DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03 March 2026 has been entered.
Response to Arguments
Applicant's arguments filed 04 February 2026 have been fully considered but they are not persuasive.
All prior art rejections were overcome with the current amendment except for Ibrahim (second interpretation). The remarks submitted with the Response After Final were not persuasive see Advisory action of 09 February 2026.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-15 and 19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 lacks written description for “wherein the transient DC voltage is travelled along the second region…whilst having a second different amplitude and/or a second different non zero speed; and/or with a different frequency to which is repeatedly travelled along the first region; so that ions having a given value of said physicochemical property are urged through said second region of the ion guide at a lower average speed than they are urged through the first region, thereby causing the ions to be spatially compressed as they pass from the first region of the ion guide to the second region.”
Specifically, the claim requires a result with no means for it to achieve the result except a change of amplitude, speed and/or frequency. MPEP 2173.05(g) recites “unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167. For instance, a single means claim covering every conceivable means for achieving the stated result was held to be invalid under 35 U.S.C. 112, first paragraph because the court recognized that the specification, which disclosed only those means known to the inventor, was not commensurate in scope with the claim. Hyatt, 708 F.2d at 714-715, 218 USPQ at 197.”
Here, for instance, Giles US pgPub 2019/0237319 teaches in figure 2A shows a second region comprising a constant amplitude (4) which is different from the amplitude of the first region 14. However, the change in amplitude does not achieve the claimed result demonstrating that the applicant was not in possession of the full scope of the claim language. Since not any change in a TW amplitude, speed and/or frequency allows for the result to be achieved, the specification is not commensurate with the scope of the claim.
Claims 3-15 and 19 fail to meet the written description requirement by virtue of their dependencies on rejected claim 1.
Claim 8 also requires a result that is not tied to any specific parameter adjustment. Specifically, as evidenced by DeBord discussed below the speed of the TW may be varied ([0058]), however the variations do not necessarily achieve the claimed result. Since not all variations of the claimed parameters achieve the claimed result, there is no evidence the full scope of the claimed invention is supported by the instant specification.
Claim 19 is the apparatus of claim 1 and is rejected for the same reasons discussed above.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-15 and 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is vague and indefinite for requiring “wherein the transient DC voltage is travelled along the second region…whilst having a second different amplitude and/or a second different non zero speed; and/or with a different frequency to which is repeatedly travelled along the first region; so that ions having a given value of said physicochemical property are urged through said second region of the ion guide at a lower average speed than they are urged through the first region, thereby causing the ions to be spatially compressed as they pass from the first region of the ion guide to the second region.”
Specifically, the claim requires the result of driving ions at a lower average speed to cause the ions to be spatially compressed merely by changing one or more of three parameters of the voltage travelling along the second region. MPEP 2173.05(g) recites “ when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs "when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty"”
Here it is not clear whether the claim scope covers any change of one of the three parameters achieves the claimed result or if the claim requires some manner of operating the change such that the result is achieved. If the former is true, it is not clear how figure 2A of Giles (US pgPub 2019/0237319) could achieve the result of a lower average speed of ions and compression (see discussion above). However, in the latter case is true the claim should be clarified to state how the parameters are changed such that the result is achieved.
Claims 3-15 and 19 are vague and indefinite by virtue of their dependencies
Additionally claim 8 requires a similar result which is vague and indefinite for the same reasons above.
Claim 19 is the apparatus of claim 1 and is rejected for the same reasons discussed above.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 12-15 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ibrahim et al. (US pgPub 20170336355)
Regarding claim 1, Ibrahim et al. teach a method of separating ions according to a physicochemical property (ion mobility, fig. 1 and paragraph [0048]), comprising:
repeatedly travelling a transient DC voltage along an ion guide (definition of traveling wave separations see paragraph [0003], electrodes discussed in paragraph [0051], wherein the electrodes are interpreted to be the ion guide for separations);
wherein the transient DC voltage has a first amplitude and first speed whilst it travels along a first region of the ion guide (fig. 8C, unshaded IMS separation region as indicated by paragraph [0058]1 and paragraph [0003] teaches TW moves forward depending on the speed of motion of the TW—thus first speed.) so as to urge ions having different values of said physicochemical property through said first region of the ion guide with different average speeds ([0003] either ions stay within the valley (i.e. at the speed of the TW) or roll over the wave to fall back (slower speed ions), thus urge ions having different ion mobilities through IMS drift region with different average speeds); and
wherein the ion guide comprises a plurality of electrodes spaced along its longitudinal axis (48 electrodes disclosed in paragraph [0051], wherein paragraph [0058] teaches variations, thus electrodes required in figure 8C) and each time the transient DC voltage is travelled along the ion guide, the transient DC voltage is successively applied to different electrodes (as illustrated in figure 1 as applied to figure 8C), along the second region of the ion guide so that the transient DC voltage moves along the second region of the ion guide with a substantially constant speed ([0048] teaches modifying the TW so that it stops intermittently. Figure 11 shows compression (i.e. intermittent TW) in a graph of time vs amplitude. The amplitude is separated by constant units of time, therefore the speed is constant).
wherein the transient DC voltage is travelled along the second region (shaded region of figure 8C is the compression region, applied with voltages such as seen in figure 11, DC voltages discussed in paragraph [0003]) in the same direction as it travels along the first region(figure 8c see annotated figure below)
PNG
media_image1.png
449
946
media_image1.png
Greyscale
(ii) at a second different non-zero speed (figure 11 shows longer durations between application of voltage in the compression region (i.e. shaded region of figure 3), thus a slower speed for the TW applied to compression region); so that ions having a given value of said physicochemical property are urged through said second region of the ion guide at a lower average speed than they are urged through the first region ([0048]-[0049] teaches repopulating due to duty cycle of intermittent stopping of TW resulting in a lesser number of trapping regions. Since ions are separated by the temporally or spatially according to their mobilities, a repopulation of a lesser number of trapping regions suggests a lower average speed of ions to reduce the number of trapping regions after separation), thereby causing the ions to be spatially compressed as they pass from the first region of the ion guide to the second region (via compression from IMS separation to compression/reversing region paragraph [0048]-[0049] for during the compression step ions are repopulated into a lesser number of trapping regions with narrower peaks. Since figure 8c is cyclic or orbital, the ions passing through the IMS (unshaded region) are compressed as they pass into the second region (compressor second region)).
Regarding claim 3, Ibrahim teaches wherein the duration of time between the transient DC voltage being applied to any given one of the electrodes in the second region and the next electrode in the second region that it is applied to is substantially the same whilst the transient DC voltage moves along the second region of the ion guide (see duty cycle applied to compressor in figure 7 showing the duration of time between DC voltage applied to any give electrode in the second region and the next electrode in the second region is substantially the same while the transient DC voltage moves along the second region of the ion guide).
Regarding claim 12, Ibrahim teaches wherein the transient DC voltage travels along a third region of the ion guide adjacent to and downstream of said second region (fig. 13d, by reversal the upstream compressor is downstream of the first compressor applied to the compressor of figure 8b) so as to urge ions having different values of said physicochemical property through said third region with different average speeds (fig. 13 applied to figures 8b or 8c, third and fourth region seen below).
PNG
media_image2.png
685
935
media_image2.png
Greyscale
Regarding claim 13, Ibrahim teaches wherein the ion guide comprises a fourth region that is adjacent to and downstream of said third region and wherein, in one mode, the transient DC voltage has an amplitude and/or non-zero speed along a fourth region that is different to its amplitude and/or non-zero speed in the third region so that ions having a given value of said physicochemical property are urged through said fourth region of the ion guide at a lower average speed than they are urged through the third region, thereby causing the ions to be spatially compressed as they pass from the third region of the ion guide to the fourth region (same process repeated in upstream compressor and reversal of figure 13 as applied to figures 8b, see annotated figure above).
Regarding claim 14, Ibrahim teaches wherein the ion guide is a closed-loop ion guide and the ions are urged around the closed-loop ion guide by the transient DC voltage a plurality of times (as seen in figures 8b or 8c).
Regarding claim 15, Ibrahim teaches wherein ions are urged along the ion guide such that the same ions pass through the second region multiple times, and wherein the second region is operated in the first mode each of said multiple times such that the ions are spatially compressed as they pass into the second region (figs. 13a-d repeated see paragraph [0063] applied to figure 8b).
Claim 19 is the apparatus of claim 1 and is anticipated in the citations discussed above.
Claims 1, 3-7 and 19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by DeBord (US pgPub 2021/0080429).
Regarding claim 1 DeBord et al. teach a method of separating ions according to a physicochemical property (ion mobility, [0002]), comprising:
repeatedly travelling a transient DC voltage along an ion guide (potential waveform 502 travels from first end to second end of electrodes on the first surface see figure 5a and paragraph [0055], wherein traveling wave can include DC voltage signals ([0050]));
wherein the transient DC voltage has a first amplitude and first speed whilst it travels along a first region of the ion guide (amplitude fixed as seen in figure 5a, paragraph [0057] which teaches an initial fixed speed before variation. First region interpreted to be the region where ion packets 514/516 reside in SLIM device before and after ion packet 512 exits and is detected) so as to urge ions having different values of said physicochemical property through said first region of the ion guide with different average speeds ([0055] ions with mobility similar to speed of travelling travel with TW, while ions of lower mobility slip and do not keep up); and
wherein the ion guide comprises a plurality of electrodes spaced along its longitudinal axis (electrodes of 103, see paragraph [0055]) and each time the transient DC voltage is travelled along the ion guide, the transient DC voltage is successively applied to different electrodes ([0055]), along a second region of the ion guide so that the transient DC voltage moves along the second region of the ion guide with a substantially constant speed (second region at the position where ions 514/516 in 103 after variation of speed [0057]. Because ions continue to travel down IMS when the speed is changed the ions 514/516 are in a second region. The speed is matched to ion mobility ([0060]), thus for each ion packet 514 and 516 there is a region where the travelling wave matches the mobility speed. Note packets have different widths due to speed of the TW. Thus, when matching the speed to ion packet 514 after 512 is detected, the TW is constant to match the speed of the ion packet 514.).
wherein the transient DC voltage is travelled along the second region in the same direction as it travels along the first region (as seen in figure 5a) (i) different amplitude ([0062] and fig. 8); and/or (ii) at a second different non-zero speed ([0060] teaches decreasing TW speed to match the TW speed to the lower mobility of ions. Paragraph [0055] teaches lower mobility ions slip with faster speeds (i.e. cannot keep up), thus the matched speed is a different speed than the first fixed speed of paragraph [0057]); so that ions having a given value of said physicochemical property are urged through said second region of the ion guide at a lower average speed than they are urged through the first region ([0055] teaches lower mobility ions slip when 512 is moved by TW of fixed speed ([0057]). Therefore, the decreased speed matched to mobility of ion packet urges the ions of lower mobility at a lower average speed of the TW decreased to match the mobility), thereby causing the ions to be spatially compressed as they pass from the first region of the ion guide to the second region (figure 5C shows spatial compression (peak narrowing) as compared to ions 516/514 which are broader in figures 5A-5B. That is, all of peaks 512-516 are seen within the IMS in figure 5A after initial peak 512 passes out of IMS and is detected, the speed is decreased ([0057], [0060]). As packets 514 and 516 continue to move through IMS by varied speed of TW (i.e. to second region), they undergo peak narrowing, thus spatial compression).
Regarding claim 3, DeBord teaches wherein (i) the transient DC voltage is applied to each of said different electrodes, for substantially the same period of time (fixed speed see paragraph [0057]).
Regarding claim 4, DeBord teaches wherein the amplitude of the transient DC voltage as it travels through the second region of the ion guide is lower than its amplitude when it travels through the first region of the ion guide so as to perform the step of spatially compressing the ions (as seen in figure 8, note ion packets continue to travel through IMS of figure 5A, thus when second lower amplitude is applied the ions are in a different part of the IMS (i.e. second region), note compression inherent result of amplitude as no requirement of any other change is required for compression to occur).
Regarding claim 5, DeBord teaches wherein the speed of the transient DC voltage along the second region is higher than its speed along the first region so as to cause the step of spatially compressing the ions (envisioned as seen in figures 7a-7c, result is inherent as there is no distinguishing requirement than to increase the speed).
Regarding claim 6, DeBord teaches herein a gas is present in the ion guide with which ions collide (background gas, see paragraph [0003], wherein ions inherently collide with a gas in the IMS) when they are urged through the ion guide by the transient DC voltage (see claim 1 above).
Regarding claim 7, DeBord teaches wherein the physicochemical property is ion mobility or mass to charge ratio (ion mobility see claim 1 above).
Claims 1, 8-15 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Garimella et al. (“squeezing of ion populations and peaks in traveling wave ion mobility separations and structures for lossless ion manipulations using compression ratio ion mobility programming”, submitted with IDS of 15 September 2022).
Regarding claim 1, Garimella teaches method of separating ions according to a physicochemical property (title, IMS), comprising:
repeatedly travelling a transient DC voltage along an ion guide (inherent to TW-IMS);
wherein the transient DC voltage has a first amplitude and first speed whilst it travels along a first region of the ion guide (travelling trap- TT, see figure 3, having a first amplitude of 50 V, wherein time vs amplitude shows the speed of TT to be constant) so as to urge ions having different values of said physicochemical property through said first region of the ion guide with different average speeds (page11880, right column first paragraph teaches TT speed greater than some threshold ions have a mobility-dependent probability of being passed over by a wave, leading to separation);
wherein the ion guide comprises a plurality of electrodes spaced along its longitudinal axis and each time the transient DC voltage is travelled along the ion guide (fig. 3, note caption), the transient DC voltage is successively applied to different electrodes (see caption of figure 3), along a second region (stuttering trap ST, see figure 3) of the ion guide that is adjacent to said first region so that the transient DC voltage moves along the second region of the ion guide with a substantially constant speed (fig. 3 shows compression having a pulsed amplitude over a time in ms, thus a constant speed);
PNG
media_image3.png
631
912
media_image3.png
Greyscale
wherein the transient DC voltage is travelled along the second region in the same direction as it travels along the first region (as seen in figure 3): (ii) at a second different non-zero speed (speed in compression region different from speed in normal region) or different frequency (see figure 3 showing the frequency of normal TT to ST) to which it is repeatedly travelled along the first region (normal compared to compression); so that ions having a given value of said physicochemical property are urged through said second region of the ion guide at a lower average speed than they are urged through the first region (by lower frequency compression than normal ions are urged at a lower average speed than during the normal operation in TT), thereby causing the ions to be spatially compressed as they pass from the first region of the ion guide to the second region (inherent to compression region).
Regarding claim 8, Garimella teaches wherein the transient DC voltage is travelled along the second region: (i) whilst having the second different amplitude; and/or (ii) at the second different non-zero speed; or frequency to which it is repeatedly travelled along the first region, in a first mode (see discussion in claim 1 above with respect to figure 3 note either speed or frequency of ST in right panel of figure 3B); and
wherein the method further comprises switching to a second mode in which each time the transient DC voltage travels along the second region of the ion guide it has: third non-zero speed to which it is repeatedly travelled along the second region in the first mode so that the spatially compressed ions, having any given value of said physicochemical property, are urged through said second region of the ion guide at a higher average speed than they are urged through the second region in the first mode (page 11879, right column, once spatial compression is accomplished, the ST region is switched back into normal TT mode to retain the compression in the temporal domain, thus back to the normal mode of higher speed than the compression mode).
Regarding claim 9, Graimella teaches the third amplitude matches the first amplitude and/or the third non-zero speed matches the first non-zero speed (fig. 3b, right panel when switching back to normal mode the speed and amplitude of the right normal is the same as the left normal); and/or (iii) said different frequency matches the frequency that the transient DC voltage is travelled along the first region (fig. 3b, right panel when switching back to normal mode the frequency and amplitude of the right normal is the same as the left normal).
Regarding claim 10, Graimella teaches wherein the second mode causes ions to separate according to said physicochemical property within the second region of the ion guide at a higher rate than in the first mode (in switched back to normal mode the higher frequency/speed of the TW will inherently separate at a higher rate than in the ST compression mode that has an intermittent (i.e. slower lower frequency)).
Regarding claim 11, Graimella teaches performing said first mode until a plurality of groups of ions having different respective values of said physicochemical property have entered the second region of the ion guide and have been spatially compressed, and then switching to the second mode whilst the plurality of groups of ions are still located within the second region of the ion guide (as seen in figure 3 and page 11879, right column, see citation above).
Regarding claim 12, Graimella teaches wherein the transient DC voltage travels along a third region of the ion guide adjacent to and downstream of said second region (fig. 3b, right panel, normal region adjacent to compressor region) so as to urge ions having different values of said physicochemical property through said third region with different average speeds (implicit in the return to normal operation).
Regarding claim 13, Graimella teaches wherein the ion guide comprises a fourth region that is adjacent to and downstream of said third region (page 11879, right column teaches CRIMP can involve multiple compression events during the course of multipass IM separations, thus envisioning a fourth region via multipass) and wherein, in one mode, the transient DC voltage has an amplitude and/or non-zero speed along a fourth region that is different to its amplitude and/or non-zero speed in the third region (additional compression after normal TT operation) so that ions having a given value of said physicochemical property are urged through said fourth region of the ion guide at a lower average speed than they are urged through the third region (same rational as claim 1 applied to multipass configuration), thereby causing the ions to be spatially compressed as they pass from the third region of the ion guide to the fourth region (applied to the multipass configuration).
Regarding claim 14, Ibrahim teaches wherein the ion guide is a closed-loop ion guide and the ions are urged around the closed-loop ion guide by the transient DC voltage a plurality of times (multipass is a closed loop).
Regarding claim 15, Ibrahim teaches wherein ions are urged along the ion guide such that the same ions pass through the second region multiple times, and wherein the second region is operated in the first mode each of said multiple times such that the ions are spatially compressed as they pass into the second region (figure 3b right panel and page 11879, right column suggesting multipass for multiple compression events).
Claim 19 is the apparatus of claim 1 and is anticipated in the citations discussed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Green et al. (US pgPub 2017/0125229) teaches a cyclic IMS.
Giles (US pgPub 2019/0237319) teaches two section of an IMS and potential.
US9,063,086 to Garimella
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J LOGIE whose telephone number is (571)270-1616. The examiner can normally be reached M-F: 7:00AM-3:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Kim can be reached at (571)272-2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL J LOGIE/Primary Examiner, Art Unit 2881
1 [0058] teaches in figure 8a shows a compressor region is followed by a separation region. The compressor region is shaded suggesting the same convention is used for figure 8C.