Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 25
`
`Filed: June 18, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`AGILENT TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`THERMO FISHER SCIENTIFIC INC. and
`THERMO FISHER SCIENTIFIC (BREMEN) GMBH,
`Patent Owner.
`
`____________
`
`Case IPR2018-00297
`Patent RE45,553 E
`____________
`
`
`
`Before MICHAEL R. ZECHER, JOHN F. HORVATH, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`DECISION
` Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`571.272.7822
`
`
` Paper No. 25
`
`Filed: June 18, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`AGILENT TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`THERMO FISHER SCIENTIFIC INC. and
`THERMO FISHER SCIENTIFIC (BREMEN) GMBH,
`Patent Owner.
`
`____________
`
`Case IPR2018-00297
`Patent RE45,553 E
`____________
`
`
`
`Before MICHAEL R. ZECHER, JOHN F. HORVATH, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`ZECHER, Administrative Patent Judge.
`
`
`
`
`DECISION
` Granting Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`
`IPR2018-00297
`Patent RE45,553 E
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`
`I. INTRODUCTION
`Petitioner, Agilent Technologies, Inc. (“Agilent”), filed a Petition
`requesting an inter partes review of claims 1–66 of U.S. Patent No.
`RE45,553 E (Ex. 1001, “the ’553 patent”). Paper 1 (“Pet.”). Patent Owner,
`Thermo Fisher Scientific Inc. and Thermo Fisher Scientific (Bremen) GmbH
`(collectively, “Thermo”), filed a Preliminary Response (Paper 14 (“Prelim.
`Resp.”)), along with a statutory disclaimer pursuant to 35 U.S.C. § 253(a)
`and 37 C.F.R. § 1.321(a) that disclaims claims 1–31 and 36–61 (Ex. 2020).
`Consequently, only claims 32–35 and 62–66 remain for our consideration.
`Under 35 U.S.C. § 314(a), an inter partes review may not be instituted
`unless the information presented in the Petition shows “there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challenged in the petition.” Taking into account the arguments
`presented in Thermo’s Preliminary Response, we conclude that the
`information presented in the Petition establishes that there is a reasonable
`likelihood that Agilent would prevail in challenging at least one of claims
`32–35 and 62–66 of the ’553 patent as unpatentable under 35 U.S.C.
`§§ 102(b) or 103(a). Pursuant to § 314, we hereby institute an inter partes
`review as to these claims of the ’553 patent.
`A. Related Matters
`The parties represent that the ’553 patent is at issue in a district court
`case captioned Thermo Fisher Scientific Inc. v. Agilent Technologies, Inc.,
`No. 17-600 (LPS) (CJB) (D. Del.). Pet. 5 (citing Ex. 1005); Paper 7, 2. In
`addition to this Petition, Agilent filed three other petitions challenging the
`patentability of all the claims in the following two patents owned by
`Thermo: (1) U.S. Patent No. 7,230,232 B2 (Case IPR2018-00299); and
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`(2) U.S. Patent No. RE45,386 E (Cases IPR2018-00298 and IPR2018-
`00313). Pet. 5.
`
`B. The ’553 Patent
`The ’553 patent, titled “Mass Spectrometer and Mass Filters
`Therefor,” reissued June 9, 2015, from U.S. Patent Application
`No. 14/032,110, filed on September 19, 2013. Ex. 1001, [54], [45], [21],
`[22]. The ’553 patent is a reissue of U.S. Patent No. 7,211,788 B2, which
`issued May 1, 2007, from U.S. Patent Application No. 10/497,396, the
`Patent Cooperation Treaty application of which was filed on May 13, 2003.
`Id. at [64].
`The ’553 patent generally relates to a method for improving the
`operational characteristics of mass spectrometers, particularly those with
`quadrupole mass filter arrangements. Ex. 1001, 1:21–25. The ’553 patent
`states that “[q]uadrupole, or multiple mass filters [were] known in the mass
`spectroscopy art and operate to transmit ions having a mass/charge ratio
`which lie within a stable operating region.” Id. at 1:29–31. By reducing the
`size of the stable operating region, the range of mass/charge ratios within the
`transmitted ion beam may be reduced. Id. at 1:38–40. This prevents
`rejected ions from being transmitted to the detector of the mass
`spectrometer. Id. at 1:40–41. A substantial portion of these rejected ions
`strike the quadrupole rods, thereby depositing dielectric material on the rods.
`Id. at 1:42–44. According to the ’553 patent, this and other problems
`considerably reduces the mass resolving power or transmission of the mass
`spectrometer and, in some instances, renders the mass spectrometer useless.
`Id. at 2:18–21. Ultimately, “[w]hen the [mass] spectrometer’s performance
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`falls below a tolerable level it is necessary to replace or refurbish the mass
`filter at considerable cost.” Id. at 2:26–28
`The ’553 patent purportedly addresses this and other problems by
`disclosing a two stage mass filter arrangement, wherein the filter closest to
`the ion beam source is called a “sacrificial filter” and the filter closest to the
`detector is called the “analysis filter.” Ex. 1001, 5:44–47, Fig. 1. “[T]he
`sacrificial filter acts to pre-filter the beam before it enters the analysis filter.”
`Id. at 5:52–53. As a result, a large amount of unwanted materials is removed
`by the sacrificial filter before it enters the analysis filter, yet at the same time
`the sacrificial filter allows substantially all ions of the required mass/charge
`ratio to be transmitted to the analysis filter. Id. at 5:58–62; see also id. at
`4:66–5:1 (disclosing an advantage of “removing a majority of ions from the
`ion beam in the first filter stage, and hence reducing the beam current in the
`second filter stage”). The purported benefit of this arrangement is that the
`material deposited on the analysis filter is reduced, thereby allowing this
`filter to operate with very high resolving power for a longer period of time.
`Id. at 5:2–5; see also id. at 4:10–12 (disclosing an advantage of “operating
`with high resolution over much longer periods, compared to previous
`systems”).
`
`C. Illustrative Claim
`Of the challenged claims that remain for our consideration, claim 32 is
`
`the only independent claim at issue, and this claim is directed to “[a] method
`for reducing the deposition of material on multipole elements of a primary
`resolving filter of a mass spectrometer.” Ex. 1001, 11:43–45. Claims 33–35
`and 62–66 directly or indirectly depend from independent claim 32.
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`Independent claim 32 is illustrative of the claims that remain for our
`consideration and is reproduced below:
`32. A method for reducing the deposition of material
`on multipole elements of a primary resolving filter of a mass
`spectrometer, comprising:
`emitting an ion beam from a beam source into a first
`mass filter stage, the ions in the beam having mass/charge
`ratios within a range of mass/charge ratios,
`selecting at the first mass filter stage only ions having
`a sub-range of mass/charge ratios which includes a selected
`mass/charge ratio,
`receiving only ions in said sub-range at a second mass
`filter stage in series with said first mass filter stage, said
`second mass filter stage constituting said primary resolving
`filter, and
`selecting at the second mass filter stage only ions
`having a selected mass/charge ratio within the sub-range,
`thereby reducing the number of ions rejected in said primary
`resolving filter.
`Id. at 11:43–59.
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`
`Douglas
`
`Saito
`
`D. Prior Art Relied Upon
`Agilent relies upon the following prior art references:
`Inventor or
`Patent or
`Relevant Dates
`Applicant1
`Publication
`No.
`U.S. Patent No.
`6,191,417 B1
`JP Patent App.
`Pub. No. H10-
`214591, with
`certified
`translation
`PCT Pub. No.
`Marriott
`WO 00/16375
`(“PCT375”)
`Vandermey U.S. Patent No.
`6,340,814 B1
`
`issued Feb. 20, 2001,
`filed Nov. 10, 1998
`published Aug. 11, 1998,
`filed Jan. 30, 1997
`
`published Mar. 23, 2000,
`filed Sept. 16, 1999
`issued Jan. 22, 2002,
`filed July 15, 1991
`
`Exhibit No.
`
`1007
`
`1009 and
`1010
`(certified
`translation)
`
`1012
`
`1013
`
`Exhibit No.
`1006
`
`
`
`
`
`Non-Patent Literature
`Scott D. Tanner & Vladimir I. Baranov, A Dynamic
`Reaction Cell for Inductively Coupled Plasma Mass
`Spectrometry (ICP-DRC-MS). II. Reduction of
`Interferences Produced Within the Cell, 10 J. Am. Soc’y for
`Mass Spectrometry 1083 (1999) (“Tanner”)
`
`E. Asserted Grounds of Unpatentability
`Agilent challenges claims 32–35 and 62–66 of the ’553 patent based
`
`on the asserted grounds of unpatentability (“grounds”) set forth in the table
`below. Pet. 8, 20–80.
`
`
`1 For clarity and ease of reference, we only list the first named inventor or
`applicant.
`
`6
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`
`Reference(s)
`PCT375
`Tanner
`Douglas and Tanner
`Douglas, Tanner, and Vandermey
`Saito
`Saito and Douglas
`
`Challenged Claim(s)
`Basis
`§ 102(b) 32–35, 63, and 66
`§ 102(b) 32, 35, and 63–66
`§ 103(a) 32–35 and 62–66
`§ 103(a) 62
`§ 102(b) 32 and 62
`§ 103(a) 32–35, 62, and 63
`
`
`
`II. ANALYSIS
`A. Claim Construction
`In an inter partes review proceeding, claim terms of an unexpired
`patent are given their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b).
`Under the broadest reasonable interpretation standard, claim terms are
`generally given their ordinary and customary meaning, as would be
`understood by one of ordinary skill in the art, in the context of the entire
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`2007).
`In its Petition, Agilent proposes a construction for the claim phrase “a
`sub-range of mass/charge ratios which includes a selected mass charge
`ratio,” as recited in independent claim 32. Pet. 15–16. Throughout its
`substantive analysis of each asserted ground, Agilent contends that the
`preamble of independent claim 32 is not limiting, but even if it were
`limiting, the asserted prior art anticipates or renders obvious the features
`recited therein. Id. at 19–20, 29 (citing Ex. 1012, 1:31–2:7; Ex. 1004 ¶ 108),
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`50 (citing Ex. 1004 ¶ 178), 63 (citing Ex. 1004 ¶ 263), 73 (citing Ex. 1004
`¶ 329), 78. In response, Thermo proposes an alternative construction for the
`claim phrase “a sub-range of mass/charge ratios which includes a selected
`mass charge ratio,” as recited in independent claim 32. Prelim. Resp. 29–32.
`Thermo also presents arguments as to why the preamble of independent
`claim 32 is limiting. Id. at 38–40. Beginning with the preamble of
`independent claim 32, we address the disputes between the parties regarding
`claim construction in turn.
`1. “[a] method for reducing the deposition of material on multipole
`elements of a primary resolving filter of a mass spectrometer”
`(preamble of independent claim 32)
`In its Petition, Agilent contends that the preamble of independent
`claim 32 is not limiting because it merely states the intended purpose of the
`method recited therein and does not limit the scope of this claim in any way.
`Pet. 19–20 (citing Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough
`Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003)). Even if the preamble of
`independent claim 32 is limiting, Agilent argues that the asserted prior art
`either anticipates or renders obvious the features recited therein, regardless
`of whether the prior art explicitly discloses the stated purpose of this claim.
`Id. at 20, 29, 50, 63, 73, 78.
`In response, Thermo contends the preamble of independent claim 32
`is limiting because it provides structural antecedent basis for the claim term
`“primary resolving filter” recited in the body of this claim, which, according
`to Thermo, serves as the essence of the claimed invention. Prelim. Resp.
`39–40 (citing Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952–53 (Fed. Cir.
`2006)). Thermo further argues that, like the words “growing” and
`“isolating” that appear in the preamble at issue in Boehringer, the recitation
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`of “reducing” in the preamble of independent claim 32 is “the raison d’etre
`of the claimed method itself,” and, therefore, is limiting. Id. (quoting
`Boehringer, 320 F.3d at 1345).
`In considering whether a preamble is limiting, we analyze the
`preamble to ascertain whether it states a necessary and defining aspect of the
`invention, or whether it is simply an introduction to the general field of the
`claim. On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331,
`1343 (Fed. Cir. 2006); see also Bicon, 441 F.3d at 952 (whether a preamble
`limits a claim is determined on a claim-by-claim basis). We construe a
`preamble as limiting “if it recites essential structure or steps, or if it is
`‘necessary to give life, meaning, and vitality’ to the claim.” Catalina Mktg.
`Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002)
`(quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305
`(Fed. Cir. 1999)). A preamble, however, is not limiting “where a patentee
`defines a structurally complete invention in the claim body and uses the
`preamble only to state a purpose or intended use for the invention.” Id.
`(quoting Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997)).
`On the current record, we are persuaded by Thermo’s argument that
`the recitation of “a primary resolving filter” in the preamble of independent
`claim 32 is limiting because it states necessary and defining aspects of the
`invention embodied in this claim. “When limitations in the body of the
`claim rely upon and derive antecedent basis from the preamble, then the
`preamble may act as a necessary component of the claimed invention.”
`Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003).
`Here, the recitation of “a primary resolving filter” in the preamble of
`independent claim 32 provides antecedent basis for the same claim term
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`recited in the body of this claim. The presence of this structure permits the
`performance of the last two method steps of independent claim 32. That is,
`without “a primary resolving filter” as recited in the preamble, the method
`steps of “receiving only ions in said sub-range at a second mass filter stage
`in series with said first mass filter stage” and “selecting at the second mass
`filter stage only ions having a selected mass/charge ratio within the sub-
`range” could not be performed.
`On the current record, we are persuaded by Thermo’s argument that
`“reducing the deposition of material on multipole elements of a primary
`resolving filter” in the preamble of independent claim 32 is a limiting
`component of this claim because the aforementioned language is tied
`inextricably to the method steps recited therein, particularly to the claim
`phrase “thereby reducing the number of ions rejected in said primary
`resolving filter” recited in the body of independent claim 32. Indeed, the
`reduction in the number of ions rejected at the primary resolving filter is the
`natural result of the claimed “first mass filter stage” acting as a pre-filter that
`serves to reduce the number of ions received by the primary resolving filter
`that can be deposited thereon. Nonetheless, at this stage of the proceeding,
`we are persuaded equally by Agilent’s argument that, if the asserted prior art
`discloses all the method steps recited in independent claim 32 other than the
`preamble, it would also properly account for the preamble because it would
`result in reducing the deposition material at the primary resolving filter.
`2. “a sub-range of mass/charge ratios which includes a selected
`mass/charge ratio” (independent claim 32)
`In its Petition, Agilent contends that the broadest reasonable
`interpretation of the claim phrase “a sub-range of mass/charge ratios which
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`includes a selected mass/charge ratio” is “one or more m/z [mass/charge]
`ratios, including at least an m/z ratio selected by the second mass filter
`stage.” Pet. 15. To support its proposed construction, Agilent relies on the
`doctrine of claim differentiation, particularly the difference in language
`between independent claim 32 and now disclaimed, dependent claim 36. Id.
`at 16.
`
`In response, Thermo contends that the broadest reasonable
`interpretation of this claim phrase is “a subset of a range of mass/charge
`ratios, the subset including a selected mass/charge ratio and at least one
`other mass/charge ratio.” Prelim. Resp. 29 (citing Ex. 1001, 11:50–51).
`Thermo argues that its proposed construction is consistent with the plain
`language of independent claim 32, which requires that the claimed “sub-
`range” include the selected mass/charge ratio—not that the claimed “sub-
`range” can consist only of the selected mass/charge ratio. Id. Thermo also
`argues that the claimed “sub-range of mass/charge ratios” includes more
`than just a single mass/charge ratio. Id. (citing Ex. 1001, 11:49–51,
`11:56–57 (emphasis added)). Thermo directs us to a portion of the
`specification of the ’553 patent that purportedly distinguishes between a
`broader sub-range of mass/charge ratios that includes the selected ratio, and
`the narrower selected mass/charge ratio itself. Id. at 30 (citing Ex. 1001,
`4:12–15).
`Thermo contends that Agilent’s proposed construction, which
`provides that a single, selected mass/charge ratio satisfies the claimed
`“sub-range of mass/charge ratios,” is inconsistent with the plain language of
`independent claim 32 and the specification of the ’553 patent. Prelim. Resp.
`30–31. Thermo also argues that Agilent’s reliance on the doctrine of claim
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`differentiation is misplaced as this doctrine cannot trump the plain language
`of independent claim 32 and the specification, neither of which is addressed
`specifically by Agilent. Id. at 31–32.
`On the current record, we are persuaded that Thermo’s proposed
`construction of the claim phrase “a sub-range of mass/charge ratios which
`includes a selected mass/charge ratio” constitutes the broadest reasonable
`interpretation in light of the specification of the ’553 patent. The U.S. Court
`of Appeals for the Federal Circuit has instructed us that “claims [should be]
`interpreted with an eye toward giving effect to all terms in the claim.”
`Bicon, 441 F.3d at 950 (citations omitted). Here, Thermo’s proposed
`construction is consistent with the plain meaning of “ratios,” which is plural,
`and gives effect to all the terms of independent claim 32—specifically, both
`a sub-range of “mass/charge ratios” and a selected “mass/charge ratio.”
`That is, Thermo’s proposed construction requires the claimed “sub-range of
`mass/charge ratios” to include at least two mass/charge ratios—namely, “a
`selected mass/charge ratio and at least one other mass/charge ratio.” On the
`other hand, interpreting the claimed “sub-range of mass/charge ratios” to
`encompass only “one mass/charge ratio,” as urged by Agilent, would render
`the claim term “ratios” in independent claim 32 superfluous over the claim
`term “ratio.”
`Thermo’s proposal to construe the claimed “sub-range of mass/charge
`ratios” to include at least two mass/charge ratios is also consistent with the
`specification of the ’553 patent. The claimed “sub-range of mass/charge
`ratios” appears verbatim in the specification on six occasions. Ex. 1001,
`[57], 3:7–8, 3:16–17, 3:40–41, 3:57, 4:2. In each of these six occurrences,
`the specification refers to the “sub-range of mass/charge ratios” using the
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`plural form “ratios” and immediately thereafter refers to that sub-range as
`including a “selected mass/charge ratio” using the singular form “ratio.”
`We are not persuaded that Agilent’s proposed construction constitutes
`the broadest reasonable interpretation for three reasons. First, as we explain
`above, Agilent’s proposed construction does not give effect to all the terms
`in independent claim 32 because interpreting the phrase claimed “sub-range
`of mass/charge ratios” to encompass only “one mass/charge ratio” would
`render the claim term “ratios” in independent claim 32 superfluous. Second,
`“the protocol of giving claims their broadest reasonable interpretation . . .
`does not include giving claims a legally incorrect interpretation” that is
`“divorced from the specification and the record evidence.” Microsoft Corp.
`v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (first quoting In re
`Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009); and then quoting In re NTP,
`Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)). Here, Agilent relies solely on
`the doctrine of claim differentiation to support its proposed construction and
`does not explain adequately how construing the claimed “sub-range of mass
`charge ratios” to encompass only “one mass/charge ratio” is supported by
`the specification of the ’553 patent.
`Third, Agilent’s reliance on the doctrine of claim differentiation is
`misplaced. This doctrine “is based on ‘the common sense notion that
`different words or phrases used in separate claims are presumed to indicate
`that the claims have different meanings and scope.’” Andersen Corp. v.
`Fiber Composites, LLC, 474 F.3d 1361, 1369 (Fed. Cir. 2007) (quoting
`Karlin Tech. Inc. v. Surgical Dynamics, Inc., 177, F.3d 968, 971–72
`(Fed. Cir. 1999)). Generally, this doctrine is applied to resolve ambiguity
`when a claim would otherwise be superfluous. See id. at 1369−70 (“To the
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`extent that the absence of such difference in meaning and scope would make
`a claim superfluous, the doctrine of claim differentiation states the
`presumption that the difference between claims is significant.”). Of
`particular importance to the instant proceeding, the Federal Circuit “has
`declined to apply the doctrine of claim differentiation where ‘the claims are
`not otherwise identical in scope.’” Apple, Inc. v. Ameranth, Inc., 842 F.3d
`1229, 1238 (Fed. Cir. 2016) (quoting Indacon, Inc. v. Facebook, Inc., 842
`F.3d 1352, 1358 (Fed. Cir. 2016)); see also Andersen, 474 F.3d at 1370
`(holding that another “reason for not applying the doctrine of claim
`differentiation in this case is that the . . . claims are not otherwise identical
`. . . . Instead, there are numerous other differences varying the scope of the
`claimed subject matter.”). Here, Agilent primarily relies on the difference in
`language between independent claim 32 and now disclaimed, dependent
`claim 36. See Pet. 16. Dependent claim 36, however, includes additional
`limitations not recited in independent claim 32 (i.e., “a multi-pole mass
`filter” and a “[radio frequency]:[direct current] ratio [that] determines a band
`pass width of the multipole mass filter”). Compare Ex. 1001, 11:43–59,
`with id. at 12:1–8. Indeed, dependent claim 36 supports Thermo’s proposed
`construction because it explicitly requires the band pass width of the first
`filter stage (i.e., a sub-range of mass/charge ratios) to be broader than, rather
`than co-extensive with, the band pass width of the second filter stage (i.e., a
`selected mass/charge ratio). Id.
`On the current record, and for purposes of this Decision, we are
`persuaded by Thermo’s argument that the broadest reasonable interpretation
`of “a sub-range of mass/charge ratios which includes a selected mass/charge
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`ratio” is “a subset of a range of mass/charge ratios, the subset including a
`selected mass/charge ratio and at least one other mass/charge ratio.”
`B. Anticipation by PCT375
`Agilent contends that claims 32–35, 63, and 66 are anticipated under
`
`§ 102(b) by PCT375. Pet. 20–42. Agilent explains how PCT375
`purportedly discloses the subject matter of each challenged claim. Id.
`Agilent also relies upon the Declaration of Richard A. Yost, Ph.D. to support
`its positions. Ex. 1004 ¶¶ 108–115, 126, 127. On this record, we are
`persuaded by Agilent’s explanations and supporting evidence.
`
`We begin our analysis with the principles of law that generally apply
`to a ground based on anticipation, followed by a brief overview of PCT375,
`and then we address the parties’ contentions with respect to independent
`claim 32.
`
`1. Principles of Law
`To establish anticipation, “all of the elements and limitations of the
`claim must be shown in a single prior reference, arranged as in the claim.”
`Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
`2001). When evaluating a single prior art reference in the context of
`anticipation, the reference must be “considered together with the knowledge
`of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475,
`1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA
`1978)). Accordingly, “‘the dispositive question regarding anticipation [i]s
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`whether one skilled in the art2 would reasonably understand or infer from
`the [prior art reference’s] teaching’ that every claim element was disclosed
`in that single reference.” Dayco Prods., Inc. v. Total Containment, Inc., 329
`F.3d 1358, 1368 (Fed. Cir. 2003) (alterations in original) (quoting In re
`Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991)). We analyze
`this asserted ground based on anticipation with the principles stated above in
`mind.
`
`2. PCT375 Overview
`PCT375 generally relates to inductively coupled plasma mass
`spectrometry, but readily admits that the concepts disclosed therein may be
`applied to any type of mass spectrometer that generates unwanted ions, as
`well as ions of analytical significance. Ex. 1012, 1:6–14. According to
`PCT375, a common problem in mass spectrometry, especially when
`performed using low-resolution devices such as quadrupoles, is the presence
`of unwanted ions in the mass spectrum that impair the detection of certain
`elements. Id. at 1:31–34. PCT375 purportedly addresses this and other
`problems by disclosing a mass spectrometer with two quadrupoles in
`tandem. Id. at 5:13–29, Fig. 2. Both quadrupoles are capable of operating
`
`2 Relying on the testimony of Dr. Yost, Agilent offers an assessment as to
`the level of skill in the art as of May 2002, which is the earliest priority date
`on the face of the ’553 patent. Pet. 9–10 (citing Ex. 1004 ¶ 23). Thermo’s
`assessment is different from Agilent’s assessment insofar as it requires one
`of ordinary skill in the art to have approximately two to three years of
`experience—not at least two to three years of experience, as urged by
`Agilent. Prelim. Resp. 5–6 n.4. To the extent necessary, and for purposes of
`this Decision, we accept the assessment offered by Agilent with Thermo’s
`qualification of “approximately two to three years of experience” because it
`is consistent with the ’553 patent and the asserted prior art.
`
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`as mass selective ion optical devices. Id. at 8:11–31. In particular, PCT375
`discloses that the first ion optical device may be a “mass selective device”
`that “can be driven so as to transmit only ions of a specific [mass/charge]
`ratio (m/e) or a range of m/e” and “functions as an auxiliary mass filter.” Id.
`at 8:9–16. PCT375 also discloses a mass-to-charge ratio analyzing means
`that may “include[] a main mass filter.” Id. at 8:5–8. These filters are in
`series as the ion beam passes from the source to the “auxiliary mass filter,”
`and then eventually to the “main mass filter.” Id. at 8:17–20.
`3. Claim 32
`Agilent contends that PCT375’s disclosure of removing unwanted
`ions from a mass spectrometer using an auxiliary mass filter discloses all the
`limitations recited in independent claim 32. Pet. 29–32. Beginning with the
`language in the preamble of “[a] method for reducing the deposition of
`material on multipole elements of a primary resolving filter of a mass
`spectrometer” (Ex. 1001, 11:43–45), Agilent argues that the features recited
`therein are not limiting, but even if these features are limiting, PCT375’s
`experiments are directed to the “same purpose and achieve the same results.”
`Pet. 29 (citing Ex. 1012, 1:31–2:7). Relying on the testimony of Dr. Yost,
`Agilent argues that one effect of having a first mass filter stage, such as the
`auxiliary mass filter disclosed in PCT375, is to reduce the deposition of
`material on subsequent multipole elements in the mass spectrometer. Id.
`(citing Ex. 1004 ¶ 108 (citing Ex. 1001, 4:67–5:15)).
`The first step in independent claim 32 recites “emitting an ion beam
`from a beam source into a first mass filter stage, the ions in the beam having
`mass/charge ratios within a range of mass/charge ratios.” Ex. 1001,
`11:46–48 (“‘emitting’ step”). Agilent contends that PCT375 discloses this
`
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`“emitting” step because an “inductively coupled plasma” source emits an ion
`beam from a source to the auxiliary mass filter. Pet. 30 (citing Ex. 1012,
`1:18–30, 5:3–29, 8:9–20, 9:7–14; Ex. 1004 ¶ 109).
`The second step in independent claim 32 recites “selecting at the first
`mass filter stage only ions having a sub-range of mass/charge ratios which
`includes a selected mass/charge ratio.” Ex. 1001, 11:49–51 (“‘first
`selecting’ step”). Agilent contends that PCT375 discloses this “first
`selecting” step because the auxiliary mass filter, which constitutes the
`claimed “first mass filter stage,” is configured to select ions having
`mass/charge ratios within a particular range of mass/charge ratios that is a
`subset of the range of mass/charge ratios emitted from the “inductively
`coupled plasma” source. Pet. 25, 30 (citing Ex. 1012, 8:9–16; Ex. 1004
`¶ 67).
`
`The third step of independent claim 32 recites “receiving only ions in
`said sub-range at a second mass filter stage in series with said first mass
`filter stage, said second mass filter stage constituting said primary resolving
`filter.” Ex. 1001, 11:52–55 (“‘receiving’ step”). Agilent contends that
`PCT375 discloses this “receiving” step because the auxiliary mass filter
`passes ions having mass/charge ratios that are within a selected sub-range of
`mass/charge ratios to the main mass filter, which constitutes the claimed
`“second mass filter stage” or “primary resolving filter.” Pet. 31 (citing
`Ex. 1012, 8:17–20; Ex. 1004 ¶¶ 109, 110). Agilent also argues that PCT375
`discloses that the ions that pass through the auxiliary mass filter have
`mass/charge ratios that are within a sub-range of mass/charge ratios that is
`broader than and includes the mass/charge ratio selected at the main mass
`filter. Id. (citing Ex. 1012, 8:9–16, 8:23–9:4; Ex. 1004 ¶¶ 109, 110).
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`The fourth step of independent claim 32 recites “selecting at the
`second mass filter stage only ions having a selected mass/charge ratio within
`the sub-range, thereby reducing the number of ions rejected in said primary
`resolving filter.” Ex. 1001, 11:56–59 (“‘second selecting’ step”). Agilent
`contends that PCT375 discloses this “second selecting” step because the
`auxiliary mass filter removes ions having mass/charge ratios outside its
`transmission bandpass, thereby allowing the main mass filter to operate on
`an ion current having reduced intensity. Pet. 32 (citing Ex. 1012, 8:36–9:4;
`Ex. 1004 ¶¶ 111, 112). Stated differently, Agilent argues that PCT375
`discloses filtering the range of ions at the auxiliary mass filter to a range of
`mass/charge ratios, which would decrease the number of ions that reach the
`main mass filter. Id. (citing Ex. 1012, 8:12–20; Ex. 1004 ¶ 112). Based on
`the aforementioned disclosures in PCT375, we understand Agilent to take
`the position that PCT375’s main mass filter is capable of being operated in a
`manner that only allows ions having a particular mass/charge ratio within the
`sub-range to pass. See id.
`Based upon our review of the current record, we discern no deficiency
`in Agilent’s characterization of PCT375 and the knowledge in the art, or in
`Agilent’s assertions as to the reasonable inferences one of ordinary skill in
`the art would be expected to draw from the disclosures in PCT375. In
`addition, for purposes of this Decision, we accept Dr. Yost’s testimony
`concerning the relevant disclosures in PCT375.
`
`In its Preliminary Response, Thermo presents two arguments directed
`to independent claim 32. First, Thermo contends that the preamble of
`independent claim 32 is limiting. Prelim. Resp. 40–41. Thermo then argues
`that Agilent’s position that PCT375 properly accounts for the preamble
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`because it is directed to “the same purpose and achieve[s] the same result[]”
`tells us nothing about reducing th
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