Ex Parte Cormier

Patent Trial and Appeal Board

Sep 13, 2018

13519798 (P.T.A.B. Sep. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/519,798 06/28/2012
14299 7590 09/14/2018
WATERS TECHNOLOGIES CORPORATION
c/o Schmeiser, Olsen & Watts LLP
33 Boston Post Road West
Suite 410
Marborough, MA 01752
FIRST NAMED INVENTOR
Sylvain Cormier
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.
W-680-US2 (WAT-017US) 1683
EXAMINER
PEO,KARAM
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
09/14/2018 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 SYLVAIN CORMIER
Appeal 2017-011263
Application 13/519,798
Technology Center 1700
Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
MICHAEL G. McMANUS, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter "Appellant") 1 appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 1, 4, 6,
7, 11, and 12.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellant identifies the real party in interest as "Waters Technology
[sic, Technologies] Corporation" (Appeal Brief filed February 23, 2017, as
revised on April 18, 2017 (hereinafter "Appeal Br."), at 3).
2 Appeal Br. 5-10; Reply Brief filed August 29, 2017 (hereinafter "Reply
Br.") 2-5; Final Office Action entered October 17, 2016 (hereinafter "Final
Act.") 2-13; Examiner's Answer entered July 3, 2017 (hereinafter "Ans.")
3-20.
Appeal 2017-011263
Application 13/519,798
I. BACKGROUND
The subject matter on appeal relates generally to liquid
chromatography systems (Specification filed June 28, 2012 (hereinafter
"Spec.") 1, 11. 8-9). Representative claim 1 is reproduced from the Claims
Appendix to the Appeal Brief (Appeal Br. 12), with key limitations
emphasized, as follows:
1. An online sample manager of a liquid chromatography
system, comprising:
a fluidic tee having a first inlet port, a second inlet
port, and an outlet port;
a diluent pump in fluidic communication with the
first inlet port of the fluidic tee and configured to receive
diluent from a diluent source;
a first valve having a plurality of jluidic intake
ports to receive a process sample and having an outlet
port, a first one of the jluidic intake ports coupled to a
first process source and a second one of the jluidic intake
ports coupled to a second process source that is different
from the first process source;
a sample pump in fluidic communication with the
outlet port of the first valve and the second inlet port of the
fluidic tee, the sample pump configured to move an
acquired process sample into the second inlet port of the
fluidic tee while the diluent pump is moving the diluent
into the first inlet port of the fluidic tee such that the
process sample and the diluent are in the fluidic tee at a
same time and merge to produce a diluted process sample
that flows out from the outlet port of the fluidic tee; and
a second valve having a jluidic intake port in
jluidic communication with the outlet port of the jluidic
tee to receive the diluted process sample therefrom,
having a plurality of second valve ports and having a
sample loop to hold the diluted process sample, the sample
loop having a first end in communication with a first one
of the second valve ports and a second end in
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Application 13/519,798
communication with another one of the second valve
ports.
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains three rejections:
A. Claims 1, 4, 11, and 12 under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Wheat et al. 3 (hereinafter "Wheat") and Petro
et al. 4 (hereinafter "Petro");
B. Claims 6 and 7 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Wheat, Petro, and Friswell; 5 and
C. Provisionally, claims, 1, 4, 6, and 7 under the judicially-created
doctrine of obviousness-type double patenting as unpatentable
over claims 1-7 of copending Application 14/850,351, filed
September 10, 2015.
(Ans. 3-20; Final Act. 2-13.)
III. DISCUSSION
Rejection C. We start with Rejection C. The Appellant does not
provide any arguments against this rejection (Appeal Br. 5-10; Reply Br. 2-
5). Therefore, waiver applies as to the claims subject to this uncontested
ground of rejection. In re Watts, 354 F.3d 1362, 1367-1368 (Fed. Cir.
2004).
Accordingly, we summarily sustain the rejection without considering
the substantive merits. Cf Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir.
3 US 6,790,361 B2, issued Sept. 14, 2004.
4 US 2006/0054543 Al, published Mar. 16, 2006.
5 US 4,094,196, issued June 13, 1978.
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Application 13/519,798
2008) ("In the event of ... a waiver, the [Board] may affirm the rejection of
the group of claims that the examiner rejected on that ground without
considering the merits .... ").
Rejections A and B, however, have been contested and, therefore, are
discussed below.
Rejection A. Unless separately argued within the meaning of 37
C.F.R. § 4I.37(c)(l)(iv), all claims subject to this rejection stand or fall with
claim 1, which we select as representative pursuant to the rule.
1. Claim 1
Emphasizing that claim 1 is an apparatus claim, the Examiner finds
that Wheat describes an online sample manager for a liquid chromatography
system including most of the limitations recited in the claim (Ans. 3-6). The
Examiner acknowledges, however, that Wheat does not disclose a first valve
and a second valve as specified in claim 1 (id. at 6-7). To resolve these
differences, the Examiner relies on Petro's teachings (id. at 7). The
Examiner concludes from the collective teachings in the prior art references
that a person having ordinary skill in the art would have incorporated Petro' s
first and second valve systems in Wheat's chromatography system in order
to analyze discrete samples from multiple sources (id.).
The Appellant does not specifically refute the Examiner's articulated
reason for combining Petro with Wheat (Appeal Br. 5-7). Rather, the
Appellant contends that Petro does not describe the first and second valves
as specified in claim 1 (id.). Specifically, the Appellant disputes the
Examiner's finding (Final Act. 5-6; Ans. 6 (citing that Petro's Figure 3,
injection valve 112)) that Petro teaches a first valve with a fluidic intake port
connected to a process source (Appeal Br. 5). According to the Appellant,
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Application 13/519,798
Petro's reservoirs 302 and 304 connected to injection valve 112 are "not
process sources and do not contain any sample to be processed by the
chromatography system" (id. at 6). Regarding the second valve, the
Appellant disputes the Examiner's finding (Final Act. 6; Ans. 7) that Petro' s
splitter 308 is a valve (Appeal Br. 6-7). Thus, the Appellant urges that
Wheat and Petro do not teach or suggest all the limitations recited in claim 1
(id. at 7).
We have fully considered the Appellant's arguments but do not find
them sufficient to reveal any reversible error in the Examiner's rejection as
entered against claim 1. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Petro's Figure 3 is reproduced as follows:
108
l
\
'
I
F!GURE 3
~~AUFt[ _ UJC)j:. /---·-1: 12
/
300
) \28
./ I
D
132
'·
/
Petro's Figure 3 above depicts a liquid chromatography system 300
including, inter alia: a column 106; at least four reservoirs 302 in fluid
communication with a pump 108; at least four reservoirs 304 in fluid
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Application 13/519,798
communication with a pump 110; an injection valve 112 to which a feed
stream is sent at high pressure after incoming feed streams ( or secondary
feed streams) from reservoirs 302 and 304 are mixed using pumps 108 and
110 at low pressure; a valve (splitter) 308 designed to direct flow of the
effluent from column 106 to a fraction collector 310, which provides the
ability to collect fractions of the separated sample into separate vessels
(Petro ,r,r 72-75).
As the Examiner points out (Ans. 14), Petro teaches that each
reservoir in groups of reservoirs 302 and 304 contains a different solvent or
fluid (Petro ,r 73). Indeed, Petro teaches that the samples are created using
the contents in the reservoirs (id. ,r,r 73, 75; compare ,r 60 ("The liquid
chromatography system 100 [ as shown in the embodiment of Figure 1]
further includes an injection valve 112, that can include an injection port 114
for receiving samples from a sample source .... ")). Therefore, we discern
no merit in the Appellant's argument that reservoirs 302 and 304 are not
process sources.
The Appellant's argument (Appeal Br. 6-7) that Petro's splitter 308 is
not a valve is directly refuted by Petro' s explicit teaching that this element is
a valve (see, e.g., id. ,r 72 ("the valve 308 is designed to direct flow of the
effluent from the column 106 .... " and ,r 78 ("the valve 308 can be closed
momentarily to shut the feed to the fraction collector")). Therefore, we find
no reversible error in the Examiner's finding (Ans. 14--15) that Petro's valve
308 is in fact a description of a "valve" as that claim term is properly
construed.
For these reasons, we sustain the rejection of claim 1.
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2. Claim 4
Claim 4 depends from claim 1 and further recites that "one or more of
the fluidic intake ports of the first valve is connected to a source of wash"
(Appeal Br. 4). The Appellant argues that "the disclosures of Wheat and
Petro are absent of any description of a wash source" (id. at 8).
As the Examiner finds (Ans. 14), Petro's injection valve 112 is
connected to reservoirs that can contain a solvent or fluid (Petro ,r 73).
Given that the Specification describes any liquid that can be used to clear the
pump and tubing of any acquired process sample material when desired
(Spec. 8, 11. 17-19; Drawings, Fig. 3), we discern no reason why Petro's
solvent or fluid cannot be used as a wash. Consistent with the Examiner's
position (Ans. 16-17), the mere fact that Petro does not refer to the solvent
or fluid as a "wash" or that Petro does not mention using the solvent or fluid
as a "wash" is not dispositive on whether Petro describes the same structural
limitations recited in claim 4. In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997).
For these reasons, we uphold the rejection of claim 4.
3. Claim 11
Claim 11 depends from claim 1 and further recites that "a dilution
ratio of a dilution is determined by flow rates of the diluent and the process
sample into the fluidic tee" (Appeal Br. 13). The Appellant argues that "[ n Jo
reason for a rejection of dependent claim 11 is presented in the" Final Office
Action (id. at 8). According to the Appellant, "the cited references fail to
teach or suggest any relationship between the flow rates of a diluent and a
process sample with respect to the dilution ratio, or magnitude of the
dilution, of a diluted sample" (id.).
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Application 13/519,798
Again, we do not find the Appellant's arguments persuasive. In the
Final Office Action, the Examiner specifically states that the limitation
recited in claim 11 does not add any structure to the claimed apparatus
because it relates to an intended use-i.e., the manner of using the claimed
apparatus (Final Act. 3). We find no reversible error in the Examiner's
position. Indeed, the determination of the dilution ratio, which is not limited
to any particular value, relates to a preliminary mental step before carrying
out a process for using the claimed apparatus, and, therefore, does not
further limit the claimed apparatus in terms of structure.
Accordingly, we sustain the rejection of claim 11.
4. Claim 12
Claim 12 also depends from claim 1 and recites "further comprising a
mixer coupled to the outlet port of the fluidic tee to provide mixing of the
process sample with the diluent" (Appeal Br. 13). The Appellant argues that
Wheat's mixing element 51 as shown in Figure 4 is coupled to inlet ports 48
and 49 of the fluidic tee, not outlet port 46 as required by the claim (Appeal
Br. 8-9).
Consistent with the Examiner's position (Ans. 19), the claim does not
cite any requirement for a direct connection. Nor does the Appellant point
to any special definition for the term "coupled" to support a narrow
interpretation of the disputed claim term.
Therefore, we uphold the rejection of claim 12.
Rejection B. The Examiner relies further on Friswell to account for
the additional limitations in claims 6 and 7 (Ans. 8-10).
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Application 13/519,798
1. Claim 6
Claim 6 depends from claim 1 and recites in relevant part (Appeal Br.
12-13):
further comprising a needle adapted to move into and out of the
second inlet port, and wherein the sample pump includes a first
pump coupled to the first valve for drawing the process sample
from one of the first and second process sources and moving the
process sample into the needle, and a second pump for pushing
the process sample moved into the needle by the first pump out
of the needle into the fluidic tee through the second inlet port.
The Appellant argues that "Friswell fails to teach or suggest a sample
needle particularly configured with respect to Appellant's first and second
pumps as recited in claim 6" (Appeal Br. 9). According to the Appellant, the
Examiner "provides general comments about the disclosure of Friswell" but
"no specific indication of how Friswell shows the particular arrangement of
the needles and pumps" (id. at 9).
We disagree with the Appellant. The Examiner provides sufficiently
specific factual findings in support of a conclusion as to why a person
having ordinary skill in the art would have been prompted to implement
Friswell's liquid injection system including a needle in the system resulting
from the combined teachings of Wheat and Petro to arrive at a system that
has all the limitations recited in the claim (Final Act 8-9; Ans. 19-20). A
general allegation that Friswell fails to teach or suggest the claim limitations
or a skeletal argument that the Examiner failed to show the claimed
arrangement does not suffice to identify a reversible error in the rejection.
Jung, 637 F.3d at 1365 ("Before the examiner, Jung merely argued that the
claims differed from Kalnitsky, and chose not to proffer a serious
explanation of this difference."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
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Application 13/519,798
2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.").
13):
For these reasons, we sustain the rejection of claim 6.
2. Claim 7
Claim 7 depends from claim 6 and recites in relevant part (Appeal Br
further comprising a valve system for selectively coupling the
first pump and second pump to the needle, the valve system
fluidically coupling the first pump to a first end of the needle so
that the first pump can push the process sample into the needle,
the valve system subsequently fluidically coupling the second
pump to the first end of the needle, after the first pump pushes
the process sample into the needle, so that the second pump can
push the process sample out of the needle into the fluidic tee
through the second inlet port.
The Appellant argues that "a mere capability of a system to be
coupled in a certain way to other elements is not a teaching or even a
suggestion to do so" (id. at 10). The Examiner explains, however, how
Wheat and Petro, further modified in view of Friswell, would result in
system including the limitations recited in claim 7 (Ans. 1 O; Final Act. 9).
The Appellant's skeletal argument fails to reveal any reversible error in the
Examiner's rejection of claim 7.
Therefore, we sustain the rejection of claim 7.
IV. SUMMARY
Rejections A through Care sustained. Therefore, the Examiner's final
decision to reject claims 1, 4, 6, 7, 11, and 12 is affirmed.
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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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