Ex Parte Lesieur

Patent Trial and Appeal Board

Dec 18, 2013

11904835 (P.T.A.B. Dec. 18, 2013)

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.
11/904,835 09/28/2007 Yves Lesieur T-6722A 5425
55741 7590 12/19/2013
M. CARMEN & ASSOCIATES, PLLC
1201 RXR Plaza
Uniondale, NY 11556
EXAMINER
KOLB, NATHANIEL J
ART UNIT PAPER NUMBER
2856
MAIL DATE DELIVERY MODE
12/19/2013 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 YVES LESIEUR
____________

Appeal 2011-010855
Application 11/904,835
Technology Center 2800
____________

Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-010855
Application 11/904,835

2
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-13. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

Claim 1 is illustrative of the claimed subject matter:
1. An apparatus for determining a rheological property
of a fluid comprising:
a capillary having a first end and a second end with a
substantially uniform diameter over a predetermined length, the
first end disposed for fluid communication with a liquid sample
to be measured, the second end attached to a manifold having at
least one selectable valve, the capillary together with the
manifold and the at least one selectable valve define a chamber
of predetermined volume, a regulated pressure source initially
applied to induce the sample into the capillary and generate a
differential pressure in the chamber, a pressure sensor attached
to the chamber for outputting differential pressure to a
computing device, and a second pressure source coupled to the
at least one selectable valve for evacuating the sample from the
capillary.

The Examiner maintains, and Appellant appeals, the following
rejections under 35 U.S.C. §103(a):
1) Claims 1-6 and 8-11 as unpatentable over Katsuzaki1 in view of
Gleissle2;
2) Claim 7 as unpatentable over Katsuzaki in view of Gleissle and
Gramain3; and

1 US 5,272,912 issued Dec. 28, 1993.
2 US 5,172,585 issued Dec. 22, 1992.
3 US 3,604,247 issued Sept. 14, 1971.
Appeal 2011-010855
Application 11/904,835

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3) Claims 12 and 13 as unpatentable over Katsuzaki in view of
Gleissle and Hajduk4.

ANALYSIS
Upon consideration of the evidence on this record and each of
Appellant’s contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellant’s independent claims is unpatentable over the applied prior art.
Accordingly, we sustain each of the Examiner’s rejections of the claims on
appeal for the reasons set forth in the Answer, including the Response to
Argument section, which we incorporate herein by reference.
We provide the following for emphasis only. The main issue on
appeal for the claims turns on the broadest reasonable interpretation of the
language in each independent claim of “a capillary having a first end and a
second end with a substantially uniform diameter over a predetermined
length, the first end disposed for fluid communication with a liquid sample
to be measured.”5 It is well established that “the PTO must give claims their

4 US 2002/0148282 A1 published Oct. 17, 2002.
5 To the extent Appellant presents arguments for the first time in the Reply
Brief filed April 19, 2011, directed to “other limitations” (Reply Br. 11) and
the “motivation to combine” references (Reply Br. 12), it is inappropriate for
Appellant to discuss for the first time in the Reply Brief matters that could
have been raised in the Appeal Brief. As the Board has found, “[t]he failure
to raise all issues and arguments diligently, in a timely fashion, has
consequences,” and thus, such newly-raised arguments are technically
waived. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative decision) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner's rejections, but were not.”).
Appeal 2011-010855
Application 11/904,835

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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. While the Examiner
has set forth a broad and yet reasonable interpretation of the claim language
(e.g., Ans. 7), Appellant has not pointed to any definitions or disavowals in
the Specification or otherwise clearly explained why the Examiner’s
interpretation is unreasonable. Appellant’s reliance on the embodiments
shown in the specification (Reply Br. 5, 6) are not persuasive, since it is well
established limitations from the specification are not to be read into the
claims. Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005)
(“[A]lthough the specification often describes very specific embodiments of
the invention, we have repeatedly warned against confining the claims to
those embodiments.”). Notably, Appellant has provided no intrinsic or
extrinsic evidence, or any persuasive line of technical reasoning, explaining
why the Examiner’s broadest reasonable interpretation is in error.
Accordingly, all of the Examiner’s § 103 rejections are affirmed.

TIME PERIOD FOR RESPONSE
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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