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 § 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 –
(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.
Claim(s) 1-4 and 6-20 is/are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by US 2011/0266435 (Hoyes et al.).
Regarding claim 1, Hoyes et al. discloses an ion guide comprising:
a plurality of electrodes (fig. 1, elements 1-3, also fig. 3, elements 4 & 5); and
at least one voltage supply configured to:
apply travelling potentials to electrodes of the plurality of electrodes to guide ions in a first direction (“Ions are propelled along the length of the first ion guide 1 by applying a DC travelling wave or one or more transient DC voltages or potentials to the electrodes 1a comprising the first ion guide 1” P 135); and
apply travelling potentials to electrodes of the plurality of electrodes to guide ions in a second direction (“According to other embodiments other methods may be used in order to urge ions from one ion guide to an adjacent ion guide. For example, a DC travelling wave or DC transient voltage or potential may be used or applied to electrodes in the transfer section between the two ion guides.” P 141).
Regarding claim 2, Hoyes et al. discloses the ion guide of claim 1, wherein the first direction and the second direction are orthogonal to each other (fig. 1, arrows include orthogonal directions).
Regarding claim 3, Hoyes et al. discloses the ion guide of claim 1, wherein the plurality of electrodes comprises electrodes arranged in rows and columns (fig. 1, 3 rows which create column in transfer region, also fig. 3, rows 4 & 5, each pair of electrodes in the vertical direction create a column); and the at least one voltage supply is configured to: successively apply potentials to successive rows of electrodes to guide ions in the first direction; and successively apply potentials to successive columns of electrodes to guide ions in the second direction (fig. 1, arrows include orthogonal directions).
Regarding claim 4, Hoyes et al. discloses the ion guide of claim 1, wherein the at least one voltage supply is configured to: apply travelling potentials to electrodes of the plurality of electrodes to guide ions along an ion guiding path in the first direction (“Ions are propelled along the length of the first ion guide 1 by applying a DC travelling wave or one or more transient DC voltages or potentials to the electrodes 1a comprising the first ion guide 1” P 135); and apply travelling potentials to electrodes of the plurality of electrodes to guide ions into or out of the ion guiding path in the second direction (“According to other embodiments other methods may be used in order to urge ions from one ion guide to an adjacent ion guide. For example, a DC travelling wave or DC transient voltage or potential may be used or applied to electrodes in the transfer section between the two ion guides.” P 141).
Regarding claim 6, Hoyes et al. discloses the ion guide of claim 1, wherein the plurality of electrodes forms a closed-loop in the first direction (“In this model the transfer region comprising electrodes with radial apertures comprises eight electrodes 7. The remaining electrodes comprise stacked ring ion guide electrode plates 6 which form a closed loop. A 5V DC bias is applied or maintained between the stacked ring ion guides 4,5 in the example shown in FIG. 3. The ion is modelled as being created in the upper stacked ring ion guide 4 and is then propelled to the right by a DC travelling wave or transient DC voltage or potential to the transfer region between the two ion guides 4,5. The ion is then rapidly transferred into the lower stacked ring ion guide 5. The ion is then propelled in the opposite direction by a DC travelling wave or DC transient voltage or potential.” P 156).
Regarding claim 7, Hoyes et al. discloses the ion guide of claim 6, wherein the at least one voltage supply is configured to apply travelling potentials to electrodes of the plurality of electrodes to guide ions around the closed-loop in the first direction (“In this model the transfer region comprising electrodes with radial apertures comprises eight electrodes 7. The remaining electrodes comprise stacked ring ion guide electrode plates 6 which form a closed loop. A 5V DC bias is applied or maintained between the stacked ring ion guides 4,5 in the example shown in FIG. 3. The ion is modelled as being created in the upper stacked ring ion guide 4 and is then propelled to the right by a DC travelling wave or transient DC voltage or potential to the transfer region between the two ion guides 4,5. The ion is then rapidly transferred into the lower stacked ring ion guide 5. The ion is then propelled in the opposite direction by a DC travelling wave or DC transient voltage or potential.” P 156).
Regarding claim 8, Hoyes et al. discloses the ion guide of claim 6, wherein the at least one voltage supply is configured to apply travelling potentials to electrodes of the plurality of electrodes to guide ions into or out of the closed-loop in the second direction (“In this model the transfer region comprising electrodes with radial apertures comprises eight electrodes 7. The remaining electrodes comprise stacked ring ion guide electrode plates 6 which form a closed loop. A 5V DC bias is applied or maintained between the stacked ring ion guides 4,5 in the example shown in FIG. 3. The ion is modelled as being created in the upper stacked ring ion guide 4 and is then propelled to the right by a DC travelling wave or transient DC voltage or potential to the transfer region between the two ion guides 4,5. The ion is then rapidly transferred into the lower stacked ring ion guide 5. The ion is then propelled in the opposite direction by a DC travelling wave or DC transient voltage or potential.” P 156).
Regarding claim 9, Hoyes et al. discloses an ion mobility separator comprising the ion guide of claim 1 (“The present invention relates to an ion guide, an ion mobility spectrometer or separator, a mass spectrometer, a method of guiding ions, a method of separating ions according to their ion mobility and a method of mass spectrometry.” P1).
Regarding claim 10, Hoyes et al. discloses the ion mobility separator of claim 9, wherein the at least one voltage supply is configured to apply travelling potentials to electrodes of the plurality of electrodes to cause ions to separate according to their ion mobility in the first direction (“One or more travelling DC waves or transient DC voltages may be applied to one or more of the stacked ring ion guide plates or rings or other ion guide devices in order to drive ions through the stacked ring ion guides or other ion guides and preferably through a buffer gas. As a result, according to the preferred embodiment ions may be separated according to their ion mobility as they pass along and through one or more of the stacked ring ion guides or other ion guides.” P 88).
Regarding claim 11, Hoyes et al. discloses the ion mobility separator of claim 9, wherein the at least one voltage supply is configured to apply travelling potentials to guide ions into or out of the ion mobility separator in the second direction (“In this model the transfer region comprising electrodes with radial apertures comprises eight electrodes 7. The remaining electrodes comprise stacked ring ion guide electrode plates 6 which form a closed loop. A 5V DC bias is applied or maintained between the stacked ring ion guides 4,5 in the example shown in FIG. 3. The ion is modelled as being created in the upper stacked ring ion guide 4 and is then propelled to the right by a DC travelling wave or transient DC voltage or potential to the transfer region between the two ion guides 4,5. The ion is then rapidly transferred into the lower stacked ring ion guide 5. The ion is then propelled in the opposite direction by a DC travelling wave or DC transient voltage or potential.” P 156).
Regarding claim 12, Hoyes et al. discloses a spectrometer comprising the ion guide of claim 1 (“The present invention relates to an ion guide, an ion mobility spectrometer or separator, a mass spectrometer, a method of guiding ions, a method of separating ions according to their ion mobility and a method of mass spectrometry.” P1).
Regarding claim 13, Hoyes et al. discloses a method of operating an ion guide that comprises a plurality of electrodes, the method comprising: applying travelling potentials to electrodes of the plurality of electrodes to guide ions in a first direction; and applying travelling potentials to electrodes of the plurality of electrodes to guide ions in a second direction (“In this model the transfer region comprising electrodes with radial apertures comprises eight electrodes 7. The remaining electrodes comprise stacked ring ion guide electrode plates 6 which form a closed loop. A 5V DC bias is applied or maintained between the stacked ring ion guides 4,5 in the example shown in FIG. 3. The ion is modelled as being created in the upper stacked ring ion guide 4 and is then propelled to the right by a DC travelling wave or transient DC voltage or potential to the transfer region between the two ion guides 4,5. The ion is then rapidly transferred into the lower stacked ring ion guide 5. The ion is then propelled in the opposite direction by a DC travelling wave or DC transient voltage or potential.” P 156).
Regarding claim 14, Hoyes et al. discloses method of claim 13, comprising: applying travelling potentials to electrodes of the plurality of electrodes to guide ions in the first direction, and then in the second direction; and/or applying travelling potentials to electrodes of the plurality of electrodes to guide ions in the second direction, and then in the first direction (“In this model the transfer region comprising electrodes with radial apertures comprises eight electrodes 7. The remaining electrodes comprise stacked ring ion guide electrode plates 6 which form a closed loop. A 5V DC bias is applied or maintained between the stacked ring ion guides 4,5 in the example shown in FIG. 3. The ion is modelled as being created in the upper stacked ring ion guide 4 and is then propelled to the right by a DC travelling wave or transient DC voltage or potential to the transfer region between the two ion guides 4,5. The ion is then rapidly transferred into the lower stacked ring ion guide 5. The ion is then propelled in the opposite direction by a DC travelling wave or DC transient voltage or potential.” P 156).
. Regarding claim 15, Hoyes et al. discloses method of claim 13, wherein the first direction and the second direction are orthogonal to each other (fig. 1 & 3, transfer direction is orthogonal to the main travel direction).
Regarding claim 16, Hoyes et al. discloses method of claim 13, wherein: the plurality of electrodes comprises electrodes arranged in rows and columns; applying travelling potentials to electrodes of the plurality of electrodes to guide ions in a first direction comprises successively applying potentials to successive rows of electrodes to guide ions in the first direction (fig. 1, 3 rows which create column in transfer region, also fig. 3, rows 4 & 5, each pair of electrodes in the vertical direction create a column); and applying travelling potentials to electrodes of the plurality of electrodes to guide ions in a second direction comprises successively applying potentials to successive columns of electrodes to guide ions in the second direction (“In this model the transfer region comprising electrodes with radial apertures comprises eight electrodes 7. The remaining electrodes comprise stacked ring ion guide electrode plates 6 which form a closed loop. A 5V DC bias is applied or maintained between the stacked ring ion guides 4,5 in the example shown in FIG. 3. The ion is modelled as being created in the upper stacked ring ion guide 4 and is then propelled to the right by a DC travelling wave or transient DC voltage or potential to the transfer region between the two ion guides 4,5. The ion is then rapidly transferred into the lower stacked ring ion guide 5. The ion is then propelled in the opposite direction by a DC travelling wave or DC transient voltage or potential.” P 156).
Regarding claim 17, Hoyes et al. discloses method of claim 13, wherein: applying travelling potentials to electrodes of the plurality of electrodes to guide ions in a first direction comprises applying travelling potentials to electrodes of the plurality of electrodes to guide ions along an ion guiding path in the first direction; and applying travelling potentials to electrodes of the plurality of electrodes to guide ions in a second direction comprises applying travelling potentials to electrodes of the plurality of electrodes to guide ions into or out of the ion guiding path in the second direction (“In this model the transfer region comprising electrodes with radial apertures comprises eight electrodes 7. The remaining electrodes comprise stacked ring ion guide electrode plates 6 which form a closed loop. A 5V DC bias is applied or maintained between the stacked ring ion guides 4,5 in the example shown in FIG. 3. The ion is modelled as being created in the upper stacked ring ion guide 4 and is then propelled to the right by a DC travelling wave or transient DC voltage or potential to the transfer region between the two ion guides 4,5. The ion is then rapidly transferred into the lower stacked ring ion guide 5. The ion is then propelled in the opposite direction by a DC travelling wave or DC transient voltage or potential.” P 156).
Regarding claim 18, Hoyes et al. discloses method of claim 13, wherein: the plurality of electrodes forms a closed-loop in the first direction; applying travelling potentials to electrodes of the plurality of electrodes to guide ions in a first direction comprises applying travelling potentials to electrodes of the plurality of electrodes to guide ions around the closed-loop in the first direction; and applying travelling potentials to electrodes of the plurality of electrodes to guide ions in a second direction comprises applying travelling potentials to electrodes of the plurality of electrodes to guide ions into or out of the closed-loop in the second direction (“In this model the transfer region comprising electrodes with radial apertures comprises eight electrodes 7. The remaining electrodes comprise stacked ring ion guide electrode plates 6 which form a closed loop. A 5V DC bias is applied or maintained between the stacked ring ion guides 4,5 in the example shown in FIG. 3. The ion is modelled as being created in the upper stacked ring ion guide 4 and is then propelled to the right by a DC travelling wave or transient DC voltage or potential to the transfer region between the two ion guides 4,5. The ion is then rapidly transferred into the lower stacked ring ion guide 5. The ion is then propelled in the opposite direction by a DC travelling wave or DC transient voltage or potential.” P 156).
Regarding claim 19, Hoyes et al. discloses method of claim 13, wherein: the ion guide forms an ion mobility separator (“The present invention relates to an ion guide, an ion mobility spectrometer or separator, a mass spectrometer, a method of guiding ions, a method of separating ions according to their ion mobility and a method of mass spectrometry.” P1); applying travelling potentials to electrodes of the plurality of electrodes to guide ions in a first direction comprises applying travelling potentials to electrodes of the plurality of electrodes to cause ions to separate according to their ion mobility in the first direction (“One or more travelling DC waves or transient DC voltages may be applied to one or more of the stacked ring ion guide plates or rings or other ion guide devices in order to drive ions through the stacked ring ion guides or other ion guides and preferably through a buffer gas. As a result, according to the preferred embodiment ions may be separated according to their ion mobility as they pass along and through one or more of the stacked ring ion guides or other ion guides.” P 88); and applying travelling potentials to electrodes of the plurality of electrodes to guide ions in a second direction comprises applying travelling potentials to electrodes of the plurality of electrodes to guide ions into or out of the ion mobility separator in the second direction (“In this model the transfer region comprising electrodes with radial apertures comprises eight electrodes 7. The remaining electrodes comprise stacked ring ion guide electrode plates 6 which form a closed loop. A 5V DC bias is applied or maintained between the stacked ring ion guides 4,5 in the example shown in FIG. 3. The ion is modelled as being created in the upper stacked ring ion guide 4 and is then propelled to the right by a DC travelling wave or transient DC voltage or potential to the transfer region between the two ion guides 4,5. The ion is then rapidly transferred into the lower stacked ring ion guide 5. The ion is then propelled in the opposite direction by a DC travelling wave or DC transient voltage or potential.” P 156).
Regarding claim 20, Hoyes et al. discloses a closed-loop ion mobility separator comprising: a plurality of electrodes (“The present invention relates to an ion guide, an ion mobility spectrometer or separator, a mass spectrometer, a method of guiding ions, a method of separating ions according to their ion mobility and a method of mass spectrometry.” P1); and at least one voltage supply configured to: apply travelling potentials to electrodes of the plurality of electrodes to guide ions in a first direction; and apply travelling potentials to electrodes of the plurality of electrodes to guide ions in a second direction (“In this model the transfer region comprising electrodes with radial apertures comprises eight electrodes 7. The remaining electrodes comprise stacked ring ion guide electrode plates 6 which form a closed loop. A 5V DC bias is applied or maintained between the stacked ring ion guides 4,5 in the example shown in FIG. 3. The ion is modelled as being created in the upper stacked ring ion guide 4 and is then propelled to the right by a DC travelling wave or transient DC voltage or potential to the transfer region between the two ion guides 4,5. The ion is then rapidly transferred into the lower stacked ring ion guide 5. The ion is then propelled in the opposite direction by a DC travelling wave or DC transient voltage or potential.” P 156).
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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0266435 (Hoyes et al.).
Regarding claim 5, Hoyes et al. discloses the claimed ion guide, except it is silent as to whether the at least one voltage supply is configured to apply travelling potentials to electrodes of the plurality of electrodes to guide ions at a constant speed. It would have been obvious to a person having ordinary skill in the art at the time the application was filed to choose a voltage to apply a constant speed if so desired.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 2 & 15 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 & 11 of prior U.S. Patent No. 12/051,583. This is a statutory double patenting rejection.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-15, & 16-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 14, 4, 6, 14, 7-9, 16, 10-11, 11-12, 13, 17, 15, 17, and 14, respectively of U.S. Patent No. 12/051,583. In each case, the patented claims fully anticipate the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZA W OSENBAUGH-STEWART whose telephone number is (571)270-5782. The examiner can normally be reached 10am - 6pm Pacific Time M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ELIZA W OSENBAUGH-STEWART/Primary Examiner, Art Unit 2881