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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-16 and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites that a controller causes a voltage source to switch applied polarities “according to at least on predefined criterion.” Claims 5-7 define particular predefined criteria. One of ordinary skill in the art would not be able to ascertain whether a given controller was operating according to a predefined criterion, since operating according to a criterion does not require that the criterion be met. For example, the controller could be operated according to a criterion that signal to noise at a detector be kept at a preferred level. However, one observing the controller would not be able to ascertain what criterion at issue, since any arbitrary number of other criteria would be met by the same controller tuning. Since the defining characteristic of the invention is an abstract invention, one of ordinary skill in the art would be unable to determine whether he possessed a device corresponding to the scope of the claimed invention. If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate. See Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470, 28 USPQ2d 1190, 1195 (Fed. Cir. 1993). Accordingly, the claims are indefinite. For the purposes of expedited examination, the limitations at issue will be interpreted as though they were non-limiting intended uses.
Claim 18 is directed to a mass spectrometer, and recites a pair of conditional steps. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b). MPEP 2173.05(p) (II); and See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). This conditional steps at issue make the claim indefinite because the step claim language makes it unclear whether infringement occurs when one creates the system that allows for the steps, or whether infringement occurs when the steps actually occur.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-7, 10-19 rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2020039371 A1 [Hager].
Regarding Claim 1:
Hager discloses an ion mass filter for use in a mass spectrometer, comprising:
a plurality of rods arranged in a multipole configuration to provide a passageway through which ions can travel (Fig. 14 (130a, b)), said plurality of rods being configured for application of RF voltages thereto to generate an electromagnetic field within said passageway for providing radial confinement of the ions (see e.g. Fig. 10) and further configured for application of a DC voltage thereto (para 15),
at least two pairs of auxiliary electrodes interspersed between said plurality of rods, wherein one pair forms a first pole of the auxiliary electrodes and the other pair form a second pole of the auxiliary electrodes (Fig. 14 (140a, 140b)),
at least a first DC voltage source for applying DC bias voltages to the auxiliary electrodes (Fig. 14 (1410, 1420)), and
a controller in communication with said at least one DC voltage source (para 18) for causing said DC voltage source to switch polarity of a bias voltage differential between said poles according to at least one predefined criterion (para 100-102).
Regarding Claim 2:
Hager discloses the ion mass filter of claim 1, further comprising an RF voltage source configured to apply RF voltages to said plurality of rods. Para 64
Regarding Claim 3:
Hager discloses the ion mass filter of claim 1, further comprising at least a second DC voltage source configured to apply a DC voltage to said plurality of rods. Para 64.
Regarding Claim 4:
Hager discloses the ion mass filter of claim 3, wherein the DC voltage applied to said plurality of rods and the DC bias voltages applied to said auxiliary electrodes are configured to generate an electromagnetic field within said passageway such that an interaction of the ions with the electromagnetic field results in ions having m/z ratios within a target range experiencing stable trajectories and ions having m/z ratios outside said target range experiencing unstable trajectories. Paras 61-62 discuss ion selection and filtering, which is the effect being described above.
Regarding Claim 5:
Hager discloses the ion mass filter of claim 4, wherein said predefined criterion is configured to allow substantially equal accumulation of the unstable ions on said first and said second pole of the auxiliary electrodes. This limitation is an intended use, not a recitation of the structure of the device or the fashion in which it functions. As such, it does not carry patentable weight.
Regarding Claim 6:
Hager discloses the ion filter of claim 5, wherein said at least one predefined criterion comprises a maximum number of ions detected by an ion detector of a mass spectrometer in which said ion filter is incorporated. This limitation is an intended use, not a recitation of the structure of the device or the fashion in which it functions. As such, it does not carry patentable weight.
Regarding Claim 7:
Hager discloses the ion filter of claim 5, wherein said at least one predefined criterion comprises a predefined temporal schedule for switching the polarity of the bias DC voltage differential between the first and the second poles of the auxiliary electrodes. This limitation is an intended use, not a recitation of the structure of the device or the fashion in which it functions. As such, it does not carry patentable weight.
Regarding Claim 10:
Hager discloses the ion filter of claim 1, wherein said plurality electrodes comprises four rods arranged in a quadrupole configuration such that each of said auxiliary electrodes is disposed between two of said plurality of rods. See Fig. 14.
Regarding Claim 11:
Hager discloses the ion filter of claim 1, wherein said auxiliary electrodes comprise a plurality of T-shaped auxiliary electrodes. See Fig. 14.
Regarding Claim 12:
Hager discloses the ion filter of claim 11, wherein each of said T-shaped auxiliary electrodes comprises a backplate and a stem extending radially from said backplate. See Fig. 14.
Regarding Claim 13:
Hager discloses the ion filter of claim 1, wherein said RF voltages have a frequency in a range of about 0.1 MHz to about 5 MHz. See paras 74, 124, et al.
Regarding Claim 14:
Hager discloses the high pass filter of claim 13, wherein said RF voltages have an amplitude in a range of about 10 volts to about 5 kilovolts. See paras 74, 124, et al.
Regarding Claim 15:
Hager discloses the ion filter of claim 1, wherein said DC voltage applied to said plurality of multipole rods is in a range of about −250 volts to about +250 volts. Para 124.
Regarding Claim 16:
Hager discloses the ion filter of claim 15, wherein said DC bias voltages are in a range of about −8 kilovolts volts to about +8 kilovolts. Para 124.
Regarding Claim 17:
Hager discloses a mass spectrometer, comprising:
an ion filter comprising (fig. 14, abstract):
a plurality of rods arranged in a multipole configuration to provide a passageway through which ions can travel (Fig. 14 (130a, b)), said plurality of rods being configured for application of RF voltages thereto to generate an electromagnetic field within said passageway for providing radial confinement of the ions (see e.g. Fig. 10) and further configured for application of a DC voltage thereto (para 15),
at least two pairs of auxiliary electrodes interspersed between said plurality of rods, wherein one pair forms a first pole of the auxiliary electrodes and the other pair form a second pole of the auxiliary electrodes (Fig. 14 (140a, 140b)),
wherein the DC bias voltages applied to the auxiliary electrodes are configured relative to said DC voltage applied to said plurality of rods such that ions having m/z ratios within a target range experience stable trajectories as they pass through the passageway and ions having m/z ratios outside said target range experience unstable trajectories so as to be deposited on one of said pairs of the auxiliary electrodes based on an electric charge of the ions and the polarities of the DC bias voltages applied to said auxiliary electrodes relative to said DC voltage (the above wherein clause describes an intended result of a DC bias application to the aux electrodes, not an actual occurrence. Hager, at para 88, describes applying the recited DC biases, and further describes both filtering, i.e., ions impacting the electrodes, and selecting, i.e., ions passing through the filter. As such, Hager teaches the claimed structure, and further describes the same intended results.).
Regarding Claim 18:
Hager discloses the mass spectrometer of claim 17, wherein at least a portion of said unstable ions is deposited on the pair of the auxiliary electrodes that is maintained at a DC bias voltage that is positive relative to said DC voltage applied to said multipole rods when said ions have a negative electric charge and at least a portion of said unstable ions is deposited on the pair of the auxiliary electrodes that is maintained at a DC bias voltage that is negative relative to the DC voltage applied to said multipole rods when the ions have a positive electric charge. This limitation is an intended use, not a recitation of the structure of the device or the fashion in which it functions. As such, it does not carry patentable weight.
Regarding Claim 19:
Hager discloses the mass spectrometer of claim 17, further comprising at least one DC voltage source configured to apply said DC voltage to said plurality of multipole rods and said DC bias voltages to said auxiliary electrodes. Fig. 14 (1410, 1420).
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 8-9 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hager in view of US 3,725,700 [Turner].
Regarding Claim 8:
Hager teaches the ion filter of claim 1, but it does not specify that its controller is configured to cause the first DC voltage source to switch the polarity of the DC bias voltage differential between the first and the second poles of the auxiliary electrodes in successive sample runs.
Turner teaches a quadrupole mass filter (2:16-26) including auxiliary electrodes interspersed between (1:34-50), wherein the DC voltage source to switches the polarity of the DC bias voltage differential between the first and the second poles of the auxiliary electrodes (1:45-55). It would have been obvious to one of ordinary skill in the art before the effective time of filing to implement the DC bias changing of Turner in the controller of Hager such that in between sample runs the bias is switched. This would have been obvious because Turner specifies that the biases should be changed over time so as to compensate for changes in ion peak shape and sensitivity. Turner 1:50-55.
Regarding Claim 9:
Hager teaches the ion filter of claim 1, but fails to teach that said controller is configured to cause the first DC voltage source to switch the polarity of the DC bias voltage differential between the first and the second poles in response to detection of a degradation in performance of said ion filter.
Turner teaches a quadrupole mass filter (2:16-26) including auxiliary electrodes interspersed between (1:34-50), wherein the DC voltage source to switches the polarity of the DC bias voltage differential between the first and the second poles of the auxiliary electrodes (1:45-55). It would have been obvious to one of ordinary skill in the art before the effective time of filing to implement the DC bias changing of Turner in the controller of Hager such that the bias is switched. This would have been obvious because Turner specifies that the biases should be changed over time so as to compensate for changes in ion peak shape and sensitivity, i.e., filter performance. Turner 1:50-55.
Regarding Claim 20:
Hager teaches the mass spectrometer of claim 19, further comprising a controller in communication with said at least one DC voltage source (para 18), but fails to teach that the controller is configured to cause said DC voltage source to switch a polarity of the DC bias voltage differential between said pair of the auxiliary electrodes so as to change the pair of the auxiliary electrodes on which said unstable ions are deposited.
Turner teaches a quadrupole mass filter (2:16-26) including auxiliary electrodes interspersed between (1:34-50), wherein the DC voltage source to switches the polarity of the DC bias voltage differential between the first and the second poles of the auxiliary electrodes (1:45-55). It would have been obvious to one of ordinary skill in the art before the effective time of filing to implement the DC bias changing of Turner in the controller of Hager such that in between sample runs the bias is switched, thus changing where unstable ions are deposited. This would have been obvious because Turner specifies that the biases should be changed over time so as to compensate for changes in ion peak shape and sensitivity. Turner 1:50-55.
Conclusion
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