Ex Parte Barclay et al

Patent Trial and Appeal Board

Oct 31, 2016

13239447 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/239,447 09/22/2011
118935 7590 11/01/2016
Parsons Summa
15801 Brixham Hill Avenue
Suite 550
Charlotte, NC 28277
FIRST NAMED INVENTOR
David A. Barclay
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
l 700. l 84US2 2915
EXAMINER
RAPHAEL, COLLEEN M
ART UNIT PAPER NUMBER
1756
MAILDATE DELIVERY MODE
11/01/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID A. BARCLAY, JOSEPH J. LAMBERT,
WILLIAM E. JENNINGS, and DAVID L. HERMAN
Appeal2014-009347
Application 13/239,447
Technology Center 1700
Before MICHAEL P. COLAIANNI, WESLEY B. DERRICK, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal the Examiner's final rejection of claims 1-15.
35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). An oral
hearing was held on October 18, 2016.
We AFFIRM.
1 In this decision, we refer to the Final Office Action appealed from, mailed
July 31, 2013 ("Final Act."), the Appeal Brief dated December 31, 2013
("App. Br."), the Examiner's Answer to the Appeal Brief dated July 1, 2014
("Ans."), and the Reply Brief dated September 2, 2014 ("Reply Br.").
2 Appellants identify CEM Corporation as the Real Party in Interest.
App. Br. 1.
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Application 13/239,447
The Claimed Invention
Appellants' disclosure relates to a method of microwave assisted
chemical reactions carried out at elevated temperatures and elevated
pressures. Spec. i-f 12; Abstract. The claimed method includes the steps of
applying microwave radiation to a sample in a sealed vessel while measuring
the temperature of the sample and measuring the pressure generated inside
the vessel and until the measured pressure reaches a designated set point;
opening the vessel to release gases until the measured pressure inside the
vessel reaches a lower designated set point; closing the vessel; and repeating
the steps of opening the vessel at designated pressure set points and closing
the vessel at designated pressure set points until the sample reaction reaches
a designated high temperature. Id. Claim 1 is representative of the claims
on appeal and is reproduced below from the Claims Appendix to the Appeal
Brief (App. Br. 11 ):
1. A method of high pressure microwave assisted chemistry
compnsmg:
applying microwave radiation to a sample in a sealed vessel
while measuring the temperature of the sample and measuring
the pressure generated inside the vessel and until the measured
pressure reaches a designated set point above atmospheric
pressure;
opening the vessel to release gases until the measured
pressure inside the vessel reaches a lower designated set point
that is also above atmospheric pressure;
closing the vessel while the pressure inside the vessel
remains above atmospheric pressure; and;
repeating the steps of opening the vessel at designated
pressure set points above atmospheric pressure and closing the
vessel at designated pressure set points above atmospheric
pressure, and applying microwave radiation to the sample until
the sample reaction reaches a designated temperature.
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Application 13/239,447
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Dalquist et al., US 4,796,776
(hereinafter "Dalquist")
McCullough et al., US 6,097,015
(hereinafter "McCullough")
Manganini et al., US 6,803,237 B2
(hereinafter "Manganini ")
Hope et al., US 6,843,266 B2
(hereinafter "Hope")
Florkey et al., US 6,984,359 B2
(hereinafter "Florkey")
Jennings US 7,144,739 B2
Hargett, Jr. et al., US 7 ,816,633 B2
(hereinafter "'633 Patent")
The Rejections
Jan. 10, 1989
Aug. 1, 2000
Oct. 12, 2004
Jan. 18,2005
Jan. 10,2006
Dec. 5, 2006
Oct. 19, 2010
On appeal, the Examiner maintains the following rejections3:
1. Claims 1-8 and 12-14 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over McCullough in view of
Manganini, and further in view ofFlorkey. Ans. 3; Final Act. 3.
2. Claims 9, 10, and 15 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over McCullough, Manganini, and Florkey as
3 Rejections 5, 6, and 7 listed below were designated by the Examiner as
New Grounds of Rejection in the Answer and not originally included as
rejections in the Final Office Action. See Ans. 9-12.
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Application 13/239,447
applied to claims 1 and 7 above, and further in view of Jennings. Ans. 5;
Final Act. 5.
3. Claim 11 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over McCullough, Manganini, and Florkey as applied to
claim 1 above, and further in view of Hope. Ans. 6; Final Act. 6.
4. Claims 1-15 stand rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1-9 of the '633 Patent in
view of McCullough. Ans. 8; Final Act. 8.
5. Claims 1-8 and 12-14 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over McCullough in view ofManganini, and
further in view of Dalquist. Ans. 9.
6. Claims 9, 10, and 15 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over McCullough, Manganini, and Dalquist
as applied to claims 1 and 7 above, and further in view of Jennings. Ans. 11.
7. Claim 11 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over McCullough, Manganini, and Dalquist as applied to
claim 1 above, and further in view of Hope. Ans. 12.
8. Claims 1-15 stand rejected under 35 U.S.C. § 103(a) or pre-
AIA 35 U.S.C. § 112, first paragraph, as being unpatentable for non-
enablement. Final Act. 2.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, including Appellants' argument
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Application 13/239,447
at the oral hearing,4 we affirm the Examiner's rejections for the reasons set
forth in the Answer to the Appeal Brief and Final Office Action appealed
from, which we adopt as our own. We highlight and address specific
findings and arguments for emphasis as follows.
Rejection 1
Appellants argue claims 1-8 and 12-14 as a group. We select claim 1
as representative of this group, and the remaining claims stand or fall with
claim 1. 37 C.F.R. § 41.37( c )(1 )(iv).
The Examiner finds that the combination of McCullough, Manganini,
and Florkey suggests a method of high pressure microwave assisted
chemistry satisfying all of the limitations of claim 1 and concludes that the
combination would have rendered claim 1 obvious. Ans. 3, 4. The
Examiner finds that McCullough discloses the majority of claim 1 's
limitations, but that it does not "explicitly teach repeating the steps of
opening the vessel at designated pressure set points and closing the vessel at
designated pressure set points" and that the "set points are above
atmospheric pressure," as recited in the claim. Id. (citing McCullough, col.
11, 11. 28---60, 62---67). The Examiner, however, relies on Manganini and
Florkey, respectively, for disclosing these limitations. Id.
In particular, the Examiner finds that Manganini teaches "a method of
pressurized microwave heating of a sample, similar to McCullough" and that
includes "repeating [the] steps of opening and closing a microwave reaction
4 An Appellant may only rely on, and we only consider, argument that has
been relied upon in the Appeal Brief or Reply Brief. 37 C.F.R.
§ 41.47(e)(l).
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vessel." Ans. 3 (citing Manganini, col. 8, 11. 44---65, Table 1). The Examiner
finds further that Manganini teaches that the opening and closing steps allow
for "introduction and removal of a variety of sample treatment solutions for
extraction and fractionation analysis of target analytes." Id. (citing
Manganini, col. 2, 11. 29-38).
The Examiner also finds that, similar to both McCullough and
Manganini, Florkey teaches "a method for treating material under pressure
and heat ... with a controller to operate and purge air at pressure greater
than atmospheric" and that the method "allows control of the pressure to
maximum and minimum limits that meet sterilization standards." Ans. 3
(citing Florkey, col. 9, 11. 6-33, col. 10, 11. 12-27).
Based on the above findings regarding the teachings of the cited
references, the Examiner concludes that:
it would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the method of McCullough .
. . by repeating steps of opening and closing a microwave
reaction vessel as taught by Manganini ... because this would
allow introduction and removal of a variety of sample treatment
solutions for extraction and fractionation analysis of target
analytes ... and to further modify the method of McCullough .
. . and Manganini ... by using set points above atmospheric
pressure, as taught by Florkey ... because this would allow
control of the pressure to maximum and minimum limits that
meet sterilization standards.
Ans. 4 (citing Manganini, col. 2, 11. 29-38; Florkey, col. 10, 11. 12-27).
Appellants primarily argue that the Examiner's rejection should be
reversed because the cited prior art references are incompatible with each
other and the claimed invention. App. Br. 5-9. Appellants argue that
McCullough teaches a method that is incompatible with the claimed
invention because McCullough "specifically seeks to avoid the repeated
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opening and closing steps recited in [claim 1 ]" and "requires a single closing
step (before sterilization) and a single opening step (after sterilization)." Id.
at 6. Appellants contend that physically "opening McCullough's vessel
before sterilization is complete would both preclude sterilization and
potentially contaminate the ambient surroundings." Id. at 5.
Appellants argue that Manganini is incompatible with McCullough
because "McCullough requires a single cycle during which the vessel must
remain closed until sterilization takes place" and the repeated extraction
steps ofManganini "would frustrate McCullough's purpose." App. Br. 7.
Appellants further argue that Manganini is incompatible with the claimed
invention because Manganini "requires a return to atmospheric pressure and
room temperature at the end of every extraction ... and lacks any suggestion
that maintaining above-atmospheric pressures when opening and closing a
vessel is necessary or even advantageous." App. Br. 7.
Appellants contend that Florkey "fails to cure the logical problems of
the McCullough-Manganini combination" and does not disclose the "set
points above atmospheric pressure" limitations recited in claim 1, and that
the combination of McCullough, Manganini, and Florkey "produces an
inoperative result." App. Br. 7, 8.
We are not persuaded by Appellants' arguments because they are
premised on the physical, bodily incorporation of McCullough and
Manganini. The test, however, for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the structure of the
primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Rather,
the test is what the combined teachings of those references would have
suggested to one of ordinary skill in the art. Id. at 425; see also In re
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Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the teachings of
references does not involve an ability to combine their specific structures.");
In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary that
the inventions of the references be physically combinable to render obvious
the invention under review.").
Appellants' frustration of purpose argument is unpersuasive because
McCullough expressly indicates that its disclosed device and method are not
limited to sterilization and/or treatment of medical waste; rather, the
disclosures are more generally applicable to using microwave energy to heat
materials under pressure. See McCullough, Abstract (disclosing "a novel
method and apparatus for ... otherwise heating materials, objects, liquids
and the like under pressure"); col. 1, 11. 14--16 ("The present invention
relates to a novel method and apparatus for use of microwave energy to
make a pressure heating vessel."). Appellants do not persuasively explain or
direct us to any evidence in the record that the general purpose of using
microwave energy to heat materials under pressure is frustrated when
combined with Manganini' s teachings regarding a method of pressurized
microwave heating of a sample and the steps of opening and closing a
microwave reaction vessel.
We also do not find Appellants' argument persuasive because a
reference is good for all that it teaches to a person of ordinary skill in the art,
and not only for what it sets forth as preferred. See, e.g., Merck & Co., Inc.
v. Biocraft Labs, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); see also
McCullough, col. 1, 11. 16-18 ("In a preferred embodiment, the invention
relates to a novel apparatus and method for sterilizing medical waste.").
Accordingly, McCullough's teachings regarding a particular preference does
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not take away from its broad disclosure regarding using microwave energy
to heat materials under pressure and all that it teaches, including the
reasonable inferences that would be drawn by the skilled artisan. See In re
Preda, 401F.2d825, 826 (CCPA 1968).
Appellants' argument is further undercut because, as the Examiner
correctly points out (Ans. 13, 14), both McCullough and Manganini are
directed to methods of operating microwave vessels (McCullough, Abstract,
col. 3, 11. 7-9; Manganini, col. 2, 11. 29-38) and both McCullough and
Florkey are in the field of sterilization at pressure (McCullough, Abstract,
col. 11, 11. 28---67; Manganini, col. 8, 11. 44--65, Table 1 ). See In re Bigio,
381F.3d1320, 1325 (Fed. Cir. 2004) (explaining that prior art references
may be analogous if they involve the "same field of endeavor").
Moreover, based on the record before us, the Examiner's findings
regarding the teachings of the prior art references and reasoning for why one
of ordinary skill would have combined these teachings to arrive at
Appellants' claimed invention, including all of the limitations of claim 1, are
supported by a preponderance of the evidence and based on sound technical
reasoning. McCullough, col. 11, 11. 28---60, 62---67; Manganini, col. 8, 11. 44--
65, Table 1, col. 2, 11. 29-38; Florkey, col. 9, 11. 6-33, col. 10, 11. 12-27;
Ans. 4.
Appellants fail to direct us to sufficient evidence or provide an
adequate technical explanation to show why the Examiner's articulated
reasoning for combining the teachings of the prior art to arrive at the claimed
invention lacks a rational underpinning or is otherwise based on some other
reversible error. Appellants' assertions that Florkey fails to cure the logical
problems of the McCullough-Manganini combination (App. Br. 7) and that
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the combination of McCullough, Manganini, and Florkey produces an
inoperative result (id. at 8), without more, are conclusory and insufficient to
establish reversible error in the Examiner's analysis and findings in this
regard.
Accordingly, for the reasons provided by the Examiner and discussed
above, we affirm the Examiner's rejection of claims 1-8 and 12-14 under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combination of
McCullough, Manganini, and Florkey.
Rejection 2
In response to this rejection, Appellants do not present arguments for
the separate patentability of claims 9, 10, and 15. We select claim 9 as
representative, and claims 10 and 15 stand or fall with claim 9. 3 7 C.F .R.
§ 41. 3 7 ( c) ( 1) (iv). Claim 9 depends indirect! y from claim 1 and adds the
limitation: "comprising moderating the application of microwave energy in
response to the measured temperature." 1A..pp. Br. 12 (Claims 1A..pp'x).
The Examiner finds that the combination of McCullough, Manganini,
Florkey, and Jennings suggests all of claim 9's limitations and concludes
that the combination would have rendered claim 9 obvious. Ans. 5, 6 (citing
McCullough, col. 11, 11. 28-60, 62---67; Manganini, col. 8, 11. 44---65, Table 1,
col. 2, 11. 29-38; Florkey, col. 9, 11. 6-33, col. 10, 11. 12-27; Jennings, col. 7,
11. 40-52, col. 8, 11. 5---67).
Appellants argue that this rejection should be reversed because
Jennings does not "cure the functional incompatibility of the McCullough,
Manganini and Florkey combination." App. Br. 9. We do not find
Appellants' argument persuasive for the same reasons discussed above in
affirming the Examiner's Rejection 1.
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Accordingly, we affirm the Examiner's rejection of claims 9, 10, and
15 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combination
of McCullough, Manganini, Florkey, and Jennings.
Rejection 3
Claim 11 depends from claim 1 and adds the limitation "wherein the
step of opening the vessel comprises lifting a cap." App. Br. 12 (Claims
App'x). The Examiner finds that the combination of McCullough,
Manganini, Florkey, and Hope suggests all of claim 11 's limitations and
concludes that the combination would have rendered claim 11 obvious. Ans.
6, 7 (citing McCullough, col. 11, 11. 28---60, 62-67; Manganini, col. 8, 11. 44--
65, Table 1, col. 2, 11. 29-38; Florkey, col. 9, 11. 6-33, col. 10, 11. 12-27;
Hope, col. 1, 11. 34--51, col. 9, 11. 1-8, Fig. 10).
Appellants argue that this rejection should be reversed because
Hope's disclosures "fail to cure the inoperative nature of the McCullough,
l\1anganini and Florkey combination." 1A..pp. Br. 9, 10. \Ve do not find
Appellants' argument persuasive for the same reasons discussed above in
affirming the Examiner's Rejection 1.
Accordingly, we affirm the Examiner's rejection of claim 11 under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combination of
McCullough, Manganini, Florkey, and Hope.
Rejection 4
With respect to the Examiner's rejection of claims 1-15 for
obviousness-type double patenting, i.e., Rejection 4 stated above (Ans. 8),
the Appellants offer no substantive argument on the merits and do not
address the rejection in either the Appeal Brief or the Reply Brief.
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Accordingly, because the Examiner's double patenting rejection has
not been withdrawn and the Appellants offer no substantive argument on the
merits, we summarily affirm the rejection. Cf Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008); Ex parte Frye, Appeal No. 2009-006013, 2010
WL 889747, *4 (BPAI 2010) (precedential) ("If an appellant fails to present
arguments on a particular issue - or, more broadly, on a particular rejection
-the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection.") (cited with approval in In re Jung,
637 F.3d 1356, 1365 (Fed. Cir. 2011)).
Rejections 5, 6, and 7
In response to the Examiner's Rejection 5, stated above (Ans. 9),
Appellants present arguments for the patentability of only claim 1 and based
solely on the combination of McCullough, Manganini, and Dalquist. 5 We,
therefore, limit our discussion to claim 1 and claims 2-8 and 12-14 stand or
fall \vith claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that the combination of McCullough, Manganini,
and Dalquist suggests all of the limitations of claim 1 and concludes that the
combination would have rendered claim 1 obvious. Ans. 9, 10. The
Examiner finds that the combination of McCullough and Manganini
suggests nearly all of claim 1 's limitations except that it does not "explicitly
5 Because the Examiner's Rejections 6 and 7 are also based primarily on the
combination of McCullough, Manganini, and Dalquist as applied to claim 1
(see Ans. 9, 11, 12) and Appellants do not present separate arguments in
response to these rejections in the Reply Brief, we address them together
with Rejection 5 and note that these rejections each stand or fall with
Rejection 5 as applied to claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
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teach that the set points are above atmospheric pressure." Id. at 9. The
Examiner, however, relies on Dalquist for teaching this missing limitation.
Id.
In particular, the Examiner finds that Dalquist teaches "a method for
treating material with microwaves under pressure" and "using a controller to
operate and purge air at pressure greater than atmospheric." Ans. 9 (citing
Dalquist, Fig. 9, parts 108, and 38, col. 7, 11. 27--43, Fig. 10, parts 38, 34, 32,
and 64, col. 8, 11. 5-10). The Examiner finds further that Dalquist teaches
that the method allows steam and vapor to escape and, in particular, "as the
cover is opened from the locked position, rapid escape of steam and vapor is
permitted to protect a user who mistakenly opens the microwave pressure
cooker before pressure has subsided." Id. (citing Dalquist, col. 7, 11. 34--3 7,
col. 2, 11. 54--67).
Based on the above findings, the Examiner concludes that:
it would have been obvious, to one of ordinary skill in the art at
the time of the invention, to modify the method of McCullough
... by repeating steps of opening and closing a microwave
reaction vessel as taught by Manganini ... because this would
allow introduction and removal of a variety of sample treatment
solutions for extraction and fractionation analysis of target
analytes ... and to further modify the method of [McCullough
and Manganini] by using set points above atmospheric pressure,
as taught by Dalquist ... because this would allow escape of
steam and vapor ... and as the cover is opened from the locked
position, rapid escape of steam and vapor is permitted to protect
a user who mistakenly opens the microwave pressure cooker
before pressure has subsided.
Ans. 10 (citing Manganini, col. 2, 11. 29-38; Dalquist, col. 7, 11. 34--37, col.
2, 11. 54--67).
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In response to this rejection, Appellants repeat largely the same
arguments presented above in response to Rejection 1. In particular,
Appellants argue that the Examiner's new grounds of rejection should be
reversed because "(1) the references ... are functionally incompatible with
one another or with the claimed invention; and (2) even when the references
are combined, they neither disclose nor suggest the claimed invention."
Reply Br. 4. Appellants also argue that Dalquist's pressure relief structure
"defines a single pressure release set point that cannot and does not carry out
the steps recited in Claim 1." Id.
We are not persuaded by Appellants' arguments based on the factual
findings and analysis provided by the Examiner at pages 9-13 of the Answer
and for the same reasons previously discussed above in affirming the
Examiner's Rejection 1. Accordingly, we affirm the Examiner's Rejections
5, 6, and 7 stated above.
"'-Rejection 8
Claims 1-15 stand rejected under§ 112, first paragraph for non-
enablement. Final Act. 2. In particular, the Examiner concludes that the
Specification "does not reasonably provide enablement for maintaining the
pressure at above atmospheric pressure during the entire opening and closing
process" and that it is "unclear how the pressure is maintained above
atmospheric pressure during the entire opening and closing process if the
entirety of the sealed vessel is opened to the atmosphere." Id.
Appellants offer no substantive argument on the merits and do not
address this rejection in either the Appeal Brief or the Reply Brief.
Accordingly, we summarily affirm the rejection. Frye, 2010 WL 889747 at
*4.
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DECISION/ORDER
The Examiner's rejections of claims 1-15 are affirmed.
It is ordered that the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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