DETAILED ACTION
Response to Arguments
Applicant's arguments filed 20 April 2026 have been fully considered but they are not persuasive.
Rejections under 35 USC 103: Kobayashi et al. in view of Hoyes
I) amplifying tilt
The remarks take the position that in both case 1 and case 2 of figure 5, the voltage applied to the grids is selected to cancel the existing tilt not to amplify it, therefore Hoyes fails to disclose “wherein the accelerator further comprises a plurality of electrodes and is configured to apply a voltage to the plurality of electrodes causing the plurality of electrodes to generate an ion acceleration region downstream of the wedge-shaped electric field region that amplifies the time front tilt introduced by the wedge shaped electric field.
This has been found unpersuasive. There is no claimed computer, processor or controller that includes a memory with instructions when executed by the computer, processor or controller cause the ion accelerator to apply the claimed voltage to amply the time front tilt introduced by the wedge shaped field. In otherwords, there is no claimed structure (i.e. controller, processor or computer) to distinguish the manner of operating the grids of Hoyes from that of the claimed invention. Therefore, the broadest reasonable interpretation of the claim is electrodes that are capable of forming a wedge shaped electric field region that amplifies the time front tilt introduced by the wedge shaped field. As evident from case 1 and case 2, the field of G3/G4 is capable of altering the tilt angle of the time front. While Hoyes teaches the purpose is to correct the tilt, there is no active requirement that ions undergo an amplified time front as a result of the field (for instance as discussed above, some claimed requirement for a computer to execute instruction that cause the amplified time front). Instead the claim merely suggests the ion accelerator is configured to. Therefore, since Hoyes is configured to perform both case 1 and case 2, for ions of a time front of case 1 undergoing the field created by G3/G4 in case 2, the time front would clearly be amplified. Moreover, Hoyes teaches the voltage Vacc is adjustable ([0093]), therefore clearly capable of being adjusted to amplify tilt instead of correcting it.
In otherwords, the claim is directed towards an apparatus. MPEP 2114 recites “"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)”
Here, the only structural requirements are an accelerator having a plurality of electrodes, because Hoyes is capable of performing the claimed functions, the limitations are insufficient to distinguish the claimed invention over that of Hoyes.
It is noted that, if supported by the instant specification as required by 35 USC § 112(a), a requirement for a computer with a memory storing instructions, that when executed by the accelerator cause the functional limitations to occur would differentiate the claimed invention from that of Hoyes.
The remarks take the position that the grids G3/G4 would need to be reconfigured to achieve the functionally claimed limitations. This is not persuasive because Hoyes is evidence that both case 1 and case 2 are possible, meaning that the voltages to achieve case 1 and case 2 are altered. However, the time front of the ions is not a structural requirement of the ion accelerator, instead the question is whether the structure of Hoyes is capable of amplifying the tilt. As discussed above, it is for instance by applying the voltages to G3/G4 in case 2 for ions having the beam tilt of case 1. Therefore, the remarks have been found unpersuasive and the rejection stands as reiterated herein below.
(II) response to teaching away arguments
The remarks take the position that Hoyes teaches away from operating G3/G4 in the claimed manner. This has not been found persuasive as Hoyes is used for teaching the claimed limitations. That is, the device is capable of achieving the claimed result as discussed above. MPEP 2131.05 recites “the question whether a reference "teaches away" from the invention is inapplicable to an anticipation analysis. Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) ”. Here, Hoyes teaches an accelerator with a plurality of electrodes that are capable of achieving the claimed result, therefore teaching away would not apply to this limitation.
(III) response to Hoyes Rendered unsatisfactory for its intended purpose.
Here again, Hoyes is not modified or to teach the functionally claimed result. Hoyes is merely used to teach the claimed structure, that is capable of performing the claimed function, therefore these remarks are unpersuasive.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-4, 7, 9-10, 12, 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. (US20040108453) in view of Hoyes (US pgPub 2014/0054454).
Regarding claim 1, Kobayashi et al. teaches a mass spectrometer (fig. 1) having a pulsed ion accelerator (fig. 1, 7), said pulsed ion accelerator comprising:
a plurality of electrodes (fig. 2, 14/15) arranged and configured to generate an ion pulsing region (see fig. 2 electrodes 14/15 showing an orthogonal accelerator)),
wherein the pulsed ion accelerator is configured such that ions entering the ion accelerator are initially received in the ion pulsing region (region between electrodes 14/15, see paragraph [0008]); and
a plurality of electrodes arranged and configured to generate an electric field region downstream of said ion pulsing region (fig. 2, accelerator electrodes 16);
wherein the pulsed ion accelerator is configured to apply a pulsed voltage to at least one of said electrodes of the ion pulsing region for pulsing ions out of the ion accelerator (see paragraph [0008]), wherein the ions have a time front arranged in a first plane at the time the pulsed voltage is initiated (as seen in figure 2 time front of 18 between 14/15 at time of pulsing), and
Kobayashi et al. teaches two grids in the pulsed accelerator however fails to disclose wherein the electric field downstream of the pulsing region is wedge shaped and wherein the ion accelerator is configured such that the pulsed ions pass through the wedge-shaped electric field region so as to cause the time front of the ions to be tilted at an angle to the first plane;
wherein the ion accelerator further comprises a plurality of electrodes arranged and configured to generate an ion acceleration region downstream of the wedge-shaped electric field region for amplifying the time front tilt introduced by the wedge-shaped electric field; and wherein the at least one of said electrodes of the ion pulsing region for pulsing ions out of the ion accelerator is substantially parallel to said electrodes of the ion acceleration region.
However, Hoyes teaches wherein the electric field downstream of the pulsing region is wedge shaped (fig. 3, shows tilted arrangement formed by misalignment of G1 and G2, see paragraph [0089] for pusher electrode and G1 (i.e. pulsing region) and G2. However, [0089] teaches such parallel arrangement is hard to achieve consistently. Paragraph [0090] teaches misalignments cause distortions in the isochronous plane at detector. Paragraph [0091]-[0092] teach compensate misalignments to correct tilt in the isochronous plane. That is, the misalignment between G1 and G2 results in a tilted ion plane, thus is a wedge shaped field) and wherein the ion accelerator is configured such that the pulsed ions pass through the wedge-shaped electric field region so as to cause the time front of the ions to be tilted at an angle to the first plane ([0090] teaches small tilts in the x and y directs of the principle planes leads to an overall tilt in the isochronous plane at the ion detector.);
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wherein the ion accelerator further comprises a plurality of electrodes (fig. 4 or 6 note “current invention”, which shows a supplementary acceleration stage(s) placed in the field free region before the ion detector ([0092]). Figure 5 shows the stage as two grids G3 and G4 (i.e. a plurality of electrodes), wherein figure 6 shows figure 5 may be cascaded ([0094]) to correct for errors in both x and y directions) and is configured to apply a voltage to the plurality of electrodes causing the plurality of electrodes to generate an ion acceleration region downstream of the wedge-shaped electric field region ([0092] teaches acceleration stage (i.e. G3/G4 in figure 5) for correction of tilt (i.e. caused by misalignment between G1/G2 or wedge shaped field. Note in order for the acceleration stage G3/G4 to create the field, it requires a voltage applied to G3/G4). Thus downstream of wedge shaped field)
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that amplifies the time front tilt introduced by the wedge-shaped electric field (the claim is written as a device, since the acceleration stage is capable of changing the tilt of the isochronous plane in either direction (see figure 5, case 1/case 2), G3/G4 is capable of further amplifying the tilt caused by G1/G2 misalignments (i.e. wedge shaped field). See [0093] which teaches Vacc is capable of being adjusted, therefore the supplementary stage is capable of amplifying tilt by adjusting Vacc (i.e. the manner of operating a device does not differentiate apparatus claim from the prior art, see MPEP 2114 (II))); and
wherein the at least one of said electrodes of the ion pulsing region for pulsing ions out of the ion accelerator is substantially parallel to said electrodes of the ion acceleration region (G3 is essentially parallel to the principle planes of the instrument ([0093]). [0089] teaches parallel G1/G2 to the principle planes with a high degree of tolerance. Paragraph [0091] teaches relaxing those tolerances. Therefore, while G1/G2 are not exactly parallel to G3, they are substantially parallel, as one of ordinary skill in the art would understand substantially parallel to be within the tolerance range of alignment in a system).
Hoyes modifies Kobayashi et al. by identifying that misalignments may occur between the pusher and the grid electrodes resulting in a tilt of the ion packet (i.e. wedge shaped field) and correcting the misalignment by a downstream acceleration stage.
Since both inventions are directed towards accelerators in a TOF system, it would have been obvious to one of ordinary skill in the art to include the downstream acceleration stage of Hoyes in the device of Kobayashi because it would allow for the tolerances relaxed for positioning the components while optimizing the resolution of the spectrometer ([0091]). Therefore simplifying the positioning of the orthogonal accelerator.
Regarding claim 2, Kobayashi et al. in view of Hoyes teach wherein said plurality of electrodes for generating said ion acceleration region are a plurality of parallel electrodes (Hoyes, G3 is parallel as discussed above. While G4 is inclined, it is parallel to a plane of the same incline. That is, the claim does not require the electrodes to be parallel to each other thus electrodes are planar thus parallel to planes. Alternatively, interpreting G3 and the cascaded G3 ([0094]) (i.e. fifth grid G5,see paragraph [0031]) to be the claimed plurality of electrodes, both electrodes are parallel to the principle plane as suggested in paragraph [0093]. That is, in this interpretation only G3 and G5 are interpreted to be the plurality of electrodes of the ion acceleration region downstream of the wedge shaped electric field region that are configured to generate ion acceleration via additional grids G4 and G6).
Regarding claim 3, Kobayashi et al. in view of Hoyes teach wherein said electrodes for generating said wedge-shaped electric field region are arranged and configured for generating said wedge-shaped electric field region therebetween such that equipotential field lines in the wedge-shaped electric field region are angled to each other so as to form the wedge-shape (due to misalignment between g1 and G2 the equipotential field lines would be angled to cause tilt in the ions in the x or y direction. Figures 3-5 show the tilt of ions in x direction caused by misalignment, thus a wedge shaped field and equipotential lines between G1 and G2).
Regarding claim 4, Kobayashi et al. in view of Hoyes teach wherein said electrodes for generating said wedge-shaped electric field region comprise one or more first electrode arranged in a first plane and one or more second electrode arranged in a second plane that is angled to the first plane so as to define the wedge-shaped electric field region between the one or more first electrode and one or more second electrode (see annotated figure below).
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Regarding claim 7, Kobayashi et al. in view of Hoyes teach wherein the electrodes for generating said wedge-shaped electric field region are arranged so that equipotential field lines of the wedge-shaped electric field extend substantially in a first direction (electric field of Kobayashi inherent between electrodes 16 extend in a direction, as modified by Hoyes, between G1/G2 wedge field therebetween by misalignment) and the plurality of electrodes for generating an ion pulsing region (between 14/15 of Koyboyashi) are configured to pulse the ions through the wedge-shaped electric field substantially transverse to the equipotential field lines (Koybayashi as seen in figure 2 packets 19 are pulsed transversely through field formed by 16, which as modified by Hoyes is wedge-shaped).
Regarding claim 9, Kobayashi et al. in view of Hoyes teach wherein said electrodes of the ion acceleration region are configured to apply a static electric field in the ion acceleration region for accelerating the ions (Hoyes, [0019]).
Regarding claim 10, Kobayashi et al. in view of Hoyes teach the limitations repeated in claim 10 above in claim 1. Kobayashi et al. in view of Hoyes further teach wherein said electrodes of the ion acceleration region are configured to apply an electric field in the ion acceleration region having parallel equipotential field lines for accelerating the ions (Hoyes, G3 and cascaded G5 (fifth grid see paragraph [0031]) are parallel to the principle plane ([0093] teaches G3 parallel and paragraph [0094] cascading the device, thus fifth grid G5 would also be parallel). Since paragraph [0094] cascades another device (second accelerator ([0031]) with the first device, the grids G3 and G5 (fifth grid) are parallel and thus configured to apply an electric field with parallel equipotential field lines by not providing a potential to G4/G6 (i.e. sixth grid [0031])).
Regarding claim 12, Kobayashi et al. teaches said pulsed accelerator is one of an orthogonal accelerator (see figure 2).
Regarding claim 18, Kobayashi et al. in view of Hoyes teach wherein said electrodes of the ion pulsing region for pulsing ions out of the ion accelerator are substantially parallel to said electrodes of the ion acceleration region (Hoyes, G3/G5 see discussion above with respect to paragraphs [0031] and [0093]-[0094], note pusher electrode is substantially parallel because tolerances have been relaxed ([0057])), and wherein said electrodes for generating said wedge-shaped electric field region comprises an intermediate electrode (G1 or G2) tilted at an angle to the electrodes of the ion pulsing and ion acceleration regions so as to define the wedge-shaped electric field (G1 or G2 angled with respect to G3 (parallel see paragraph [0094]) and pusher, note pusher may have three stages see paragraph [0107]. See discussion above with respect to forming a wedge shaped field).
Regarding claim 20, Kobayashi et al. in view of Hoyes teach a method of mass spectrometry comprising: providing the mass spectrometer as claimed in claim 1 ;applying the pulsed voltage to the plurality of electrodes for generating said ion pulsing region so as to pulse ions out of the ion accelerator, wherein the ions have a time front arranged in the first plane at the time the pulsed voltage is initiated, and wherein the ions pass through the wedge-shaped electric field region so as to cause the time front of the ions to be tilted at the angle to the first plane (method taught as in the citations in claim 1 above).
Claims 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. in view of Hoyes and further in view of Verenchikov (US pgPub 2013/0056627).
Regarding claim 13, Kobayashi in view of Hoyes fails to disclose a multi-pass time-of-flight mass analyser or electrostatic ion trap having the pulsed ion accelerator, and electrodes arranged and configured so as to provide an ion drift region that is elongated in a drift direction (z-dimension) and to reflect or turn ions multiple times in an oscillating dimension (x-dimension) that is orthogonal to the drift direction.
However, Verenchikov teaches a multi-pass time-of-flight mass analyser or electrostatic ion trap (fig. 3) having a pulsed ion accelerator (32), and electrodes arranged and configured so as to provide an ion drift region that is elongated in a drift direction (z-dimension) and to reflect or turn ions multiple times in an oscillating dimension (x-dimension) that is orthogonal to the drift direction (z direction, x direction and oscillations seen in figure 1).
Verenchikov modifies the combined device by suggesting using the pulsed accelerator in a MR-TOF.
Since both inventions are directed towards orthogonal injection into a mass spectrometer, it would have been obvious to use the accelerator of the combined device in a MR-TOF because it would increase the flight path therefore improving resolution ([0003]-[0004]).
Regarding claim 14, the combined device in view of Verenchikov teaches (i) the multi-pass time-of-flight mass analyser is a multi-reflecting time of flight mass analyser having two ion mirrors that are elongated in the drift direction (z-dimension) and configured to reflect ions multiple times in the oscillation dimension (x-dimension), wherein the pulsed ion accelerator is arranged to receive ions and accelerate them into one of the ion mirrors (as seen in figure 3, x and z directions and ion oscillation in x dimension multiple times orthogonal accelerator best seen in figure 6a-6b).
Regarding claim 15, the combined device in view of Verenchikov teach an ion deflector located (68, figure 6b of Verenchikov) downstream of said pulsed ion accelerator (67/62/65), and that is configured to back-steer the average ion trajectory of the ions, in the drift direction, thereby tilting the angle of the time front of the ions received by the ion deflector ([0121]).
Regarding claim 16, the combined device in view of Verenchikov teach wherein the wedge-shaped electric field region of the pulsed ion accelerator is configured to tilt the time front of the ions passing therethrough so as to at least partially counteract the tilting of the time front by the ion deflector (Verenchikov deflector 68 counteract tilt provided by accelerator ([0121]), thus the accelerator counteracts the deflection).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Kobayashi et al. in view of Hoyes and further in view of Verenchikov (US pgPub 2013/0056627) and further in view of Stewart et al. (US pgPub 2017/0098533).
Regarding 17, the combined device in view of Verenchikov fails to disclose wherein the ion deflector is configured to generate a quadrupolar field for controlling the spatial focusing of the ions in the drift direction.
However, Stewart teaches wherein the ion deflector is configured to generate a quadrupolar field ([0031]-[0032] teach the tilt correction device comprises orthogonal pairs of plates, since the tilt correction device forms at least one dipole (abstract), four plates form a quadrupole. Moreover, paragraph [0030] teaches four poles thus a quadrupole) for controlling the spatial focusing of the ions (inherent function of a quadrupole (i.e. orthogonal dipolar field (i.e. quadrupole) effect the ion focus, thus control the focus of the ions)).
Stewart modifies the combined device by suggesting the deflector to be a quadrupole.
Since both inventions are directed towards correction of ion tilt, it would have been obvious to one of ordinary skill in the art to substitute the deflector of Kobayashi in view of Hoyes in view of Verenchikov for the quadrupolar tilt corrector of Stewart because it would allow more flexibility in compensating tilt in multiple directions.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10, 12-18 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. USPN 11,817,303. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent is more limited in scope requiring most limitations of claims 1-18 of the patent. Any differences in scope would have been obvious in view of the prior art above.
Relevant art of interest to the applicant:
Brown (US pgPub 2013/0256524) teaches orthogonal acceleration similar to Kobayashi above.
Additionally, Verenchikov cited above or WO-2016174462 (cited in parent application) see figure 9a-9c for accelerator and plurality of electrodes may be used in combination with Hoyes to make obvious the claim 1 in a similar manner as Kobayashi discussed herein above.
Conclusion
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/MICHAEL J LOGIE/Primary Examiner, Art Unit 2881
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