Waters Technologies Corporation

Patent Trials and Appeals Board

Jul 13, 2021

2020004307 (P.T.A.B. Jul. 13, 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.
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.
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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.
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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.

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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
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“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,
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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