DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s arguments filed on 12/3/25 have been considered but are moot because the arguments do not apply to the combination of references being used in the current rejection. The amendment necessitates the new ground(s) of rejection presented due to the added and removed language in independent claims 1 and 20.
Status of the Application
Claim(s) 1, 3-9, 11-24 is/are pending.
Claim(s) 1, 3-9, 11-24 is/are rejected.
Claim Rejections – 35 U.S.C. § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
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The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
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Claim(s) 9 is/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 pre-AIA the applicant regards as the invention.
Claim 9 recites an “analysis module” but this appears to be referring to the analyzer of claim 8.
Claim Rejections – 35 U.S.C. § 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:
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Claim(s) 1, 16-21 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Makarov et al. (US 20090206248 A1) [hereinafter Makarov I] in view of Makarov et al. (WO2005124821) (incorporated by reference in Makarov I, [0049]) (US 20150214019 A1 will be used as an English language equivalent herein) [hereinafter Makarov II] and Bateman et al. (US 20040079873 A1) [hereinafter Bateman].
Regarding claim 1, Makarov I teaches a mass spectrometer, comprising:
an ion trap (see e.g. fig 2: 30), comprising:
a plurality of electrodes arranged in a multipole configuration (see e.g. rf quadrupole, [0049]) so as to provide an inlet for receiving ions along a longitudinal axis into a space between said electrodes (required for operation of system),
said electrodes being configured for application of one or more RF voltages thereto for providing radial confinement of ions (required for operation of RF trap, see [0049]); and
at least one DC voltage source (required for operation of system, [0058]) configured to:
extraction of at least a portion of said radially offset ions through said passageway out of the ion trap (see fig 2).
Makarov I may fail to explicitly disclose at least one of said plurality of electrodes comprising a passageway configured for radial ion extraction therethrough; to apply a dipolar DC voltage pulse across said at least one electrode and an opposed electrode, thereby causing radial offset of at least a portion of the ions in mass order relative to said at least one of said plurality of electrodes; and ejecting ions after the application of the dipolar DC voltage pulse.
However, Makarov II (which is incorporated by reference in Makarov I, [0049]) teaches a known effective system for ejecting ions from ion traps that can avoid issues like parasitic oscillations of RF during switching (see Makarov II, [0064]), comprising at least one of said plurality of electrodes comprising a passageway (see e.g. fig 11a: 1188, [0065]) through which ions can be extracted radially from said ion trap (see fig 11a, [0065,76]); and to apply a dipolar DC voltage pulse (see DC pulse for ejection, e.g. [0065,78,80]) across said at least one electrode and an opposed electrode (see [0078,80]), thereby causing radial offset of at least a portion of the ions in mass order (spatial separation is a natural result of ejecting ions with different m/z all raised to the same energy, given a single DC ejection pulse, [0083]) relative to said at least one of said plurality of electrodes. It would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to combine the teachings of Makarov II in the system of the prior art, to enable the intended operation of controlling ion ejection, while avoiding e.g. problems with parasitic oscillations during switching, in the manner taught by Makarov II.
The combined teaching may fail to explicitly disclose ejecting ions after the application of the dipolar DC voltage pulse.
However, under the broadest reasonable interpretation of the claims, the prior claimed application of the dipolar pulse may refer to prior ejections of ions and the ejection of ions claimed may refer to subsequent ejections of ions (e.g. during the same or different experiments, see e.g. discussion of further trapping in Makarov II, [0064]). (It is also noted that the DC pulse could also be read on being applied to a different electrode (e.g. in a downstream instrument)).
The combined teaching of Makarov I and Makarov II may fail to explicitly disclose causing radial offset of at least a portion of the ions in mass order.
However, as discussed above, the claims may read to describe the physical phenomenon of downstream radial offsetting in mass order based on m/z separation in response to the same DC force. Nevertheless for the purpose of compact prosecution it is noted that using DC pulses for selective radial ejection in mass order was known in the art at the time the application was effectively filed. For example, Bateman teaches using multiple traps to separately eject different ions in mass order, in order to improve operation including duty cycle of downstream analysis instruments (see e.g. Bateman, [0153]). It would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to combine the teachings of Bateman in the system of the prior art because a skilled artisan would have been motivated to look to improve operation of the downstream analyzers, including providing separate sub-ranges of masses sequentially to improve duty cycles, in the manner taught by Bateman. Therefore the combined teaching discloses causing radial offset of at least a portion of the ions in mass order (during radial ejection, see Makarov II); and ejecting ions after the application of the dipolar DC voltage pulse (see e.g. sub-ranges, Bateman, [0159]).
Regarding claim 16, the combined teaching of Makarov I and Makarov II teaches said multipole configuration comprises a quadrupole configuration (see Makarov II, fig 11a).
Regarding claim 17, the combined teaching of Makarov I and Makarov II teaches said one or more RF voltages have a frequency in a range of 0.1 MHz to about 5 MHz (see Makarov II, [0008]). It is also noted that it has held that discovering an optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233.
Regarding claim 18, the combined teaching of Makarov I and Makarov II teaches said one or more RF voltages have an amplitude in a range of about 100 volts to about 1000 volts (see Makarov II, [0008]). It is also noted that it has held that discovering an optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233.
Regarding claim 19, the combined teaching of Makarov I and Makarov II may fail to explicitly disclose wherein said dipolar voltage pulse has an amplitude in a range of about 25 volts to about 500 volts. Nevertheless, one of ordinary skill in the art would adjust the voltage amplitude as a routine skill in the art to control ejection times for the ions (see e.g. Makarov, [0080]), including a voltage pulse with an amplitude claimed, as a routine skill in the art in order to obtain the optimum or workable range. It has held that discovering an optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233.
Regarding claim 20, Makarov I teaches a method of performing mass spectrometry, comprising:
introducing a plurality of ions into an ion trap (see e.g. fig 2: 30) comprising a plurality of electrodes arranged in a multipole configuration (see e.g. [0049]),
applying one or more RF voltages to one or more of said electrodes to generate an electromagnetic field for radially confining ions within the ion trap (required for operation of RF trap, see [0049]),
Makarov I may fail to explicitly disclose at least one of said plurality of electrodes comprising a passageway configured for radial ion extraction therethrough; applying a DC dipolar voltage pulse across said electrode having the passageway and an opposed electrode so as to cause radial offset of said ions in substantially mass order relative said electrode having said passageway; and ejecting ions after the application of the dipolar DC voltage pulse.
However, Makarov II (which is incorporated by reference in Makarov I, [0049]) teaches a known effective system for ejecting ions from ion traps that can avoid issues like parasitic oscillations of RF during switching (see Makarov II, [0064]), comprising at least one of said plurality of electrodes comprising a passageway (see e.g. fig 11a: 1188, [0065]) through which ions can be extracted radially from said ion trap (see fig 11a, [0065,76]); and to apply a dipolar DC voltage pulse (see DC pulse for ejection, e.g. [0065,78,80]) across said at least one electrode and an opposed electrode (see [0078,80]) so as to cause radial offset of said ions in substantially mass order (spatial separation is a natural result of ejecting ions with different m/z all raised to the same energy, given a single DC ejection pulse, [0083]) relative said electrode having said passageway. It would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to combine the teachings of Makarov II in the system of the prior art, to enable the intended operation of controlling ion ejection, while avoiding e.g. problems with parasitic oscillations during switching, in the manner taught by Makarov II.
The combined teaching of Makarov I and Makarov II may fail to explicitly disclose causing radial offset of at least a portion of the ions in substantially mass order; ejecting ions after the application of the dipolar DC voltage pulse.
However, as discussed above, the claims may read to describe the physical phenomenon of downstream radial offsetting in mass order based on m/z separation in response to the same DC force. Nevertheless for the purpose of compact prosecution it is noted that using DC pulses for selective radial ejection in mass order was known in the art at the time the application was effectively filed. For example, Bateman teaches using multiple traps to separately eject different ions in mass order, in order to improve operation including duty cycle of downstream analysis instruments (see e.g. Bateman, [0153]). It would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to combine the teachings of Bateman in the system of the prior art because a skilled artisan would have been motivated to look to improve operation of the downstream analyzers, including providing separate sub-ranges of masses sequentially to improve duty cycles, in the manner taught by Bateman. Therefore the combined teaching discloses causing radial offset of at least a portion of the ions in mass order (during radial ejection, see Makarov II); and ejecting ions after the application of the dipolar DC voltage pulse (see e.g. sub-ranges, Bateman, [0159]).
Regarding claim 21, the combined teaching of Makarov I, Makarov II, and Bateman teaches a polarity of said DC dipolar voltage pulse is selected such that the radially offset ions are offset relative to said electrode having the passageway in a high to low mass order (natural result of applying same DC potential to different m/z ions, see generally Makarov II, fig 11a), or, wherein the polarity of said DC dipolar voltage pulse is selected such that the radially offset ions are offset relative to said electrode having the passageway in a low to high mass order. It is noted that there must be some ordering to cover all the sub-ranges (see e.g. Bateman, [0167]), and the selection from high to low would have been obvious as a routine skill in the art.
Claim(s) 3-9, 11-15, 22-24 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Makarov I, Makarov II, and Bateman, as applied to claim 1 or 20 above, and further in view of Dziekonski, DEVELOPMENT OF THE FOURIER TRANSFORM ELECTROSTATIC LINEAR ION TRAP FOR THE ANALYSIS OF GAS PHASE IONS, PhD dissertation (August 2017).
Regarding claim 3, the combined teaching of Makarov I and Makarov II teaches an electrostatic ion trap (see Makarov I, fig 2: 40, [0050]) positioned downstream of said ion trap for receiving ions among the radially offset ions extracted from said ion trap (see fig 2). The combined teaching may fail to explicitly disclose the electrostatic ion trap being an electrostatic linear ion trap (ELIT). However, Makarov I teaches a wide range of electrostatic ion traps may be utilized (see Makarov I, e.g. [0017-19]), and the use of ELITs was well known in the art at the time the application was effectively filed. For example, Dziekonski teaches that ELITs are flexible enough to enable the ability to perform multiple types of mass analysis (see Dziekonski, p10, para 1). It would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to combine the teachings of Dziekonski in the system of the prior art to enable the intended operation of electrostatic mass analysis, while also enabling the flexibility to perform multiple types of mass analysis, as taught by Dziekonski. It is noted that simple substitution of one known element for another to obtain predictable results supported a prima facie obviousness. See MPEP 2143.
Regarding claim 4, the combined teaching of Makarov I, Makarov II, Bateman, and Dziekonski teaches said ELIT comprises at least two ion mirrors each of which is disposed at one end of said ELIT for axially trapping the received ions in a space therebetween (see Dziekonski, p9, fig 1.2).
Regarding claim 5, the combined teaching of Makarov I, Makarov II, Bateman, and Dziekonski teaches an electric charge detector (see pickup electrode, Dziekonski, p9, fig 1.2) disposed between said two ion mirrors for detecting said received ions (see p10, para 2).
Regarding claim 6, the combined teaching of Makarov I, Makarov II, Bateman, and Dziekonski teaches said electric charge detector comprises a substantially cylindrical electrode (see Dziekonski, fig p9, 1.2c, outer and inner electrodes) surrounding at least a portion of said space between the ion mirrors (see fig 1.2c) such that passage of the received ions through said cylindrical electrode induces electric charge on said cylindrical electrode, thereby generating one or more ion detection signals (see e.g. p23, para 2). It is unclear whether the inner electrode is cylindrical, but the use of these electrodes was well known (see e.g. fig 1.2a) and given the requirement to provide radial symmetry in the ELIT, it would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to try the use of cylindrical shape as a routine skill in the art. It is noted that it would have been obvious to a person having ordinary skill in the art to change the size and/or proportion as a matter of design choice. See MPEP 2144.04, In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955).
Regarding claim 7, the combined teaching of Makarov I, Makarov II, Bateman, and Dziekonski teaches a detection circuit (required for intended operation of system) in communication with said electric charge detector for generating one or more detection signals based on said induced electric charge (required for operation of system, see e.g. Dziekonski, p94, para 1).
Regarding claim 8, the combined teaching of Makarov I, Makarov II, Bateman, and Dziekonski teaches an analyzer (see Makarov I, fig 2, not e.g. computer, computer program, etc, required for intended operation of system) in electrical communication with said detection circuit for receiving said one or more ion detection signals and operating on said ion detection signals to generate a mass spectrum of the ions received by said ELIT (see e.g. Dziekonski, p22, para 2).
Regarding claim 9, the combined teaching of Makarov I, Makarov II, Bateman, and Dziekonski teaches said analysis module is configured to apply Fourier transform to said one or more ion detection signals so as to generate the mass spectrum of the ions received by the ELIT (see e.g. Dziekonski, p22, para 2).
Regarding claim 11, the combined teaching of Makarov I and Makarov II may fail to explicitly disclose the claimed limitation(s). However, the differences would have been obvious in view of Dziekonski, for similar reasons as claim 3 above. Therefore, the combined teaching of Makarov I, Makarov II, Bateman, and Dziekonski teaches said DC extraction voltage is configured to cause a difference in kinetic energy of the radially offset ions extracted from the ion trap such that ions having different m/z ratios, among said radially offset ion extracted from said ion trap, arrive at a downstream electrostatic linear ion trap (ELIT) (see Dziekonski, p9, fig 1.2, p32, para 1). The combined teaching may fail to explicitly disclose the ions arrive substantially concurrently. However, operation of the ion trap, including high voltage ejection causing ions to be ejected from the directly upstream trap into the analyzer substantially simultaneously (note desirability of compression of ion bunches, Makarov II, [0081]), would have been obvious as a routine skill in the art, as a skilled artisan would look for ways to improve analysis efficiency and/or speed. It is also noted that 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. See Ex parte Masham, 2 USPQ2d 1647, and MPEP 2114.
Regarding claim 12, the combined teaching of Makarov I, Makarov II, Bateman, and Dziekonski may fail to explicitly disclose a polarity of said dipolar voltage pulse is selected such that the radially offset ions are extracted from the ion trap in a high mass to low mass order. It is noted that there must be some ordering to cover all the sub-ranges (see e.g. Bateman, [0167]), and the selection from high to low would have been obvious as a routine skill in the art. Furthermore, Dziekonski teaches using apex isolation to select and inject multiple narrow mass ranges into the ELIT and enable unambiguous mass measurement during MR-TOF operation (see Dziekonski, e.g. p32, para 1). It would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to select the use of separating the ion extractions such that ions are extracted from the ion trap in a high mass to low mass order, or vice versa, as a routine skill in the art to iterate over the different ranges of masses, in order to perform MR-TOF analysis with unambiguous mass measurement, in the manner taught by Dziekonski. It is also noted that 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. See Ex parte Masham, 2 USPQ2d 1647, and MPEP 2114.
Regarding claim 13, the combined teaching of Makarov I, Makarov II, Bateman, and Dziekonski may fail to explicitly disclose said dipolar DC voltage pulse imparts more kinetic energy to lower mass ions relative to higher mass ions such that said ions having different m/z arrive substantially concurrently at said downstream ELIT. However, it is noted that the imparted KE is related to position of the trapped ion relative to a potential distribution imparted on it by the dipolar voltage pulse. Therefore, the dipolar voltage pulse imparts more kinetic energy to some lower mass ions relative to some other higher mass ions such that said ions arrive substantially concurrently at said downstream ELIT (see Dziekonski, p9, fig 1.2, p32, para 1).
Regarding claim 14, the combined teaching of Makarov I, Makarov II, Bateman, and Dziekonski teaches a polarity of said DC dipolar voltage pulse is selected such that the radially offset ions are extracted from the ion trap in a low mass to high mass order (natural result of applying same DC potential to different m/z ions, see generally Makarov II, fig 11a).
Regarding claim 15, the combined teaching of Makarov I, Makarov II, Bateman, and Dziekonski may fail to explicitly disclose said DC dipolar voltage pulse imparts more kinetic energy to higher mass ions relative to lower mass ions such that said ions having different m/z ratios arrive substantially concurrently at said downstream ELIT. However, it is noted that the imparted KE is related to position of the trapped ion relative to a potential distribution imparted on it by the dipolar voltage pulse. Therefore, the dipolar voltage pulse imparts more kinetic energy to some higher mass ions relative to some other lower mass ions such that said ions arrive substantially concurrently at said downstream ELIT (see Dziekonski, p9, fig 1.2, p32, para 1).
Regarding claim 22, the combined teaching of Makarov I, Makarov II, and Bateman may fail to explicitly disclose the claimed limitation(s). However, the differences would have been obvious in view of Dziekonski, for similar reasons as claim 3 above. Therefore, the combined teaching of Makarov I, Makarov II, Bateman, and Dziekonski teaches directing at least a portion of said radially offset ions extracted from said ion trap to a downstream electrostatic linear ion trap (ELIT) (see Dziekonski, p9, fig 1.2), and wherein said DC dipolar voltage and said DC extraction voltage are selected so as to cause ions having different m/z ratios, among said radially offset ions extracted from said ion trap. The combined teaching may fail to explicitly disclose wherein said DC dipolar voltage and said DC extraction voltage are selected so as to cause ions having different m/z ratios, among said radially offset ions extracted from said ion trap, to arrive substantially concurrently at the downstream LIT. However, operation of the ion trap, including high voltage ejection causing ions to be ejected into the analyzer from the directly upstream trap substantially simultaneously (note desirability of compression of ion bunches, Makarov II, [0081]), would have been obvious as a routine skill in the art, as a skilled artisan would look for ways to improve analysis efficiency and/or speed. It is also noted that 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. See Ex parte Masham, 2 USPQ2d 1647, and MPEP 2114.
Regarding claim 23, the combined teaching of Makarov I, Makarov II, Bateman, and Dziekonski teaches axially trapping the ions among the radially offset ions directed to the ELIT (see Dziekonski, p9, fig 1.2).
Regarding claim 24, the combined teaching of Makarov I, Makarov II, Bateman, and Dziekonski teaches utilizing an electric charge detector incorporated in said ELIT for detecting said axially trapped ions (see Dziekonski, p9, fig 1.2, p10, para 2).
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 extension fee 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.
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/JAMES CHOI/Examiner, Art Unit 2881
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