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 .
Response to Arguments
Applicant's arguments filed on 07/21/2026 have been fully considered but they are not persuasive.
35 U.S.C. 112(f) claim interpretation regarding the limitations of “measurement execution unit” and “gas introduction control unit” in claim 1 are withdrawn in light of applicant’s amendments.
35 U.S.C. 112(f) claim interpretation regarding “first gas introduction unit” and “second gas introduction unit” in claim 1 are maintained.
The indefiniteness rejections of record are withdrawn in light of applicant’s amendments.
103 rejections regarding Claim 1:
Applicant argues that that the invention is based on the discovery that signal drift during switching between collision and non-collision measurement modes is caused by charge-up of ion optical elements, and that none of Hirano, Doherty, or Badiei recognizes this problem. This is not persuasive. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Claim 1 does not require reducing charge-up, forming or maintaining a “gas existence region,” maintaining substantially equal gas concentrations between measurements modes, or reducing signal drift. Rather, claim 1 requires, inter alia, selectively executing collision and non-collision gas measurement modes and controlling gas introduction such that gas is introduced into the cell in the collision mode and into the vacuum chamber outside the cell in the non-collision measurement mode. The prior art need not recognize or address the identical problem identified by applicant. The problem motivating the inventor may be only one of several problems addressed by the claimed subject matter, and neither the inventor’s particular motivation nor the particular problem identified in the application controls the obviousness determination.
Applicant next argues that the proposed combination changes Badiei’s principle of operation and renders Badiei unsatisfactory for its intended purpose because Badiei directs gas to a vacuum system during the vented mode, whereas claim 1 introduces gas into the vacuum chamber outside the cell during the non-collision mode. This argument is not persuasive and misapprehends the rejection. The rejection does not rely on Badiei’s vacuum foreline as the claimed second gas introduction unit, nor does it require bodily incorporating Badiei’s complete gas-delivery apparatus into Hirano. Hirano is modified to include the chamber-side gas-introduction location taught by Doherty, while Badiei is relied upon for its teaching of selectively controlling gas routing according to whether the mass spectrometer operates in pressurized/collision mode or a vented/non-collision mode. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Badiei’s principle of operation is not destroyed by the proposed modification. Badiei continued to provide gas to the cell during pressurized mode and to route gas away from the cell during the vented mode. In the proposed modification, the non-cell branch is connected to Doherty’s known chamber-side gas-introduction port rather than terminating at Badiei’s vacuum foreline. The collision cell therefore remains pressurized by the cell-side gas path during the non-collision measurement mode. Accordingly, the proposed modification does not render the combined mass spectrometer inoperative or prevent it from performing mass analysis in collision and non-collision modes,
Further, Applicant’s argument that there would have been no reasonable expectation of success is likewise not persuasive. Doherty expressly establishes that gas can successfully be introduced into analyzer chamber 105 outside the collision cell, and Badiei establishes that electrically controlled valves can selectively route gas according to the selected operation mode. The proposed combination therefore involves using a known mode-responsive valve arrangement to select between two known gas-introduction locations. The teachings provide at least a reasonable expectation that the resulting gas-porting arrangement would function as intended; absolute predictability or conclusive proof of efficacy is not required.
Last, applicant’s highlight argument is also not persuasive. It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the instance case, the reason for the combination is derived from the references themselves rather from applicant’s disclosure. Doherty teaches that chamber-side introduction of gas reduces noise, while Badiei teaches that rapid and controlled switching between vented and pressurized operating modes provides faster data availability, increased sample throughput, and reduced analysis cost. The proposes combination therefore follows from the express teachings and recognizes operational benefits of the prior art.
Accordingly, the 103 rejections to claims 1-4 on record are maintained.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
The “first gas introduction unit configured to introduce a predetermined gas” in claim1; corresponding structure is the “first gas supply tube 23” (Spec. para. [0024]).
The “second gas introduction unit configured to introduce a predetermined gas into the vacuum chamber” in claim 1; corresponding structure is the “second gas supply tube 24” (Spec. para. [0024]).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claim 1 is objected to because the recitation of “wherein the controller is execution unit configured to selectively execute…” contains typographical errors.
Appropriate correction is required.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0266984 A1 [hereinafter Hirano] in view of US 2009/0194679 A1 [hereinafter Doherty], and further in view of US 2011/0210241 A1 [hereinafter Badiei].
Regarding Claim 1:
Hirano teaches an inductively coupled plasma mass spectrometer (Abstract: a plasma ion source mass spectrometer), comprising:
an ion source (Fig. 1 -20) configured to ionize a sample component by an inductively coupled plasma ionization method (para. [0026]: “Within the plasma torch 20, an atomized sample (not shown) is introduced into the plasma 30 from the front of the plasma torch 20”);
a vacuum chamber (Fig. 1-52) into which ions generated by the ion source are introduced;
a cell (Fig.1-80) disposed inside the vacuum chamber and configured to bring ions generated by the ion source into contact with a predetermined gas (para. [0029]: “into the cell 80, a collision and/or reaction gas is introduced from an inlet 82. The molecules of introduced gas collide with various ions contained in the ion beam 200”);
a mass spectrometer unit (Fig. 1-91) which is disposed at a later stage of the vacuum chamber and configured to perform mass spectrometry of ions having passed through the cell or other ions derived from the ions (para. [0030]: “Ions contained in the ion beam 200 which have been guided into the mass filter 91 are separated on the basis of a ratio of mass and charges (m/z value) in the mass filter 91”)
a first gas introduction unit (Fig. 1-82) configured to introduce a predetermined gas into the cell (para. [0029]: “into the cell 80, a collision and/or reaction gas is introduced from an inlet 82. The molecules of introduced gas collide with various ions contained in the ion beam 200”).
However, Hirano does not specifically note a second gas introduction unit configured to introduce a predetermined gas into the vacuum chamber and outside the cell; and a controller configured to control the mass spectrometer unit as well as the first and second gas introduction units in order to perform an analysis, wherein the controller includes: a measurement execution unit configured to selectively execute a collision measurement mode or a non-collision measurement mode; and a gas introduction control unit configured to control gas introduction by the first and second gas introduction units, and wherein the gas introduction control unit is configured to introduce predetermined gas by the first gas introduction unit in response to the collision measurement mode executed by the measurement execution unit and introduce a predetermined gas by the second gas introduction unit in response to the non-collision measurement mode executed by the measurement execution unit.
Doherty teaches a mass spectrometer with two gas introduction paths from a gas source. Specifically, Doherty teaches:
a first gas introduction unit configured to introduce a predetermined gas into the cell (para. [0038]: gas introduced into collision cell 115 through the gas path E from gas source 112);
a second gas introduction unit configured to introduce a predetermined gas into the vacuum chamber and outside the cell (para. [0042]: introduce gas into the analyzer chamber 105 through the gas path D from gas source 112, where the collision cell 115 is located inside the collision cell 115); and
a controller configured to control the first and second gas introduction units (para. [0037]: “The gas can be introduced in any suitable manner, including, but not limited to, a mass flow controller or an electronic pressure sensor coupled to a port into the mass spectrometer”).
Badiei teaches a gas delivery system for mass spectrometer collision cell. Specifically, Badiei teaches:
the controller controls the mass spectrometer unit in order to perform an analysis (Fig. 2, Claim 5 and paras. [0033, 0035]: teaches “...the second output of the first and second three-way valves 222, 222' are normally closed in the vented mode ...and are open when they are energized by the user... when the user instructs the mass spectrometer to take measurements,” where “Mass analysis can be performed in the vented mode,” suggesting a control arrangement through which a user inputs instruction to the mass spectrometer to initiate a measurement operation and control the gas-delivery state for the selected mode, so that mass analysis can be performed in either vented/non-collision or pressurized/collision operation.), and
wherein the controller is execution unit configured to selectively execute a collision measurement mode or a non-collision measurement mode; and the controller is further to control gas introduction by the first and second gas introduction units (Fig. 2, Claim 5 and paras. [0033, 0035]: teaches “...the second output of the first and second three-way valves 222, 222' are normally closed in the vented mode of operation when they are not energized and are open when they are energized by the user so that gas flows to the input of the manifold 212 only when the user instructs the mass spectrometer to take measurements,” and “wherein the three way valve is electrically controlled and a signal to the three way valve opens the second output of the three-way valve to provide gas to the cell”) and
wherein the controller is configured to introduce predetermined gas by the first gas introduction unit in response to the collision measurement mode executed by the controller (Fig. 2, para. [0035]: “In the pressurized mode of operation...the second output of the first or second (or both) three-way valves 222, 222' are open... The collision or reaction gas flows into the cell 214 in the vacuum chamber until the desired gas pressure is reached... If a collision gas, such as helium is used, the collision gas molecules can collide with certain ions thereby lowering the energy of these ions”); and
introduce a predetermined gas by the controller in response to the non-collision measurement mode executed by the controller (Fig. 2, paras. [0013, 0034]: “In the vented-cell mode of operation, the collision/reaction cell is not pressurized with a collision gas or a reactive gas” in this mode, “any gas from the output of the mass flow controllers 210, 210' is directed to the vacuum system”).
Hirano teaches an ICP-MS apparatus including a vacuum chamber, a collision/reaction cell and inlet for introducing collision/reaction gas into the cell. Doherty teaches that a mass spectrometer may include a separate chamber-side gas introduction path. Badiei teaches a gas delivery system for a cell-based mass spectrometer using a three-way valve to allow the system to selectively transport gas in different paths in collision mode and vent mode. Therefore, it would have been obvious for an ordinary skilled person in the art, before the effectively time of filing, to incorporate the additional chamber-side gas path taught in Doherty and the valve control arrangement from Badiei to the ICP-MS collision cell system of Hirano, such that in the combined system, Hirano’s ICP-MS is modified to include the two gas paths taught by Doherty and control mechanism by Badiei: one to the collision cell and the other to the vacuum chamber outside cell; via a three-way valve, in collision mode, gas is routed through the first path to cell, and in non-collision/vented mode, gas is routed through the second path to vacuum chamber, while the cell is not directly pressurized by the cell-side path. One of ordinary skilled person would be motivated to make such a combination, so that the ICP-MS with collision/reaction cell could rapidly change modes of operation between different modes of operation and reducing the operating time required to pressure the cell, resulting in a cell-based mass spectrometer instrument with relatively fast data availability, higher sample throughput, and reduced cost of analysis. (Badiei, paras. [0014-0015, 0039]).
Regarding Claim 2:
Hirano teaches the inductively coupled plasma mass spectrometer according to claim 1. Hirano further teaches an axially shifted ion optical system between the cell and the mass spectrometer unit (as shown in Fig. 3, the axis 160 is shifted form the axis of 170).
Regarding Claim 3:
Hirano teaches the inductively coupled plasma mass spectrometer according to claim 1. Hirano further teaches wherein the mass spectrometer unit is a quadrupole mass filter (para. [0030]: “The mass filter 91 is configured by a multipole electrode with a prefilter...and the multipole electrode...of the mass filter 91 are typically of a four-pole structure”).
Regarding Claim 4:
Hirano teaches the inductively coupled plasma mass spectrometer according to claim 2. Hirano further teaches wherein the mass spectrometer unit is a quadrupole mass filter (para. [0030]: “The mass filter 91 is configured by a multipole electrode with a prefilter...and the multipole electrode...of the mass filter 91 are typically of a four-pole structure”).
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 JING WANG whose telephone number is (571)272-2504. The examiner can normally be reached M-F 7:30-17:00.
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/JING WANG/Examiner, Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881
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