Ex Parte Buchs et al

Board of Patent Appeals and Interferences

May 21, 2012

11547021 (B.P.A.I. May. 21, 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.
11/547,021 09/29/2006 Jochen Buchs 5372-17PUS - 299949 1887
27799 7590 05/21/2012
Cozen O'Connor
277 Park Avenue, 20th floor
NEW YORK, NY 10172
EXAMINER
MUI, CHRISTINE T
ART UNIT PAPER NUMBER
1774
MAIL DATE DELIVERY MODE
05/21/2012 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 JOCHEN BUCHS, FRANK KENSY,
and MARKUS SAMORSKI
____________

Appeal 2011-002824
Application 11/547,021
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
KAREN M. HASTINGS, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 18-42. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appellants claim a method for recording process parameters of
reaction liquids in microreactors comprising shaking, by a rotation shaker,
the microreactors "in a shaking diameter less than a diameter of a bottom
Appeal 2011-002824
Application 11/547,021

2
surface of each of the microreactors" (independent claim 25; see also
independent claims 18 and 42).
In another embodiment, the claimed method comprises shaking by a
rotation shaker, introducing electromagnetic radiation into a first group of at
least two microreactors and recording processing parameters using a sensor
optics device,
wherein a shaking diameter of the rotation shaker is tuned
such that the steps of introducing and recording for each of
the at least two microreactors . . . are successively performed
during one revolution of the rotation shaker such that the
steps of introducing and recording are performed on each of
the at least two microreactors of the first group without
moving the sensor optics device

(independent claim 33).
Under 35 U.S.C. § 103(a), the Examiner rejects independent claims
18, 25, 33, and 45 as unpatentable over Williams (WO 92/10754, pub. June
25, 1992) and rejects the remaining dependent claims on appeal as
unpatentable over Williams alone or in combination with other prior art of
record.
Appellants argue that Williams contains no teaching or suggestion of
the limitation "a shaking diameter less than a diameter of a bottom surface of
each of the microreactors" (independent claim 25; see also independent
claims 18 and 42) (App. Br. 10, 13, 15; Reply Br. 2).
This argument and limitation are not addressed with any reasonable
specificity by the Examiner in the Answer. For this reason alone,
Appellants' argument is persuasive.

Appeal 2011-002824
Application 11/547,021

3
Appellants present the following argument regarding independent
claim 33:
Williams is silent with respect to a shaking diameter
for the oscillatory movement for the reasons described in
section (ii) in the above argument for patentability of claim
18. Accordingly, Williams also fails to disclose, teach or
suggest "a shaking diameter of the rotation shaker is tuned
such that the steps of introducing and recording for each of
the at least two microreactors, including moving the first
group of at least two microreactors after the completion of
each said step of recording, are successively performed
during one revolution of the rotation shaker such that the
steps of introducing and recording are performed on each
of the at least two microreactors of the first group without
moving the sensor optics device", as expressly recited by
Applicants' independent claim 33.

App. Br. 14.
Again, the Examiner does not respond to this claim 33 argument with
any reasonable specificity in the "Response to Argument" section of the
Answer. At paragraph 7 in the body of the rejection, the Examiner
concludes that "it would be obvious . . . to program the device to record . . .
during one revolution of the shaker" (Ans. 7). The Examiner does not
specify whether and how this obviousness conclusion relates to claim 33.
Regardless, the conclusion is improper because it is not supported by
credible evidence and therefore is merely a conclusory statement.
For the above reasons, we cannot sustain any of the Examiner's § 103
rejections advanced in this appeal.
The decision of the Examiner is reversed.
REVERSED
ssl