Ex Parte Benevides et al

Board of Patent Appeals and Interferences

Jan 12, 2012

11211066 (B.P.A.I. Jan. 12, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/211,066 08/24/2005 Christopher C. Benevides WAF-333 4949
43840 7590 01/12/2012
Waters Technologies Corporation
34 MAPLE STREET - LG
MILFORD, MA 01757
EXAMINER
THERKORN, ERNEST G
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
01/12/2012 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 CHRISTOPHER C. BENEVIDES,
ROBERT COLLAMATI, and DENNIS DELLAROVERE
____________

Appeal 2010-009837
Application 11/211,066
Technology Center 1700
____________

Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-009837
Application 11/211,066

2
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1, 8-10, 15-20, 45, and 47. We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM.

Appellants claim a device for transporting liquids comprising a first
cylinder 10 and a second cylinder 24, wherein the first ends of the first and
second cylinders terminate that the same point, and a third cylinder 36
projecting outward from the second end of the first cylinder for receiving a
transport tube (claim 1; Fig. 1A).
Representative claim 1, the sole independent claim on appeal, reads as
follows:
1. A device for transporting liquids comprising:
a first cylinder having a wall, having an interior surface
and an exterior surface, and a first end and second end, said
interior surface defining a chamber for receiving a liquid
sample;
a second cylinder having a wall, having an interior
surface and an exterior surface, and a first end and a second
end, said interior surface of said second end of said second
cylinder secured to said exterior surface of said first end of said
first cylinder, said wall of said second cylinder having a
thickness, [and ]said second cylinder occupying a position on
said first cylinder such that a portion of said first cylinder is
uncovered by said second cylinder, said second cylinder being
positioned on said first cylinder such that the respective said
first ends of said first cylinder and said second cylinder
terminate at the same point, and said exterior surface of said
wall of said second cylinder being for receiving a fitting
assembly;
Appeal 2010-009837
Application 11/211,066

3
a third cylinder having a wall having an interior surface
and an exterior surface, and a first end and a second end, said
interior surface of said first end of said third cylinder secured to
said exterior surface of said first cylinder about said second end
of said first cylinder, said third cylinder wall having a
thickness, and said third cylinder occupying a position on said
first cylinder such that a portion of said first cylinder is
uncovered by said second cylinder, said third cylinder
projecting outward from said second end of said first cylinder
to expose the interior surface wall of said second end of said
third cylinder for receiving a transport tube; and,
a fourth cylinder having a wall having an interior surface
and an exterior surface, and a first end and a second end, said
interior surface of said fourth cylinder secured to said exterior
surface of said second cylinder and said exterior surface of said
third cylinder to stabilize and support said first, second and
third cylinders by maintaining a relationship among said
cylinders and providing thickness to support connections to
fluid transport means.
The references listed below are relied upon by the Examiner as
evidence of obviousness:
McDonald et al. US 4,211,658 July 8, 1980
Bente, III et al. US 4,293,415 Oct. 6, 1981
Fuchs et al. US 5,348,658 Sept. 20, 1994
Garguilo et al. US 6,068,767 May 30, 2000
Nyudo et al. US 2005/0077218 A1 Apr. 14, 2005
Mukaiyama et al. JP 56150352 Nov. 20, 1981
Hoffmann DE 19607865 A1 Feb. 6, 19971
Hoffmann JP 9119924 May 5, 19971

1 Like Appellants (Br. 12), we consider the Hoffman references applied by
the Examiner to contain corresponding disclosures. For this reason and for
ease of exposition, we will refer to these references collectively as the
Hoffman references.
Appeal 2010-009837
Application 11/211,066

4
The Examiner rejects claims 1, 8-10, 15-18, and 47 under 35 U.S.C.
§ 112, 2nd paragraph, for failing to particularly point out and distinctly
claim the subject matter which Appellants regard as their invention.
Under 35 U.S.C. § 103(a), the Examiner rejects claims 1, 8-10, 15-18,
and 47 as unpatentable over the Hoffman references in view of Fuchs alone
or further in view of either Nyudo or Mukaiyama, claims 9, 10, 19, and 20 as
unpatentable over the references applied against claim 1 and further in view
of Garguilo and McDonald, and claim 45 as unpatentable over the references
applied against claim 1 and further in view of Bente.
Appellants state that dependent claims 8-10, 15-20, 45, and 47 stand
or fall with independent claim 1 (Br. 11). Therefore, our disposition of this
appeal will focus on claim 1 only.

The § 112, 2nd paragraph, Rejection

The Examiner's rationale for this rejection follows:
Having the second cylinder and the third cylinder for receiving
elements in the same claim [i.e., claim 1] renders the claim
indefinite. Since one is a male end and the other is a female
end, it would appear that one should be a receiving end and one
should be for being received by. If the interior surface wall of
the second end of the third cylinder is for receiving a transport
tube as a female end, then it would make more sense for the
exterior surface of the wall of the second cylinder "to be
received by" a fitting as opposed to "receiving" a fitting, thus
making it a male as opposed to another female end. As the
claims are written, both ends would appear to be female ends.
However, this does not appear to be what appellants intend. As
such, the claims are considered to be indefinite.
(Ans. para. bridging 3-4).
Appeal 2010-009837
Application 11/211,066

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We agree with Appellants that the claim 1 phrase "for receiving" does
not render the rejected claims indefinite (Br. 11). For the reasons detailed by
Appellants, the requirements of § 112, 2nd paragraph, are not violated by
use of this phrase in referring to the second cylinder male end (id.).
We reverse the § 112, 2nd paragraph, rejection.

The § 103 Rejections

We affirm the § 103 rejections for the reasons given by the Examiner
in the Answer. The comments below are added for emphasis.
Appellants disagree with the Examiner's finding that the first ends of
the first and second cylinders of the Hoffman references (i.e., the left ends of
cylinders 1 and 3 in Fig. 1a of the Hoffman references) terminate at the same
point as required by claim 1 (Br. para. bridging 15-16). This disagreement is
based on Appellants' unembellished assertion that "[t]here is no comparison
between the adapter member [i.e., cylinder 3] of Hoffman patents and the
second cylinder of the claimed invention" (id.). On this record, Appellants
have failed to identify any error in the Examiner's finding because they have
failed to identify any structural distinction between the second cylinder of
claim 1 and cylinder 3 of the Hoffman references.
Appellants do not contest with any reasonable specificity the
Examiner's conclusion that it would have been obvious to combine the
applied references as proposed in the rejections of claim 1. Instead,
Appellants describe the purposes served by the cylinder features of claim 1
and then state without explanation that "[t]his configuration and the
functions [or features] resulted therefrom in no way can be achieved by [the
Appeal 2010-009837
Application 11/211,066

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reference combinations proposed by the Examiner]" (id. at 17; see also id. at
19). However, this statement does not identify any structural limitation of
claim 1 which remains unsatisfied by the Examiner's proposed combination
of references.
For the reasons stated above and in the Answer, the expositions
presented by Appellants in their Appeal Brief do not reveal any error in the
findings of fact or conclusions of law made by the Examiner in rejecting
claim 1.

Conclusion

The decision of the Examiner 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)(1).

AFFIRMED

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