Ex Parte Prest et al

Patent Trial and Appeal Board

Mar 29, 2018

13925470 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/925,470 06/24/2013
22878 7590
Agilent Technologies, Inc.
Global IP Operations
5301 Stevens Creek Blvd
Santa Clara, CA 95051
04/02/2018
FIRST NAMED INVENTOR
Harry F. Prest
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.
20120352-01 1552
EXAMINER
LUCK,SEANM
ART UNIT PAPER NUMBER
2881
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
IPOPS.LEGAL@agilent.com
Agilentdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HARRY F. PREST, MINGDA WANG, and
JEFFREY T. KERNAN
Appeal2017-006577
Application 13/925,470
Technology Center 2800
Before TERRY J. OWENS, N. JEFFREY B. ROBERTSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-9, 11-19, 21, and 22. 3 We have
jurisdiction under 35 U.S.C. § 6(b ). We affirm.
1 In this Decision, we refer to the Specification filed June 24, 2013
("Spec."), the Final Office Action entered May 18, 2016 ("Final Act."), the
Appeal Brief filed October 14, 2016 ("Appeal Br."), the Examiner's Answer
entered January 19, 2017 ("Ans."), and the Reply Brief filed March 17, 2017
("Reply Br.").
2 Appellant is the Applicant, Agilent Technologies, Inc., which according to
the Appeal Brief, is the real party in interest. Appeal Br. 3.
3 Claims 10 and 20 were canceled in an Amendment filed June 23, 2015.
Appeal2017-006577
Application 13/925,470
The subject matter of the claims on appeal relates to a method for
acquiring spectral data using an electron ionization source capable of
ionizing a sample material over a range of energies, for example, energies
below 70 e V ("soft ionization"). Spec. i-fi-1 5---6, 26.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, is illustrative of the claims on appeal.
1. A method for acquiring mass spectral data, the method
compnsmg:
(a) producing an electron beam in an axial electron
ionization (EI) source at a first electron energy, and focusing
the electron beam along a source axis of the EI source by
applying a magnetic field;
(b) introducing a sample comprising an analyte of interest
into the EI source;
( c) irradiating the sample with the electron beam at the first
electron energy to produce first analyte ions from the analyte of
interest as an ion beam coaxial with the electron beam along the
source axis;
( d) transmitting the first analyte ions into a mass analyzer to
generate a first mass spectrum correlated to the first electron
energy;
( e) adjusting the electron energy to a second electron energy
different from the first electron energy;
(t) irradiating the sample with the electron beam at the
second electron energy to produce second analyte ions from the
analyte of interest as an ion beam coaxial with the electron
beam along the source axis; and
(g) transmitting the second analyte ions into the mass
analyzer to generate a second mass spectrum correlated to the
second electron energy,
wherein at least one of the first electron energy and the
second electron energy is in a range effective for producing the
first analyte ions or the second analyte ions by soft ionization.
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Appeal2017-006577
Application 13/925,470
Appeal Br. 18 (Claims App.).
Independent claim 15, the other independent claim pending on appeal,
includes similar limitations to those recited in claim 1. Id. at 21.
DISCUSSION
The Examiner maintains the rejection of claims 1-9 and 11-19 under
35 U.S.C. § 103 over Barket, Jr. et al. (US 2006/0243901 Al, published
November 2, 2006) ("Barket") in view of Uman et al. (US 3,924, 134, issued
December 2, 1975) ("Uman"), as evidenced by Chase Boulware,
Introduction to the physics of high-quality electron beams, Photo Injector
Test facility (PITZ) physics lecture for students (August 16, 2007)
("Boulware"). Final Act. 6-17; Ans. 2. In addition, the Examiner maintains
the rejection of claims 21 and 22 under 35 U.S.C. § 103 over Barket in view
ofUman, Boulware, and Lee et al. (US 7,060,987 B2, issued June 13, 2006)
("Lee"). Final Act. 17-18; Ans. 2.
Appellant's substantive arguments for patentability are based on
limitations recited in claim 1, including separately rejected claims 21 and 22.
Appeal Br. 10-16. All claims therefore stand or fall with claim 1. 3 7 C.F .R.
§ 41.37(c)(l)(iv).
Upon consideration of the evidence on this record and each of
Appellant's contentions, we find that the preponderance of evidence
supports the Examiner's conclusion that the subject matter of Appellant's
claims is unpatentable over the applied prior art. We sustain the Examiner's
§ 103 rejections essentially for the reasons set out by the Examiner in the
Final Office Action and the Answer. We add the following.
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Appeal2017-006577
Application 13/925,470
The Examiner finds, and Appellant does not dispute, that Barket
teaches all the steps of claim 1 's method except "focusing the electron beam
along a source axis of the EI source by applying a magnetic field," and "an
ion beam coaxial with the electron beam along the source axis." Compare
Final Act. 6-7 (citing Barket, Abstract, i-fi-128, 31, 51), with Appeal Br. 10-
16. To cure these deficiencies, the Examiner finds, and Appellant does not
dispute, that Uman teaches an axial electron ionization source immersed in
an axial magnetic field. Compare Final Act. 7 andUman 2:58---61, 3:56-59;
Fig. 1 (item 48), Fig. 2, with Appeal Br. 10-16; see also Appeal Br. 13, 15
(admitting Uman teaches an axial EI source). Although Uman does not
explicitly disclose ''focusing the electron beam along a source axis of the EI
source by applying a magnetic field," the Examiner finds, and Appellant
does not dispute, that Boulware teaches that a magnetic field, such as
disclosed in Uman, focuses charged particles. Compare Final Act. 7 and
Boulware 15-18, with Appeal Br. 16.
The Examiner finds that one of ordinary skill in the art would have
been led to use Uman's electron ionization source configuration in Barket's
method, and would have reasonably expected that it would provide similar
advantages to those taught by Uman (i.e., preserving the filament life). Final
Act. 8 (citing Uman 1:22-31, 48-54).
Appellant argues that Uman would not have motivated one of
ordinary skill in the art to use an electron ionization source with axial
geometry as Barket's electron ionization (EI) source. Appeal Br. 13-14.
Appellant contends that Uman only teaches that a double-chamber
configuration can improve filament lifetime. Id. at 14. Thus, Appellant
argues that Uman only would have motivated one of ordinary skill in the art
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Appeal2017-006577
Application 13/925,470
to use an EI source with Uman's double-chamber configuration, not an EI
source with axial geometry. Id. Appellant further argues that "the evidence
suggests that the configuration of the EI source, whether orthogonal or axial,
is independent of and not relevant to Uman's solution for improving
filament lifetime." Id.
Appellant's arguments are not persuasive of reversible error. As
admitted by the Appellant (Appeal Br. 15), Barket teaches several options
for an ionization component, including, but not limited to, an electron
ionization component. Barket i-f 29. Barket does not specifically teach that
the electron ionization component is an axial electron ionization source.
Uman, however, as Appellant admits (id.; Reply Br. 4), teaches a double
chamber configuration that includes an axial electron ionization source.
Uman 3:56-59; Figs. 1-2. Appellant also admits (Appeal Br. 14) that Uman
teaches that a double chamber configuration can improve filament lifetime.
Uman 1:48-54. Based on the evidence of record, we are not persuaded that
one of ordinary skill in the art would not have reasonably expected that
using Uman's double chamber configuration, which includes an axial
electron ionization source, in Barket's method would increase the filament
life span. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill."). Thus, we sustain the Examiner's rejections of
claims 1-9, 11-19, 21, and 22.
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Appeal2017-006577
Application 13/925,470
DECISION
For the above reasons, the rejections of claims 1-9, 11-19, 21, and 22
are 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).
AFFIRMED
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