Ex Parte Gjerde et al

Board of Patent Appeals and Interferences

Aug 14, 2012

10921010 (B.P.A.I. Aug. 14, 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.
10/921,010 08/17/2004 Douglas T. Gjerde P014.260 8274
55130 7590 08/14/2012
PHYNEXUS, INC.
3670 CHARTER PARK DRIVE
SAN JOSE, CA 95136
EXAMINER
JARRETT, LORE RAMILLANO
ART UNIT PAPER NUMBER
1772
MAIL DATE DELIVERY MODE
08/14/2012 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 DOUGLAS T. GJERDE,
ALLEN BURGE, and CHRISTOPHER P. HANNA
____________

Appeal 2011-003004
Application 10/921,010
Technology Center 1700
___________

Before PETER F. KRATZ, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-3, 11, 12, 14-19, and 29-36 . We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal1:

1Independent claim 30 recites a similar method, except it recites passing
liquid through a plurality of pipette tip columns.
Appeal 2010-003004
Application 10/921,010

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1. A method for passing liquid through a pipette tip column
comprising the steps of:

a. providing a pipette tip column comprising:

i. a column body having an open upper end, an open lower end,
and an open channel between the upper and lower ends of the column body;

ii. a bottom frit attached to and extending across the open
channel;

iii. a top frit attached to and extending across the open channel
between the bottom frit and the open upper end of the column body, wherein
the top frit, bottom frit, and column body define a media chamber; and

iv. a packed bed of gel resin media having a bed volume of less
than about 300 uL positioned inside the media chamber,

wherein the upper end of the column body is attached to a pipette for
passing liquid through the open lower end of the column, wherein the pipette
is controlled by an electrically driven actuator, wherein movement of the
electrically driven actuator is controlled by a microprocessor; and

b. passing a liquid through the packed bed of media at a flow rate of
between about 0.01 and about 4 mL/min.

The Examiner maintains, and Appellants appeal, the following
rejections under 35 U.S.C. § 103(a):
A. Claims 1-3, 11, 12, 14-19, and 29 as unpatentable over the
combined prior art of Hunt2 and Curtis3;
B. Claims 30, 31, and 36 as unpatentable over the combined
prior art of Hunt and Suovaniemi4; and

2 US 2002,0110495 A1, published Aug. 15, 2002
3 US 2007/0056351 A1, published Mar. 15, 2007
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Application 10/921,010

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C. Claims 32-35 as unpatentable over the combined prior art of
Hunt, Suovaniemi, and Oshikubo5.
PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements according to their established functions. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). (“[T]he analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”). Id. at 418.
“For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir.
1988).
ANALYSIS
With respect to the prior art rejections on appeal, Appellants do not
set forth separate, substantive arguments for any particular claim on appeal.
Accordingly, all of the appealed claims stand or fall together with
independent claim 1 or independent claim 30.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejection for essentially those

4 US 4,058,370, issued Nov. 15, 1977
5 US 5,021,217, issued Jun. 4, 1991
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Application 10/921,010

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reasons expressed in the Answer, including the Response to Argument
section, and we add the following primarily for emphasis.
Appellants do not specifically refute the Examiner’s rationale for the
combination of Hunt with either of Curtis or Suovaniemi (see generally
App. Br.). Rather, Appellants’ main argument in the Appeal Brief, towards
each of rejections A to C (which are all based on Hunt as the primary
reference), is that the prior art does not teach or suggest the claimed
invention because the claims do not require a flow regulator as taught in
Hunt in order to achieve the claimed flow rate (App. Br. 5-6). This
argument is unavailing, as it is well established that “the 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 & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) “[A]s
applicants may amend claims to narrow their scope, a broad construction
during prosecution creates no unfairness to the applicant or patentee.” Id.
The Examiner reasonably determined that the claim language of each of
claims 1 and 30 is open-ended and does not preclude the use of a flow
regulator in the column as taught by Hunt. Notably, Appellants have
provided no evidence, or any persuasive line of technical reasoning,
explaining why the Examiner’s broadest reasonable interpretation is in error
(Ans. 14, 15; see generally Briefs).
Appellants further argue in the Reply Brief that a flow regulator
would not and could not be combined with the pipette tip embodiment of
Hunt because the device would be inoperable (Reply Br. 3-5; see also e.g.,
arguments presented in Appellants’ Response after Final 2/12/2010; p. 8).
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These arguments are unavailing for reasons explained by the Examiner (Ans.
7, 8, 14, and 15). Furthermore, Appellants’ Specification describes that its
top and/or bottom frit may be a nylon or woven membrane screen (Spec.
3:1-2), with a 43 µm pore size (Spec. 23:10-17). The flow regulator of Hunt
may be a nylon or polyester woven screen with a pore size between 1 µm
and 400 µm (Hunt para. [0098]).
As pointed out by the Examiner, the flow rate desired in the example
discussed in Hunt was 1 ml/min, which is well within the recited range of
.01 to 4 ml/min (e.g., Ans. 14; claims 1 and 30; Hunt para. [0101]). It is
well established that ordinary creativity is presumed on the part of one of
ordinary skill in the art. See KSR, 550 U.S. at 421 (“[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton.”). Appellants
have not adduced any persuasive technical reasoning or otherwise in
response to the Examiner’s reasonable determination that an artisan would
have, using no more than ordinary creativity, used a known membrane flow
regulator membrane screen to slow down the flow rate in the column, as
exemplified in Hunt, and that the use of such a membrane would have been
no more than the predictable use of a known prior art element for its known
function in the column of the pipette tip embodiment of Hunt (see, e.g., Ans.
7, 15; generally App. Br.; Reply Br). Furthermore, Hunt exemplifies that a
flow rate within the claimed range is a desirable and achievable flow rate for
this type of column separation.
Accordingly, the preponderance of the evidence supports all of the
Examiner’s rejections on appeal.

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Application 10/921,010

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DECISION
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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