjusting gating times for focusing lenses.
Ans. 5 (citing Schwartz 9:45–10:20, [57], Figs. 1–7); see Final Act. 3. The
Examiner explains that in Schwartz a controller assesses the detector’s
saturation “based upon multiple measurements/data of ions supplied to the
MS [mass spectrometer] at different/subsequent times/detector location[s]
(i.e., an initial data from an initial scan at a first time/location and a
subsequent data at a subsequent scan time/location).” Ans. 5–6. In addition,
the Examiner determines that “measurements/data are cumulatively used to
determine ion current (i.e., total ion count)” to “prevent future projected
detector saturation” by adjusting gating times for focusing lenses. Id. at 6.
Based on the record before us, we agree with Appellants that the
Examiner has not adequately explained how the cited portions of Schwartz
describe predicting “a future trend or rate of change of data from said first
and second data” as required by claims 1 and 6. Schwartz explains that “an
initial preselected gating time will result in a certain number of sample ions
being gated into the mass spectrometer.” Schwartz, 9:51–53. In the initial
gate sequence, focusing lenses gate sample ions into the mass spectrometer
for the initial preselected gating time. Id. at 9:63–10:8; see id. at 9:51–55.
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After gating for the initial preselected gating time, “total ion content
information is determined” and “fed back to a computer,” and the computer
“determines . . . a new gating time.” Id. at 9:53–59; see id. at 6:43–46,
10:13–20, [57]. In particular, the computer calculates the new gating time
“to substantially optimize the number of sample ions gated into the mass
spectrometer during the next gate sequence.” Id. at 10:17–20; see id.
at 6:31–35, [57]. “In the next gate sequence,” focusing lenses gate sample
ions into the mass spectrometer for the new gating time. Id. at 10:21–34.
After gating for the new gating time, “new total ion content information is
obtained” and fed back to the computer, and the computer calculates a new
gating time “for the next gate sequence.” Id. at 10:34–38. “The above
sequence is repeated until the sample molecules of interest are depleted
. . . .” Id. at 10:38–40.
Thus, as discussed above, Schwartz does not use “total ion content
information” determined at a first time and “total ion content information”
determined at a second time to predict “a future trend or rate of change of
data” as required by claims 1 and 6. Instead, Schwartz uses “total ion
content information” determined at a first time to calculate a new gating
time for the next gate sequence. Hence, we do not sustain the § 102(b)
rejection of claims 1 and 6.
Dependent Claims 2–5 and 7–10
Claims 2–5 depend directly or indirectly from claim 1, and claims
7–10 depend directly or indirectly from claim 6. For the reasons discussed
regarding the independent claims, we do not sustain the § 102(b) rejection of
these dependent claims.
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Because this determination resolves the appeal with respect to
claims 1–10, we need not address Appellants’ other arguments regarding
Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
(Fed. Cir. 1984) (explaining that an administrative agency may render a
decision based on “a single dispositive issue”).
DECISION
We reverse the Examiner’s decision to reject claims 1–10.
REVERSED