Ex Parte Barringer et al

Board of Patent Appeals and Interferences

Jul 25, 2012

10600177 (B.P.A.I. Jul. 25, 2012)

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.
10/600,177 06/20/2003 George E. Barringer JR. 3551.1004-000 9752
21005 7590 07/26/2012
HAMILTON, BROOK, SMITH & REYNOLDS, P.C.
530 VIRGINIA ROAD
P.O. BOX 9133
CONCORD, MA 01742-9133
EXAMINER
NOGUEROLA, ALEXANDER STEPHAN
ART UNIT PAPER NUMBER
1759
MAIL DATE DELIVERY MODE
07/26/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEORGE E. BARRINGER, JR., STEPHEN C. PHILLIPS,
and
MARK J. PHILLIPS
____________

Appeal 2010-009253
Application 10/600,177
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
ROMULO H. DELMENDO, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009253
Application 10/600,177

2
George E. Barringer, Jr., et al., the Appellants,1 seek our review under
35 U.S.C. § 134(a) of a final rejection of claims 27-52.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and REVERSE-IN-PART.

STATEMENT OF THE CASE
The invention relates to an apparatus for performing capillary
electrophoresis in the analysis of macromolecules, wherein the apparatus
includes a particular controller operatively coupled to an input valve for
providing a liquid sample to the capillary electrophoresis column.
Specification (“Spec.”) 6, l. 25 to 7, l. 3.
Claims 27 and 52 are reproduced below:
27. An apparatus for performing capillary
electrophoresis, comprising:
an inlet chamber;
a capillary electrophoresis column with one end fixedly
coupled to the inlet chamber;
a liquid source coupled to the inlet chamber through an
input valve to supply a liquid sample in a controlled manner to
the inlet chamber; and
a controller operatively coupled to the input valve and
including executable instructions to convert and execute
operational input to control the valve for providing a sample of
the liquid source to the capillary electrophoresis column.
52. An apparatus for performing capillary
electrophoresis comprising:

1 The Appellants state that the real party in interest is Groton Biosystems.
Appeal Brief filed November 2, 2009 (“App. Br.”) at 3.
2 App. Br. 3; Final Office Action mailed January 27, 2009; Examiner’s
Answer mailed February 18, 2010 (“Ans.”) at 2.
Appeal 2010-009253
Application 10/600,177

3
means for providing a liquid source in fluid
communication via an inlet chamber to an end of a capillary
electrophoresis column fixedly coupled to the inlet chamber;
means for converting and executing operational input and
responsively controlling flow of the liquid source to the inlet
chamber to provide a liquid sample in a controlled manner to
the end of the capillary electrophoresis column; and
means for performing the capillary electrophoresis.
App. Br. 20, 22 (Claims App’x).
The Examiner rejected claims 27-52 as follows:
I. Claims 27 and 52 under 35 U.S.C. § 102(b) as anticipated by
Virtanen;3
II. Claims 28-34, 36, and 41-46 under 35 U.S.C. § 103(a) as
unpatentable over Virtanen in view of Nikiforov;4
III. Claims 34 and 35 under 35 U.S.C. § 103(a) as unpatentable
over Virtanen in view of Nikiforov and further in view of Li;5
IV. Claim 37 under 35 U.S.C. § 103(a) as unpatentable over
Virtanen in view of Nikiforov and further in view of Sarrine;6
V. Claim 38 under 35 U.S.C. § 103(a) as unpatentable over
Virtanen in view of Nikiforov and further in view of Karger7 or
Särme;8
VI. Claims 39, 40, 49, and 51 under 35 U.S.C. § 103(a) as
unpatentable over Virtanen;

3 U.S. Patent 6,402,919 B1 issued June 11, 2002.
4 U.S. Patent 7,060,171 B1 issued June 13, 2006.
5 U.S. Patent 6,375,819 B1 issued April 23, 2002.
6 U.S. Patent 5,147,522 issued September 15, 1992.
7 U.S. Patent 5,348,633 issued September 20, 1994.
8 U.S. Patent 7,261,801 B2 issued August 28, 2007.
Appeal 2010-009253
Application 10/600,177

4
VII. Claims 47 and 48 under 35 U.S.C. § 103(a) as unpatentable
over Virtanen in view of Li; and
VIII. Claim 50 under 35 U.S.C. § 103(a) as unpatentable over
Virtanen in view of Sarrine.
Ans. 4-30.
The Appellants rely on a Declaration of George F. Barringer, Jr.,
submitted on June 1, 2009 pursuant to 37 C.F.R. § 1.132. App. Br. 23 (Evid.
App’x).

DISCUSSION
Except for claims 32, 37, 39, and 52, the Appellants have focused
their arguments on certain limitations recited in claim 27. Thus, to the
extent that the rejections were not argued separately, we presume that the
Appellants are relying on the same arguments presented in support of claim
27. Additionally, claims that have not been separately argued stand or fall
with the other claims subject to each rejection. 37 C.F.R. § 41.37(c)(1)(vii).

Claim 27
The Examiner found that Virtanen describes every limitation of claim
27. Ans. 4-5.
The Appellants’ sole basis for contending that Virtanen does not
anticipate is that the reference does not disclose a controller as recited in
claim 27 (i.e., “a controller . . . including executable instructions to convert
and execute operational input to control the valve”). App. Br. 10.
Specifically, the Appellants argue that “Virtanen, by providing only a single
sentence directed to such a controller, leaves unclear exactly which
Appeal 2010-009253
Application 10/600,177

5
additional components would be needed or for what specific functionality.”
Id. According to the Appellants, “[o]ne may implement a controller that
performs standard controlling functions (e.g., for automation) without
converting and executing operational input,” such as a “turnkey”
implementation. Id. The Appellants further contend that Virtanen is non-
enabling because “a person of ordinary skill in the art capillary
electrophoresis would not be skilled in electronic devices and electronic
processing and would not have been enabled, based on Virtanen alone, to
design a system to ‘convert and execute operational input.’” Id. at 12.
Thus, the dispositive issues arising from these contentions are:
Does Virtanen describe, within the meaning of 35 U.S.C. § 102(b), “a
controller operatively coupled to the input valve and including executable
instructions to convert and execute operational input to control the valve for
providing a sample of the liquid source to the capillary electrophoresis
column,” as recited in claim 27?
Did the Appellants demonstrate by clear and convincing evidence that
Virtanen’s disclosure is non-enabling with respect to the controller?
We find no error justifying reversal of the Examiner’s finding that
Virtanen describes, within the meaning of 35 U.S.C. § 102(b), the invention
recited in claim 27. Our reasons follow.
“[T]he PTO must give claims their broadest reasonable construction
consistent with the specification . . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope,
Appeal 2010-009253
Application 10/600,177

6
a broad construction during prosecution creates no unfairness to the
applicant or patentee.” Id.
As correctly found by the Examiner at pages 32-33 of the Answer,
none of the key terms in the disputed limitation (“controller,” “executable
instructions,” and “operational input”) are defined in the Specification.
Spec. 6, ll. 1-15. Instead, as explained by the Examiner, Ans. 32, these
terms appear in the Specification “in an open[-ended or non-limiting]
manner,” as follows:
A controller is employed to control the hydraulic subsystem in
a manner adapted for preparing the macromolecule sample.
The controller includes executable instructions, such as
compiled software (i.e., software that is unchangeable by the
end user), that has instructions to convert and execute
operational input to control the hydraulic subsystem. The
executable instructions may be unchangeable and conform to a
known industry standard, such as American National Standards
Institute (ANSI) (e.g., ANSI ‘C’ programming language).
The operational input may include instructions, such as
declarative software instructions, that are interpreted by the
compiled software. The operational input may be modifiable
independent of the compiled software. In this way, once the
system with the compiled software is delivered to a customer,
the customer can develop or modify the operational input
without altering the compiled software.
The controller may include an interface to receive the
operational input from an external system. Such an external
system may be local to the system or coupled to the interface
via a network, such as the Internet.
Spec. 6, ll. 1-15 (emphases added).
While the Specification in other passages provides specific examples
such as “operational input” in the form of particular declarative software
instructions as described on pages 31-32 (i.e., “english-like language”), the
Appeal 2010-009253
Application 10/600,177

7
Examiner correctly concluded (Ans. 35) that these examples do not limit the
broad scope of these terms. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004) (“[T]his court counsels the PTO to avoid the temptation to limit broad
claim terms solely on the basis of specification passages.”).
Therefore, we conclude from the claim language itself as well as the
pertinent Specification disclosure that the disputed limitation reads on any
microprocessor-based controller, which converts and executes user input
from any interface by any means such as software or firmware to physically
control the input valve.
Having construed the disputed claim limitation, we turn to the
teachings of Virtanen. The Appellants do not dispute the Examiner’s
findings that Virtanen describes an apparatus for performing capillary
electrophoresis comprising an inlet chamber, a capillary electrophoresis
column with one end fixedly coupled to the inlet chamber, and a liquid
source coupled to the inlet chamber through an input valve. App. Br. 8-11;
Ans. 4. As pointed out by the Examiner on pages 4-5 of the Answer,
Virtanen teaches that the “[o]peration of the entire apparatus can be
controlled by means of a micro-processor.” Col. 3, ll. 36-38 (emphasis
added). Virtanen states that “[b]y using appropriate pumps and valves, it is
possible to perform a closed or open capillary electrophoresis or to establish
a precalculated flow rate in a capillary.” Col. 3, ll. 38-40. In addition,
Virtanen teaches that “[b]y modifying various parameters, type of injection,
electric field, and solution flow, it is readily possible with the apparatus of
the [Virtanen] invention to introduce many different ways of sample
feeding” and that “[b]y using an apparatus of the [Virtanen] invention, it is
easy to select and implement initial and boundary conditions for various
Appeal 2010-009253
Application 10/600,177

8
electrophoresis applications.” Col. 4, ll. 35-39, 42-44. Thus, a person of
ordinary skill in the art would have drawn a reasonable inference from
Virtanen’s disclosure that the input valve is also controlled by a
microprocessor by input from a user to vary the operational parameters of
the apparatus. In re Preda, 401 F.2d 825, 826-27 (CCPA 1968).
The Appellants rely on Inventor Barringer’s declaration testimony to
assert that “it is improper to conclude that sophisticated intermediate level
processing as in Appellant’s claimed invention would be inherent.” App.
Br. 11. As we discussed above, the claim language itself encompasses any
microprocessor-based controller that permits a user to control the input
valve. In testifying that “[t]he present invention as claimed goes far beyond
mere control by a microprocessor and also beyond modifiable parameters as
in Virtanen,” Inventor Barringer appears to have failed to appreciate the
broad scope of claim 27. Barringer Decl. ¶ 11. Also, while Inventor
Barringer states that a “turnkey solution” with control and command
instructions inaccessible to the user exists commercially, such a “turnkey”
device is not Virtanen’s apparatus, which permits user control. Id. at ¶¶ 12-
13.
In support of the argument that Virtanen’s disclosure with respect to
the controller is non-enabling, Inventor Barringer asserts that a chemist
would not know how “to implement a sophisticated system like the presently
claimed invention.” Id. at ¶ 11. Inventor Barringer, however, overlooks the
fact that a chemist is presumed to have some common sense. A chemist,
who may or may not be well-versed with microprocessors and/or
programming, would have had the common sense to consult experts to make
and/or use the apparatus disclosed in Virtanen. Because the Appellants
Appeal 2010-009253
Application 10/600,177

9
failed to prove by clear and convincing evidence that Virtanen’s disclosure
is non-enabling, we find their argument unpersuasive.
For these reasons, we find no error in the Examiner’s rejection of
claim 27.

Claim 52
The rejection of claim 52 stands on different footing. As the
Appellants point out, claim 52 recites means-plus-function language under
35 U.S.C. § 112, ¶ 6 (e.g., “means for converting and executing operational
input and responsively controlling flow of the liquid source to the inlet
chamber to provide a liquid sample in a controlled manner to the end of the
capillary electrophoresis column”). App. Br. 13. Because the Examiner did
not carry out a proper claim interpretation of the means-plus-function
limitations under 35 U.S.C. § 112, ¶ 6, Ans. 4-5, 31-36, we procedurally
reverse the rejection of claim 52.

Claim 39
With respect to claim 39, the Appellants again rely on the “turnkey-
style automation system” argument made in support of claim 27. App. Br.
13. Therefore, we find the Appellants’ argument in support of claim 39
similarly unpersuasive.

Claim 32
Claim 32 recites “wherein the executable instructions convert the
operational input by interpreting program instructions.” The Examiner
relied on the teachings of Nikiforov for this limitation. Ans. 13. The
Appeal 2010-009253
Application 10/600,177

10
Appellants argue that “Nikforov [sic, Nikiforov] does not teach converting
operational input at all, much less ‘convert[ing] operational input by
interpreting program instructions.’” App. Br. 14 (quoting claim 32).
We cannot agree with the Appellants. Nikiforov teaches a
microfluidic electrophoresis device in which a computer with appropriate
programming receives user input information and transfers the information
into instructions for a flow controller. Col. 7, l. 49 to col. 8, l. 13. Thus,
Nikiforov makes explicit what would have been reasonably drawn as
inferences from Virtanen’s disclosure. As such, we find no error in the
Examiner’s conclusion that a person of ordinary skill in the art would have
had a reason to implement a computer with appropriate programming in
Virtanen in order to receive/process user input and then provide instructions
to the controller as shown in Nikiforov.

Claim 37
Claim 37 recites “wherein the executable instructions include
instructions to detect errors in the operational input.” The Examiner relied
on the teachings of Sarrine at column 7, lines 34-37, and column 19, lines
15-37. The Appellants’ only argument is that “Sarrine’s error detection of
an input signal is patentably distinct” from that recited in claim 37 because
Sarrine’s error detection is of the kind conventionally found in turnkey
systems. App. Br. 16.
Again, the Appellants’ argument is unpersuasive. Here, the Examiner
has relied on the collective teachings of Virtanen and Sarrine. Virtanen
plainly teaches that the user can vary the operating parameters of the
apparatus and is therefore more than a “turnkey” operation. Because the
Appeal 2010-009253
Application 10/600,177

11
Appellants have not addressed the collective teachings of the prior art
references, the Appellants’ argument is ineffective to show any error on the
part of the Examiner. In re Keller, 642 F.2d 413, 425 (CCPA 1981).

ORDER
The Examiner’s rejection of claims 27 and 52 under 35 U.S.C.
§ 102(b) as anticipated by Virtanen is affirmed as to claim 27 but reversed
as to claim 52.
The Examiner’s rejection of claims 28-34, 36, and 41-46 under 35
U.S.C. § 103(a) as unpatentable over Virtanen in view of Nikiforov is
affirmed.
The Examiner’s rejection of claims 34 and 35 under 35 U.S.C.
§ 103(a) as unpatentable over Virtanen in view of Nikiforov and further in
view of Li is affirmed.
The Examiner’s rejection of claim 37 under 35 U.S.C. § 103(a) as
unpatentable over Virtanen in view of Nikiforov and further in view of
Sarrine is affirmed.
The Examiner’s rejection of claim 38 under 35 U.S.C. § 103(a) as
unpatentable over Virtanen in view of Nikiforov and further in view of
Karger or Särme is affirmed.
The Examiner’s rejection of claims 39, 40, 49, and 51under 35 U.S.C.
§ 103(a) as unpatentable over Virtanen is affirmed.
The Examiner’s rejection of claims 47 and 48 under 35 U.S.C.
§ 103(a) as unpatentable over Virtanen in view of Li is affirmed.
The Examiner’s rejection of claim 50 under 35 U.S.C. § 103(a) as
unpatentable over Virtanen in view of Sarrine is affirmed.
Appeal 2010-009253
Application 10/600,177

12
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART

ssl