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 .
Election/Restrictions
Applicant's election of Group I, Species I in the reply filed on 1/20/26 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Status of the Application
Claim(s) 1-22 is/are pending.
Claim(s) 8, 13-22 is/are withdrawn.
Claim(s) 1-7, 9-12 is/are rejected.
IDS
The Examiner would like to note the latest Information Disclosure Statement (IDS) submittals are extremely long. In the 12 IDSes filed, the NPL and foreign references alone comprise over 200 documents and are cumulatively over 4,540 pages long (not even including IDS forms). The Examiner has considered all of the references submitted as part of the IDS, within the constraints provided by the relevant rules and fees provided, but has not found any to be particularly relevant. If Applicant is aware of particularly pertinent material in the references, they should so state in a response to this Office action. Applicant is reminded of section 2004, paragraph 13, of the MPEP:
It is desirable to avoid the submission of long lists of documents if it can be avoided. Eliminate clearly irrelevant and marginally pertinent cumulative information. If a long list is submitted, highlight those documents which have been specifically brought to applicant’s attention and/or are known to be of most significance. See Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948, 175 USPQ 260 (S.D. Fla. 1972), aff ’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir. 1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48 F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995).
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) 2-7 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 2 in (i) recites “to advance the one of the frequency of the applied AC voltage by a first selected step size toward the second frequency, or the peak amplitude of the AC voltage by the first selected step size to toward the second amplitude” which suggests that the step size is either an amplitude or frequency value (e.g. V or Hz), but then further recites “(iii) executing (i) and (ii) until the one of the advanced frequency reaches the second frequency, or the advanced amplitude reaches the second amplitude” which is broad enough to read on changing both the amplitude and frequency by the same step amount. However, it is unclear how the same step amount can change both amplitude and frequency. The claim is read to mean that the same amplitude or frequency value changed in (i) is what is being repeated in (iii).
Claim 3 is rejected for similar reasons as claim 2 above.
Regarding claim 2, the term “advanced frequency” appears to refer to the subsequent frequency after advancing “the one of the frequency of the applied AC voltage by a first selected step size toward the second frequency”, but it is not entirely clear that this is the case. It is respectfully requested that the term be clarified. The same comments apply mutatis mutandis to “advanced amplitude”.
Claims 4-7 are rejected due to their dependency from claims 2 and/or 3.
AC frequency
AC peak amplitude
Waveform shape
Claim 1
First frequency
First amplitude
First waveform shape
Claim 1 (alt. 1)
Second frequency
First amplitude
First waveform shape
Claim 1 (alt. 2)
First frequency
Second amplitude
First waveform shape
Claim 1 (alt. 3)
First frequency
First amplitude
Second waveform shape
Claim 2 (alt. 1) (paraphrased)
Advanced frequency
advance the one of the frequency of the applied AC voltage by a first selected step size toward the second frequency
executing (i) and (ii) until the advanced frequency reaches the second frequency
Claim 2 (alt. 2) (paraphrased)
Advanced amplitude
advance peak amplitude of the AC voltage by the first selected step size to toward the second amplitude
executing (i) and (ii) until the advanced amplitude reaches the second amplitude
Claim 3 (alt. 1) (paraphrased)
advance the one of the frequency of the applied AC voltage by a second selected step size back toward the first frequency
executing (iv) and (v) until the advanced frequency reaches the first frequency
Claim 3 (alt. 2) (paraphrased)
advance peak amplitude of the AC voltage by the second selected step size back toward the first amplitude
executing (iv) and (v) until the peak amplitude reaches the first amplitude
Claim Rejections – 35 U.S.C. § 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 –
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Claim(s) 1-3, 10-11 is/are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Green et al. (US 20140131568 A1) [hereinafter Green].
Regarding claim 1, Green teaches a method for controlling a multi-pole charged particle transmission device having an even number of elongated rods (see e.g. fig 1) spaced apart radially about a central axis extending axially through the device (see e.g. fig 1) from a charged particle inlet at one end of the device to a charged particle outlet at an opposite end of the device (see fig 1), the method comprising:
controlling an AC voltage source to apply an AC voltage (see e.g. [0052], e.g. 69.936kHz, [0233], etc), having a frequency set to a first frequency, having a peak amplitude set to a first amplitude and having a waveform shape set to a first waveform shape (see [0233]), to the rods of the multi-pole charged particle transmission device (see same),
passing a set of charged particles through the charged particle transmission device with the frequency of the applied AC voltage at the first frequency, with the peak amplitude of the applied AG voltage at the first amplitude, and with the waveform shape of the AG voltage set to the first waveform shape (see same),
controlling the AC voltage source to change one of the frequency of the AG voltage to a second frequency different from the first frequency (e.g. 70.170 kHz, [0234], for different experiment, etc), the peak amplitude of the AG voltage to a second amplitude different from the first amplitude (see e.g. [0092]), or the waveform shape of the AC voltage to a second waveform shape different from the first waveform shape, and
passing another set of the charged particles through the charged particle transmission device with the one of the frequency of the applied AC voltage at the second frequency, the peak amplitude of the applied AC voltage at the second amplitude, or the waveform shape of the AC voltage having the second waveform shape (see same; alternately repeating experiment or for different experiment).
Regarding claim 2, Green teaches prior to controlling the AC source to change the one of the frequency of the AC voltage to the second frequency or the peak amplitude of the AC voltage to the second amplitude (e.g. during a prior experiment; alternately see MSn experiments, [0243]; alternately see sequential ejection, [0228]), (i) controlling the AC voltage source to advance the one of the frequency of the applied AC voltage by a first selected step size (required for operation of scanning; alternately could read as the entire range) toward the second frequency, or the peak amplitude of the AC voltage by the first selected step size to toward the second amplitude (e.g. ejection, [0228]; alternately MSn, [0243]), followed by (ii) passing a new set of the charged particles (note, this is broad enough to read on different portions of a single population of charged particles as they traverse the device) through the charged particle transmission device with the one of the frequency of the applied AC voltage at the advanced frequency, or the peak amplitude of the AC voltage at the advanced amplitude (e.g. ejection, [0228]; alternately MSn, [0243]), and (iii) executing (i) and (ii) until the one of the advanced frequency reaches the second frequency, or the advanced amplitude reaches the second amplitude (see same; alternately note selecting e.g. frequency for claim 2 and amplitude for claim 1, wherein the conditions are automatically met).
Regarding claim 3, Green teaches after the one of the advanced frequency reaches the second frequency, or the advanced amplitude reaches the second amplitude, (iv) controlling the AC voltage source to advance the one of the frequency of the applied AC voltage by a second selected step size (required for operation of scanning; alternately e.g. the entire difference) back toward the first frequency, or the peak amplitude of the AC voltage by the second selected step size back toward the first amplitude (e.g. for a subsequent experiment; alternately see MSn experiments, [0243]; alternately see sequential ejection, [0228]), followed by (v) passing another new set of the charged particles through the charged particle transmission device with the one of the frequency of the applied AC voltage at the advanced frequency, or the peak amplitude of the AC voltage at the advanced amplitude (e.g. ejection, [0228]; alternately MSn, [0243]), and (vi) executing (iv) and (v) until the one of the advanced frequency reaches the first frequency, or the peak amplitude reaches the first amplitude (see same; note also well known obviousness of selecting increasing or decreasing scan direction, see generally [0056]; alternately note selecting e.g. frequency for claim 3 and amplitude for claim 1, wherein the conditions are automatically met).
Regarding claim 10, Green teaches only the AC voltage is applied to the rods such that the multi-pole charged particle transmission device operates as a multi-pole charged particle guide (see e.g. RF-only mode, Green, [0129]).
Regarding claim 11, Green teaches controlling a DC voltage source to also apply a DC voltage to the rods of the multi-pole charged particle transmission device such that the multi-pole charged particle transmission device operates as a multi-pole charged particle mass-to-charge ratio filter (see e.g. Green, [0129]).
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) 2-7, 9, 12 is/are rejected under 35 U.S.C. § 103 as being unpatentable over Green et al. (US 20140131568 A1) [hereinafter Green].
Regarding claim 2, it is alternately noted that the claim limitations would also have been obvious in view of Green, because the claims are broad enough to read on wherein the further steps of (i) controlling, (ii) passing a new set of the charged particles, and (iii) repeating, are performed on different samples, different parts of the same sample, different passes of the same fragmented sample (e.g. MSn, [0243]), on a completely different experiments, or even repeating the experiment a different day or in a different lab. See MPEP 2144.04. It is further noted that a mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See MPEP 2144.04; In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). It is further noted it has been held that a mere repetition of steps to achieve a desired effect would have been obvious as a routine skill in the art. See MPEP 2143.01; Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F. 3d 1324 (Fed. Cir. 2009).
Regarding claim 3, it is alternately noted that the claim limitations would also have been obvious in view of Green, for similar reasons as claim 2 above, based on interpreting the steps being performed on a different experiment, different MSn, later repetition, etc. It is also noted that it was well known in the art at the time the application was effectively filed to select an increasing or decreasing frequency or amplitude scanning direction (see generally Green, [0056]).
Regarding claim 4, Green may fail to explicitly disclose executing a selected number of times, (i)-(iii) and followed by (iv)-(vi). However, under the broadest reasonable interpretation of the claims, the number may be one or zero. Further, it is noted that it would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to repeat the steps, for example for a subsequent experiment (alternately see MSn, [0243]; alternately see sequential ejection, [0228]), as a routine skill in the art. It is further noted it has been held that a mere repetition of steps to achieve a desired effect would have been obvious as a routine skill in the art. See MPEP 2143.01; Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F. 3d 1324 (Fed. Cir. 2009).
Regarding claim 5, Green may fail to explicitly disclose completing (iii) within a selected time period. However, it would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to adjust the time period for completing the experiment (see e.g. Green, [0271]) for example to balance efficiency and precision. It is also noted that a skilled artisan would have recognized an experiment must be completed within certain engineering constraints, including time, and complete the experiment before e.g. funding or grants are exhausted for that fiscal year(s).
Regarding claim 6, Green may fail to explicitly disclose completing (vi) within a selected time period. However, it would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to adjust the time period for completing the experiment (see e.g. Green, [0271]) for example to balance efficiency and precision. It is also noted that a skilled artisan would have recognized an experiment must be completed within certain engineering constraints, including time, and complete the experiment before e.g. funding or grants are exhausted for that fiscal year(s).
Regarding claim 7, Green may fail to explicitly disclose completing each execution of (i)-(iii) and (iv)-(vi) within a selected time period. However, it would have been obvious to a person having ordinary skill in the art at the time the application was effectively filed to adjust the time period for completing the experiment (see e.g. Green, [0271]) for example to balance efficiency and precision. It is also noted that a skilled artisan would have recognized an experiment must be completed within certain engineering constraints, including time, and complete the experiment before e.g. funding or grants are exhausted for that fiscal year(s).
Regarding claim 9, Green teaches controlling the AC voltage source comprises controlling the AC voltage source to change the peak amplitude of the AC voltage, the method further comprising: selecting a base peak amplitude of the AC voltage (e.g. some intermediate amplitude during amplitude scan, see e.g. Green, [0052,228,243],etc; alternately defining as the second amplitude) produced by the AC voltage source, and selecting the first and second amplitudes, wherein the second amplitude is greater than the first amplitude (see same), such that the base peak amplitude is between the first and second amplitudes, such that the base peak amplitude is the first amplitude, or such that the base peak amplitude is the second amplitude (see same). Green may fail to explicitly disclose the base peak amplitude being a function of mass-to-charge ratios of the charged particles to be passed through the multi-pole charged particle transmission device. However, inasmuch as the references address mathematical calculations of the same problem, using same parameters, applying a modified mathematical approach without changing the issue being addressed is not sufficient to distinguish over the prior art. The equations themselves are not a patentable subject matter; as to the method steps utilizing particular equations, the use of particular mathematical means would have accomplished the same result.
Regarding claim 12, Green teaches selecting a magnitude of the DC voltage which defines a corresponding range of mass-to-charge ratios to pass through the multi-pole charged particle mass-to-charge ratio filter (required for operation of mass filter, see [0241]), and controlling the DC voltage source to apply the DC voltage with the selected magnitude to the rods of the multi-pole charged particle mass-to-charge ratio filter so as to pass through the multi-pole charged particle mass-to-charge ratio filter only charged particles having mass-to-charge ratios within the corresponding range of mass-to- charge ratios (see e.g. [0241,246]). It is unclear if the magnitude of the DC voltage by itself defines a corresponding range of mass-to-charge ratios. However, under the broadest reasonable interpretation of the claims, given the other operating parameters of the system, the selected DC voltage would naturally affect (thereby correspond to) the range of m/z ratios being selected by the filter. Alternately, it is noted that tuning of mass filter via adjustment of DC voltages was well known and conventional at the time the application was effectively filed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James Choi whose telephone number is (571) 272 – 2689. The examiner can normally be reached on 9:30 am – 6:00 pm M-F.
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/JAMES CHOI/Examiner, Art Unit 2878