Waters Technologies CorporationDownload PDFPatent Trials and Appeals BoardJul 13, 20212020004307 (P.T.A.B. Jul. 13, 2021) Copy Citation 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. 15/303,328 10/11/2016 Joshua A. Shreve W-863-US2 (WAT-089US) 2461 14299 7590 07/13/2021 Schmeiser, Olsen & Watts LLP 33 Boston Post Road West Suite 410 Marborough, MA 01752 EXAMINER PEO, KARA M ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 07/13/2021 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): docketing@iplawusa.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOSHUA A. SHREVE and KURT D. JOUDREY1 ____________ Appeal 2020-004307 Application 15/303,328 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, CHRISTOPHER C. KENNEDY, and MERRELL C. CASHION, JR., Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 2, and 4–11. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. BACKGROUND The subject matter on appeal relates to conditioning systems used in chromatography systems and, more specifically, to enclosures disclosed as being useful for maintaining the temperature of chromatography columns. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Waters Technologies Corporation. Appeal Br. 2. Appeal 2020-004307 Application 15/303,328 2 E.g., Spec. 1:9–11; Claim 1. Claim 1 is reproduced below from page M2 (App’x A) of the Appeal Brief: 1. An enclosure, comprising: a column chamber having chamber walls enclosing an open chamber, the open chamber adapted to hold one or more chromatography separation columns; a duct system providing an airflow path around the column chamber such that the one or more chromatography separation columns held within the column chamber are isolated from the airflow path; an air mover disposed in the airflow path, the air mover generating a flow of air within the duct system; and a heat exchanger system disposed in the airflow path near the air mover, the heat exchanger system configured for exchanging heat with the air as the air flows past the heat exchanger system such that the air circulates through the duct system around the column chamber and convectively exchanges heat with the chamber walls such that heat radiates from the chamber walls to produce a thermally conditioned environment within the column chamber without airflow in the column chamber. ANALYSIS Claims 1, 2, and 4–11 stand rejected under 35 U.S.C. § 102(a)(1)/(a)(2) as anticipated by Stephens (US 4,534,941, issued Aug. 13, 1985). We begin with an issue of claim interpretation. Claim 1, the only independent claim at issue in this case, recites that the heat exchanger system is configured “such that air circulates through the duct system . . . and convectively exchanges heat with the chamber walls.” Appeal Br. at M. 2 The pages of the Claims Appendix are labeled with letters (beginning with “M”) rather than numbers. Appeal 2020-004307 Application 15/303,328 3 Consistent with the Appellant’s arguments, see Appeal Br. 10–11; Reply Br. 4, we understand that limitation to require the air circulating through the duct system to convectively interact with the chamber walls; i.e., the air must be able to contact the chamber walls to convectively exchange heat with them. In rejecting claim 1, the Examiner relies primarily on Figures 2 and 4 of Stephens, reproduced below. Appeal 2020-004307 Application 15/303,328 4 Figures 2 and 4 of Stephens, above, depict an embodiment of a temperature control system for a chromatography column. See Stephens at Abst., 4:35– 5:54. The figures depict thermal block 50 surrounding chromatography column 24. E.g., id. Figs. 2, 4. Thermoelectric device 58 is adjacent to a surface of thermal block 50, and both thermal block 50 and thermoelectric device 58 are surrounded by heatsink 64, which resides within plenum 84, through which air is drawn by a fan (not pictured). See id. at 5:5–25, Figs. 2, 4. The Examiner finds that thermal block 50 constitutes the “chamber walls” recited by claim 1. Ans. 3. The Examiner determines that “[t]he system of Stephens is capable of convectively exchanging heat with the column chamber walls.” Id. at 4. The Appellant argues, inter alia, that “Stephens does not teach convective heating of chamber walls for a chamber configured to hold a chromatography column such that the walls heat the open chamber through radiation.” Appeal Br. 10. The Appellant argues that claim 1 requires “a chamber that includes chamber walls that are exposed to airflow,” and that “[t]his structure is not taught or suggested in Stephens.” Id. at 10–11. The Appellant asserts that, in Stephens, “heat sinks 64 conductively heat the thermal block 50, which conductively heats the column 24.” Id. at 9. In the Answer, the Examiner responds to that argument in a variety of ways. The Examiner maintains that the system of Stephens is “capable of” convective exchange of heat with the chamber walls. Ans. 8. The Examiner also determines that the disputed limitation is a functional limitation that does not limit the structure of the claimed apparatus. Id. at 11. The Examiner finds that, because claim 1 uses the transitional phrase Appeal 2020-004307 Application 15/303,328 5 “comprising,” “[c]onductive heating is not excluded.” Id. at 13. Finally, the Examiner determines that “[t]he term ‘convective’ is not explicitly defined in the instant specification,” and that, because “Stephens provides a structure where air circulates through the duct system around the column chamber, there is inherent convective exchange of heat with the column chamber to produce a thermally conditioned environment. The structure of Stephens is the same as claimed and will meet the capabilities of intended use.” Id. at 14. The Examiner’s rationale is not persuasive. Even accepting the Examiner’s determination that claim language at issue constitutes functional language, the claim language here implies required structure. See, e.g., Textron Innovations Inc. v. Am. Eurocopter Corp., 498 F. App’x 23, 28 (Fed. Cir. 2012) (“In certain circumstances functional language may be used to add limitations to an apparatus claim.” (citing K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999) (“[T]he functional language tells us something about the structural requirements . . . .”))). As explained above, see infra page 3, the apparatus described by claim 1 must be structurally capable of allowing air circulating through the duct system to convectively exchange heat with the chamber walls by contacting the chamber walls. The Examiner has not adequately established that the structure of Stephens possesses that capability. As described above, the Examiner finds that thermal block 50 of Stephens corresponds to the recited chamber walls. But the Examiner provides no persuasive explanation of how thermal block 50 ever convectively interacts with air flowing through Stephens’ plenum 84. Given that thermal block 50 appears to be separated from the air flow by heat sink 64 and other structural elements, see, e.g., Stephens Fig. 2, Appeal 2020-004307 Application 15/303,328 6 it does not appear that Stephens’ chamber walls are capable of “convectively exchang[ing] heat” with the air circulating through the duct, as recited by claim 1. Consistent with the Appellant’s arguments, e.g., Appeal Br. 9–11, Reply Br. 4, a person of ordinary skill in the art would have understood that, in Stephens, heat from the air circulating through plenum 84 is convectively exchanged with heat sink 64 of Stephens, and, in turn, conductively exchanged between the heat sink and the chamber walls of Stephens, and the Examiner has not persuaded us that convective heat exchange would inherently occur. See, e.g., Stephens Fig. 2, 4. Accordingly, we reverse the Examiner’s rejection of claim 1. Because the remaining claims on appeal depend from claim 1, and the Examiner’s analysis of those claims does not remedy the error identified above, we likewise reverse the Examiner’s rejection of claims 2 and 4–11. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–11 102(a)(1)/(a)(2) Stephens 1, 2, 4–11 REVERSED Copy with citationCopy as parenthetical citation