Ex Parte KAHEN et al

Patent Trial and Appeal Board

Nov 19, 2018

14060120 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/060,120
91026 7590
Rhodes IP PLC
3090 Electric Rd
Suite F
Roanoke, VA 24018
FILING DATE FIRST NAMED INVENTOR
10/22/2013 KAVEHKAHEN
11/21/2018
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.
PKI-703510 1724
EXAMINER
OSENBAUGH-STEW ART, ELIZA W
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
11/21/2018 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):
crhodes@rhodesip.com
ipdocketing@rhodesip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KA VEH KAHEN and HAMID BADIE!
Appeal2018-004908
Application 14/060,120
Technology Center 2800
Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1, 3-20, 62, and 63 2. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
STATEMENT OF THE CASE
Appellants' invention is generally directed to a device that may be
used in a mass spectrometer for deflecting ions within a particle stream
1 Appellants identify PerkinElmer Health Sciences, Inc. as the real party in
interest. Appeal Brief filed January 27, 2017 ("App. Br."), 3.
2 Appellants cancelled claim 2 in an amendment filed March 8, 2016.
Appeal2018-004908
Application 14/060,120
along a desired path. Spec. ,r,r 4, 52. Claim 1 illustrates the subject matter
on appeal and is reproduced below with contested language italicized:
1. A device comprising:
a power source configured to provide a direct current
voltage;
a first multipole comprising a plurality of electrodes each
configured to receive the direct current voltage from the power
source, in which the plurality of electrodes of the first multipole
are together configured to provide a DC electric field using the
received direct current voltage, in which the provided DC
electric field is effective to direct first ions of an entering
particle beam along a first exit trajectory that is substantially
orthogonal to an entry trajectory of the particle beam; and
a second multipole fluidically coupled to the first
multipole to receive the directed first ions from the first
multipole along the first exit trajectory of the first multipole, the
second multipole comprising a plurality of electrodes each
configured to receive the direct current voltage from the power
source, in which the plurality of electrodes of the second
multipole are together configured to provide a DC electric field
using the received direct current voltage, in which the provided
DC electric field is effective to direct the received first ions
from the first multipole along a second exit trajectory that is
substantially orthogonal to the first exit trajectory.
Supplemental Appeal Brief filed October 20, 2017, 25 ( Claims
Appendix) ( emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered May 4, 2016 ("Final Act."), and maintains the rejections in
Examiner's Answer entered February 7, 2018 ("Ans."):
I. Claims 1, 3-20, 62, and 63 under 35 U.S.C. § 112, second
paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter that the applicants regard as the invention
on the basis that "DC electric field" ( claim 1) is meaningless;
2
Appeal2018-004908
Application 14/060,120
II. Claims 1, 3-20, 62, and 63 under 35 U.S.C. § 112, second
paragraph as being indefinite for failing to particularly point out and
distinctly claim the subject matter that the applicants regard as the invention
on the basis that "direct current voltage" ( claim 1) is meaningless; and
III. Claims 1, 3-20, 62, and 63 under 35 U.S.C. § 103(a) as
unpatentable over Bateman et al. (US 6,891,157 B2, issued May 10, 2005) in
view of Hashimoto et al. (US 6,423,965 Bl, issued July 23, 2002).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellants' contentions, we reverse the Examiner's rejections of
claims 1, 3-20, 62, and 63 under 35 U.S.C. § 112, second paragraph for the
reasons set forth in the Appeal Brief and below, and affirm the Examiner's
rejection of claims 1, 3-20, 62, and 63 under 35 U.S.C. § 103(a) for the
reasons set forth in the Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence Appellants provide for each ground of rejection
Appellants contest. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the examiner
had failed to make a prima facie case, "it has long been the Board's practice
to require an applicant to identify the alleged error in the examiner's
rejections")).
Rejections I and II
Claim 1 recites, inter alia, a power source configured to provide a
direct current voltage, and a first multipole comprising a plurality of
electrodes each configured to receive the direct current voltage from the
3
Appeal2018-004908
Application 14/060,120
power source. Claim 1 also recites that the plurality of electrodes of the first
multipole are together configured to provide a DC electric field using the
received direct current voltage.
The Examiner finds that Appellants' Specification "does not make
clear what a 'DC electric field' means," and determines that the phrase has
no meaning in a technical sense because "an electric field is a force field that
surrounds electric charges," while "direct current" refers to a flow or motion
of electric charge. Final Act. 2; Ans. 2, 4. The Examiner also determines
that the phrase "direct current voltage" is meaningless because although
Appellants' Specification indicates that a DC electric field is created using a
direct current voltage applied to each electrode, "a voltage is an electrical
potential, whereas direct current is a flow of charge from one potential to
another." Final Act. 2 ( citing Spec. ,r 12).
Contrary to the Examiner's assertions, however, one of ordinary skill
in the art would understand the meaning of a "DC electric field" and a
"direct current voltage" recited in claim 1 when these phrases are considered
in light of the description provided in Appellants' Specification. In re
Moore, 439 F.2d 1232, 1235 (CCPA 1971) (explaining that "the definiteness
of the language employed must be analyzed, not in a vacuum, but always in
light of the teachings of the prior art and of the particular application
disclosure as it would be interpreted by one possessing the ordinary level of
skill in the pertinent art.").
The Specification indicates that "application of one or more direct
current (DC) voltages to said first plurality of electrodes provides a first DC
electric field [and] ... application of one or more DC voltages to said
second plurality of electrodes provides a second DC electric field." Spec.
4
Appeal2018-004908
Application 14/060,120
,r 25. The Specification indicates that "a first DC quadrupole electric field is
provided by applying a DC voltage to the plurality of electrodes of [the]
quadrupole." Spec. ,r,r 54 (reference numerals omitted); see also Spec. ,r 53.
The Specification also refers to "the electrostatic field provided by the first
quadrupole," the "DC quadrupole electric field," "electric fields provided by
DC quadrupoles," "the electrostatic field provided by the DC quadrupole,"
and the "DC quadrupole fields." See, e.g., Spec. ,r,r 53, 55, 57, 61.
Thus, the phrases "DC electric field" and "direct current voltage" may
not be used in the Specification in strict conformity with the dictionary
definition of "electric field" and "direct current." As Appellants correctly
argue, however, one of ordinary skill in the art considering the language of
claim 1 as a whole in view of the description provided in the Specification
would nonetheless understand that the claim specifies with sufficient clarity
that when a voltage from a direct current power source-a "direct current
voltage"-is provided to the electrodes of a multipole, an electrostatic
field-a "DC electric field" -is created. App. Br. 9; In re Packard, 751
F.3d 1307, 1313 (Fed. Cir. 2014) (stating "the statutory language of
'particular[ity ]' and 'distinct[ ness ]' indicates [that] claims are required to be
cast in clear-as opposed to ambiguous, vague, indefinite-terms.").
Accordingly, the Examiner does not establish that one of ordinary
skill in the art would be unable to understand the meaning of a "DC electric
field" and a "direct current voltage" as recited in claim 1 when these phrases
are considered in light of Appellants' Specification. We therefore do not
sustain the Examiner's rejections of claims 1, 3-20, 62, and 63 under 35
U.S.C. § 112, second paragraph.
Rejection III
5
Appeal2018-004908
Application 14/060,120
Claims 1, 7-10, 14-17, and 19
Appellants provide arguments directed to claim 1, the sole
independent claim on appeal, and do not separately address dependent
claims 7-10, 14--17, and 19. App. Br. 10-24. We accordingly decide the
appeal as to claims 1, 7-10, 14--1 7, and 19 based on claim 1 alone. 3 7
C.F.R. § 4I.37(c)(l)(iv).
We note initially that for purposes of comparison to the prior art, the
Examiner interprets "DC electric field" to "mean a static (non-time-varying)
electric field," and interprets "direct current voltage" to "mean a static
voltage, that is, one that does not vary with time." Final Act. 2-3.
Bateman discloses an ion guide for a mass spectrometer that
comprises a plurality of plate electrodes, an entrance for receiving ions along
a first axis, an exit from which ions emerge along a second axis, and a
curved ion guiding region between the entrance and exit. Col. 1, 11. 5 8---63.
Bateman discloses supplying the plate electrodes with an AC or RF voltage
to direct the flow of ions through the ion guide in a desired path. Col. 6, 11.
51-52; col. 15, 11. 34--46. Bateman discloses coupling two or more of the
ion guides to provide an ion path in which the entry trajectory of ions into
the first ion guide is substantially orthogonal to the exit trajectory of the ions
from the first ion guide, and the exit trajectory of the ions from the second
ion guide is substantially orthogonal to the exit trajectory of the ions from
the first ion guide. Col. 13, 11. 21-29; Figs. 5 and 7. The Examiner finds
that Beteman "does not disclose a power source configured to provide a
direct current voltage; wherein the electrodes of the multipoles are each
configured to receive the direct current voltage from the power source, and
the plurality of electrodes together are configured to provide a static electric
6
Appeal2018-004908
Application 14/060,120
field," and the Examiner relies on Hashimoto for suggesting these features.
Final Act. 4--5.
Hashimoto discloses a mass spectrometer comprising a quadrupole
deflector composed of four quarterly split cylinder-shaped electrodes 1 Oa,
10b, 10c, 10d. Col. 3, 11. 38--47, 64--66; col. 4. 11. 3-5; col. 8, 11. 12-14; Figs.
1 and 2. Hashimoto illustrates"[ w ]iring from power source to respective
electrodes," including wiring denoted as "-321 V" and "-88V" to electrodes
1 Oa, 1 Ob of the deflector, respectively, which the Examiner finds
corresponds to "two power sources configured to provide a static voltage."
Final Act. 4--5; Hashimoto col. 5, 11. 61---62; Fig. 10. Hashimoto discloses
that the quadrupole deflector provides an ion path in which the entry
trajectory of ions is substantially orthogonal to the exit trajectory of the ions.
Col. 3, 1. 67---col. 4, 1. 5; col. 4, 11. 30-33; Fig. 2.
The Examiner concludes that "[i]t would have been obvious to a
person having ordinary skill in the art at the time of the invention to
substitute the electrostatic multipoles of Hashimoto [] for the plate-based
multi poles of Bateman [] because they are both known in the art and
perform[] the same functions, specifically they both use electric fields to
guide ions along a desired path." Final Act. 5.
Although Appellants argue that Bateman discloses applying RF
voltage to the ion guide described in the reference and "does not describe or
suggest the presence of first and second multipoles each comprising a DC
electric field using the received direct current voltage from a power source
as recited in claim 1," as discussed above, the Examiner acknowledges that
Bateman lacks this disclosure. Compare Final Act. 4, with App. Br. 10-11.
7
Appeal2018-004908
Application 14/060,120
Appellants argue that the wiring elements illustrated in Figure 10 of
Hashimoto relied on by the Examiner as corresponding to "two power
sources configured to provide a static voltage" represent power supplies for
a circuit under IEEE Standard 315, and Appellants contend that DC voltages
or DC power supplies are typically denoted using different symbols. App.
Br. 13 (citing http://www.circuitstoday.com/electronic-circuit-symbols).
Appellants assert that "[ n ]othing has been identified in the schematic of
Hashimoto that necessarily and unavoidably describes the use of a direct
current on his device," and Appellants argue that Figure 10 "simply shows
generic power supplies electrically coupled to his various components." Id.
Appellants contend that Hashimoto' s disclosure would not have led one of
ordinary skill in the art to believe that Hashimoto uses anything other than a
conventional deflector design that uses "AC current or an AC/RF field
similar to Bateman" because "Hashimoto is not concerned with deflector
design but is instead focused on the design of a gate valve 8." App. Br. 15.
In response to Appellants' arguments, the Examiner makes the IEEE
Std. 315-197 5 entitled "Graphic Symbols for Electrical and Electronics
Diagrams" of record, and correctly explains that the relied-upon symbols in
Figure 10 of Hashimoto represent a "generalized direct-current source" or "a
single cell battery" under this IEEE standard. Ans. 5 ( citing IEEE Standards
Coordinating Committee 11, Graphic Symbols for Electrical and Electronics
Diagrams, p. 33, 1975).
Appellants do not challenge the Examiner's finding that the symbols
at issue in Figure 10 of Hashimoto represent a "generalized direct-current
source." Reply Br. 2-6. Rather, Appellants argue in their Reply Brief that
the Examiner's contention that the cells illustrated in Figure 10 of
8
Appeal2018-004908
Application 14/060,120
Hashimoto provide a DC electric field as recited in claim 1 is "inconsistent
with the possible voltages that can be achieved with a single galvanic cell."
Reply Br. 3--4. Appellants, however, do not provide any evidence to support
this assertion, which we consequently find to lack persuasive merit, because
it is well-settled that unsupported attorney arguments cannot take the place
of evidence necessary to resolve a disputed question of fact. In re Schulze,
346 F.2d 600, 602 (CCP A 1965) ("Argument in the brief does not take the
place of evidence in the record.").
The Examiner relies on the original source document for IEEE Std.
315, and demonstrates that under this standard, the relied-upon symbols in
Figure 10 of Hashimoto correspond to a "generalized direct-current source."
The relied-upon portion of the web site cited by Appellants is somewhat
ambiguous, and appears to contradict the official IEEE Std. 315.
Consequently, we give little weight to this evidence, particularly because it
is not of record. 37 CPR§ 41.33(d)(2). Therefore, contrary to Appellants'
arguments, in view of IEEE Std. 3 15-the accepted industry standard for
graphic symbols for electrical and electronics diagrams----one of ordinary
skill in the art would have understood from Figure 10 of Hashimoto that
direct current is applied to electrodes 1 Oa, 1 Ob of Hashimoto' s deflector,
regardless of whether Hashimoto is "focused on the design of a gate valve
8."
Appellants argue that Hashimoto indicates in the abstract that "using
an ion trap mass analyzer, matrix molecule ions are eliminated by applying a
resonance voltage between its end cap electrodes," and Appellants assert that
Figure 18 of Hashimoto "seemingly shows the use of changing voltages/
resonance voltages for different electrodes in his devices." App. Br. 14.
9
Appeal2018-004908
Application 14/060,120
Appellants contend that "[ c ]onsidering Hashimoto' s use of the generic
power supply symbols noted above and that a changing voltage is stated to
be used, it stands to reason the power supplies in FIG. 10 of Hashimoto
would be configured to provide such changing voltages/resonance voltages."
App. Br. 14--15.
Contrary to Appellants' arguments, as discussed above, Hashimoto
does not use "generic power supply symbols" in Figure 10, but instead uses
the industry standard symbol for a "generalized direct-current source." In
addition, the disclosures in Hashimoto' s Abstract and Figure 18 cited by
Appellants describe applying resonance voltage in the ion trap mass analyzer
of Hashimoto' s mass spectrometer, and do not describe the voltage applied
in the quadrupole deflector. Abstract; Col. 5, 11. 27-29. Consequently, the
disclosures in Hashimoto cited by Appellants would not have led one of
ordinary skill in the art to conclude that resonance voltage is applied in
Hashimoto' s quadrupole deflector.
Appellants argue that "Hashimoto states when using a deflector
composed of a pair of sector-shaped electrodes, it is necessary to provide a
hole for eliminating straight moving photons at a portion of the electrode."
App. Br. 15 ( citing Hashimoto col. 8, 11. 23-29). Appellants contend that
"[ w ]hen the person of ordinary skill in the art reviews Hashimoto for
guidance on how to filter out unwanted photons or ions, they would be lead
[sic] to using a hole for eliminating straight moving photons at a portion of
the electrode and would not arrive at the subject matter of claim 1" in which
the recited coupled multipoles remove photons, neutral, and other unwanted
species by bending the ion beam through two or more trajectories. App. Br.
16.
10
Appeal2018-004908
Application 14/060,120
We note initially, as the Examiner points out in the Answer, that
Appellants' arguments are directed to an alternate embodiment described in
Hashimoto of a "deflector composed of a pair of sector-shaped electrodes"
rather than the "deflector composed of four quartered rods or cylindrical
electrodes 1 Oa, 1 Ob, 1 Oc, 1 Od" relied on by the Examiner. Ans. 6;
Hashimoto col. 8, 11. 12-16, 26-29. In addition, Appellants' arguments are
based on Hashimoto alone, and do not take into consideration what the
combined disclosures of Bateman and Hashimoto reasonably would have
suggested to one of ordinary skill in the art at the time of Appellants'
invention. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references."); In re Keller, 642 F.2d 413,425 (CCPA 1981) (The test for
obviousness "is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.")
As discussed above, Bateman and Hashimoto both disclose ion guides
for mass spectrometers that direct ions through a curved path by supplying
voltage to electrodes of the ion guides. Bateman discloses supplying an AC
or RF voltage to an ion guide that includes a plurality of plate electrodes,
while Hashimoto discloses applying a DC voltage to a quadrupole deflector.
Based on these disclosures, one of ordinary skill in the art reasonably would
have expected that either type of ion guide could be used in a mass
spectrometer to successfully direct ions along a desired path, regardless of
Hashimoto's disclosure of providing a hole for eliminating straight-moving
photons when using a deflector composed of a pair of sector-shaped
electrodes. In re Boe, 355 F.2d 961,965 (CCPA 1966) (explaining that all
11
Appeal2018-004908
Application 14/060,120
of the disclosures in a prior art reference "must be evaluated for what they
fairly teach one of ordinary skill in the art.").
Consequently, one of ordinary skill in the art reasonably would have
been led to use either ion guides that include plate electrodes to which an
AC/RF voltage is applied, or quadrupole deflectors to which DC voltage is
applied as recited in claim 1, for the coupled ion guides in Bateman's mass
spectrometer, to direct ions in a desired path. KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 416 (2007)("[W]hen a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result."); In re Fout, 675 F.2d 297,301 (CCPA 1982)("Express
suggestion to substitute one equivalent for another need not be present to
render such substitution obvious.").
Appellants argue that even if Hashimoto would have suggested using
a DC electric field for the deflector described in the reference, one of
ordinary skill in the art would not have envisioned "two multipoles ( of the
claimed configuration)" because "Hashimoto uniformly describes a single
assembly of electrodes," and while Bateman discloses using two or more
multiples, "the multipoles are consistently both AC multipoles." App. Br.
16.
Appellants' arguments improperly focus on Bateman and Hashimoto
individually, and again do not take into consideration what the combined
disclosures of Bateman and Hashimoto reasonably would have suggested to
one of ordinary skill in the art at the time of Appellants' invention. As
discussed above, Bateman discloses coupling two or more ion guides. As
also discussed above, one of ordinary skill in the art reasonably would have
12
Appeal2018-004908
Application 14/060,120
been led to use quadrupole deflectors to which DC voltage is applied as
disclosed in Hashimoto for the coupled ion guides in Bateman's mass
spectrometer to direct ions in a desired path, such as the path recited in claim
1.
Appellants argue that "even if Hashimoto were to necessarily and
unavoidably suggest the use of a DC electric field, importation of such a
teaching into Bateman would fundamentally vitiate a core component of
Bateman-the use of RF or AC with his curved electrodes." App. Br. 16.
Appellants argue that the Examiner's suggestion "that it would be
permissible to substitute one type of deflector for another ... is too
generalized," and the "specific operation of the deflectors must be
considered" because "Bateman consistently uses a different design and type
of field than Hashimoto." App. Br. 17.
As discussed above, however, one of ordinary skill in the art
reasonably would have expected that either ion guides that include plate
electrodes to which an AC/RF voltage is applied as disclosed in Bateman, or
quadrupole deflectors to which DC voltage is applied as disclosed in
Hashimoto, could be successfully used for the coupled ion guides in
Bateman's mass spectrometer to guide ions in a desired path. In re Kubin,
561 F.3d 1351, 1360 (Fed. Cir. 2009) ("[o]bviousness does not require
absolute predictability of success ... all that is required is a reasonable
expectation of success.") (emphasis omitted, citing In re O'Farrell, 853 F.2d
894, 903-04 (Fed. Cir. 1988)). As the Examiner correctly explains, the
purpose of Bateman's ion guide, like Hashimoto's deflector, is to direct ions
along a desired path from an entrance to an exit by subjecting the ions to an
electric field. Ans. 6-7. Consequently, the Examiner's proposed
13
Appeal2018-004908
Application 14/060,120
substitution of Hashimoto's deflectors for Bateman's ion guides would not
vitiate the purpose of Bateman's ion guide.
To the extent that Appellants assert that one of ordinary skill in the art
would not have had sufficient skill to appropriately adapt the structure of
Bateman's mass spectrometer to incorporate quadrupole deflectors as
disclosed in Hashimoto, Appellants' arguments do not demonstrate that the
proposed modification would have been "uniquely challenging or difficult
for one of ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Appellants' arguments are therefore unpersuasive of reversible error
in the Examiner's rejection of claim 1. We accordingly sustain the
Examiner's rejection of claims 1, 7-10, 14--17, and 19 under 35 U.S.C. §
103(a).
Claims 4 and 5
Claim 4 depends from claim 1 and recites that the DC electric field of
the second multipole is configured to direct the received first ions along the
second exit trajectory in a direction that is substantially antiparallel to a
direction of the entry trajectory. Claim 5 depends from claim 1 and recites
that the DC electric field of the second multipole is configured to direct the
received first ions along the second exit trajectory in a direction that is
substantially parallel to a direction of the entry trajectory in a first state and
is configured to direct the received first ions along the second exit trajectory
in a direction that is substantially antiparallel to a direction of the entry
trajectory in a second state.
Appellants argue that the Examiner's assertion that claim 4 merely
represents a rearrangement of parts "is incorrect and does not provide proper
14
Appeal2018-004908
Application 14/060,120
and due patentable weight to the recited claim elements." App. Br. 18.
Appellants contend that the combination of Bateman and Hashimoto "does
not envision or suggest" the subject matter of claims 4 and 5, and Appellants
assert that "the specific phrases" in claims 4 and 5 "have not been provided
due and proper patentable weight." App. Br. 18-19.
As the Examiner correctly explains, however, one of ordinary skill in
the art would have understood that when two ion guides configured to direct
ions in a trajectory having a 90 degree bend are placed one after the other (as
disclosed in Bateman), the entry trajectory of ions into the first ion guide and
the exit trajectory of ions from the second ion guide would be either parallel
(as shown in Figure 5 of Bateman and recited in claim 3) or antiparallel (as
recited in claim 4 ). Ans. 7. One of ordinary skill in the art would have
understood that both ion paths could be created when coupling quadrupole
deflectors as disclosed in Hashimoto ( as suggested by Bateman, discussed
above), despite the lack of explicit disclosure in Bateman or Hashimoto of
an antiparallel path as recited in claim 4. KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398,418 (2007) ([A]n obviousness analysis "need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
[ an examiner] can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ."); see also In re Preda, 401
F. 2d 825, 826 (CCPA 1968) ("[I]t is proper to take into account not only
specific teachings of the reference but also the inferences which one skilled
in the art would reasonably be expected to draw therefrom.").
As to claim 5, the Examiner correctly determines that "modifying the
combination to create the missing second state with antiparallel entrance and
exit trajectories would be obvious because it would allow for multiple modes
15
Appeal2018-004908
Application 14/060,120
of operation." Ans. 8. Supporting the Examiner's position, Bateman
discloses that the ion guide described in the reference can have multiple
inlets and/ or outlets so that "ions pass one way in one mode of operation and
pass the other way in another mode of operation." Col. 15, 11. 23-26. In
view of these disclosures, one of ordinary skill in the art would have
understood that the coupled quadrupole deflectors suggested by the
combined disclosures of Bateman and Hashimoto could be configured to
direct ions so that the entry trajectory into the first quadrupole, and the exit
trajectory from the second quadrupole, are parallel in a first state, and
antiparallel in a second state, as recited in claim 5.
We accordingly sustain the Examiner's rejection of claims 4 and 5
under 35 U.S.C. § 103(a).
Claim 6
Claim 6 recites that the device of claim 1 further comprises at least
one electrode positioned at an exit aperture of the first multi pole.
Appellants argue that "[ e ]ven if the deflector box 12 of Hashimoto
could function as a set of electrodes ( as asserted by the Office), the
positioning of the deflector box is not at an exit aperture of any two or more
DC multipole device." App. Br. 19. Appellants assert that "[ n Jo particular
passage has been identified in the art which clearly suggests what is being
claimed in claim 6." App. Br. 19-20.
The Examiner responds to Appellants' arguments by explaining that
placement of an electrode as recited in claim 6 at an exit aperture of the first
deflector in the coupled quadrupole deflectors suggested by the combined
disclosures of Bateman and Hashimoto would have been obvious to one of
ordinary skill in the art because it would collimate the ion beam as it moves
16
Appeal2018-004908
Application 14/060,120
between the deflectors. Ans. 8. Supporting the Examiner's position,
Hashimoto discloses that it was conventional in the art at the time of
Appellants' invention to include correcting electrodes at the exit of a
multi pole to improve collimation of the ion beam. Col. 1, 11. 14--15; col. 8,
11. 32-38.
We accordingly sustain the Examiner's rejection of claim 6 under 35
U.S.C. § 103(a).
Claim 11
Claim 11 depends from claim 10, which depends from claim 1, and
recites that the device further comprises a lens adjacent to the exit aperture
of the second multipole, the lens configured to decrease an ion beam size
exiting the exit aperture of the second multipole.
Appellants argue that the "deflector box 12 of Hashimoto is not stated
anywhere to be configured in a similar manner to the lens of claim 11, and
no component has been identified which is positioned in the same manner
and functions in the same way as the lens of claim 11." App. Br. 20.
As the Examiner correctly finds (Ans. 8), however, Hashimoto
discloses that "ions passed through the deflector are collimated by the static
lens 13," and Hashimoto illustrates placement of static lens 13 adjacent to
the exit aperture of the quadrupole deflector. Col. 8, 11. 32-34; Fig. 1. In
view of these disclosures, one of ordinary skill in the art would have
understood that placing collimating static lens 13 disclosed in Hashimoto at
the exit aperture of the second quadrupole deflector suggested by the
combined disclosures of Bateman and Hashimoto would collimate ions
exiting the deflector, thus decreasing an ion beam size of the exiting ions.
17
Appeal2018-004908
Application 14/060,120
We accordingly sustain the Examiner's rejection of claim 11 under 35
U.S.C. § 103(a).
Claim 13
Claim 13 depends from claim 1 and recites that the device of claim 1
further comprises a third multipole fluidically coupled to the second
multipole to receive directed first ions from the second multipole along the
second exit trajectory of the second multipole, the third multi pole
comprising a plurality of electrodes each configured to receive the direct
current voltage from the power source, in which the plurality of electrodes
from the third multipole are together configured to provide a DC electric
field using the received direct current voltage, in which the provided DC
electric field is effective to direct the received first ions from the second
multipole along a third exit trajectory that is substantially orthogonal to the
second exit trajectory.
Appellants argue that the "use of three multipoles of the specified
configuration is not envisioned by the art of record," and Appellants contend
that the Examiner "must provide some objective evidence that the
combination of Bateman and Hashimoto would necessarily lead the person
of ordinary skill in the art to the three multipole assembly, each with the
specified configuration, recited in claim 13." App. Br. 21.
As the Examiner correctly finds (Ans. 8), however, Figure 7 of
Bateman illustrates three coupled ion guides that direct ions in a path as
recited in claim 13. 3 In view of this disclosure, one of ordinary skill in the
art seeking to provide an ion path as shown in Figure 7 of Bateman would
3 Although Figure 7 of Bateman also illustrates a fourth coupled ion guide,
claim 13 does not exclude additional multipoles.
18
Appeal2018-004908
Application 14/060,120
have been led to add a third quadrupole deflector to the coupled deflectors
suggested by the combined disclosures of Hashimoto and Bateman to
provide the desired ion path.
We accordingly sustain the Examiner's rejection of claim 13 under 35
U.S.C. § 103(a).
Claim 20
Claim 20 depends from claim 1 and recites that the first multipole is
configured to direct second ions of the introduced particle beam in a fourth
trajectory, in which the fourth trajectory is substantially orthogonal to the
first trajectory and in which the second ions are of opposite charge than the
first ions.
Appellants argue that while the Examiner asserts that claim 20
represents a mere arrangement of parts, "no particular portion of either
Bateman or Hashimoto has been provided by the Office to the Appellant to
support this assertion," and Appellants contend that Bateman and Hashimoto
do not disclose or suggest the elements of claim 20. App. Br. 23.
In response to these arguments, the Examiner explains in the Answer
that she used imprecise language to convey her reasoning, and clarifies that
the multipole configuration recited in claim 20 "is not truly a rearrangement
of parts but[] a change in ion polarity." Ans. 9. As the Examiner correctly
determines, one of ordinary skill in the art would have understood that
second ions having a charge opposite that of first ions would be guided by
the first deflector of the coupled quadrupole deflectors suggested by the
combined disclosures of Bateman and Hashimoto on a trajectory orthogonal
to a trajectory of the first ions, as recited in claim 20, due to the opposite
charges of the first and second ions. Id.
19
Appeal2018-004908
Application 14/060,120
We accordingly sustain the Examiner's rejection of claim 20 under 35
U.S.C. § 103(a).
Claim 63
Claim 63 depends from claim 1 and recites that the first multipole is
positioned so that the entering particle beam only passes through a single
pair of flanking electrodes positioned adjacent to an entrance aperture of the
first multipole.
Appellants argue that the Examiner does not provide evidence that
one of ordinary skill in the art "would reach the specific claimed
configuration of structural elements recited in claim 63 in view of Bateman
and Hashimoto." App. Br. 24.
Hashimoto discloses placement of double cylindrical-type static lens
composed of electrodes 9a, 9b adjacent to the entrance of the quadrupole
deflector described in the reference to collimate the ions at the entrance of
the deflector. Col. 7, 11. 50-58; col. 8, 11. 34--38; Fig. 10. One of ordinary
skill in the art would have understood that placing the static lens composed
of electrodes 9a, 9b disclosed in Hashimoto at the entrance aperture of the
first quadrupole deflector suggested by the combined disclosures of Bateman
and Hashimoto would collimate ions entering the first quadrupole deflector.
We accordingly sustain the Examiner's rejection of claim 63 under 35
U.S.C. § 103(a).
20
Appeal2018-004908
Application 14/060,120
Claims 3, 12, 18, and 62
Although Appellants present separate arguments for each of claims 3,
12, 18, and 62, Appellants' arguments for these claims are not substantively
distinct from the arguments Appellants provide for claim 1. App. Br. 18,
20-21, 22, 24. Because we are unpersuaded of reversible error in the
Examiner's rejection of claim 1 for the reasons discussed above, Appellants'
position as to these claims is also unpersuasive of reversible error. We
accordingly sustain the Examiner's rejection of claims 3, 12, 18, and 62
under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejection of claims 1, 3-20, 62, and 63
under 35 U.S.C. § 103(a), and reverse the Examiner's rejection of claims 1,
3-20, 62, and 63 under 35 U.S.C. § 112, second paragraph.
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
21