DETAILED ACTION
Response to Arguments
Applicant's arguments filed 08 September 2026 have been fully considered but they are not persuasive.
Rejections under 35 USC § 112(a):
Initially, the remarks begin with a discussion of figure 5 which shows curves expressly labeled as field strengths and channels. This is not contended. Instead the question is whether there is disclosure as to how the field strengths are applied to the IMS so as to achieve the claimed results of the first through third stage operation according to scanning the operating parameter f(t).
That is, as discussed in the interview summary of 27 August 2026, the instant specification distinguishes the claimed invention by the scanning function f(t) over the prior art Gillig. In Gillig, there are no storage zones. Page 10 of the agenda appended with the interview summary of 27 Augst 2026 recites “the manner in which electric fields are applied differs completely between the trap-release mode and filter mode- a comparison of figure 5B of Gillig with figure 5 of the present application shows that the two are mutually exclusive”. This is exactly the reason why one of ordinary skill in the art would not understand possession of the claimed invention because the specification is devoid as to the manner in which the electric field s are applied. Figure 5 of the instant drawings is merely a field chart with no disclosure of field strengths or how such filed are applied. Figure 5 shows an IMS with an array of electrodes and a field chart. However, there is no disclosure as to how voltages are applied to individual electrodes so as to establish the electric fields of figure 5. As evident from figure 4 of the instant drawings uniform field strengths are applied to the electrodes in the applicant admitted prior art, therefore, one of ordinary skill in the art would have understood the same potential is applied to all electrodes during the prior art method. However, in contrast, the specification is devoid as to how the voltages are applied to the electrode array of the instant invention to result in the disclosed field charts.
Therefore, the remarks are unpersuasive.
The remarks take the second position that paragraph [0053] identifies the position locations of the ion storage zones with respect to the channels and that the field strength of the ion storage zones is set differently from that of the zone covered by the ion passing path. Moreover, the broken lines Es1 and Es2 in figure 5 are the field strengths within the channels during the scan, whereas the heavy solid lines are the field strengths within the ion storage zones.
While paragraph [0053] associates the fields with storage zones, the instant specification is still silent with respect to how the result is achieved. That is, a storage zone is merely a spatial requirement. Something is required to actually generate the fields. In the case of IMS, it is the electrodes where a potential is applied to generate a field (as evident from Gillig or figure 4 of the instant drawings). However, in the instant case, in contrast with the prior art a uniform field is not applied, therefore this is not simply applying a uniform field to the IMS drift region, instead some voltage variation is required to be applied to individual electrodes in the storages zones 2 and 3. Because the instant specification does not disclose how those voltages are applied or means to apply the voltages, the claims are directed towards a result with no disclosed means of achieving the claimed result. Therefore, this point has been found unpersuasive.
With respect to paragraphs [0054]-[0056] again the remarks take the position that the specific relationships amount these values are disclosed. This again is not persuasive as these paragraphs only disclose fields applied to storage zones during different stages. In order to generate the disclosed fields, there must inherently be some manner of applying voltages to electrodes to result in those fields. Since the specification fails to clarify how the result of generating the fields in particular zones at particular times, one of ordinary skill in the art would not recognize how the result (generation of fields) is achieved as the IMS is an electrode array requiring some application of particular voltages to particular electrodes to generate the fields indicated in the chart of figure 5.
The remarks point to paragraph [0049] teaching the channel is defined by a substrate and an electrode array. The remarks suggest combining the electrode array with the field strengths, one of ordinary skill in the art would recognize possession of the claimed invention. This has not been found persuasive. Specifically, there is no nexus between the electrode array of paragraph [0049] and the field chart of figure 5. While figure 5 does show an electrode array, there is no disclosure that the drawings are to scale.
MPEP 2125 (II) recites “When the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value. See Hockerson-Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956, 55 USPQ2d 1487, 1491 (Fed. Cir. 2000) (The disclosure gave no indication that the drawings were drawn to scale. "[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”
Here, there is no disclosure that the drawings are to scale, therefore the proportion of the electrodes in the IMS at the top of figure 5 has little value in comparison to the filed charts seen at t0, ta and tb in figure 5. That is, while there is disclosure of field charts according to a function f(t), there is no disclosure with respect to how the result of achieving those field charts are achieved in the electrode array of the disclosed IMS.
The last point the remarks make is with respect to voltages values. This point has been found persuasive. However, as discussed above the manner of actually achieving the claimed and disclosed fields is not disclosed, therefore, the remarks are unpersuasive and the rejection under 35 USC § 112(a) stands as reiterated herein below.
Rejections under 35 USC § 112(b)
The remarks have been found persuasive. The rejection is withdrawn.
Rejections under 35 USC § 103
The remarks are unpersuasive. With respect to arguments that the instant specification describes a “filter type IMS”, the remarks are unpersuasive, as the claims do not require the IMS to be a filter type IMS or any step of filtering or continuous step (see discussion below).
Specifically, the remarks take the position that Green fails to disclose the amended subject matter.
Claim 1, as amended requires “wherein, in each of the first stage, the second stage and the third stage, those of the ions entering through the ion inlet that are able to pass through the ion mobility analyzer under a current value of the at least one operating parameter f(t) travel continuously through the first channel and the second channel and are discharged from the ion outlet, without being stored in the first ion storage zone or in the second ion storage zone.”
That is, the claim does not preclude trap and release as the continuous travel without being stored is dependent on ions that are able. This is a contingent limitation. MPEP 2111 (II) recites:
“the broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. For example, assume a method claim requires step A if a first condition happens and step B if a second condition happens. If the claimed invention may be practiced without either the first or second condition happening, then neither step A or B is required by the broadest reasonable interpretation of the claim”
Here, ions only pass through without being stored if the condition that they are “able to pass through”. Therefore, the last clause is not within the broadest reasonable interpretation of the claim and the rejection stands as reiterated herein below.
Moreover, the remarks take the position that the invention produces four unexpected results. MPEP 716.02 (b) recites “The evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992) (Mere conclusions in appellants’ brief that the claimed polymer had an unexpectedly increased impact strength "are not entitled to the weight of conclusions accompanying the evidence, either in the specification or in a declaration."”
Here, the remarks provide no evidence to support unexpected results either in the instant disclosure nor via an affidavit or declaration, therefore the arguments with respect to unexpected results are not persuasive.
The remarks are therefore unpersuasive and the rejection stands as reiterated herein below.
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 17-20 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 17 lacks written description for reciting “scanning at least one operating parameter f(t)of the ion mobility analyzer as a monotonic function of time t during an operating period from to to ti, such that ions with different mobilities pass through the ion mobility analyzer sequentially, wherein the analyte ions pass through the ion mobility analyzer within an operating parameter range of [f(tA,f(tB)], where to<tA<tB< t1;during the scanning of the at least one operating parameter f(t), actively maintaining a field strength in the first ion storage zone at a constant value set such that an acting force on the analyte ions is greater than a force generated by a gas flow, thereby causing the first ion storage zone to store ions; and actively maintaining a field strength in the second ion storage zone at a constant value set such that the acting force on the analyte ions is less than the force generated by the gas flow, thereby causing the second ion storage zone to store ions; and repeating the operating period multiple times, wherein in each operating period excluding a first operating period, the method comprises: during a first stage where to≤t <tA, storing, in the first ion storage zone, analyte ions generated by the ion source and/or at least part of analyte ions pre-stored in the second ion storage zone that pass through a part of the ion mobility analyzer; during a second stage where tA ≤t< tB, transmitting, through the ion mobility analyzer to a detector or a next stage analysis apparatus, the analyte ions generated by the ion source and the analyte ions stored in the first ion storage zone during the current operating period; and during a third stage where tb≤t <t1, storing in the second ion storage zone analyte ions generated by the ion source that pass through a part of the ion mobility analyzer”.
Specifically, the claim is drafted as a result achieved by scanning at least one parameter of an ion mobility spectrometer and maintaining a field strength such that two storage regions are created. However, the specification is devoid as to how this result is achieved. Specifically, paragraphs [0043]-[0048] of the instant published application reiterate the same process, however fail to describe any voltage sources, electrodes, processor, computer, program, flow chart, steps or any other means to achieve the claimed result. At best in the description of figure 2 in paragraph [0049] the instant disclosure suggests the IMS is an array of electrodes and control of fields. However, how the fields are generated and scanned (i.e. voltage sources and computer control) are not disclosed raising the issue of possession at to how the scan at least one parameter according to the claimed function and storage regions are achieved on the IMS. In otherwords, how the result is practically implemented on an ion mobility analyzer.
It is noted that paragraph [0049] further compares the difference between the prior art and the instant invention. While the structure is the same, the fields provided by the IMS are different. However, however the specification is notably silent as to how fields are specifically generated in the disclosed IMS and how they are controlled to achieve the desired scan. MPEP 2163.03 (V) recites:
“An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved”
Here, the claims require scanning the IMS according to a function, creating storage zones within the IMS, however the instant specification is devoid of any manner of achieving this desired result. Therefore, claim 17 fails to meet the written description requirement as required under 35 USC § 112(a).
It is noted that during the interview of 29 May 2026, the applicant’s representative indicated the reason a processor to perform the claimed steps could not be amended into the apparatus claims is because the specification fails to disclose such subject matter (see interview summary of 29 May 2026). Similarly, if there is no disclosed mechanism to achieve the claimed result in a method claim, the specification fails to provide adequate written description to achieve the claimed result in the method.
Claims 18-20 also fail to meet the written description requirement by virtue of their dependencies on rejected claim 17.
Additionally, note claims 18-20 each require results achieved with no disclosure as to how those results are achieved and are additionally rejected for the same reasons above with respect to claim 17.
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.
Claim(s) 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Gillig et al. (US pgPub 2019/0162698) in view of Green (US pgPub 2017/0338093).
Regarding claim 1, Gillig et al. teach an ion mobility analysis method (fig. 4a/4b), comprising:
continuously generating ions comprising analyte ions using an ion source (abstract, analyte ions ([0026]);
directing the generated ions into an ion mobility analyzer (IMS see figure 4a) comprising an ion inlet, a first channel, a second channel, an ion outlet, a first ion storage zone, and a second ion storage zone, wherein the first ion storage zone is located at an end of the second channel distal to the ion outlet, and the second ion storage zone is located at an end of the first channel proximal to the ion inlet (see annotated figure below, note first storage region is interpreted as an area of space surrounded by electrodes. Second storage region is actually disclosed to store in paragraph [0070] which recites the electric field gradient of the ion injection area 41 is decreased to a very low value so that no ions can enter the first drift/analyzer region (i.e. in the IMS proximal to the inlet as indicated in the annotated figure below))
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an ion mobility analyzer located downstream of the ion source for receiving the ions generated by the ion source and performing mobility analysis (ion mobility device between ion source 2 and detector 3);
scanning at least one operating parameter f(t)of the ion mobility analyzer as a monotonic function of time t during an operating period from to to ti, such that ions with different mobilities pass through the ion mobility analyzer sequentially, wherein the analyte ions pass through the ion mobility analyzer within an operating parameter range of [f(tA,f(tB)], where to<tA<tB< t1 (as indicated in figure 4b, see trap and elusion stage, where the elution stage scans such that ions of different mobility pass through the IMS sequentially)
during the scanning of the at least one operating parameter f(t), actively maintaining a field strength in the second ion storage zone at a constant value set such that the acting force on the analyte ions is less than the force generated by the gas flow, thereby causing the second ion storage zone to store ions ([0070] ion injection area 41 in figure 4b is set to a constant value during trap and elution scan such that ions are stored, paragraph [0070] expressly recites “the electric field gradient of the ion injection area 41 is decreased to a very low value so that no ions can enter the first drift/analyzer region” (i.e. stored in 41)).
While Gillig teaches a first trapping region ([0070]) and a first area that could be configured to store, Gillig fails to disclose during the scanning of the at least one operating parameter f(t), actively maintaining a field strength in the first ion storage zone at a constant value set such that an acting force on the analyte ions is greater than a force generated by a gas flow, thereby causing the first ion storage zone to store ions; repeating the operating period multiple times, wherein in each operating period excluding a first operating period, the method comprises: during a first stage where to≤t <tA, storing, in the first ion storage zone, analyte ions generated by the ion source and/or at least part of analyte ions pre-stored in the second ion storage zone that pass through a part of the ion mobility analyzer; during a second stage where tA ≤t< tB, transmitting, through the ion mobility analyzer to a detector or a next stage analysis apparatus, the analyte ions generated by the ion source and the analyte ions stored in the first ion storage zone during the current operating period; and during a third stage where tb≤t <t1, storing in the second ion storage zone analyte ions generated by the ion source that pass through a part of the ion mobility analyzer.
However, Green teaches actively maintaining a field strength in the first ion storage zone (storage zone 12 of IMS 10) at a constant value set such that an acting force on the analyte ions is greater than a force generated by a gas flow ([0141] note DC voltage applied to first region 12 of IMS), thereby causing the first ion storage zone to store ions ([0141] accumulating ions in 12);
repeating the operating period multiple times ([0149] teaches repeating cycle of figure 2), wherein in each operating period excluding a first operating period, the method comprises:
during a first stage where to≤t <tA, storing, in the first ion storage zone analyte ions generated by the ion source and/or at least part of analyte ions pre-stored in the second ion storage zone that pass through a part of the ion mobility analyzer ((see figure 2, T0-T1 ions stored in storage region 12 of IMS 10);
during a second stage where tA ≤t< tB, transmitting, through the ion mobility analyzer to a detector or a next stage analysis apparatus, the analyte ions generated by the ion source and the analyte ions stored in the first ion storage zone during the current operating period (fig. 2 T1-T2 ions pass from 12 to downstream region 16 of IMS 10. Note all ions are generated from ion source thus ions stored are ions generated from ion source thus concurrent transmission, see [0143]); and
during a third stage where tb≤t <t1, storing in the second ion storage zone analyte ions generated by the ion source that pass through a part of the ion mobility analyzer (fig. 2, T1-T2 ions are trapped in upstream region 14 note tb equal to t thus occurring at the same time as the second stage, see paragraph [0142]).
Green modifies the method of Gillig by suggesting an additional trapping regions downstream in the IMS inlet (note paragraph [0070] suggests first and second regions be regions of an IMS and paragraph [0133] suggests additional regions (i.e. trapping region 12 may be provided in the IMS)) during the scanning operation of Gillig.
Since both inventions are directed towards IMS, it would have been obvious to one of ordinary skill in the art to modify the scan of Gillig to include the time sequence for ion storage as suggested in Green because “successive populations of ions can be separated according to their ion mobility. It will also be appreciated that the disclosed arrangement can lead to a duty cycle of 100%, since a beam of ions can be continuously passed into the upstream accumulation region, which either accumulates the ions (e.g., during time period T.sub.1-T.sub.2) or passes them through to the first region 12 (e.g., during time period T.sub.2-T.sub.3). This can mean that no ions from the incoming beam of ions are lost to the system or otherwise.” ([0152]).
Note the amended limitations are contingent on ions being “able to pass through the ion mobility analyzer”, since ions are not required to pass through without being stored, under the condition no ions are able to pass, the last clause is not required, therefore does not distinguish the claimed invention over the prior art (see discussion above)
Regarding claim 18, Gillig teaches only ions with mobility larger than a pre-set ion mobility K1 can pass through the first channel (define the k value of 36 to be the minimum all ions passing through first channel in figure 4 thus preset values), and only ions with mobility smaller than a pre-set ion mobility K2 can pass through the second channel (define the k vale of 32 to be the maximum value, all ions pass through second channel thus preset values), wherein K1<K2, so that only ions with mobility between K1 and K2 can pass through the ion mobility analyzer (as seen in figure 4a).
Regarding claim 19, Gillig teaches wherein the first channel and the second channel contain a gas flow paralleled to an ion migration direction and a direct current electric field in the opposite direction of the gas flow (E1/E2 opposite of 4/5), and the direct current electric field in the first channel and the direct current electric field in the second channel are different in field strength (as illustrated in figure 4b the gradient in 1st region is higher than in the second region or conversely in figure 5b, the second region is lower than the first region in the elusion stage. Note, there is no claim requirement of the electric field during the operational period claimed in claim 17).
Regarding claim 20, Gillig teaches wherein the operating parameter is an electric field strength (as seen in figure 4B at elution stage).
Relevant art
US20110133072 teaches two storage regions in an IMS, see figure 1 and paragraph [0062]
Makarov (US pgPub 2022/0334080)
Hoyes (US pgPub 2011/0291001).
Conclusion
THIS ACTION IS MADE FINAL. 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Kim can be reached at (571)272-2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL J LOGIE/Primary Examiner, Art Unit 2881
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