Ex Parte Burns et al

Patent Trial and Appeal Board

Jun 28, 2016

12487360 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/487,360 06/18/2009 Douglas BURNS
22204 7590 06/30/2016
NIXON PEABODY, LLP
799 Ninth Street, NW
SUITE 500
WASHINGTON, DC 20001
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.
740883-227 7031
EXAMINER
DALBO, MICHAEL J
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
nppatent@nixonpeabody.com
ipairlink@nixonpeabody.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS BURNS,
MARSHALL CORY JR.,
and
JEFFREY PIOTROWSKI1
Appeal2014-006988
Application 12/487,360
Technology Center 2800
Before BRUCE R. WINSOR, CHRISTOPHER M. KAISER, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1--4, 6-9, 11-13, 15-22, 24--27, 29-31, 33--450, 42--45, 46--49, and
51-54. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Ensco, Inc. as the real party in interest. App. Br. 3.
Appeal2014-006988
Application 12/487,360
Introduction
Appellants describe their invention as relating to ion mobility
spectrometers for detecting target analytes. Spec i-f 2 ("Field of the
Invention"). Appellants explain "[t]he method of this invention exhibits
improved efficiency by allowing for the creation of a detection algorithm for
use in an ion mobility spectrometer without the need for extensive
experimental lab work." Id. at 22 ("Detailed Description"). Claim 1 is
representative:
1. A method of configuring an ion mobility spectrometer
device for detecting a target analyte, the method comprising:
identifying the target analyte;
identifying a drift medium;
selecting at least one of a positive ion mode and a
negative ion mode for detecting the target analyte;
determining potential cluster structures for the target
analyte using quantum chemical methods[;]
determining binding energies corresponding to formation
of the potential cluster structures;
calculating a statistical distribution of the formation of
the potential cluster structures based on their relative energies;
calculating physical parameters of the potential cluster
structures using quantum chemical methods;
applying a selected potential model, the physical
parameters of the potential cluster structures, and physical
parameters of the drift medium to calculate a collision cross
section of the target analyte;
estimating a Ko value of at least one of the potential
cluster structures based on the calculated collision cross section,
wherein Ko is the reduced mobility constant;
calculating a drift time for the potential cluster structures
based on the estimated Ko values, properties of the ion mobility
spectrometer device and environmental factors;
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Application 12/487,360
creating a detection algorithm based at least partially on
the calculated drift time; and
configuring the ion mobility spectrometer device based
on the detection algorithm.
App. Br. 21 (Claims App'x).
Rejections
Claims 1--4, 9, 11, 12, 15-17, 19-22, 27, 29, 30, 33-35, 37--40, 45,
47, 48, and 51-53 stand rejected under 35 U.S.C. § 103(a) as obvious over
the combination of (a) Steiner (Wes E. Steiner, et al., Ion-Neutral Potential
Models in Atmospheric Pressure Ion Mobility Time-of-Flight Mass
Spectrometry IM(tof)MS, J. Phys. Chem. A 2006, 110, 1836--44 (2006)),
(b) Weis (Patrick Weis, et al., Structures of small silver cluster cations
(Agn +, n < 12); ion mobility measurements versus density functional and
MP2 calculations, Chem. Phys. Letters 355 (2002)), (c) Kurten (T. Kurten,
et al., Estimating the NH3:H2S04 ratio of nucleating clusters in
atmospheric conditions using quantum chemical methods, Atmos. Chem.
Phys. Discuss., 7, 2937---60 (2007)), (d) Spangler (US 4,551,624, Nov. 5,
1985), and (e) Geromanos (US 2008/0142696 Al, June 19, 2008). Final
Act. 2-13.
Claims 6---8, 18, 24--26, 36, 42--44, and 54 stand rejected under 35
U.S.C. § 103(a) as obvious over references (a}-(e) in combination with
Makela (Jyrki M. Makela, et al., Mobility Distribution of Acetone Cluster
Ions, J. Aerosol Sci., Vol. 27, No. 2, 175-90 (1996)). Final Act. 13-15.
Claims 13, 31, and 49 stand rejected under 35 U.S.C. § 103(a) as
obvious over references (a}-(e) in combination with Miller (US 2005/
0023457 Al, Feb. 3, 2005). Final Act. 15-17.
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Application 12/487,360
ANALYSIS
Appellants argue the Examiner errs in rejecting claims 1--4, 9, 11, 12,
15-17, 19-22, 27, 29, 30, 33-35, 37--40, 45, 47, 48, and 51-54 on the basis
of independent claims 1, 19, and 37, which Appellants argue together as a
group. App. Br. 12-20. We select claim 1 as representative for our analysis
and decision. See 37 C.F.R. § 41.37(c)(i)(iv).
We have reviewed the Examiner's rejections in light of Appellants'
arguments in the Appeal and Reply Briefs. We deem waived any arguments
Appellants did not make or made in a conclusory fashion. See 3 7 C.F .R.
§ 41.37(c)(l)(iv). We agree with and adopt: (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken and (2)
the reasons set forth by the Examiner in the Examiner's Answer in response
to Appellants' Appeal Brief. We highlight the following for emphasis.
Appellants argue Steiner, Weis, Kurten, Spangler, and Geromanos all
"rely on classical chemical techniques in order to determine ion mobility
distributions (beforehand)" and "'classical' implies that quantum and
relativity theory have not been applied." The Examiner answers that
Appellants "fail[] to address the cited portions of Weis and Kurten that relate
to quantum chemical techniques." Ans. 3. We agree. Weis specifically
discusses using quantum chemical techniques for determining ion mobility
using quantum chemical techniques for determining ion structures. See
Weis 356, 358. The entirety of Kurten relates to the rubric of its title,
"Estimating ... using quantum chemical methods." Kurten 2937.
Appellants do not persuade us the Examiner errs in finding that Weis and
Kurten, in combination with Steiner, teach one of ordinary skill the claim
requirements that include quantum chemical methods. See Final Act. 4---6.
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Application 12/487,360
Appellants further argue "the cited references use experimental data
(i.e., experimentally derived foreknowledge) as an input to their calculations,
while according to the present invention, the flight time of ions can be
predicted without experimentation." App. Br. 16-17. We find this
argument unpersuasive because Appellants do not identify any specific
claim requirement( s) to preclude use of experimental data. Indeed,
Appellants' claims expressly permit the use of experimental data in addition
to non-experimentally derived predictions, because they introduce their
limitations with the transition "comprising." Invitrogen Corp. v. Biocrest
Manufacturing, L.P., 327 F.3d 1364, 1368 (Fed. Cir. 2003) ("The transition
'comprising' in a method claim indicates that the claim is open-ended and
allows for additional steps."). We also note, as does the Examiner, that
Appellants' Specification specifically describes using experimental data:
[A] series of model compounds for which experimental data
exists can be used in evaluating the model. If the calculated
mobility constant is too far from the literature value, then the
potential model can be tuned, a different potential model can be
used, or a new model may be developed. The quality of the
implemented potential model is assessed based on the use of,
and application to, model compounds for which experimental
data exists.
Spec. i-f 37; see Ans. 5 (citing Spec. i-fi-129, 32, 37,2 Figs. 7, 8, 10).
Appellants relatedly argue "Steiner, as well as the other cited
references, uses theory to interpret, explain and understand their
experimental observations. On the other hand, the instant invention predicts
2 The Examiner cites to paragraph 45 in the Published Application, which
corresponds to Paragraph 37 in the Specification as filed. The difference is
because the Specification omits paragraph numbers for equation information
starting after paragraph 36, for which the Published Application includes
added paragraph numbers. All our citations are to the Specification as filed.
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Application 12/487,360
what will be observed. . . . This is the uniqueness of what Appellant
proposes (no foreknowledge), and its uniqueness is acknowledged within the
IMS [Ion Mobility Spectrometry] community." App. Br. 18. While
secondary considerations of non-obviousness, such as acknowledgement of
an invention by others, "must be considered when present," Geo. M. Martin
Co. v. Alliance Machine Systems Intern. LLC, 618 F.3d 129 (Fed. Cir. 2010)
(citing Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1008
(Fed. Cir. 2009), here we find this contention to constitute unsupported
attorney argument. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997).
Appellants additionally argue the Examiner errs because "Steiner fails
to disclose an equation that relates mobility/reduced mobility to drift time."
App. Br. 17. The Examiner answers by identifying formulae in Steiner that
compute an ion's characteristic mobility constant as a function of drift time
and that compute a "reduced" mobility constant based on environmental
factors. Ans. 6 (citing Steiner 183 7); see also Final Act. 3. Appellants reply
that Steiner's approach "relates [sic-relies] entirely on the measurement of
drift time" whereas "embodiments of the claimed invention implement a
new approach in which a theoretical ab initio model is used." Reply Br. 5-
6. Appellants do not persuade us because they do not address the substance
of the Examiner's findings in the rejection regarding this claim element, viz:
Steiner discloses an equation that relates mobility/
reduced mobility to drift time (see equation 2: wherein L is a
property of the ion mobility spectrometer device, and see
equations 13 and 6: reduced mobility/mobility dependent upon
environmental factors); thus, it would have been obvious to one
with ordinary skill in the art to modifY Steiner to calculat[e] a
drift time for the target analyte based on the estimated Ko
value, properties of the ion mobility spectrometer device, and
environmental factors.
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Final Act. 3 (emphasis added).
The Examiner does not find Steiner discloses calculating a drift time
as claimed. Instead, the Examiner finds, in view of the cited art, that
performing the claimed calculation was obvious. We agree. Appellants'
arguments regarding the disclosure of Steiner are unpersuasive because they
do not address the Examiner's findings for what Steiner teaches or suggests
in combination with the other cited references. See Final Act. 2-8; In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (one cannot show nonobviousness
by attacking references individually when the rejection is based on a
combination of references). The obviousness analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, as the analysis can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ. See KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) ("[one] of ordinary skill in the art is
a person of ordinary creativity, not an automaton"). Appellants provide no
persuasive argument or evidence to rebut the Examiner's rationally
underpinned articulation for how the cited combination of references teaches
or suggests claim 1. See id.
Appellants also argue Steiner does not teach claim 1 's requirement for
calculating drift time because, by "relying only on spherical molecules, the
equation disclosed is not applicable to most molecules." App. Br. 17. The
Examiner answers, and we agree, the claim "does not limit or define the
shape of its models to non-spherical models." Ans. 7 (citing Spec. i-f 54 and
further noting Appellants' Specification "states that the 12-4 hard sphere
potential model is sufficient for its own method").
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Appellants furthermore argue that claim 1 "is applicable to any
interaction potential, unlike the disclosed method of Steiner." App. Br. 18-
19. Appellants' argument that Steiner is not "applicable to any interaction
potential" similarly both is not commensurate with the claim scope and fails
to address the Examiner's cited combination of references. We accordingly
sustain the Examiner's rejection of claim 1, and along with it the rejection of
claims 2--4, 9, 11, 12, 15-17, 19-22, 27, 29, 30, 33-35, 37--40, 45, 47, 48,
and 51-54.
Appellants do not separately argue the merits of, claims 6-8, 13, 18,
24--26, 31, 36, 42--44, and 49. See App. Br. 11-20. Accordingly, for the
reasons discussed supra we also sustain the rejections of claims 6-8, 13, 18,
24--26, 31, 36, 42--44, and49. See 37 C.F.R. § 41.37(c)(i)(iv).
DECISION
For the reasons above, \Ve affirm the Examiner's rejection of claims
1--4, 6-9, 11-13, 15-22, 24--27, 29-31, 33--40, 42--45, 46--49, and 51-54.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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