Ex Parte Pringle et al

Patent Trial and Appeal Board

Oct 30, 2014

12092313 (P.T.A.B. Oct. 30, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/092,313 07/30/2008 Steven Pringle M-1469-02 1956
43840 7590 10/31/2014
Waters Technologies Corporation
34 MAPLE STREET - LG
MILFORD, MA 01757
EXAMINER
PURINTON, BROOKE J
ART UNIT PAPER NUMBER
2881
MAIL DATE DELIVERY MODE
10/31/2014 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 STEVEN PRINGLE and JASON LEE WILDGOOSE
______________

Appeal 2012-006746
Application 12/092,313
Technology Center 2800
_______________

Before CHARLES F. WARREN, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board under 35 U.S.C. § 134(a) from the
decision of the Primary Examiner finally rejecting claims 1, 4, 12, 42, 46,
50, 54, 65, 70, 87, 89, and 90. App. Br. 3. Appellants subsequently
canceled claim 12,1 leaving claims 1, 4, 42, 46, 50, 54, 65, 70, 87, 89, and 90
for consideration under 35 U.S.C. § 103(a): claims 1, 4, 42, 46, 50, 54, 65,
70, and 90 over Bateman (US 2004/0124354 A1) and Kirchner (US
5,206,506), claim 87 over Bateman, Kirchner, and Enke (US 4,234,791), and
claim 89 over Bateman, Kirchner, and Brown (WO 2004/023516 A1). App.
Br. 3, 5; Ans. 4, 9, 10. We have jurisdiction. 35 U.S.C. § 6(b).
We reverse the decision of the Primary Examiner.

1 According to Appellants, the After Final Amendment, filled July 27, 2011,
canceling claim 12 was entered by the Examiner. (App. Br. 3).
Appeal 2012-006746
Application 12//092,313
2
Claim 1 illustrates Appellants’ invention of a mass analyser
comprising an ion guide, and is representative of the claims on appeal:
1. A mass analyser comprising:
an ion guide comprising a plurality of electrodes having apertures
through which ions are transmitted in use:
an AC or RF voltage applied to at least some of said plurality of
electrodes such that, in use, a plurality of axial time averaged or pseudo-
potential barriers, corrugations or wells are created along at least a portion of
the axial length of said ion guide; and
one or more transient DC voltages or potentials or DC voltages or
potential waveforms applied to at least some of said plurality of electrodes
for driving or urging ions along or through at least a portion of the axial
length of said ion guide so that in a mode or operation ions having mass to
charge ratios within a first range exit said ion guide whilst ions having a
mass to charge ratios within a second different range are axially trapped or
confined within said ion guide by said plurality of plurality of axial time
averaged or pseudo-potential barriers, corrugations or wells.
App. Br. 18 (VIII. Claims App’x). Spec. 38:4 to 42:8, Figs. 1-3.
OPINION
We agree with Appellants, for the reasons stated in the Briefs, that the
Examiner erred in determining that the basic combination of Bateman and
Kirchner would have led one of ordinary skill in the art to modify the mass
filter of Bateman’s mass spectrometer by replacing the DC voltage, which
creates two or more trapping regions along the mass filter, with an AC or RF
voltage, which creates a plurality of axial time averaged or pseudo-potential
wells along the mass filter, as suggested by Kirchner in disclosing an ion
processing unit. According to the Examiner, one of ordinary skill in the art
would have had a reasonable expectation of providing Bateman’s mass
spectrometer with more options in the use of both RF and DC voltages in the
mass filter because techniques for the application of RF voltages were well
understood by one of ordinary skill in the art and thus one of ordinary skill
Appeal 2012-006746
Application 12//092,313
3
in the art, inspired by Kirchner’s more than one barrier in an ion guide,
would have been able to see that the techniques of Bateman and Kirchner
can be combined leading to an ion guide of a mass analyser encompassed by
claim 1. Ans. 4-5, 10-12; App. Br. 6-10; Reply Br. 2-5. We add the
following for emphasis.
We do not find in the Examiner’s position any technical reasoning
explaining why one of ordinary skill in the art would have been led by the
combination of Bateman and Kirchner to apply Kirchner’s RF voltage,
which is capable of creating axial time averaged or pseudo-potential wells
that trap groups of ions for retention and transporting the created ion-
containing wells, in place of Bateman’s DC voltage applied at electrode 4,
which is capable of creating a barrier that traps groups of ions in axial
regions 5, 6 of mass filter 1, with the reasonable expectation of using
Bateman’s DC voltage, applied to move individual ions along mass filter 1,
to move Kirchner’s RF voltage created ion-containing wells along mass
filter 1 even though Kirchner applies RF voltage for that purpose. Bateman
¶¶ 0019, 0043, 0130, Figs. 6-8; Kirchner col.9 ll.5-20, col.19 l.46 to col.20
l.60, col.29 ll.6-16, Fig. 4. Ans. 4-5, 10-12. Indeed, more is required to
establish obviousness than the “inspiration” of one of ordinary skill in the
art, armed with the knowledge of techniques for numerical analysis of RF
fields and charged particles, upon considering the disclosures of Bateman
and Kirchner, to technically explain why one of ordinary skill in the art
would have been led to combine the references and thence to modify
Bateman’s mass filter in a manner which results in modifying the principle
of operation thereof as Appellants contend. Ans. 5, 11-12; App. Br. 6-10;
Reply Br. 2-5.
Appeal 2012-006746
Application 12//092,313
4
Thus, on this record, we are of the view that the Examiner has relied
on impermissible hindsight in maintaining the ground of rejection of claim 1
over the combination of Bateman and Kirchner. See, e.g., Ex parte
Levengood, 28 USPQ2d 1300, 1301-02 (Bd. Pat. App. & Int. 1993) (“At
best, the examiner’s comments regarding obviousness amount to an
assertion that one of ordinary skill in the relevant art would have been able
to arrive at appellant’s invention because he had the necessary skills to carry
out the requisite process steps. This is an inappropriate standard for
obviousness. . . . That which is within the capabilities of one skilled in the
art is not synonymous with obviousness.” (citation omitted).); see also, e.g.,
KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.”); In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”); In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (citing In
re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (“The mere fact that the prior
art may be modified in the manner suggested by the Examiner does not
make the modification obvious unless the prior art suggested the desirability
of the modification.” (citation omitted)); In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (“A rejection based on section 103 clearly must rest on a
factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art”).
Accordingly, we reverse the ground of rejection of claim 1, claims 4,
42, 46, 50, 54, 65, and 70 dependent thereon, and claim 90 which is argued
Appeal 2012-006746
Application 12//092,313
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on the same basis by the Examiner and Appellants; and the grounds of
rejection of each of claims 87 and 89, dependent on claim 1, which are
rejected over the basic combination of Bateman and Kirchner taken with
Enke and with Brown, respectively.
The Primary Examiner’s decision is reversed.

REVERSED

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