DETAILED ACTION
Response to Arguments
Applicant's arguments filed 18 September 2026 have been fully considered but they are not persuasive.
Rejections under 35 USC 112(a):
The claim has been amended to cover the disclosed species, therefore the rejection has been withdrawn as the claim is not fully supported by the written description.
Rejections under 35 USC 112(b):
The remarks take the position that the claim amendment overcomes the raised indefinite issues. This has not been found persuasive. Specifically, the claim is directed towards a system comprising an aperture plate, wherein under the condition of a first infrared laser beam is applied, a cloud of material is removed from the sample by the beam passing through the aperture. However, as the claimed clause is directed towards an aperture plate it is not clear what specific element is generating the claimed first infrared laser beam. That is, it is unclear whether some claimed element of the system applies the IR laser beam laser beam or if there is some unclaimed element generating the respective beam. For the purposes of examination, it is interpreted that a laser beam generates the claimed IR laser generates the claimed ionizing laser beam.
The same applies for the switchable of the extraction assembly.
Rejections under 35 USC 102
Claim 1 has been amended to incorporate limitations of claims 2-3 and additional limitations not taught by Haase, therefore the rejection is withdrawn.
Rejections under 35 USC 103: Bookmeyer et al. (US pgPub 2022/0037142) in view of Zare (USPN 4,988,879) in view of Williams et al. (US pgPub 2021/0183632).
The remarks have been found persuasive, while Williams teaches application of a rejection voltage to a QID, the combined device fails to suggest application of the respective positive and negative charge states to the extraction tip as now required by the claims.
Rejections under 35 USC 103: Claims 1-6 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Bookmeyer et al. (US pgPub 2022/0037142) in view of Zare (USPN 4,988,879) in view of Keller (US pgPub 2006/0017003).
The remarks have been found persuasive. Specifically, while Keller teaches delayed extraction where ion velocities are retarded, this is not a rejection field to direct primary ions of the cloud of material away from the extractor inlet.
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 1-13 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 recites the limitation “a first infrared laser beam is applied to the sample along the aperture axis” is vague and indefinite because the claim does not provide a discernable boundary on what performs the function. The recited function does not follow from the structure recited in the claim i.e. the aperture, so it is unclear whether the function requires some other structure or is simply a result of operating the aperture in a certain manner. Thus, one of ordinary skill in the art would not be able to draw a clear boundary between what is and is not covered by the claim. See MPEP 2173.05(g) for more information.
Claim 1 recites the limitation “the ion extractor assembly is switchable between a rejection state…and an acceptance state” is vague and indefinite because the claim does not provide a discernable boundary on what performs the switching function. The recited function does not follow from the structure recited in the claim i.e. ion extractor assembly, so it is unclear whether the function requires some other structure or is simply a result of operating the aperture in a certain manner. Thus, one of ordinary skill in the art would not be able to draw a clear boundary between what is and is not covered by the claim. See MPEP 2173.05(g) for more information.
Claims 2-13 are vague and indefinite by virtue of their dependencies on rejected claim 1.
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 1-6 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Bookmeyer et al. (US pgPub 2022/0037142) in view of Zare (USPN 4,988,879) in view of Vestal (US pgPub 2004/0079878).
Regarding claim 1, Bookmeyer et al. teaches a system (fig. 2) for performing sample analysis (mass spectrometry), the system comprising:
a sample chamber (10a);
an ion extractor assembly (38a/38b) defining an ion extraction path (inherent to extractor 38a/38b) and including an ion extractor tip (38a), the ion extractor tip disposed within the sample chamber (38a in chamber 10a) and defining an ion extractor inlet (opening in 38a), and
a mass spectrometer (downstream 40, see paragraph [0049]) in communication with the ion extractor assembly along the ion extraction path (as indicated by arrow above 38b), the mass spectrometer configured to receive ionized material from the ion extractor assembly and to analyze the ionized material (inherent to a TOF analyzer [0040]).
Bookmeyer et al. fails to disclose an aperture plate defining an aperture having an aperture axis, the aperture axis aligned with a sample location within the sample chamber such that, when a sample is disposed within the sample chamber below the aperture plate and a beam is applied to the sample along the aperture axis, a cloud of material removed from the sample by the beam passes through the aperture; the ion extractor inlet disposed above the aperture and offset from the aperture axis.
However, Zare et al. teach an aperture plate (104, best seen in figure 4) defining an aperture (aperture in 104 receiving sample carrier 101 as seen in figure 4) having an aperture axis (define aperture axis to be where 102 is incident on sample in 101); the aperture axis aligned with a sample location (sample 501 (fig. 5b) deposited on inner surface of 101) within the sample chamber (sample chamber best seen in figure 3 as chamber around sample in 101) such that, when a sample is disposed within the sample chamber below the aperture plate (sample 501 (fig. 5b) deposited on sides of 101, thus below the aperture 104 as seen in figure 4) and a first infrared laser beam (102 is IR see col. 9, lines 35-38) is applied to the sample along the aperture axis (beam from 102 is applied to sample inside 101 as seen in figure 4), a cloud of material removed from the sample by the beam passes through the aperture (via desorption, cloud best seen in figure 3 above 104 as a result of 102 being incident on sample in 101 as it passes through aperture on first side of 104 as seen in figure 4), the cloud of material including primary ions (since desorption results in cloud, it is interpreted as primary ions as disclosed, while only neutral particles are disclosed, since the claim covers any IR laser beam, it is interpreted that the desorbing IR beam results in the same effect as the claimed IR laser beam. MPEP 2112 (II) recites “"[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention."”. Here, the instant specification teaches that an IR laser beam for desorption results in a combination of neutral and positively charged particles. Since Zare teaches the same conditions, it is interpreted that the same result will occur.) then ionized with an ionization beam from a second ultraviolet laser to produce ionized material including secondary ions (col. 10, lines 67-68 through col. 11, lines 1-4);
the ion extractor inlet disposed above the aperture (106 is above aperture 104) and offset from the aperture axis (106 is offset the axis along ray exiting 102).
Zare et al. modifies Bookmeyer by suggesting the sample mounted within a lens 104.
Since both inventions are directed towards desorption post ionization, it would have been obvious to one of ordinary skill in the art to mount the sample within/below an electrode 104 as suggested in Zare in the device of Bookmeyer because the ground electrode assists with ion acceleration therefore improving extraction efficiency.
Bookmeyer in view of Zare suggest an extraction assembly including a conical electrode 38a (Bookmeyer, figure 2 and paragraph [0049]) to extract ions ([0049]), but fails to disclose wherein the ion extractor assembly is switchable between a rejection state in which the ion extractor tip is positively charged to generate a rejection field to direct primary ions of the cloud of material away from the ion extractor inlet, and then, subsequent to the rejection state, an acceptance state in which the ion extractor tip is negatively charged to generate an acceptance field to direct the ionized material including secondary ions produced by applying an the ionization beam to the cloud of material toward the ion extractor inlet and along the ion extraction path.
However, Vestal teaches wherein the ion extractor assembly (first element 84, paragraph [0030] teaches the first element extracts the ions, paragraph [0084] teaches 84 may be an electrostatic lens (i.e. similar to the combined device)) is switchable between a rejection state ([0095] teaches a second potential applied to the first element that is varied at a predetermined time subsequent to an ionization event to define a second field which extracts. That is, prior to extraction is a rejection state, wherein paragraph [0102] defines the period as a retarding field that accelerates ions toward the sample surface) in which the ion extractor is positively charged to generate a rejection field to direct ions of the cloud of material away from the ion extractor inlet ([0102] as discussed above and paragraphs [00052] and [0119] teach making the potential of the first element more positive for measuring positive ions and more negative for measuring negative ions. Together this suggests directing all ions away from the extraction lens), and then, subsequent to the rejection state, an acceptance state ([0095] after the predetermined time subsequent the ionization event define a second field between sample holder and the first element which extracts the ions) in which the ion extractor is negatively charged to generate an acceptance field to direct the ionized material including ions produced toward the ion extractor inlet and along the ion extraction path (when measuring positive ions, the first field is positive (i.e. rejection field, [0052] and [0119]), therefore when switching the field to extract ions, the polarity of the field is inherently switched so as to facilitate extraction of the beams (i.e. opposite polarity field relative to the polarity of ions so that ions may be extracted)).
Vestal modifies Bookmeyer in view of Zare by suggesting delayed extraction by use of a switchable voltage applied to extraction electrodes of Bookmeyer in view of Zare during laser irradiation to a predetermined time after an ionization event.
Since both inventions are directed towards extraction devices in analyzing samples with a matrix, it would have been obvious to one of ordinary skill in the art to apply the rejection/ acceptance voltages of Vestal to the combined device because it improves the resolution by returning matrix ions to the sample surface such that only sample ions are detected ([0121]-[0122]).
It is noted that while Vestal does not expressly teach applying the voltage to an extractor tip, Vestal does teach applying the voltages to an electrostatic lens ([0084]) that extracts ions or returns them towards the sample holder. Since Bookmeyer already discloses the extractor tip, the modification would inherently result in the switchable voltages of Vestal applied to the extractor electrode including a conical tip of Bookmeyer. Specifically, MPEP 2112 (IV) recites “[I]n order to rely on inherency to establish the existence of a claim limitation in the prior art in an obviousness analysis – the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Id. at 1195-96, 112 USPQ2d at 1952. But see, Persion Pharms. LLC v. Alvogen Malta Operations LTD., 945 F.3d 1184, 1191, 2019 USPQ2d 494084 (Fed. Cir. 2019)”
Here, all claimed elements were known to the combination, therefore since the extraction electrode of Bookmeyer already has a tip and Vestal provides motivation to provide a switchable voltage to the extraction electrode, the combination inherently results in the switchable voltages of Vestal applied to the extraction electrode of Bookmeyer, thus also to the tip.
Moreover, while the combination fails to expressly teach the primary ions rejected during a rejection state and secondary ions accepted during an acceptance state, Bookmeyer in view of Zare teaches a desorption of a cloud of particles via IR radiation, wherein as evidenced by the instant disclosure results in primary ions, moreover, Bookmeyer in view of Zare teaches the generation of secondary ions via irradiation of the cloud. Additionally, Vestal teaches that the “rejection state” occurs before and during an ionization event ([0093], [0102]), wherein after a predetermined period of time a second electric field is applied that extracts ions ([0095]) (i.e. an acceptance state). Therefore, since there is motivation to combine the switchable states of Vestal into the device of Bookmeyer in view of Zare, the combination would inherently result in primary ions of Bookmeyer in view of Zare being rejected during the rejection state of Vestal and secondary ions of Bookmeyer in view of Zare be accepted during the acceptance state of Vestal because the acceptance state disclosed in Vestal does not occur until after a predetermined time after an ionization event ([0095]). That is, the rejection state (i.e. returning ions towards the sample holder [0102]) of Vestal is disclosed to be maintained until a predetermined amount of time after an ionization event. Since the ionization event of Bookmeyer in view of Zare is not until after the second step ionization, all time until after the ionization state the primary ions of Bookmeyer in view of Zare are returned to the sample holder as taught by Vestal and after the ionization event (post ionization of Bookmeyer in view of Zare) Vestal teaches the acceptance (i.e. extraction of ions). This combination would be the extraction of secondary ions are a result of the post ionization discussed in Bookmeyer in view of Zare cited herein above. Therefore the combination would again inherently result in the claimed device as the claimed features are a natural result of the combination (see MPEP 2112(IV)).
Regarding claim 4, Bookmeyer further teaches wherein the ion extractor tip includes an external tip portion (portion of chamber 10a mounted to 38a (i.e. interpreting chamber 10a as part of 38a)) and an internal tip portion disposed within the external tip portion (portion of 38a above chamber 10a).
Regarding claim 5, the combined device in view of Vestal teaches wherein, when in the rejection state, the internal tip portion is positively charged and the external tip portion is neutrally charged. (Bookmeyer-voltage applied to extractor electrode 38a wherein chamber is neutrally charged (i.e. inherent in order for the extraction electrode 38a to direct ions towards MS) as modified by Vestal teaching positively charged first element (extractor) when measuring positive ions during the rejection state, see discussion above).
Regarding claim 6, Bookmeyer teaches wherein the ion extractor assembly further includes a tube lens disposed within the ion extractor tip (38b within chamber 10b (i.e. interpreting 38a and chamber 10b to be extractor tip)).
Regarding claim 9, the Bookmeyer in view of Zare in view of Vestal teaches wherein the ion extractor assembly further includes a repelling plate (Vestal fig. 2, 70) disposed adjacent the aperture (sample holder 70 is behind ion source 84 thus modifying Zare to be adjacent the aperture), across the aperture and opposite the ion extractor inlet (70 is opposite extractor 84 and would modify Zare to be across the aperture in 104).
Regarding claim 10, the combined device in view of Vestal teaches when the ion extractor assembly is in the rejection state, the repelling plate is one of negatively and positively charged (Vestal, [0052] the first element is more positive than the sample holder, thus sample holder 70 is also positive).
Regarding claim 11, the combined device in view of Vestal teaches when the ion extractor assembly is in the rejection state, each of the ion extractor tip and the repelling plate is positively charged with the ion extractor tip having a greater positive charge than the repelling plate ([0052], see discussion above with respect to extract tip being the natural result of the combination).
Regarding claim 12, the combined device in view of Vestal teaches wherein, when the ion extractor assembly is in the rejection state, the aperture plate is positively charged ([0052] teaches the extractor (i.e. first element) is more positive than the sample holder. Thus in the modified device, the first element would also require a more positive voltage than the aperture of Bookmeyer in view of Zare to ensure that the ions are returned to the sample holder (see paragraph [0102] of Vestal)).
Regarding claim 13, the combined device in view of Vestal teaches wherein, when the ion extractor assembly is in the acceptance state, the aperture plate is negatively charged ([0052], wherein paragraph [0119] teaches reverse biasing prior to extraction pulse where more positive for measuring positive ions and more negative for measuring negative ions. See also paragraphs [0102]-[0103]. Thus extraction pulse (i.e. acceptance state) would be required to be the opposite polarity of ions in order to accelerate ions in the combined device).
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Bookmeyer in view of Zare in view of Vestal and further in view of Willliams et al. (US pgPub 2021/0183632)
Regarding claim 7, the combined device fails to disclose wherein the ion extractor assembly includes a gate valve disposed between the ion extractor tip and the mass spectrometer to selectively permit the ionized material to pass through the ion extractor assembly to the mass spectrometer.
However, Williams teaches wherein the ion extractor assembly includes a gate valve (fig. 1, 170) disposed between the ion extractor tip (within 112) and the mass spectrometer to selectively permit the ionized material to pass through the ion extractor assembly to the mass spectrometer ([0100]).
Williams modifies the combined device by suggesting a gate valve between the mass analyzer and extractor tip.
Since both inventions are directed towards two-step desorption ionization techniques it would be obvious to one of ordinary skill in the art to have the gate valve of Williams in the combined device because it would protect the vacuum of the MS device while samples are being exchanged.
Regarding claim 8, the combined device fails to disclose wherein the ion extractor assembly further includes at least one ion bender lens disposed between the ion extractor tip and the mass spectrometer to redirect the ionized material toward the mass spectrometer.
However, Williams teaches wherein the ion extractor assembly further includes at least one ion bender lens (Williams QID see figure 11, 753) disposed between the ion extractor tip and the mass spectrometer (between inlet and MS, see paragraph [0146] modifying the extractor tip of Bookmeyer) to redirect the ionized material toward the mass spectrometer ([0146]).
Williams modifies the combined device by suggesting a QID between an extraction electrode and the MS.
Since both inventions are directed towards two-step desorption ionization techniques it would be obvious to one of ordinary skill in the art to have the QID as suggested by Williams in the combined device because it would facilitate a rejection of higher energy ions such that only secondary post desorption ablation ions generated are analyzed therefore improving resolution.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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/MICHAEL J LOGIE/Primary Examiner, Art Unit 2881
