SHIMADZU CORPORATION

Patent Trials and Appeals Board

Apr 16, 2021

2020003209 (P.T.A.B. Apr. 16, 2021)

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.
13/874,193 04/30/2013 Tomoyuki YAMAZAKI SMZ-089/7315572001 5869
151297 7590 04/16/2021
Chris Mizumoto
1150 Arbol Way
San Jose, CA 95126
EXAMINER
PEO, KARA M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
04/16/2021 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):
chris.mizumoto@miztechlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOMOYUKI YAMAZAKI, STASICA PRZEMYSLAW, and
BOB BOUGHTFLOWER
____________

Appeal 2020-003209
Application 13/874,193
Technology Center 1700
____________

Before JAMES C. HOUSEL, DONNA M. PRAISS, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1 and 6.2 We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Shimadzu Co. as the real party in
interest. Appeal Brief filed October 30, 2019 (“Appeal Br.”), 2.
2 Claims 4 and 5 have been withdrawn from consideration. Final Office
Action entered February 8, 2019 (“Final Act.”), 1.
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CLAIMED SUBJECT MATTER
Appellant claims a preparative separation-purification system. Appeal
Br. 3–4. Claim 1 illustrates the subject matter on appeal, and reads as
follows:
1. A preparative separation-purification system for passing
a solution containing a target component, comprising:
a trap column, being a hollow cylinder with an inner
space packed with a filler, to capture the target component and
then to pass an eluting solvent therethrough to elute the target
component captured in the trap column; and
a collection container to collect the eluted component,
wherein: the trap column includes:
a first end for an inlet for a liquid and a second end for an
outlet for the liquid;
a lid having an aperture serving as the outlet is attached
to the second end of the trap column, wherein the aperture is
formed in a middle of the lid and has a tapered portion whose
sectional area is largest on a plane facing the inner space of
the trap column and decreases in a flowing direction of the
liquid, and a surface of the lid surrounding the aperture with the
tapered portion and facing the inner space is flat and parallel to
a section of the second end of the trap column;
a mesh cap provided at a boundary of the inner space of
the trap column for preventing an outflow of the filler; and
a filter for preventing deposition of the target component
and which is disposed between the mesh cap and the aperture
formed in the lid, wherein an outer edge of the filter is in
contact with the surface of the lid.

Appeal Br. 21 (Claims Appendix) (emphasis added and spacing
altered). Like claim 1, the remaining independent claim on appeal—
claim 6—recites a preparative separation-purification system
comprising a trap column and a lid having an aperture formed in a
middle of the lid and having a tapered portion whose sectional area is
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Application 13/874,193

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largest on a plane facing the inner space of the trap column and
decreases in a flowing direction of liquid.
REJECTION
The Examiner maintains the following rejection of claims 1 and 6
under 35 U.S.C. § 103 as unpatentable over Tatsuro et al. (EP 0 310 867 A2,
published April 12, 1989) in view of Hubbuch et al. (WO 2006/116964 A2,
published November 9, 2006)3 in the Examiner’s Answer entered January
28, 2020 (“Ans.”).
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejection of
claims 1 and 6 under 35 U.S.C. § 103 for reasons set forth in the Appeal and
Reply Briefs, and below.
Because independent claims 1 and 6 share the limitations at issue in
the present appeal, we limit our discussion to claim 1. The Examiner finds
that Tatsuro discloses a preparative separation-purification system having all
the features and elements of the system of claim 1 except “a surface of the
lid surrounding the aperture with the tapered portion and facing the inner
space is flat and parallel to a section of the second end of the trap column,”
and the Examiner relies on Hubbuch to address this feature missing from
Tatsuro’s disclosures. Final Act. 3–5 (citing Tatsuro Abstr.; pp. 2–6; Figs. 1
and 9).

3 Because Hubbuch (WO 2006/116964 A2) was published in German, we,
like Appellant (Appeal Br. 5), cite to the U.S. national stage application of
the PCT application, Hubbuch et al. (US 2010/0242634 Al, published
September 30, 2010).
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The Examiner, however, relies on—and combines—elements of
Tatsuro’s inventive chromatographic column, which is illustrated in
Tatsuro’s Figure 1, and elements of a “conventional” chromatographic
column, illustrated in Tatsuro’s Figure 9. More specifically, citing to
Tatsuro’s Figure 1, the Examiner finds that Tatsuro discloses a trap column
including connector 3, which the Examiner finds corresponds to a lid. Final
Act. 3. Again citing to Tatsuro’s Figure 1, the Examiner finds that Tatsuro
discloses that connector 3 (lid) comprises an aperture serving as a liquid
outlet. Id. Now citing to the “conventional” chromatographic column
illustrated in Tatsuro’s Figure 9, the Examiner finds that Tatsuro discloses
that “the aperture at the outlet has a tapered portion whose sectional area is
largest on a plane facing an inner space of the trap column and decreases in a
flowing direction of the liquid.” Id.
The Examiner further finds, citing Figure 2 of Hubbuch, that Hubbuch
discloses “a column packed with a filler” that includes “a lid with an
aperture serving as an outlet.” Final Act. 5 (citing Hubbuch pp. 1–3; Fig. 2).
The Examiner finds, again citing Hubbuch’s Figure 2, that “Hubbuch
teaches the aperture is formed in the middle of the lid and has a tapered
portion whose sectional area is largest on a plane facing the inner space of
the column and decreases in a flowing direction.” Id. The Examiner finds,
now citing Figure 1 of Hubbuch, that “Hubbuch teaches in an alternative
embodiment a configuration with the same structure as taught by Tatsuro.”
Final Act. 5 (citing Hubbuch pp. 1–3; Fig. 1).
The Examiner concludes that “[s]ince the prior art of Hubbuch
recognizes the equivalency of lid structures in the field of chromatography,
it would have been obvious to one of ordinary skill in the art at the time of
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the invention to replace the lid structure of Tatsuro with the lid structure of
Hubbuch as it is merely the selection of functionally equivalent lid structures
recognized in the art and one of ordinary skill in the art would have a
reasonable expectation of success in doing so.” Final Act. 5.
Appellant argues that “the Examiner has not articulated a reason,
provided an adequate evidentiary basis, or offered any satisfactory
explanation . . . [for why] the two ‘lid structures’ of Tatsuro and Hubbuch
are equivalent.” Appeal Br. 11. In response to this argument, the Examiner
indicates in the Answer that “Figure 1 of Hubbuch corresponds to Tatsuro
Figure 9” because “[i]n both Tatsuro Figure 9 and Hubbuch Figure 1, the lid
has an aperture attached to the second end of the column and the aperture is
formed in the middle of the lid and is tapered; therefore these lid structures
are equivalent to one another.” Ans. 9.
The Examiner, however, does not provide a sufficient factual basis to
establish that the “lid structures” of Tatsuro’s Figure 9 and Hubbuch’s
Figure 1 are equivalent, and, therefore, does not provide reasoning having
rational underpinning that explains why one of ordinary skill in the art
would have “replace[d] the lid structure of Tatsuro with the lid structure of
Hubbuch,” for reasons expressed by Appellant (Appeal Br. 5–11; Reply Br.
5–9) and discussed below.
Tatsuro’s Figure 9 shows the outlet end portion of a conventional
chromatographic column (in longitudinal cross section) that includes conical
space or gap GP between downstream or outlet end surface ES of filter F
and inner wall surface IS of column pipe CP. Tatsuro 2, ll. 21–23. Tatsuro
describes numerous problems stemming from this conventional outlet
configuration, including deformation of the filter under high pressure, which
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deteriorates the filter’s function. Tatsuro 3, ll. 10–13. Tatsuro explains that
thick filters can be used that withstand high pressure, but such filters “a[re]
often partially clogged.” Tatsuro 3, ll. 13–18. Tatsuro discloses that its
inventive chromatographic column—which is illustrated in Tatsuro’s Figure
1 and does not include the conical space or gap GP of the conventional
column shown in Tatsuro’s Figure 9—overcomes these problems. Tatsuro
3, ll. 51–58.
Hubbuch discloses adapter 1 for depositing samples in module 20.
Hubbuch ¶¶ 1, 3; Abstr. Hubbuch explains that module 20 is “an open
container having an inlet and outlet for liquid, for instance, in a column
shape, that is filled with a stationary porous solid mass.” Hubbuch ¶ 25.
Hubbuch discloses, and illustrates in Figure 1, one-piece adapter 1 having
input 2 and output 3. Hubbuch ¶ 19; Fig. 1. Hubbuch also discloses, and
illustrates in Figure 2, two-piece adapter 1 including upper part 10 having
input 2 and lower part 11 having output 3. Hubbuch ¶ 20; Fig. 2.
Hubbuch discloses placing adapter 1 on module 20 so as to connect
output 3 to module 20 in a liquid-tight manner. Hubbuch ¶¶ 23, 28, 30; Fig.
5. Hubbuch discloses inserting pipetting needle 18 into input 2 in upper part
10 of adapter 1, and adding a liquid sample to module 20 via pipetting
needle 18. Hubbuch ¶¶ 23, 24; Fig. 5. Hubbuch discloses that outlet
(output) 3 “has a shape enabling the liquid to exit uniformly across the entire
cross-section of the sample exit,” such as a “sample outlet shaped as a
largely conically outgoing hollow space, for instance in the shape of a funnel
8” as shown in Hubbuch’s Figures 1 and 2. Hubbuch ¶ 33.
Although the Examiner asserts that the “lid structures” of Tatsuro’s
Figure 9 and Hubbuch’s Figure 1 are equivalent, the devices illustrated in
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these figures differ significantly in both structure and function. As discussed
above, Tatsuro’s Figure 9 illustrates the outlet portion of a conventional
chromatographic column, while Hubbuch’s Figure 1 shows an adapter that is
placed on a column or “module” and receives a pipette through which liquid
is added to the column (module). Notably, the conical space or gap GP
shown in Tatsuro’s Figure 9 narrows in the direction of fluid flow, while
Hubbuch’s funnel 8 widens in the direction of fluid flow out of adapter 1
into module 20, contrary to the Examiner’s finding that Hubbuch teaches an
aperture whose “sectional area . . . decreases in a flowing direction (Final
Act. 5).
The Examiner does not address the structural and functional
differences between Hubbuch’s adapter and the outlet portion of the
conventional chromatographic column illustrated in Tatsuro’s Figure 9, and
does not provide evidence establishing that, despite such differences,
Hubbuch’s adapter is a known equivalent used for the same purpose as the
column outlet shown in Tatsuro’s Figure 9. See In re Christensen, 82 F.2d
715, 716 (CCPA 1936); see also Graver Tank & Mfg. Co. v. Linde Air
Prods. Co., 339 U.S. 605, 609 (1950) (“In determining equivalents, things
equal to the same thing may not be equal to each other . . . . Consideration
must be given to the purpose for which an ingredient is used in a patent . . .
and the function which it is intended to perform.”); see also MPEP
§ 2144.06(II) (“In order to rely on equivalence as a rationale supporting an
obviousness rejection, the equivalency must be recognized in the prior art,
and cannot be based on applicant’s disclosure or the mere fact that the
components at issue are functional or mechanical equivalents.”) (citing In re
Ruff, 256 F.2d 590 (CCPA 1958)).
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And even if one of ordinary skill in the art would have considered the
“lid structures” of Tatsuro’s Figure 9 and Hubbuch’s Figure 1 to be
equivalent as the Examiner asserts, the Examiner does not provide
persuasive technical reasoning that explains why the ordinarily skilled
artisan would have replaced the “lid structure” of Tatsuro’s Figure 9 with the
equivalent “lid structure” of Hubbuch’s Figure 1, when Tatsuro describes
numerous problems and disadvantages associated with the conventional
outlet configuration illustrated in Figure 9, which would also be associated
with an equivalent “lid structure.”
On the record before us, therefore, the Examiner does not provide
sound technical reasoning supported by objective evidence establishing that
one of ordinary skill in the art would have had a reason to substitute
Hubbuch’s adapter for the outlet portion of Tatsuro’s chromatographic
column, as the Examiner proposes. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (“[I]t [is] important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.”); In re Van Os, 844
F.3d 1359, 1361–62 (Fed. Cir. 2017) (“a conclusory assertion with no
explanation is inadequate to support a finding that there would have been a
motivation to combine” because “[t]his type of finding, without more, tracks
the ex post reasoning KSR warned of and fails to identify any actual reason
why a skilled artisan would have combined the elements in the manner
claimed.”) (emphasis omitted) (citing KSR, 550 U.S. at 418, 421).
We, accordingly, do not sustain the Examiner’s rejection of claims 1
and 6 under 35 U.S.C. § 103.

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CONCLUSION

Claim(s)
Rejected

35
U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 6 103 Tatsuro, Hubbush 1, 6

REVERSED