DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-4 and 7-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea in the form of a mathematical relationship without significantly more. Specifically, the claim recites “measuring a value of the obtained initial mass spectrum, the value indicating an ion beam intensity of one or more ion species” and “providing an output comprising the mass spectrum with the operational electric potential applied to the skimmer.” These are descriptions of a identifying a number and creating a graph, respectively.
This judicial exception is not integrated into a practical application there is no claimed application of the graph. Instead, the entire remainder of the claim is directed to data gathering steps.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because all of the remaining steps are descriptions of generic data gathering steps, i.e., “obtaining an initial mass spectrum of a sample”, or generic extra-solution mass spectrometer setup steps, i.e., “applying a varying DC electric potential to the skimmer to identify an operational electric potential, wherein the DC electric potential is varied until the value indicating the ion beam intensity of one or more ion species changes by a predetermined amount.” Such steps are notoriously well known, and have been practiced since at least 1992, when US 5,218,204 was filed, therein describing the technique of changing the DC potential applied to a skimmer to improve ion beam intensity. US 5,218,204 at 3:20-47.
The courts have found mere data gathering to be insignificant extra-solution activity. In Mayo Collaborative Servs. v. Prometheus Labs. Inc, 566 U.S. 66, 79, 101 USPQ2d 1961, 1968 (2012) the courts found determining the level of a biomarker in blood was found to be insignificant extra-solution activity. Further, in PerkinElmer, Inc. v. Intema Ltd., 496 Fed. App'x 65, 73, 105 USPQ2d 1960, 1966 (Fed. Cir. 2012), the courts found assessing or measuring data derived from an ultrasound scan, to be used in a diagnosis, was found to be insignificant extra-solution activity. Likewise, the step of obtaining a mass spectrum for later use in making a graph is insignificant extra-solution data gathering.
Finally, mass spectrometer setup limitations only act to link the abstract ideas to the general field of mass spectrometry. In Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016), the court found that limiting an abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis to data related to the electric power grid, because limiting application of the abstract idea to power-grid monitoring is simply an attempt to limit the use of the abstract idea to a particular technological environment. Likewise, the steps of varying a voltage until an ion beam intensity changes is a generic process that simply looks to link the abstract idea of graphing a solution to the environment of a mass spectrometer, and is not significantly more than the abstract idea itself.
Dependent claims 2-4, 7-14 fail to provide a practical application to the above abstract ideas, as they offer no application whatsoever. Furthermore, dependent claims 2-4, 7-14, taken alone or in an ordered combination, fail to recite anything that is significantly more than the abstract idea at issue. Claims 2, 9-11, and 13-14 simply describe the context of the data gathering and are not significantly more that the abstract idea for the same reasons as noted above with respect to claim 1. Claims 3-7 add insignificant constraints to the data gathering and technological field and are not significantly more that the abstract idea for the same reasons as noted above with respect to claim 1. Claims 8 and 12 describe recording data using a generic computer, which is not significantly more than the abstract idea. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014).
Since the above abstract ideas are neither practically applied nor claimed with elements that might be considered to be significantly more than just the abstract ideas, the claims are rejected for failing the requirements of 35 USC 101.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4, 5, 6, 7, 8, 9, 12, 14 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,218,204 [Houk] in view of Hu, Ke, and R. S. Hauk. "Inductively coupled plasma mass spectrometry with an electrically floating sampling interface." Journal of the American Society for Mass Spectrometry 4.9 (1993): 733-741 [Hu].
Regarding Claim 1:
Houk teaches a method for operating a mass spectrometer having a skimmer (see Fig. 1) and a circuit configured to apply an electric potential to the skimmer (see Figs. 2-5), the method comprising the steps of:
obtaining an initial mass spectrum of a sample (5:54-65);
measuring a value of the obtained initial mass spectrum, the value indicating an ion beam intensity of one or more ion species (5:54-65);
applying a varying DC electric potential to the skimmer to identify an operational electric potential, wherein the DC electric potential is varied until the value indicating the ion beam intensity of one or more ion species changes by a predetermined amount (6:18-25);
wherein the predetermined amount is a percentage or fractional change in the value (6:18-25- any change is a percentage or fractional change when calculated from another value).
However, Houk fails to explicitly describe providing an output comprising the mass spectrum with the operational electric potential applied to the skimmer.
Hu teaches an ICP-MS with a biased skimmer. Abstract. Further, Hu teaches analysis providing an output comprising the mass spectrum (as described in the Data Acquisition section, first paragraph) with the operational electric potential applied to the skimmer (as described in the Data Acquisition section, third paragraph; and as shown in Fig. 5 and discussed in the sensitivity and Detection limits section.).
It would have been obvious to one of ordinary skill in the art before the effective time of filing to provide the above noted analysis of Hu in Houk. One would have been motivated to do so since it would allow a user to determine an optimum skimmer voltage for a given analyte.
Further, the above modified invention fails to specify that the predetermined amount is a reduction in the value. Nevertheless, this limitation effectively describes measuring the value until the value is reduced to nothing. Houk describes monitoring the DC bias to the skimmer to maximize the ion signal. Ending a search for a maximum once a general minimum, such as zero ion signal, is reached is an implicit part of any search for a maximum. This is evident, because otherwise the search for a maximum would never end. As such, it would have been obvious to one of ordinary skill in the art before the effective time of filing to stop the empirical search of Houk once an arbitrarily low signal was reached. Reaching such an arbitrarily low signal is the claimed reduction in value. One would have been motivated to do so since it would provide a defined end to the search for a maximum.
Regarding Claim 2:
The above modified invention teaches the method of claim 1, wherein the step of obtaining the initial mass spectrum of the sample is carried out with no electric potential or a ground potential applied to the skimmer. See Hu Fig. 5 at 0 V bias.
Regarding Claim 4:
The above modified invention teaches the method according to claim 1, wherein the value indicating the ion beam intensity is any one or more of: an amplitude of one or more peaks in the mass spectrum, and a measurement of a total current. See Hu Fig. 5; Houk Fig. 6.
Regarding Claim 7:
The above modified invention teaches the method of claim 1, wherein the reduction is between a factor of 3 and ten times. As shown in Hu Fig. 6, the measurements are taken at different voltages where the measured current varies by a factor of 5. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective time of filing to execute the empirical search for optimal DC voltages described in Hu and Houk until a similar reduction in signal of 5x is reached. One would have motivated to set such a parameter in order to complete the empirical searches in a reasonable time.
Regarding Claim 8:
The above modified invention teaches the method according to claim 1, further comprising using different samples having known compositions (Hu table 3) repeating the steps of:
obtaining an initial mass spectrum of a sample (5:54-65);
measuring a value of the obtained initial mass spectrum, the value indicating an ion beam intensity of one or more ion species (5:54-65);
applying a varying DC electric potential to the skimmer to identify an operational electric potential, wherein the DC electric potential is varied until the value indicating the ion beam intensity of the one or more ion species changes by a predetermined amount; and
providing an output comprising the mass spectrum with the operational electric potential applied to the skimmer (6:18-25); and
recording electrical potentials that change the value indicating an ion beam intensity for each known composition by the predetermined amount (Hu Figs. 5 and 6). It would have been obvious to one of ordinary skill in the art before the effective time of filing to repeat the empirical testing of Hu and Houk for the various samples disclosed by Hu. One would have been motivated to do so in order to calibrate the skimmer bias for different m/z ratios.
Regarding Claim 9:
The above modified invention teaches the method according to claim 1, further comprising providing a further output comprising a mass spectrum for an additional sample with the operational electric potential applied to the skimmer. It would have been obvious to one of ordinary skill in the art before the effective time of filing to repeat the empirical testing and spectrum outputs of Hu and Houk for the various samples disclosed by Hu. One would have been motivated to do so in order to calibrate the skimmer bias for different m/z ratios.
Regarding Claim 12:
The above modified invention teaches the method according to claim 1, further comprising the steps of:
storing the electric potential required to change the value indicating the ion beam intensity of the one or more ion species to the predetermined amount for different sample types and compositions. Hu table 3 and Figs. 5-6 show such storage.
Regarding Claim 14:
The above modified invention teaches the method according to claim 1, further comprising the steps of:
removing the applied electric potential (See Hu Fig. 5 at 0 V bias); and
providing a further output comprising a mass spectrum without the electric potential applied to the skimmer (Houk 5:54-65).
It would have been obvious to one of ordinary skill in the art before the effective time of filing to repeat the empirical testing and spectrum outputs of Hu and Houk for the various biases disclosed by Hu. One would have been motivated to do so in order to calibrate the skimmer biases.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over US 5,218,204 [Houk] in view of Hu, Ke, and R. S. Hauk. "Inductively coupled plasma mass spectrometry with an electrically floating sampling interface." Journal of the American Society for Mass Spectrometry 4.9 (1993): 733-741 [Hu] as applied to claim 1, and further in view of US 2013/0248701 A1 [Kalinitchenko].
Regarding Claim 3:
The above modified invention teaches the method of claim 1, but fails to teach the method further comprising the step of increasing or decreasing a pressure at an interface between a sampling aperture and the skimmer to vary the value indicating the ion beam intensity at the one or more ion species so that the combination of the increased or decreased pressure and electric potential provide the value indicating the ion beam intensity of the one or more ion species at the predetermined amount.
Kalinitchenko teaches an ICP-MS (para 4) comprising the step of increasing or decreasing a pressure at an interface ((30)) between a sampling aperture ((42)) and the skimmer ((26)) to vary the value indicating the ion beam intensity at the one or more ion species so that the combination of the increased or decreased pressure and electric potential provide the value indicating the ion beam intensity of the one or more ion species at the predetermined amount. Paras 62-65, 91. It would have been obvious to one of ordinary skill in the art before the effective time of filing to implement the pressure variation and associated skimmer bias variation of Kalinitchenko in the ICP-MS of the above modified invention. One would have been motivated to do so in order to compensate for kinetic energy losses from collisional scattering of the ions. Kalinitchenko para 91.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over US 5,218,204 [Houk] in view of Hu, Ke, and R. S. Hauk. "Inductively coupled plasma mass spectrometry with an electrically floating sampling interface." Journal of the American Society for Mass Spectrometry 4.9 (1993): 733-741 [Hu] as applied to claim 1, and further in view of US 5,576,540 [Jolliffe].
Regarding Claim 13:
The above modified invention teaches the method according to claim 1, but fails to teach the method further comprising the step of applying an AC current to the skimmer at the same time as applying the DC electric potential.
Jolliffe teaches a mass spectrometer applying AC current and DC bias to a skimmer at the same time. 4:45-49. It would have been obvious to one of ordinary skill in the art before the effective time of filing to add the AC current of Jolliffe to the biased skimmer of the above modified invention. One would have been motivated to do so in order to further optimize the resultant ion signal by empirical testing of added AC currents.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,218,204 [Houk] in view of Hu, Ke, and R. S. Hauk. "Inductively coupled plasma mass spectrometry with an electrically floating sampling interface." Journal of the American Society for Mass Spectrometry 4.9 (1993): 733-741 [Hu] as applied to claim 1, and further in view of US 12,051,584 B2 [Badiei].
Regarding Claim 10:
The above modified invention teaches the method according to claim 1, but fails to teach that the electric potential is a negative electric potential.
Badiei teaches a mass spectrometer (1:13-19) that applies a negative electric potential to a skimmer (13:6-8, 27:63-64). It would have been obvious to one of ordinary skill in the art before the effective time of filing to use the negative bias of Badiei in the biased skimmer of the above modified invention. One would have been motivated to do so in order to further optimize the resultant ion signal for ions by empirical testing negative biases.
Regarding Claim 11:
The above modified invention teaches the method of claim 10, wherein the electric potential is between −1V and −4V. Badiei 13:6-8.
Response to Arguments
Applicant's arguments filed 8/3/26 have been fully considered but they are not persuasive.
Applicant argues that the claimed invention is directed to significantly more than just an abstract idea because it also recites “applying and varying a DC electric potential to the skimmer using a circuit configured to apply the electric potential to the skimmer.” This is not persuasive. In the field of mass spectrometry, applying a voltage to a skimmer is a standard practice. This is evidenced by all of the references of record. Further, applying the voltage using a circuit is certainly not significantly more, as there is hardly another way to apply a DC voltage.
Applicant argues that the claimed invention should not be rejected under 35 USC 101 because it recited a practical application of the judicial exception, specifically, reducing a value in terms of a percentage or fractional change. This is not persuasive. Reducing a value is not practical application, when, as here, it effectively describes turning something off.
Applicant argues that claim 1 is analogous to “USPTO Example 45” and as such, should be considered eligible subject matter. Applicant appears to be referencing published guidance from the USPTO instead of substantive law. MPEP 2107 describes these guidelines:
Guidelines have been promulgated to assist Office personnel in their review of applications for compliance with the utility requirement. The Guidelines do not alter the substantive requirements of 35 U.S.C. 101 and 35 U.S.C. 112, nor are they designed to obviate the examiner’s review of applications for compliance with all other statutory requirements for patentability. The Guidelines do not constitute substantive rulemaking and hence do not have the force and effect of law. Rejections will be based upon the substantive law, and it is these rejections which are appealable. Consequently, any perceived failure by Office personnel to follow these Guidelines is neither appealable nor petitionable.
That said, the claim language at issue strongly resembles that of Parker v. Flook, 437 U.S. 584 (1978). Therein, temperature, pressure, and flow rates were constantly monitored and fed into the computer, and the computer recalculated alarm limits. In the instant case, skimmer voltages, spectra, and ion beam intensities are monitored, and a correlation between a predetermined reduction in value and spectra are output. That portion of the instant claims describes the determination of a mathematical correlation by experiment, and would foreclose all future practitioners from using such a mathematical correlation.
As noted by applicant, the instant invention also describes varying DC electric potential to a skimmer. In Diamond v. Diehr, 450 U.S. 175 (1981), the Court determined that a claim including an abstract idea in the form of a mathematical equation was made, but that the claim was patent eligible because it did not pre-empt the use of said equation. Diehr included significantly more than just the abstract idea, such as “installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time.” Diehr at 187. In Diehr, the addition of these various other elements made the claim patent eligible. However, varying DC electric potential to a skimmer does not cure rubber, or actually affect any external transformation such as those described in Diehr. Rather, the voltage is adjusted as part of the tuning of the mass spectrometer, a correlation is determined, and information is output. The abstract idea is not used to operate the machine, instead, the machine is operated, and an abstract idea is output. Thus, the instant claims would preclude anyone from writing down operating parameters while using a mass spectrometer with a skimmer by effectively claiming all reasonable implementation of the abstract mathematical correlation.
The instant invention is also distinguishable from Diehr in that the instant claims only describe routine and conventional steps of a mass spectrometer. Skimmers have DC voltages applied to them in order to manipulate charged particles passing therethrough. Adjusting the voltage applied to a skimmer (e.g., from 0 to any voltage or vice versa) is one the first things that ever occurred to a mass spectrometer skimmer, preceded only by installing said skimmer in said mass spectrometer. Thus, not only is varying DC electric potential to a skimmer conventional, it is an essential step of setup in the use of a skimmer. That is to say, its inclusion in the claim does little to nothing to limit the reach of the claimed abstract idea in pre-empting use of the claimed correlation.
Applicant argues that the proposed combination does not make obvious the claimed fractional or percentage reduction because the reduction is not arbitrary. This is not persuasive. As claimed, the reduction is entirely arbitrary. There is no effect associated with the reduction, or even a clear purpose to the reduction.
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 WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
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