Agilent Technologies, Inc.

Patent Trials and Appeals Board

Sep 21, 2020

15252173 - (D) (P.T.A.B. Sep. 21, 2020)

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.
15/252,173 08/30/2016 Claus Lueth 20120278-09 8788
22878 7590 09/21/2020
Agilent Technologies, Inc.
Global IP Operations
5301 Stevens Creek Blvd
Santa Clara, CA 95051
EXAMINER
KRCHA, MATTHEW D
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
09/21/2020 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):
Agilentdocketing@cpaglobal.com
ipopsadmin@agilent.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLAUS LUETH and DARIJO ZEKO
Appeal 2019-005951
Application 15/252,173
Technology Center 1700
Before LINDA M. GAUDETTE, FRANCISCO C. PRATS, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4 and 9–17. See Final Act. 2, 5. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Agilent
Technologies, Inc.” Appeal Br. 3.
Appeal 2019-005951
Application 15/252,173

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CLAIMED SUBJECT MATTER
“The present invention relates to fluidically coupling fluidic
components, in particular in a high performance liquid chromatography
application.” Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A fitting male piece for providing a fluid connection
between a capillary and a fluidic conduit of a female piece, the
fitting male piece comprising:
a housing with a capillary reception configured for
receiving the capillary;
an elastic biasing mechanism being arranged at least
partially within the housing and being configured for biasing the
capillary towards the female piece; and
a locking mechanism being arranged at least partially
within the housing and being configured for locking the capillary
to the elastic biasing mechanism, wherein the locking
mechanism is configured so that the locking of the capillary is
releasable with the capillary being removable from the locking
mechanism by applying a locking release force for removing the
capillary from the capillary reception via a back side of the fitting
male piece.
Claims Appendix (Appeal Br. 17).
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Warchol US 5,595,406 Jan. 21, 1997
Ellis US 2012/0014848 A1 Jan. 19, 2012

Appeal 2019-005951
Application 15/252,173

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REJECTIONS
Claims 1–4, 10–12, and 15–17 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Warchol. Final Act. 2.
Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Warchol. Final Act. 5.
Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Warchol in view of Ellis. Final Act. 5.

OPINION
Claim 12
Appellant argues that the Examiner reversibly erred in rejecting claim
1 over Warchol because “the only way to make the [prior art] capillary
releasable is by disassembly of the spring from body 122” and therefore
Warchol does not disclose a locking mechanism that is “configured so that
the locking of the capillary is releasable with the capillary being removable
from the locking mechanism by applying a locking release force for
removing the capillary from the capillary reception via a back side of the
fitting male piece” as recited. Appeal Br. 14–15.
More specifically, Appellant argues that
[a]fter installation of the capillary 134 into biferrule 174, any
pulling of capillary 134, in downwards direction of Figure 1 to
remove it, increases the axial force onto the cone arrangement
160/174, and thus further increases the radial gripping of the
capillary 134, so that the capillary 134 cannot be removed from

2 Appellant does not separately argue the rejection of claims 2–4, 10–12, and
15–17. See Appeal Br. 11–15. Claims 1–4, 10–12, and 15–17 stand or fall
together. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2019-005951
Application 15/252,173

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the fitting by pulling capillary 134 in the downwards direction
of Figure 1.

Appeal Br. 14. We are not persuaded by this argument because it is
unsupported by evidence. “Attorneys’ argument is no substitute for
evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
We further note that Appellant’s argument is incommensurate in scope with
the claim language which does not require the removal of the capillary in the
downward direction. All claim 1 requires is that the locking mechanism be
“configured so that the locking of the capillary is releasable” – which does
not require the locking to be released – “with the capillary being removable
from the locking mechanism” – which does not require the capillary to be
removed.
Moreover, Appellant does not identify error in the Examiner’s finding
that Warchol teaches “[a] substantial force could be applied to the capillary
to the backside of the fitting male piece, such that the force is great enough
to overcome the axial force which is applied to the capillary, therefore,
allowing the capillary to be removed via a backside of the fitting male
piece.” Compare Reply Br. 2–4, with Ans. 3.
It is well-established that “apparatus claims cover what a device is,
not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909
F.2d 1464, 1468 (Fed. Cir. 1990). In this case, the Examiner finds that “there
is no structure present in the claims which correlate[s] with the releasing [of]
the capillary via a back side of the fitting male piece” and claim 1 is
anticipated based on the structural identity between the prior art and the
claim. Ans. 3. Appellant does not challenge these findings – specifically,
Appellant does not present evidence showing a structural distinction
Appeal 2019-005951
Application 15/252,173

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between Warchol and the apparatus recited in claim 1. No reversible error
has therefore been identified in the Examiner’s findings in support of the
rejection.
Claims 9, 13, & 14
Appellant’s sole argument with regard to the obviousness rejection of
claims 9, 13, and 14 is that the asserted deficiencies of Warchol “are not
remedied by Ellis.” Appeal Br. 15. The obviousness rejections of claims 9,
13, and 14 are affirmed for the reasons provided with regard to claim 1
supra. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 10–
12, 15–17
102(b) Warchol 1–4, 10–
12, 15–17

9 103(a) Warchol 9
13, 14 103(a) Warchol, Ellis 13, 14
Overall
Outcome:
1–4, 9–17

TIME PERIOD FOR RESPONSE
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)(1)(iv).
Appeal 2019-005951
Application 15/252,173

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AFFIRMED