Ex Parte Guieze et al

Patent Trial and Appeal Board

Dec 21, 2018

13806140 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/806,140 02/18/2013
11101 7590 12/26/2018
Schlumberger SRPC
10001 Richmond Avenue
IP Administration Center of Excellence
Houston, TX 77042
FIRST NAMED INVENTOR
Paul B. Guieze
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.
21.1924 US PCT 4001
EXAMINER
FRANK, RODNEY T
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
12/26/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USDocketing@slb.com
jalverson@slb.com
SMarckesoni@slb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL B. GUIEZE, NEJIB HAMED and ABDOUNE BOUAISS
Appeal2017-004010
Application 13/806, 140
Technology Center 2800
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and
JULIA HEANEY, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
November 9, 2015 decision finally rejecting claims 1-15 ("Final Act."). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Schlumberger Technology Corporation, as the real
party in interest (Appeal Br. 2).
Appeal2017-004010
Application 13/806, 140
CLAIMED SUBJECT MATTER
Appellants' disclosure is directed to an injector for injecting a sample
into a chromatography column (Abstract). The key feature of the claimed
injector is the presence of "a packing housed in the injector chamber for
separating the sample into components thereof' ( Claim 1 ). Details of the
claimed invention are set forth in claim 17, which is reproduced below from
the Claims Appendix of the Appeal Brief (emphasis added):
1. An injector for injecting a sample into a chromatography
column, comprising:
a sample inlet for feeding the sample into the injector,
wherein the sample comprises the substance to be analyzed;
an injection chamber; and
a first sample outlet intended to be in fluid
communication with the chromatography column;
wherein the injector further comprises a packing housed
in the injection chamber for separating the sample into
components thereof
REJECTIONS
Claims 1-15 are rejected under 35 U.S.C. § I02(b) as anticipated by
Magni. 2 "A prior art reference anticipates a patent claim under 35 U.S.C.
§ I02(b) if it discloses every claim limitation." In re Montgomery, 677 F.3d
1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs. Corp. v. Cox Fibernet
Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)). Appellants argue that
Magni does not disclose a packing "for separating the sample into
components thereof' (Appeal Br. 7-8). In particular, Appellants contend
2 Magni, US 2004/0050251 Al, published March 18, 2004.
2
Appeal2017-004010
Application 13/806, 140
that in order to find that Magni teaches this limitation, the Examiner must
construe the term "sample" to read on the mixture of the carrier gas and the
sample, because, according to Appellants, Magni only teaches that its
packing separates the carrier gas from the sample to be analyzed (Appeal Br.
7).
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) (citation omitted). Appellants assert
that "a sample in the context of gas chromatography does not include a
carrier gas" (Appeal Br. 7). However, Appellants do not provide any
citation to the Specification or to outside sources to support their position
and, therefore, have not provided an evidentiary basis to support their
narrower construction. Perhaps more importantly, the claim itself recites
that "the sample comprises the substance to be analyzed" which necessarily
means that the "sample" can include components other than "substance to be
analyzed." That such a component could be the carrier gas does not render
the construction impermissibly broad.
Thus, we determine that "sample," as used in claim 1, should be
construed such that it can include the carrier gas. To the extent that
Appellants want the claim to be limited to an arrangement in which the
substance to be analyzed is split into components by the packing ( which is
what they appear to argue that the claim covers now), the claim can be
further amended if prosecution is continued.
Appellants agree that Magni teaches that the carrier is mixed with the
3
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Application 13/806, 140
substance to be analyzed, and that these two components are separated by
Magni's packing (Appeal Br. 7). Accordingly, in view of our construction
of the term "sample," Appellants have not presented evidence which would
show reversible error in the Examiner's finding of anticipation. 3
CONCLUSION
We AFFIRM the rejection of claims 1-15 under 35 U.S.C. § 102(b) as
anticipated by Magni.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
3 Additionally, the Examiner finds that Magni' s packing material would be
expected to separate the components of the sample to be analyzed, as set
forth in the claim (Ans. 11 ). Appellants do not persuasively show error in
this finding (see Reply Br. 2-3), which would also permit a finding of
anticipation, even if Appellants' narrow claim construction were adopted.
4