SOLOUKI, Touradj

Patent Trials and Appeals Board

Jan 7, 2020

15268097 - (D) (P.T.A.B. Jan. 7, 2020)

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.
15/268,097 09/16/2016 Touradj SOLOUKI 208614.00145 4990
66558 7590 01/07/2020
Houston IP Department
JACKSON WALKER L.L.P.
1401 McKinney St.
Suite 1900
Houston, TX 77010
EXAMINER
MCCORMACK, JASON L
ART UNIT PAPER NUMBER
2881
MAIL DATE DELIVERY MODE
01/07/2020 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 TOURADJ SOLOUKI

Appeal 2019-002402
Application 15/268,097
Technology Center 2800
____________

Before ELIZABETH M. ROESEL, MICHAEL G. McMANUS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–13. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Baylor
University. Appeal Br. 1.
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CLAIMED SUBJECT MATTER

The present application generally relates to a system and method for
mass spectrometry imaging. See Specification filed Sept. 16, 2016 (“Spec.”)
¶ 6. Mass spectrometry (“MS”) is taught to work “by ionizing compounds
to generate charged molecules or molecule fragment ions and measuring
their mass-to-charge (‘m/z’) ratios, which can be correlated to a particular
atom, molecule, or compound.” Id. ¶ 8. Appellant asserts that “[t]raditional
MS removes (‘desorbs’)2 elemental atoms or molecules from a surface of the
material with high energy that at the same step ionizes the atoms or
molecules to prepare them for the MS magnetic fields.” Appeal Brief, filed
Oct. 26, 2018 (“Appeal Br.”), 1 (citing Spec. ¶ 9).
The Specification teaches a process of “applying different
technologies by decoupling the desorption and ionization events.” Spec.
¶ 18. The Specification further teaches that “first, a desorption technique,
such as an ion beam, is applied to allow neutral molecules of the target
sample to become desorbed from the surface without requiring the
molecules to be ionized during the desorption.” Id. The Specification
additionally discloses that “[s]ubsequently, in the second stage and after the
desorption and volatilization of defined targeted neutrals from the surface in
the first stage, an ionization technique is applied so that the MS analysis can
be focused on the ionized target molecules.” Id.

2 One of the cited references provides that “‘desorption’ refers to the
departure of analyte from the surface and/or the entry of the analyte into a
gaseous phase.” Hutchens ¶ 135.
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Claims 1 and 5 are illustrative of the subject matter on appeal and are
reproduced below:
1. A system for mass spectrometry, comprising:
a desorption beam configured to desorb neutral molecules
from a target of a material; and
an ionization source configured to ionize at least a portion of
the neutral molecules after desorption from the target of
the material to form ionized molecules, the ionization
source being a radiofrequency ionization (“RFI”) source.

5. A method of imaging a target molecule with a mass
spectrometer, comprising:
desorbing one or more neutral molecules from a target of a
material with a desorption beam configured to desorb
neutral molecules; and
ionizing at least a portion of the neutral molecules into ionized
molecules with a radiofrequency ionization (“RFI”)
source after the desorbing of the neutral molecules.

Appeal Br. 28–29 (Claims App.).

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REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Enke et al. (“Enke”) US 4,472,631 Sept. 18, 1984
Becker US 4,920,264 Apr. 24, 1990
Hutchens et al. (“Hutchens”) US 2002/0037517 Al Mar. 28, 2002
Franzen US 2005/0017167 Al Jan. 27, 2005
Chung et al. (“Chung”) US 2015/0235829 Al Aug. 20, 2015
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1–7, 10, and 12 are rejected under 35 U.S.C. § 103 as
being unpatentable over Becker in view of Chung. Final Action,
dated May 30, 2018 (“Final Act.”), 6–11.
2. Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable
over Becker in view of Chung and further in view of Enke. Id.
at 11–12.
3. Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable
over Becker in view of Chung and further in view of Franzen.
Id. at 12–13.
4. Claims 11 and 13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hutchens in view of Chung. Id. at 13–17.
DISCUSSION
Rejection 1. The Examiner rejects claims 1–7, 10, and 12 as obvious
over Becker in view of Chung. Final Act. 6–11. In support of the rejection,
the Examiner finds that Becker teaches a system for mass spectrometry of a
frozen solution target material by “exposing the frozen solution to a source
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of desorbing energy such as a laser, an electron beam, an ion beam, or a
source of fast atoms to desorb such large molecules from the surface of the
frozen solution.” Id. at 7 (citing Becker col. 4:44–48). The Examiner
further finds that Becker teaches that the desorbed molecules may be neutral.
Examiner’s Answer, dated Nov. 27, 2018 (“Answer”), 5. The Examiner
cites to the following portion of Becker as supporting the desorption of
neutral molecules:
If the energy source used to desorb the large molecules
does not also ionize the molecules, the desorbed molecules
may be exposed to a separate source of ionizing energy such as
a photoionization source, e.g., a laser beam, to ionize the
desorbed molecules prior to analyzing the molecules in a mass
spectral analysis apparatus.

Becker col. 4:49–54 (emphasis added). The Examiner further finds that
“although Becker generally discloses ionizing vaporized sample molecules .
. . there is no explicit disclosure that the ionization source is a
radiofrequency ionization (‘RFI’) source.” Final Act. 7.
The Examiner relies on Chung as teaching “a method of
radiofrequency ionization of ionizing vaporized molecules.” Id. The
Examiner cites to Chung’s teaching that “the plasma of the plasma
ionization device is a radiofrequency plasma (RF plasma) . . . As a result of
a particularly gentle ionization via an RF plasma . . . it is likewise possible to
ionize gas mixtures without fragmentation occurring.” Id. (citing Chung
¶ 21).
The Examiner determines that a person of ordinary skill in the art
would have had reason to modify the teachings of Becker so as to use the
ionization step taught by Chung “in order to utilize a particular ionization
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source capable of ionizing molecules without fragmenting the molecules for
analyzing ionized molecules; the ionization mechanism of Chung having the
advantage of ionizing without fragmenting, as is desired by Becker, which
seeks to analyze ionized molecules.” Id. at 8.
Appellant contends that the rejection is in error on several bases.
First, Appellant argues that Becker does not teach “a desorption beam
configured to desorb neutral molecules from a target of a material” because
it teaches to use a high percentage of solvent and that the sample is “frozen
to form a mixed matrix solution of the material sample and solvent.” Appeal
Br. 10. Appellant argues that, but for the frozen matrix, the beam of Becker
would ionize the sample. Id.
In this regard, Appellant argues as follows:
Only the combination of the high energy desorption beam
and the frozen matrix solution together as a system allow Becker
to reduce fragmentation of the sample. Thus, at best, it could be
said that only the combination of a system is configured to
minimize fragmentation of large molecules and avoid ionized
molecules. In contrast, claim 1 and claim 5 require the
desorption beam to be configured to desorb neutral molecules
from a target of the material.

Id. (emphases in original). Appellant concludes that Becker fails to teach “a
desorption beam configured to desorb neutral molecules” as required by
independent claims 1 and 5. Appellant further argues that, as a result,
Becker teaches away from claims 1 and 5. In determining whether Becker
teaches such limitation, we consider the meaning of the term “a desorption
beam configured to desorb neutral molecules.”
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The Specification teaches “a system and method for mass
spectrometry imaging in a multi-stage ionization applying different
technologies by decoupling the desorption and ionization events.” Spec.
¶ 18. The Specification further teaches that the “system and method can act
independent of a matrix application to the target sample for a direct
analysis.” Id. (emphasis added). That is, the Specification teaches that no
matrix is required. Similarly, the Specification teaches that “[t]he system
and method of the present invention may provide advantages over MALDI
and SIMS of: . . . direct analysis without the use of a matrix applied to the
sample that can contaminate the sample and cause intra-sample molecular
migration to skew results.” Id. (emphasis added).
The Specification discloses that “the desorption beam 18 can include
an ion beam, cluster beam, or other source beam of sufficient resolution to
dislodge accurately the intended target of the material 10 with molecules
therefrom.” Spec. ¶ 26. With regard to the power level of the beam the
Specification teaches that “[t]he desorption beam 18 is sufficiently powered
to desorb the molecules, but generally is used at a power level below the
limit that the beam ionizes the molecules and thus can avoid fragmentation.”
Id.
Consistent with prior provisions, the Specification further teaches that
“[b]ecause the present system does not require a matrix substance to be
overlaid onto the material 10 as is currently done in MALDI techniques,
the present system minimizes unwanted and potential reactions with solvent
molecules, and analyte migrations associated with the use of ionization
solvents or matrix reagents.” Spec. ¶ 28 (emphasis added).
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Certain dependent claims address desorption beams in the context of a
matrix solution as follows:
11. The system of claim 1, wherein the desorption beam is
configured to desorb neutral molecules from a target of a
material independent of a matrix solution applied to the
target.
13. The method of claim 5, wherein desorbing one or more
neutral molecules from a target of a material comprises
desorbing one or more neutral molecules from a target of a
material independently of a matrix solution applied to the
target.
Appeal Br. 29–30 (Claims App.). These dependent claims require that the
desorbing step occur with respect to a target that does not include a matrix
solution. A tribunal may consider the limitations of dependent claims in
assessing the scope of the claims from which they depend. See, e.g., In re
Tanaka, 640 F.3d 1246, 1250 (Fed. Cir. 2011) (“Claims of narrower scope
can be useful to clarify the meaning of broader, independent claims under
the doctrine of claim differentiation.”).
Considering all of the foregoing, and particularly the scope of
dependent claims 11 and 13, we determine that the “desorption beam
configured to desorb neutral molecules” of independent claims 1 and 5 is not
limited to beams configured to desorb neutral molecules where the molecule
is independent of a matrix solution. That is, we determine that the limitation
may encompass both beams configured to desorb neutral molecules
associated with a matrix solution and beams configured to be used without a
matrix solution.
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In view of such construction, we determine that Becker teaches a
“desorption beam configured to desorb neutral molecules” and does not
teach away from independent claim 1 or claim 5.
As its second argument, Appellant contends that the rejection is in
error because the present invention requires that one “desorb generally intact
molecules from a sample of material without fragmentation, and then ionize
such molecules after the desorption” while Chung teaches only to ionize gas
molecules. Appeal Br. 16.
In the Answer, the Examiner responds that the rejection relies upon
Becker as teaching desorption and relies upon Chung “merely for teaching a
radiofrequency ionization source.” Answer 5. In its Reply Brief, Appellant
does not directly contest the Examiner’s findings but asserts that “the
Examiner tries to apply Chung with Becker to the first element of claim 1
for a desorption beam.” Reply Brief, filed Jan. 18, 2019 (“Reply Br.”), 5.
This is not an accurate characterization of the Examiner’s rejection as
clarified in the Answer. See Answer 5–6; see also Final Act. 7.
Accordingly, Appellant’s arguments in this regard are unpersuasive.
Third, Appellant additionally argues that there is insufficient reason to
combine the teachings of Becker and Chung. Appeal Br. 16–17. Appellant
argues that “Becker does not need Chung’s low energy desorption beam,
because Becker’s high energy desorption beam is largely absorbed by the
frozen matrix solution to minimize fragmentation.” Id. at 16. Appellant
further argues that “using Chung’s low energy desorption beam, one with
ordinary skill in the art would likely discard the frozen matrix solution in
Becker.” Id.
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Appellant’s arguments appear to be predicated on the notion that the
Examiner relies upon Chung as teaching the first step of the method
(desorbing). The rejection as stated in the Final Action indicates that the
second step (ionization) is taught by Chung. See Final Act. 8 (“It would
have been obvious to one possessing ordinary skill in the art at the time the
invention was filed to have modified Becker using the ion source of Chung
in order to utilize a particular ionization source capable of ionizing
molecules without fragmenting the molecules for analyzing ionized
molecules; the ionization mechanism of Chung having the advantage of
ionizing without fragmenting, as is desired by Becker, which seeks to
analyze ionized molecules.”). Accordingly, Appellant has not shown error
in this regard.
In view of the foregoing, we determine that Appellant has not shown
error in the rejection of claims 1–7, 10, and 12 as obvious over Becker in
view of Chung.

Rejections 2 and 3. Appellant includes headings in its brief
regarding the rejections of claims 8 and 9 but does not present separate
argument regarding such claims. Appeal Br. 17–18. Rather, Appellant
relies upon the arguments it presents in regard to Rejection 1. As we have
not found such arguments to be persuasive, we determine that Appellant has
not shown error in the rejection of claims 8 and 9.

Rejection 4. The Examiner rejects claims 11 and 13 as obvious over
Hutchens in view of Chung. Final Act. 13–17. Claims 11 and 13 depend
from claims 1 and 5, respectively, and each additionally requires desorbing
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neutral molecules “from a target of a material independent[ly] of a matrix
solution applied to the target.” Appeal Br. 29–30 (Claims App.).
The Examiner finds that Hutchens teaches “a desorption beam
configured to desorb neutral molecules from a target of a material . . . and an
ionization source configured to ionize at least a portion of the neutral
molecules after desorption.” Final Act. 13. The Examiner further finds that
Hutchens lacks an “explicit disclosure that the ionization source is a
radiofrequency ionization (‘RFI’) source.” Id. at 14. The Examiner
additionally finds that Chung discloses a method of radiofrequency
ionization of vaporized molecules. Id.
The Examiner determines that one of ordinary skill in the art would
have had reason to modify the teachings of Hutchens “in order to utilize a
particular ionization source capable of ionizing molecules without
fragmenting the molecules for analyzing ionized molecules; the ionization
mechanism of Chung having the advantage of ionizing without fragmenting,
as is desired by Hutchens, which seeks to analyze ionized molecules.” Id. at
14. In the Answer, the Examiner finds that “one of ordinary skill in the art
would have recognized that the ionization mechanism of Chung would be an
obvious mechanism for embodying the ionizer of Hutchens, with the added
benefit that the radiofrequency ionization of Chung provides soft ionization
without fragmenting a sample.” Answer 9.
Appellant argues that the rejection is in error on several bases.
Appeal Br. 18–27. First, Appellant argues that “Hutchens consistently
describes the desorption/ionization process of the analyte in a single event
with one or more lasers.” Id. at 22 (emphasis in original); see also id. at
22–25. The Examiner acknowledges that “Hutchens is primarily concerned”
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with an embodiment where a laser both desorbs and ionizes the analyte in a
single step. Answer 7. The Examiner, however, finds that Hutchens
additionally “discloses separating the desorption and ionization processes so
as to perform desorption from the solid phase into a gas/vapor phase.” Id.
In support, the Examiner cites to the following portion of Hutchens:
Further, a sample presenting means (composed of one or more
of the suitable probe element materials described in previous
claims), wherein analyte(s) are bound to the surface said sample
presenting means by one or more photolabile bonds so that
incident pulse(s) of light (e.g., from one or more lasers) is used
to break the photolabile bond(s) tethering the analyte(s) to the
probe element surface in a manner that is consistent with the
subsequent desorption of the analyte from the stationary (solid)
phase surface of the probe into the gas (vapor) phase is also
presented.

Answer 8 (quoting Hutchens ¶ 122).
The Examiner additionally cites to Hutchens’ teaching of “a laser
beam, to vaporize the analyte from the surface of a probe tip. In the process,
some of the molecules are ionized,” (Hutchens ¶ 164) and infers that,
therefore, at least some of the molecules are desorbed without being ionized.
Answer 8. The Examiner further cites Hutchens’ teaching that “[o]ne skilled
in the art recognizes that other modes of detection and ionization can also be
used.” Id. (citing Hutchens ¶ 164).
We find the Examiner’s reasoning unpersuasive. Each of the cited
teachings, considered in context, indicates that Hutchens contemplates a
single entity—a laser beam—for performing both desorption and ionization.
It is true that Hutchens suggests that ionization may be incomplete
(Hutchens ¶ 164) but this does not represent a teaching in Hutchens of a
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separate ionization step, nor an ionization source that is separate from the
desorption beam.
Appellant further argues that, in view of Hutchens’ teaching of
desorption and ionization in a single step with a single laser beam, there is
insufficient reason that one of skill in the art would have combined the
teachings of Hutchens and Chung. Appeal Br. 26. Appellant argues that
“Hutchens both desorbs and ionizes with the same laser applied to the
surface having the analyte.” Id. Appellant further argues that “Chung’s
ionization with a low energy is not needed for Hutchens—the Hutchens’
analyte is already ionized.” Id.
We find this reasoning persuasive. The Examiner does not provide
adequate reasoning why one skilled in the art would have added the
ionization step of Chung to the process of Hutchens. The Examiner finds
that the ionization step of Chung “would be an obvious mechanism for
embodying the ionizer of Hutchens.” Answer 9. If this is construed to mean
that the radiofrequency ionization of Chung is substituted for the laser of
Hutchens, then the process lacks a desorption step. If, instead, the Examiner
finds that one of skill in the art would have applied the ionization step of
Chung subsequent to the laser desorption and ionization step of Hutchens,
then the Examiner fails to explain the benefit of a second ionization step.
That is, the Examiner does not explain how or why one of skill in the art
would implement a system with two ionization steps nor does the Examiner
cite to any prior art with such a two-step ionization process.
The present rejection differs from those rejections predicated upon the
combination of the teachings of Becker and Chung because Becker teaches a
desorption step followed by an ionization step. See Becker 4:9–18. The
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combination of Becker and Chung requires only the substitution of the
ionization step of Chung for the ionization step of Becker. In contrast, the
present rejection appears to require laser ionization followed by
radiofrequency ionization without adequate explanation of the need for a
second ionization step.
Accordingly, we determine that the Examiner has not adequately
shown that one of skill in the art would have had reason to combine the
teachings of Hutchens and Chung.
Additionally, Appellant argues that the combination of Hutchens and
Chung does not teach “a desorption beam configured to desorb neutral
molecules.” Appeal Br. 26–27. Appellant argues that the proposed
combination would yield a system configured to desorb ions, not neutral
molecules. Id.
The term “configured to” indicates that a claim element is designed or
constructed for a certain purpose. See Aspex Eyewear, Inc. v. Marchon
Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012); see also Acclarent,
Inc. v. Albritton, No. IPR2017-00498, 2018 WL 3374755, at *6 (P.T.A.B.
July 9, 2018) (“We agree with Patent Owner that the most natural reading of
‘configured to’ in the claims at issue here requires structure designed to
accomplish the claimed objectives.”). Hutchens teaches that “there is
provided in accordance with the present invention . . . laser beam means for
producing a laser beam directed to said analyte sample for imparting
sufficient energy to desorb and ionize a portion of said analyte molecules
from said analyte sample.” Hutchens ¶ 24 (emphasis added). Hutchens later
teaches that during the vaporization process “some of the molecules are
ionized.” Id. ¶ 64. The Examiner relies on this teaching that “some” (rather
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than all) molecules are ionized to find that Hutchens teaches a beam
“configured to desorb neutral molecules.” The Examiner’s finding is not
persuasive. The Examiner has not cited to sufficient evidence that Hutchens
teaches a beam designed or constructed to desorb neutral molecules.
Further, the explicit teaching of Hutchens is to provide a laser beam
“imparting sufficient energy to desorb and ionize a portion of said analyte
molecules.” Id. ¶ 24.
In view of the foregoing, we determine that the Examiner has not
shown an adequate reason why one of skill in the art would have combined
the teachings of Hutchens and Chung nor has the Examiner shown that such
combination would yield “a desorption beam configured to desorb neutral
molecules” as required by independent claims 1 and 5 and, therefore,
dependent claims 11 and 13.

CONCLUSION

The Examiner’s rejections of claims 1–10, and 12 are affirmed. The
Examiner’s rejection of claims 11 and 13 is reversed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7, 10, 12 103 Becker, Chung 1–7, 10, 12
8 103 Becker, Chung,
Enke
8
9 103 Becker, Chung,
Franzen
9
11, 13 103 Hutchens, Chung 11, 13
Overall
Outcome
1–10, 12 11, 13
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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 IN PART