DETAILED ACTION
Election/Restrictions
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12 May 2026.
It is noted that the restriction requirement had a typographical error indicating claim 20 as part of invention I. The response interprets the error as claim 20 falling under invention I. This has not been found persuasive. Specifically, claim 20 is directed to a distinct subcombination as discussed on page 3 of the restriction requirement. Since the rationale is discussed in the restriction requirement, it is clear that claim 20 is distinct from the elected subcombination. Therefore claim 20 is additionally withdrawn from consideration.
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 1-13 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 “a beam is applied to the sample along the aperture axis, a cloud of material removed by the sample by the beam passes through the aperture...an ion extraction path…the mass spectrometer configured to receive ionized material”
Specifically, the broadest reasonable interpretation of the claim covers any laser desorption ionization device, or DESI device or desorption ionization device or indeed any surface ionization technique involving desorption and a beam. However, the instant specification only covers a specific species of ionization device. Mainly a desorption of organic material by a IR laser followed by ionization by a second UV laser and transport to the mass spectrometer ([0056] and [0057] and [0059]) and ablation of non-organic material from the sample by a UV laser followed by ionization by UV laser and transport to a mass analyzer ([0056], [0057] and [0059]).
As the claims currently stand the ionization may be performed by any beam including electrospray, ions, or charged particles (ions, electrons, etc…). However, the instant specification only teaches post ionization of desorbed and ablated organic and inorganic material via a UV laser. Moreover, the desorption is not even required to be by a laser beam, whereas the instant specification is clear as to the actual beam to be a laser.
More specifically, figure 14 and paragraph [0182] teaches an aperture axis 1322 is aligned with the path of the desorption/ablation beam such that the system applies the desorption/ablation beam to the sample and figures 39-42 show the ionization beam delivered horizontally into the sample chamber 1304 ([0265]). However, the specification is notably silent with respect to any other configuration than the dual beam system for desorption and ablation followed by laser ionization discussed in conjunction with the extraction system.
MPEP 2163.03 (v) recites “An original claim may lack written description support when …(2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated.”
Here, claim 1 covers a broad genus of ionization and extraction systems, when the specification only describes a specific system having a laser source to generate desorption and ablation beams and a second laser to generate an ionization.
“[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention. Ariad, 598 F.3d at 1353–54 ('[T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification.”
Because the claims cover many other types of desorption ionization devices and the specification is directed towards only a single species of ionization, claim 1 fails to meet the written description requirement as required by 35 USC § 112(a).
Claims 2-13 fail to meet the written description requirement by virtue of their dependencies on rejected claim 1.
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 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 § 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)(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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Haase (US pgPub 20220285142)1.
Regarding claim 1, Haase teaches a system for performing sample analysis (fig. 3), the system comprising:
a sample chamber (50);
an aperture plate (bottom electrode in electrode stack 26 closest to sample) defining an aperture having an aperture axis (as seen),
the aperture axis aligned with a sample location (modified example in figure 4a shows an oblique laser source generating beam 32* which is interpreted as the aperture axis aligned with sample 8*) within the sample chamber (8 is within chamber 50 as seen in figure 3) such that, when a sample is disposed within the sample chamber below the aperture plate (8 is below 26) and a beam (32* in figure 4a) is applied to the sample along the aperture axis (beam 32* applied to sample 8 aligned with aperture in 26 as seen in fig. 4A), a cloud of material removed from the sample by the beam passes through the aperture (as seen in figures 3 and 4B a cloud of material above sample 8 removed from surface of sample and passes through aperture in 26);
an ion extractor assembly (fig. 1D, 26/28/30 (shown in figure 3 but not identified) (excluding the bottom electrode of 26 closest to sample interpreted as the aperture plate)) defining an ion extraction path (arrows in figure 1D and figure 3) and including an ion extractor tip (26 is a funnel, thus having an interior tip as seen in figures 1D and 3), the ion extractor tip disposed within the sample chamber (fig. 3 shows 26 within chamber 50) and defining an ion extractor inlet (inlet to the remaining assembly 28/30), the ion extractor inlet disposed above the aperture (funnel plates above the bottom funnel plate interpreted as the aperture) and offset from the aperture axis (axis defined as the beam axis 32* in figure 4a thus offset from the aperture axis); and
a mass spectrometer (24, [0038]) in communication with the ion extractor assembly along the ion extraction path (as seen in figure 1d), the mass spectrometer configured to receive ionized material from the ion extractor assembly and to analyze the ionized material (inherent to a mass analyzer),
wherein the ion extractor assembly is switchable between a rejection state in which the ion extractor assembly generates a rejection field to direct ions of the cloud of material away from the ion extractor inlet (towards beam dump 38, see paragraph [0043], when 28 is not applied with a voltage all ions would be directed towards beam dump), and an acceptance state in which the ion extractor assembly generates an acceptance field to direct ionized material produced by applying an ionization beam to the cloud of material toward the ion extractor inlet and along the ion extraction path ([0038] temporary voltage applied to 28 to deflect ions towards RF funnel 30).
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 and 7-8 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 Williams et al. (US pgPub 2021/0183632).
Alternatively, 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).
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 beam 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 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.
While Bookmeyer teaches a hexapole/multipole, the combined device fails to disclose wherein the ion extractor assembly is switchable between a rejection state in which the ion extractor assembly generates a rejection field to direct ions of the cloud of material away from the ion extractor inlet, and an acceptance state in which the ion extractor assembly generates an acceptance field to direct ionized material produced by applying an ionization beam to the cloud of material toward the ion extractor inlet and along the ion extraction path.
However, Williams et al. wherein the ion extractor assembly is switchable between a rejection state in which the ion extractor assembly generates a rejection field to direct ions of the cloud of material away from the ion extractor inlet, and an acceptance state in which the ion extractor assembly generates an acceptance field to direct ionized material produced by applying an ionization beam to the cloud of material toward the ion extractor inlet and along the ion extraction path ([0146] and figure 11, QID 753 may be tuned to reject higher energy ions generated by the initial desorption/ablation and to direct only secondary post-desorption/ablation ions generated by the ionization beam into the einzel stack. Figure 11 shows inlet (i.e. extraction inlet) at axis 701. The ions pass through inlet at 758 (towards the ion inlet in acceptance state), thus are directed away from the ion extractor inlet by QID (i.e. in rejection state). Since the QID 753 is tunable it is “switchable” between the claimed rejection state and acceptance state).
Williams modifies the combined device by suggesting a functioning of the multipole disclosed by Bookmeyer to reject and direct particular ions.
Since both inventions are directed towards post-ionization devices, it would have been obvious to one of ordinary skill in the art to modify the combined device to include the QID functioning of Williams in the device of Bookmeyer in view of Zare because it would allow for only postionized molecules to enter the mass analyzer, therefore removing high energy ions that would contribute to noise in the spectrum.
Alternatively, Keller teaches wherein the ion extractor assembly is switchable between a rejection state in which the ion extractor assembly generates a rejection field to direct ions of the cloud of material away from the ion extractor inlet ([0040] teaches delayed extraction wherein a voltage bias is sufficient to retard or reduce the initial ion velocity of ions desorbed from the ion source element. Figure 2 shows voltage sources applied to 210 and ion source bloc 204), and an acceptance state in which the ion extractor assembly generates an acceptance field to direct ionized material produced by applying an ionization beam to the cloud of material toward the ion extractor inlet and along the ion extraction path ([0040] extraction pulse applied to accelerate the ions away from the ion source).
Keller modifies Bookmeyer in view of Zare by suggesting delayed extraction by use of voltage sources applied to extraction electrodes.
Since both inventions are directed towards extraction devices, it would have been obvious to one of ordinary skill in the art to apply the delayed extraction of Keller to the combined device because it improves the achievable resolution ([0040]).
Regarding claim 2, the combined device in view of Keller teaches wherein, when the ion extractor assembly is in the rejection state, the ion extractor tip is positively charged ([0034] of Keller teaches the extractor element 210 may be negative or other polarities may be used. Thus for positive ions, a positive potential would result in the claimed rejection state).
Regarding claim 3, the combined device in view of Keller teaches wherein, when the ion extractor assembly is in the acceptance state, the ion extractor tip is negatively charged ([0034] of Keller teaches the extractor element 210 may be negative or other polarities may be used. Thus for positive ions, a negative potential would result in the claimed acceptance state)..
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 Keller 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 Keller teaching a voltage source applied to extractor to be either polarity, see claim 2 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 7, the combined device in view of Williams teaches wherein the ion extractor assembly includes a gate valve (Williams 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]).
Regarding claim 8, the combined device in view of 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]).
Regarding claim 9, the Bookmeyer in view of Zare in view of Keller teaches wherein the ion extractor assembly further includes a repelling plate (Keller fig. 1, 121 or figure 2, 204) disposed adjacent the aperture (repeller is behind ion source 119 thus modifying Zare to be adjacent the aperture), across the aperture and opposite the ion extractor inlet (121 is opposite extractor 122 and would modify Zare to be across the aperture in 104).
Regarding claim 10, the combined device in view of Keller teaches when the ion extractor assembly is in the rejection state, the repelling plate is one of negatively and positively charged (Keller, also teaches repeller plate (source block 204) that has a source bias 202 thus capable of being negatively or positively charged to have the opposite charge of ions thus rejecting ions form inlet to 210).
Regarding claim 11, the combined device in view of Keller 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 (within the capabilities of Keller as discussed above, see figure 2 and paragraph [0034]).
Regarding claim 12, the combined device in view of Keller teaches wherein, when the ion extractor assembly is in the rejection state, the aperture plate is positively charged ([0034] of Keller teaches the extractor element 210 may be negative or other polarities may be used. Thus for negative ions, a negative potential would result in the claimed rejection state).
Regarding claim 13, the combined device in view of Keller teaches wherein, when the ion extractor assembly is in the acceptance state, the aperture plate is negatively charged ([0034] of Keller teaches the extractor element 210 may be negative or other polarities may be used. Thus for positive ions, a negative potential would result in the claimed rejection state).
Conclusion
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
1 Note if the extraction tip is amended to preclude an ion funnel, Haase in view of Bookmeyer may be used to make obvious the claimed invention. Specifically, Bookmeyer suggests the substitution of an ion funnel with an extraction cone (see figure 1A and 2 of Bookmeyer)
Prosecution Insights