Ex Parte Collier et al

Patent Trial and Appeal Board

Sep 5, 2018

13588755 (P.T.A.B. Sep. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/588,755 08/17/2012
101910 7590 09/07/2018
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
FIRST NAMED INVENTOR
Matthew Grant Collier
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P2013-0042-US02 (354) 1197
EXAMINER
GERIDO, DWAN A
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
09/07/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTO@hach.com
taschulz@hach.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW GRANT COLLIER, ROBERT LEE GARVIN, and
TERRY GENE STANGE
Appeal2017-010549
Application 13/588,755
Technology Center 1700
Before CHRISTOPHER L. CRUMBLEY, A VEL YN M. ROSS, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection2 of claims
12-15 and 17-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as Hach Company. Appeal Brief of
February 13, 2017 ("Br."), 3.
2 Final Office Action of October 12, 2016 ("Final Act."). In this opinion, we
also refer to the Examiner's Answer of June 8, 2017 ("Ans.") and the Reply
Brief of August 8, 2017 ("Reply Br.").
Appeal2017-010549
Application 13/588,755
CLAIMED SUBJECT MATTER
The claims are directed to a TOC analyzer. "Total organic carbon
(TOC) is the amount of carbon bound in an organic compound. TOC, which
is typically measured from part per trillion (ppt) to parts per million (ppm) of
carbon, is often used as a non-specific indicator of water quality or
cleanliness." Spec. ,r 2. Claim 12, reproduced below, is illustrative of the
claimed subject matter:
12. A method of validating a measurement of total
organic carbon in a sample of water, comprising:
connecting an analyzer directly in an on-line fashion to a
water flow of an ultrapure water system for monitoring total
organic carbon (TOC) in water flowing either continuously or
at predetermined intervals through the analyzer;
obtaining a sample of water from the water flow by the
analyzer without exposure of the sample to airborne organic
contaminants;
measuring a TOC amount in a first sample of water using
the analyzer and obtaining a first measurement thereof;
in response to the TOC measured amount in the first
sample is above a predefined threshold identifying a potential
excursion event;
automatically responding to identification of the potential
excursion event by capturing a second sample of water from the
water flow in a bottle;
introducing the second sample into the analyzer;
measuring a TOC amount in the second sample using the
analyzer and obtaining a second measurement thereof; and
comparing the first measurement and second
measurement using the analyzer.
Br. 24--25 (Claims Appendix).
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Application 13/588,755
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Godec us 5,837,203 Nov. 17, 1998
ANATEL PAT700 On-line Total Organic Carbon Anazlyer, User
Manual, April 2010, Edition 4 ("ANATEL").
REJECTIONS
In the Answer, the Examiner adds a new ground of rejection:
Claims 12-15 and 17-25 are rejected under 35 U.S.C.
112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being
indefinite for failing to particularly point out and distinctly
claim the subject matter which the inventor or a joint inventor,
or for pre-AIA the applicant regards as the invention.
Ans. 5. 3
Claims 12-15 and 17-24 are rejected under pre-AIA 35 USC§ 102(b)
as being anticipated by ANATEL. Final Act. 3.
Claim 25 is rejected under pre-AIA 35 USC§ 103(a) as being
unpatentable over ANATEL and Godec. Final Act. 4.
A rejection under 35 U.S.C. § 101 has been withdrawn and is not
before us. Ans. 3.
OPINION
Indefiniteness
The Examiner rejects claim 12 for indefiniteness finding that the
limitation of "in response to the TOC measured amount in the first sample is
above a predefined threshold identifying a potential excursion event," when
read in light of the specification, fails to inform those skilled in the art about
3 The Answer is not paginated and we therefore provide our own pagination.
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the scope of the invention with reasonable certainty. Ans. 5. In particular,
the Examiner finds that the specification does not provide "any particle
examples of threshold values that would indicate an excursion." Id. The
Examiner also finds the phrase "potential" is ambiguous because "it is
unclear if an excursion event differs from a potential excursion event" and
"it seems that any TOC measurement that exceeds the threshold would be an
excursion event." Id. at 6.
Appellants disagree with the Examiner and merely state that "the
terms, as used in the claimed limitations and as described in the underlying
specification, allow one of ordinary skill in the art to reasonably conclude
what each term means in the context of the claims and the underlying
application" which is the entirety of Appellants' argument for the
indefiniteness rejection. Reply Br. 15.
"[W]hen the USPTO has initially issued a well-grounded rejection
that identifies ways in which language in a claim is ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention, and thereafter the applicant fails to provide a satisfactory
response, the USPTO can properly reject the claim as failing to meet the
statutory requirements of§ 112(b)." In re Packard, 751 F.3d 1307, 1311
(Fed. Cir. 2014).
In this case, Appellants have not addressed the Examiner's analysis
that claim limitations including "predefined threshold" and "potential
excursion event" are ambiguous. See Reply Br. 15. Appellants do not
respond to the Examiner's finding that it is unclear how a "potential
excursion event" is different from an "excursion event." Compare id., with
Ans. 5. "It is not the function of this court [or this Board] to examine the
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Application 13/588,755
claims in greater detail than argued by an appellant[.]" In re Baxter
Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991). Given that Appellants
have not identified reversible error in the Examiner's rejection, we sustain
the rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has
long been the Board's practice to require an applicant to identify the alleged
error in the examiner's rejections .... ").
Anticipation4
The Examiner rejects claim 12 as being anticipated by ANATEL.
Final Act. 3. The Examiner finds that ANATEL describes, for example,
"withdraw[ing] a sample from the water system when a predefined TOC
level is exceeded" as well as "an additional sample" upon the detection of an
excursion event. Ans. 3.
Appellants argue that ANATEL does not disclose the method step of
"automatically responding to identification of the potential excursion event
by capturing a second sample of water from the water flow in a bottle." Br.
18. Appellants argue that the specification "discloses that the second sample
mentioned in Claim 12 is a sample of ultra pure water in an online system"
which is "then reintroduced into the analyzer to validate the excursion
event." Id.
As the Examiner points out, Appellants' argument is not directed to
limitations recited in claim 12. Ans. 7. "At no point does the claim recite an
initial capture of a water sample, and then reintroducing the captured sample
into a bottle for validation." Id. We further note that claim 12 does not
4 Appellants' argument with regard to the anticipation rejection is directed to
claim 12 only. Br. 17-19. Claims 13-15 and 17-24 therefore stand or fall
with claim 12. See id; see also 37 C.F.R. § 4I.37(c)(l)(iv) (2013).
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Application 13/588,755
recite that the second sample is an ultra pure water sample as argued by
Appellants. Rather, claim 12 recites that the second sample is collected
from the water flow.
Appellants do not address the Examiner's analysis that claim 12 does
not recite features argued by Appellants such as the reintroduction of a
captured sample. Compare Reply Br. 11-13, with Ans. 5-6. Appellants
also do not address the Examiner's finding that ANATEL describes
"drawing a sample from the water system when a predefined TOC level is
exceeded" as well as "an additional sample" upon the detection of an
excursion event. Compare Reply Br. 11-13, with Ans. 6; compare Br. 5,
with Final Act. 3. Because Appellants' argument is directed to features not
recited in claim 12 and does not address the Examiner's findings regarding
the prior art, no reversible error has been identified with regard to the
Examiner's findings here.
Obviousness
Claim 25 depends from claim 12 and additionally recites "wherein the
bottle comprises a vent tube disposed within a bottle cap thereof." The
Examiner finds the prior art apparatus in Godec teaches a "venting needle"
included in a vial "as a means of preventing a vacuum from forming within
the vial". Final Act. 4 ( citing various portions of Godec ).
Appellants acknowledge that Godec describes a venting needle but
argues that "nowhere in Godec is the use of a venting tube mentioned or
discussed." Br. 20 (emphasis in original). To the extent that Appellants
argue that the claim limitation "venting tube" should be construed to mean a
"vent tube [that] allows air within the bottle to escape while water is entering
the bottle, thereby reducing the pressure within the bottle," (id. ( citing Spec.
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,r 14)), Appellants do not explain why the prior art venting needle is
structurally distinguished and therefore excluded from the embodiment of a
venting tube in the specification. Appellants also do not address the
Examiner's finding that figure 1 of Godec illustrates venting needle 102
which "prevent[ s] a vacuum from forming from forming" within the vial.
Compare Br. 19--21, with Final Act. 4 (citing Godec Figure 1, 4:66-5:2);
compare Ans. 6-7 (citing Godec Figure 1, 4:66-5:2), with Reply 13-15. No
reversible error has been identified with regard to the Examiner's finding for
claim 25.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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