Agilent Technologies, Inc.

Patent Trials and Appeals Board

Oct 26, 2020

2020000240 (P.T.A.B. Oct. 26, 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.
14/252,711 04/14/2014 Klaus Witt 20130157-02 7487
22878 7590 10/26/2020
Agilent Technologies, Inc.
Global IP Operations
5301 Stevens Creek Blvd
Santa Clara, CA 95051
EXAMINER
PEO, KARA M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
10/26/2020 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 KLAUS WITT,
KONSTANTIN CHOIKHET, and DWIGHT STOLL
____________

Appeal 2020-000240
Application 14/252,711
Technology Center 1700
____________
Before JEFFREY B. ROBERTSON, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims as 1, 5, 6, 8–10, and 15–21 of
Application 14/252,711. Final Act. (November 5, 2018). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Agilent Technologies, Inc., as the real
party in interest. Appeal Br. 3.
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Application 14/252,711
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I. BACKGROUND
The ’711 Application describes an apparatus for sample introduction
and management, especially in a high-performance liquid chromatography
(HPLC) system. Spec. ¶ 2. The apparatus described in the Specification is
said to be especially useful in 2-dimensional HPLC systems. Id., ¶ ¶ 9, 32.
Claim 1 is representative of the ’711 Application’s claims and is
reproduced below from the Claims Appendix of the Revised Appeal Brief
(“Appeal Brief”), filed April 3, 2019.
1. A sample dispatcher configured for individually
introducing a plurality of portions of a sample fluid into a flow
of a mobile phase of a separation system configured for
separating compounds of one or more sample fluids, wherein
the separation system comprises a mobile phase drive
configured for driving the mobile phase through a separation
unit configured for separating compounds of the sample fluid in
the mobile phase, the sample dispatcher comprising:
a valve comprising an input and an output,
the output coupled to the separation unit;
a sample reservoir coupled between the
input and the output; and
a bypass channel coupling the input of the
valve to the output of the valve,
wherein:
the sample dispatcher is configured to selectively switch
the valve to a loading state and a dilution state;
at the loading state, the valve defines a flow path into the
sample reservoir, wherein the sample reservoir receives and
temporarily stores at least one portion of the plurality of
portions of the sample fluid;
at the dilution state, the valve fluidly couples the sample
reservoir and the bypass channel in respective parallel flow
paths between the mobile phase drive and the separation unit,
Appeal 2020-000240
Application 14/252,711
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the parallel flow paths joining at a point upstream of the
separation unit, wherein:
the mobile phase is driven through the
sample reservoir and the bypass channel via the
parallel flow paths; and
the at least one portion of the plurality of
portions of the sample fluid is driven with the
mobile phase from the sample reservoir to the
separation unit, and is diluted by the mobile phase
from the bypass channel; and
wherein switching states of the valve comprise a) a first
switching state which fluidly couples only the sample reservoir
between the mobile phase drive and the separation unit, b) a
second switching state which fluidly couples both the sample
reservoir and the bypass channel between the mobile phase
drive and the separation unit, and c) a third switching state
which fluidly couples only the bypass channel between the
mobile phase drive and the separation unit.
Appeal Br. 35–36 (emphasis added).
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claim 5 is rejected under 35 U.S.C. § 112(d) as being of improper
dependent form. Final Act. 2.
2. Claims 1, 5, 6, 8–10, and 15–21 are rejected under 35 U.S.C. § 103
as unpatentable over Horikawa.2 Final Act. 3.

2 JP 2010101875, published May 6, 2010. We note that both the Examiner
and Appellant refer to this reference as Yoshiteru, which is the given name
of the first named inventor. We shall follow our usual practice of referring to
the reference by the surname of the first-named inventor—in this instance,
Horikawa.The Examiner and Appellant relied upon the machine translation
entered into the record on April 27, 2018. Finding the machine translation
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Application 14/252,711
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III. DISCUSSION
A. Rejection of claim 5 for being of improper dependent form
For convenience, we reproduce claim 5 below:
5. The sample dispatcher claim 1, wherein the sample
dispatcher is configured to selectively switch the valve to a
sample reservoir state, at which the sample reservoir is coupled
between the mobile phase drive and the separation unit while
the bypass channel is not coupled between the mobile phase
drive and the separation unit.
Appeal Br. 36–37 (emphasis added).
In rejecting claim 5, the Examiner found that “[c]laim 1 requires
specific switching states; claim 5 is merely one of the switching state and
therefore is not further limiting.” Final Act. 2.
Appellant responds that “[c]laim 5 recites (and defines therein) a
‘sample reservoir state’ not recited in claim 1. For this reason, claim 5
further limits claim 1.” Appeal Br. 33.
In the Answer, the Examiner states that
while claim 1 does not use the exact limitation “sample
reservoir state[,]” it still reads on the limitation of claim 5.
Claim 5 merely describes a switching state of claim 1 which is
already been claimed[,] and the limitation “sample reservoir
state” is merely a descriptive modifier. Claim 5 corresponds to
claim 1, switching state a.
Answer 23.
We reverse this rejection, but not for the reasons advanced by
Appellant. As will be explained below, neither Appellant nor the Examiner
considered the entirety of claim 5’s language.

unsatisfactory, we have obtained a translation of Horikawa by a human
translator. We enter this translation into the record with this opinion and cite
it.
Appeal 2020-000240
Application 14/252,711
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In relevant part, claim 1 states that the sample dispatcher comprises a
valve having at least three switching states, which we shall refer to as states
(a), (b), and (c). See claim 1. Claim 1 also recites that “the sample dispatcher
is configured to selectively switch the valve to a loading state and a dilution
state.” Id. We understand this language to require the sample dispatcher to
be configured to switch the valve into at least these two states automatically,
i.e., the sample dispatcher controls the valve state. Claim 1 goes on to
describe the connections made by the valve when it is in the loading state
and the dilution state. Id. Neither the loading state nor the dilution state
correspond to valve state (a). Claim 1, therefore, does not require that the
sample dispatcher be configured to selectively switch the valve to state (a).
Claim 5 recites, in relevant part, that “the sample dispatcher is
configured to selectively switch the valve to a sample reservoir state,”
which—as the Examiner notes—corresponds to valve state (a). Thus, claim
5 further limits claim 1.
Therefore, we reverse the rejection of claim 5 under 35 U.S.C. § 112(d).
B. Rejection of claims 1, 5, 6, 8–10, and 15–21 as unpatentable
over Horikawa
The Examiner rejected all of the appealed claims as obvious in view
of Horikawa. Final Act. 3. Horikawa describes a sample injection device
used in a supercritical fluid chromatography system. Horikawa ¶ 1.
Supercritical fluid chromatography is an alternative to liquid
chromatography, including HPLC. Id. ¶ 2.
Appellant argues for reversal of this rejection on the basis of
limitations in independent claims 1, 18, and 21. Thus, we shall limit our
discussion to these claims. For the reasons set forth below, we reverse the
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Application 14/252,711
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rejection of each of the independent claims. Thus, we also reverse the
rejection of dependent claims 5, 6, 8–10, 15–17, 19, and 20.
Each of the independent claims is directed to a sample dispatcher
comprising, in relevant part, a valve comprising an input and an output, the
output coupled to the separation unit and at least one sample reservoir
coupled between the input and the output. See claims 1, 18, 21.
In rejecting claim 1, the Examiner found that Horikawa teaches
a valve comprising an input and an output (Figure 1, sample
injector 36; Figure 4, pressure valves 42; [0018]); which is
capable of selectively switching the valve to a loading state and
a dilution state. [Horikawa] teaches the output is coupled to the
separation unit (Figure 1, sample injector 36, column 38;
[0003]).
[Horikawa] teaches a [sic] one or more sample reservoirs
coupled between the input and the output (Figure 4(a), six
pipes; [0018]); which are capable of receiving and temporarily
storing a respective sample fluid portion or at least a part
thereof.
Final Act. 3–4. The Examiner made similar findings with respect to
independent claim 18, see id. at 8, and independent claim 21, see id. at 10–
11.
These findings are erroneous, compelling us to reverse the rejection of
claims 1, 18, and 21.
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Application 14/252,711
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For ease of reference, we reproduce Horikawa’s Figure 4(a) below.

Figure 4(a) is a figure showing the flow path
resistance adjusting means. Horikawa ¶ 12.
As described in Horikawa, two 1-in/6-out high pressure valves 42 are
installed facing each other in the bypass flow path 40. Horikawa ¶ 18. Six
pipes having different flow path resistances are connected to the six out
ports of each high-pressure valve. Id. This arrangement allows bypass flow
path 40 to have six different flow path resistance by changing the positions
of high pressure valves 42. Id.
In other words, contrary to the Examiner’s findings, the six pipes
shown in Horikawa’s Figure 4(a) are not sample reservoirs.3 Moreover, none
of the six pipes is attached to a valve between the input and output of that
same valve as required by the independent claims.
Because this error requires us to reverse the rejection of independent
claims 1, 18, and 21, we need not address Appellant’s remaining arguments.

3 The only sample reservoir described in Horikawa is a sample loop of
sample injector 36. Horikawa ¶ 3.
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IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
5 112(d) Improper Dependent Form 5
1, 5, 6, 8–10, 15–
21 103 Horikawa
1, 5, 6, 8–10,
15–21
Overall Outcome 1, 5, 6, 8–10, 15–21
REVERSED