Ex Parte 7381327 et al

Patent Trial and Appeal Board

Nov 30, 2012

95000495 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/000,495 08/21/2009 7381327 12100.1001 3769
25099 7590 11/30/2012
DAVID M QUINLAN, PC
32 NASSAU STREET
SUITE 300
PRINCETON, NJ 08542
EXAMINER
STEIN, STEPHEN J
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
11/30/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Biotage AB
Requester

v.

Scientific Plastic Products, Inc.
Patent Owner and Appellant
____________

Appeal 2012-007321
Reexamination Control 95/000,495
Patent 7,381,327 B2
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL
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Reexamination Control 95/000,495
Patent 7,381,327 B2

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Patent Owner Scientific Plastic Products, Inc. (“Patent Owner”)
appeals under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to
reject claims 1-20.1 Third-Party Requester Biotage AB (hereinafter
“Requester”) urges that the Examiner’s decision must be affirmed.2 We
have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a). We affirm the
Examiner’s decision to reject claims 1-20.

STATEMENT OF THE CASE
United States Patent 7,381,327 B2 (hereinafter the “‘327 Patent”),
which is the subject of the current inter partes reexamination, issued to
Samuel A. Ellis and Jeffrey L. Harlan on June 3, 2008 from Application
11/125,017. The ‘327 Patent claims to be a continuation-in-part of United
States Patent 7,138,061 B2, which issued on November 21, 2006 from
Application 10/842,288, filed May 10, 2004, and is the subject of
reexamination control 95/000,497 (Appeal No. 2012-007322). The ‘327
Patent is also related to United States Patent 7,410,571 B2, which issued
August 12, 2008 from Application 11/476,292, which application claims to
be a divisional of the ‘061 Patent and which is the subject of reexamination
control 95/000,496 (Appeal No. 2012-012468).

1 See Patent Owner’s Appeal Brief 1 (filed June 6, 2011) (hereinafter “PO
App. Br.”); Examiner’s Answer (mailed October 5, 2011) (hereinafter
“Ans.”); Right of Appeal Notice (mailed March 3, 2011) (hereinafter
“RAN.”).
2 See Requester’s Respondent Brief (filed July 6, 2011) (hereinafter “Req.
Resp. Br.”).
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We are also informed that the ‘327 Patent, the ‘061 Patent, and the
‘571 Patent are the subject of litigation styled Scientific Plastics Products,
Inc. v. Biotage AB et al., Case No. 3:09-cv-00677 (S.D. Cal.), which has
been stayed. (PO App. Br. 1.)
We heard oral arguments from Patent Owner and Requester in these
appeals on August 15, 2012, a transcript of which was entered into the
record on October 11, 2012.3
The ‘327 Patent relates to low pressure liquid chromatography. (Col.
1, ll. 13-15.) Claim 1, which is illustrative of the appealed subject matter,
reads as follows:
1. A low pressure liquid chromatographic cartridge
having a longitudinal axis, comprising:
a tubular polymer container adapted to receive a
chromatographic packing material, the container having an
outlet port located at a downstream end of the container and
configured for connecting to chromatographic equipment
during use of the cartridge, the container having container
threads formed on an upstream end of the container and a lip
defining an opening to the container with a inward facing
inclined sealing surface adjacent the lip and facing the
longitudinal axis;
a polymer cap having an inlet port located on an
upstream end of the container, the port being configured for
connecting to chromatographic equipment during use of the
cartridge, the cap having cap threads located on a skirt of the
cap to threadingly engage the container threads;
an annular sealing flange depending from the cap and
located radially closer to the longitudinal axis than the skirt, the
flange having an outward facing inclined sealing surface facing

3 Pursuant to 37 C.F.R. § 41.73 (e)(1), the arguments considered in rendering
this decision are those which were relied upon in the briefs.
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away from the axis with an upstream end of the flange being
further from the axis than a downstream distal end of the
flange; the outward facing inclined surface on the flange
generally aligned with and located to abut the inward facing
inclined surface on the container to form a resilient fluid tight
seal between the cap and container suitable for use in low
pressure liquid chromatography when the cap is screwed onto
the container.
(PO App. Br. 29, Claims App’x.)

Patent Owner contests the Examiner’s decision to reject the claims as
follows:
I. Claims 1, 3-6, 10, 11, and 13-20 under 35 U.S.C. § 103(a) as
obvious over Yamada (U.S. Patent No. 5,693,223, issued
December 2, 1997) and King I (WO 02/42171 A1, published
May 30, 2002);
II. Claims 2 and 9 under 35 U.S.C. § 103(a) as obvious over
Yamada, King I, and Shenkar (U.S. Patent No. 6,702,133,
issued March 9, 2004);
III. Claims 6, 10, and 19 under 35 U.S.C. § 103(a) as obvious over
Yamada, King I, and Ritacco (U.S. Patent No. 4,582,608,
issued April 15, 1986);
IV. Claim 7 under 35 U.S.C. § 103(a) as obvious over Yamada,
King I, Ritacco, and McNeil (U.S. Patent No. 4,354,932, issued
October 19, 1982);
V. Claim 8 under 35 U.S.C. § 103(a) as obvious over Yamada,
King I, and Cartensen (U.S. Patent No. 4,988,127, issued
January 29, 1991);
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VI. Claim 8 under 35 U.S.C. § 103(a) as obvious over Yamada,
King I, and Mueller (U.S. Patent No. 6,171,502 B1, issued
January 9, 2001);
VII. Claim 12 under 35 U.S.C. § 103(a) as obvious over Yamada,
King I, and Scalese (US 2003/0062330A1, published April 3,
2003);
VIII. Claim 13 under 35 U.S.C. § 103(a) as obvious over Yamada,
King I, Porsch (U.S. Patent No. 4,692,243, issued September 8,
1987), and Nickell (U.S. Patent No. 6,457,905 B1, issued
October 1, 2002);
IX. Claims 15, 16, and 20 under 35 U.S.C. § 103(a) as obvious over
Yamada, King I, and Michel (U.S. Patent No. 4,131,547, issued
December 26, 1978); and
X. Claims 1, 3, 4, 6, 9-11, and 13-20 under 35 U.S.C. § 103(a) as
obvious over Yamada and King II (U.S. Patent No. 5,411,157,
issued May 2, 1995).

Patent Owner additionally relies on the following as evidence:
Declaration of Samuel A. Ellis executed November 15, 2010 (PO
App. Br., Ex. R)
Declaration of Suhas Kulkarni executed November 16, 2010 (PO
App. Br., Ex. R)
First Declaration of Jacob Berger executed January 25, 2010
(PO App. Br., Ex. P)

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Second Declaration of Jacob Berger executed November 15, 2010
(PO App. Br., Ex. R)

Requester additionally relies on the following as evidence:
First Declaration of Juha Esala executed February 25, 2010
(See PO App. Br., Ex. Q)
Second Declaration of Juha Esala executed December 15, 2010
(See PO App. Br., Ex. R)
First Declaration of William H. Pearson executed February 25, 2010
(See PO App. Br., Ex. Q)
Second Declaration of William H. Pearson executed December 15,
2010 (See PO App. Br., Ex. R)

ISSUES
Patent Owner has limited the issues on appeal to the rejections of
independent claims 1 and 18 (App. Br. 3), which include Rejections I and X,
the combination of Yamada with King I or Yamada with King II.
Accordingly, we confine our discussion to independent claim 1, with claims
2-17, 19, and 20 standing or falling with claim 1. However, because King I
and King II are discussed interchangeably by Patent Owner, we confine our
discussion to Rejection I. We need not discuss the other rejections on
appeal.

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Rejection I
The Examiner found that Yamada discloses the cartridge as claimed
except that Yamada fails to disclose the claimed sealing configuration.
(RAN 4-5.) The Examiner found that King I discloses the sealing
configuration recited in the claims. (RAN 5-6.) The Examiner stated that
King I is analogous art because it solves a known problem as identified in
the ‘327 Patent, that of achieving a fluid tight seal at elevated pressures
between a removable threaded plastic cap and tubular container. (RAN 6-7.)
The Examiner concluded that it would have been obvious to incorporate the
sealing configuration of King I into Yamada “to solve the known problem of
achieving a resealable chromatography cartridge allowing the user access to
the inside of the cartridge prior to being sealed while functioning at LPLC
pressures.” (RAN 7.)
Patent Owner contends that King I is not analogous art. (PO App. Br.
3.) Specifically, Patent Owner argues that the Examiner improperly defined
the purpose of the invention in the ‘327 Patent and as a result improperly
found that King I was reasonably pertinent to the problem with which the
inventors were involved, and thus was analogous art. (PO App. Br. 4.)
Patent Owner further contends that the Examiner did not provide sufficient
reasoning to combine Yamada with King I, based on erroneously identifying
that LPLC cartridge leakage was a problem at the time the ‘061 Patent was
filed. (PO App. Br. 4-5.)

Accordingly, the dispositive issues on appeal are:
1. Did the Examiner err in finding that King I is analogous art?
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2. Did the Examiner err in concluding that it would have been
obvious to combine Yamada with King I to arrive at the sealing arrangement
recited in the method of claim 1?

FINDINGS OF FACT (“FF”)
1. In the Background of the Invention, the ‘327 Patent discloses
“for low pressure liquid chromatography (LPLC) or flash
chromatography the fluid may be passed through a sorbent at a
pressure of 20-100 psi. This operating pressure is sufficiently
high that these cartridges, which have relative large diameter
bodies leak at the seams. Threaded connections are thus not
used to form the body when the body is made of polymers.
Thus, these cartridges are traditionally made of plastic and have
sonically welded ends. But even that welded construction will
leak if there are defects in the welds.” (Col. 1, ll. 21-30.)
2. Yamada discloses a plastic column and column device for low
pressure-high speed liquid chromatography including a head
portion that is detachably fitted to an open end portion of a
column body. (Col. 1, ll. 10-15, col. 2, ll. 29-41, col. 5, ll. 20-
30.) The inserting portion of the head is provided with a
threaded portion. (Col. 2, ll. 58-67.)
3. Yamada discloses an O-ring that is provided in an annular
groove of the head portion to ensure liquid tightness. (Col. 9,
ll. 40-42; Fig. 4.)
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4. King I discloses improved seals for containers to provide gas-
tight and liquid-tight seals, such as in carbonated beverage
containers. (Page 1, ll. 4-6.)
5. King I discloses that existing containers used an elastomeric
liner, which when pressed against the lip of the bottle neck
provided a tight seal as a result of the compression between the
soft, deformable liner and the lip of the container. (Page 1, ll.
16-20.)
6. King I discloses that liners can become brittle or damaged as a
result of overtightening when excessive pressure is applied to
the liner. (Page 1, ll. 21-23.)
7. King I discloses a threaded cap having flexible sealing fins 10,
11, which ensure a tight seal when abutted against stop surfaces
12 and 13. (Page 8, l. 21- page 9, l. 10, Figs. 2-3.)

PRINCIPLES OF LAW
Analogous Art
Two criteria are relevant in determining whether prior art is
analogous: “(1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not
within the field of the inventor’s endeavor, whether the reference still
is reasonably pertinent to the particular problem with which the
inventor is involved.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343,
1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed.
Cir. 1992)). Whether a reference in the prior art is “analogous” is a
fact question. In re Clay, 966 F.2d at 658.

Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010).
“The Supreme Court’s decision in KSR International Co. v. Teleflex, Inc.,
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550 U.S. 398[] (2007), directs us to construe the scope of analogous art
broadly, stating that ‘familiar items may have obvious uses beyond their
primary purposes, and a person of ordinary skill often will be able to fit the
teachings of multiple patents together like pieces of a puzzle.’ (emphasis
added).” Id. at1238 (quoting KSR at 402) (emphasis added) (parallel
citations omitted).
Obviousness
Section 103 “forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR at 399. In KSR, the Supreme Court
explained, “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the
same field or a different one. If a person of ordinary skill can implement a
predictable variation, §103 likely bars its patentability.” KSR at 417. “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421.

ANALYSIS
Issue 1- Analogous Art
We are not persuaded by Patent Owner’s arguments that King I is
non-analogous art. Specifically, we do not agree with Patent Owner’s
contentions that the purposes disclosed in the ‘327 Patent are so distinct
from the purpose disclosed in King I that one of ordinary skill in the art
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would not have considered such references in improving the LPLC
cartridges disclosed in Yamada. (PO App. Br. 9-16.)
As instructed by our reviewing court, the scope of the analogous art
inquiry is broad and based in fact. Wyers, 95 616 F.3d at 1237. Here, Patent
Owner identifies one of the purposes of the ‘327 Patent as forming an LPLC
cartridge that “would allow a user to easily access the cartridge’s contents
without destroying its ability to be sealed and function under LPLC
pressures.” (PO App. Br. 10.)
Patent Owner objects to the Examiner’s and Requester’s
characterization of the ‘327 Patent disclosure in the Background of the
Invention regarding threaded connections as identifying a purpose or a
problem to be solved in the ‘327 Patent. (PO App. Br. 11-12.) Specifically,
Patent Owner contends that the remarks “simply explain why the industry
used sonic welding, which the inventors in fact identify as a problem.” (PO
App. Br. 12.) We do not agree with Patent Owner. The ‘327 Patent
identifies that maintaining operating pressure is a consideration for LPLC
cartridges. (FF 1.) In this regard, the ‘327 Patent states in the Background
of the Invention that existing cartridges leak at the seams, and immediately
following this sentence further states: “Threaded connections are thus not
used to form the body when the body is made of polymers.” (FF 1,
emphasis added.) As a result, we are not persuaded by Patent Owner’s
arguments that the only leakage issues identified in the ‘327 Patent relate to
defects in welded cartridges. (PO App. Br. 12.) Rather, from this passage,
we are of the opinion that one of ordinary skill in the art would take away
that threaded connections would be prone to leaking where the threads
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interact between the polymer cap and polymer body in LPLC cartridges.
This understanding is relevant to a purpose of the invention in the ‘061
Patent identified by Patent Owner of allowing a user to easily access the
cartridge’s contents without destroying its ability to be sealed and function
under LPLC pressures. (PO App. Br. 10.)
While Patent Owner contends that Yamada does not identify any
leakage problems in the disclosed LPLC cartridge containing a threaded
polymer cap and threaded polymer container (PO App. Br. 15 citing First
Berger Decl. para. 19), Yamada nevertheless discloses an LPLC cartridge,
and is thus analogous art in that is in the same field of endeavor as Patent
Owner. (FF 2.)
King I discloses that in containers using a threaded polymer cap,
liners are used to ensure a pressure tight seal, but that such liners are
damaged due to frequent use or overtightening. (FF 5.) Such issues are
relevant to the Patent Owner’s identified purpose as discussed above as they
relate to providing a resealable cartridge that achieves a fluid tight seal at
elevated pressure. Therefore, it was reasonable for the Examiner to find that
one of ordinary skill in the art would have found the disclosure of King I
relevant in constructing a plastic container that achieves a fluid tight seal at
elevated pressure, while preserving access to the container in order to easily
vary its contents (‘327 Patent, col. 1, ll. 47-51).
Patent Owner relies on two non-precedential Board decisions to
support their argument that King I is non-analogous art. (PO App. Br. 8-9,
citing Ex Parte Ellis, 2011 WL 1197570 at *3 (BPAI 2011) and Ex Parte
Devlin, 2011 WL 1303792 at *5-6 (BPAI 2011).) As discussed above, the
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analogous art inquiry is fact-based. The facts as explained above are
sufficiently different from those in Ellis and Devlin to warrant a different
result in this appeal.

Issue 2
We are not persuaded by Patent Owner’s arguments that the Examiner
failed to provide adequate reasoning for combining Yamada with King.
Initially, we do not agree with Patent Owner that the ‘327 Patent does not
identify a known problem with threaded connections in LPLC cartridges as
discussed above. (PO App. Br. 20-21.) Indeed, Yamada’s disclosure of an
O-ring in the head portion of a plastic LPLC cartridge to ensure liquid
tightness (FF 3) supports the Examiner’s position in this regard.
Specifically, by providing for the presence of an O-ring, Yamada implicitly
acknowledges that there is a potential leakage issue between the cap and
column body of the plastic cartridge. Thus, although Patent Owner argues
that Yamada does not explicitly disclose any leakage problems and relies on
declaration testimony to argue that there was no known perceived problem
with LPLC cartridges with threaded connections (PO App. Br. 23, 26-27,
citing First Pearson Declaration, para. 9), the disclosure of the ‘327 Patent in
the Background section and the presence of the O-ring in Yamada render
Patent Owner’s arguments unpersuasive. Accordingly, the Examiner’s
position that there was a known leakage problem in threaded plastic
cartridges used for LPLC is supported by the evidence of record.
We are also not persuaded by Patent Owner’s argument that the
Examiner failed to provide sufficient evidence for combining Yamada with
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King I. The Examiner’s rationale is supported by the evidence of record.
The known problem of leakage in threaded connections of plastic LPLC
cartridges under pressure identified in the ‘327 Patent, provides a reason for
one of ordinary skill in the art to have turned to King I to improve the
sealing arrangement set forth in Yamada.
In addition, Yamada discloses an O-ring in the head portion of a
plastic LPLC cartridge to ensure liquid tightness. (FF 3.) King I discloses
liners that are used in threaded connections of plastic bottles under pressure
that are susceptible to damage or deterioration. Such liners are similar to the
O-ring disclosed in Yamada in that each serves to ensure a good seal in a
pressurized setting in plastic bottles, and would be subjected to similar
concerns through prolonged use. As a result, Patent Owner’s contentions
that there are “an untold number of ways to create a resealable cap/container
configuration” and a lack of any market pressure or design need to make the
combinations set forth by the Examiner (PO App. Br. 21, 25-27), are
unpersuasive.
Last, we are not persuaded that the ‘327 Patent’s disclosure that
threaded connections are not used to form the body of an LPLC cartridge
teaches away from the prior art combinations applied by the Examiner. (PO
Rebuttal Brief filed November 7, 2011 at 6.) Yamada itself provides
evidence that threaded connections were indeed used to form the LPLC
cartridges. (FF 2.) Thus, rather than teach away from the combination, the
‘061 Patent would have led one of ordinary skill in the art to improve the
threaded connections disclosed in Yamada.
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Therefore, it was reasonable for the Examiner to conclude that one of
ordinary skill in the art would have applied the sealing systems disclosed in
King I to the LPLC cartridge disclosed in Yamada to construct a plastic
container that achieves a fluid tight seal at elevated pressure, while
preserving access to the container contents. (RAN 7.)

CONCLUSION
On this record:
the Examiner did not err in finding that King I is analogous art; and
the Examiner did not err in concluding that it would have been
obvious to combine Yamada with King I to arrive at the sealing arrangement
recited in the method of claim 1.

DECISION
The Examiner’s decision to reject claims 1-20 is affirmed.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
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section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties' rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

AFFIRMED

ack

PATENT OWNER:

DAVID M QUINLAN, PC
32 NASSAU STREET
SUITE 300
PRINCETON, NJ 08542

THIRD-PARTY REQUESTER:

FOLEY AND LARDNER, LLP
3000 K STREET NW
SUITE 600
WASHINGTON, DC 20007