Ex Parte Ogawa et al

Patent Trial and Appeal Board

Oct 22, 2018

13783922 (P.T.A.B. Oct. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/783,922 03/04/2013 Keisuke Ogawa
38834 7590 10/24/2018
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
UNITED ST A TES OF AMERICA
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.
P4479USOO 3024
EXAMINER
HUANG, DAVID Z
ART UNIT PAPER NUMBER
2856
NOTIFICATION DATE DELIVERY MODE
10/24/2018 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEISUKE OGAWA and YOSHIAKI MAEDA
Appeal2017-002204
Application 13/783,922
Technology Center 2800
Before BRADLEY W. BAUMEISTER, JOSEPH P. LENTIVECH, and
DAVID J. CUTITTA II, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision to reject claims 1--4, the only claims pending in the
application on appeal. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We reverse.
1 An oral hearing was held on October 9, 2018.
2 According to Appellants, the real party in interest is Shimadzu
Corporation. App. Br. 2.
Appeal2017-002204
Application 13/783,922
STATEMENT OF THE CASE
Appellants 'Invention
Appellants' invention generally relates to "a solvent delivery device
and a liquid ... for transferring a sample, injected into an analytical flow
path by mobile phases sent by the solvent delivery device, to an analytical
column, separating the sample into components, and detecting the respective
separated components." Spec. 1:5-10. Claim 1, which is illustrative of the
claimed invention, reads as follows:
1. A solvent delivery device comprising a solvent delivery
pump and a flow path switching valve for switching connection
of one of a plurality of mobile phase sending flow paths to the
solvent delivery pump, the flow path switching valve being
connected to downstream ends of said mobile phase sending flow
paths for respectively sending different kinds of mobile phases,
wherein the solvent delivery pump is connected to one of
the mobile phase sending flow paths by switching the flow path
switching valve,
wherein at least one of the mobile phase sending flow
paths includes a buffer solution sending flow path for sending a
buffer solution,
wherein at least one of the mobile phase sending flow
paths includes an organic solvent sending flow path for sending
an organic solvent, and
wherein the buffer solution sending flow path includes a
buffer solution storage section for storing the buffer solution, a
cleaning solution storage section for storing a cleaning solution,
and a mobile phase switching valve for switching connection of
the flow path switching valve to one of the storage sections.
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Appeal2017-002204
Application 13/783,922
Rejections
Claims 1 and 3 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Applicant's Admission of Prior Art
("AAPA"), Wolters (US 2010/0050737 Al; published Mar. 4, 2010), and
Hisashi (JP 06-138112; published May 20, 1994) ("Hisashi"). Final Act. 3-
5.
Claims 2 and 4 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of AAPA, Wolters, Hisashi, and
Mitsumaki (US 4,696,183; issued Sept. 29, 1987) ("Mitsumaki"). Final
Act. 6-7.
Issue on Appeal
Is the obviousness rejection based upon the combination of AAPA,
Wolters, and Hisashi proper?
CONTENTIONS AND ANALYSIS
The Examiner finds AAP A teaches most of the limitations recited in
claim 1. Final Act. 3. Regarding the remaining limitations, the Examiner
finds "Wolters teaches the usage of organic solvents [methanol, acetonitrile,
and the like] for preparing samples for separation analysis and the usage of
buffers added to sample solutions in HPLC analysis in order to control pH."
Final Act. 4 ( citing Wolters ,r 62) ( emphasis omitted). The Examiner finds
Hisashi teaches "a mobile phase sending flow path having a mobile phase
storage section [3] and a cleaning solution storage section [7]" and that "a
mobile phase switching valve [14] is utilized to switch connection between
the two storage sections in order to remove impurities with the cleaning
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Appeal2017-002204
Application 13/783,922
solution." Final Act. 4--5 (citing Hisashi Fig. 2). The Examiner concludes it
would have been obvious to a person having ordinary skill in the art at the
time of the invention:
[T]o modify AAPA with Wolters such that at least one of
the mobile phase sending flow paths includes a buffer solution
sending flow path for sending a buffer solution and a buffer
solution storage section for storing the buffer solution in order to
control the pH of the sample sent for analysis, as taught by
Wolters. Additionally, it would have been obvious to a person
having ordinary skill in the art at the time of the invention to
further modify AAPA with Wolters such that at least one of the
mobile phase sending flow paths includes an organic solvent
sending flow path for sending an organic solvent in order to
prepare samples for separation analysis, as taught by Wolters .
. . . [and]
[T]o modify AAPA in view of Wolters with Hisashi such
that the buffer solution sending flow path includes a cleaning
solution storage section for storing a cleaning solution and a
mobile phase switching valve for switching connection of the
flow path switching valve to one of the storage sections in order
to remove impurities with the cleaning solution, as taught by
Hisashi.
Final Act. 4, 5 ( emphasis omitted).
Appellants contend the combination of AAPA, Wolters, and Hisashi
is improper because "one skilled in the art would not be motivated to
combine the disclosures to meet pending claim 1." App. Br. 4; see also
Reply Br. 1-3. Appellants argue the Examiner fails to provide the required
reasoning as to why a person of ordinary skill in the art would be motivated
to combine the teachings of the cited references. Reply Br. 3.
We agree. In assessing the prior art, we "consider whether a
PHO SITA [person having ordinary skill in the art] would have been
motivated to combine the prior art to achieve the claimed invention." In re
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Appeal2017-002204
Application 13/783,922
Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016) (internal
quotation marks, brackets, and citation omitted). Whether it would have
been obvious for a person of ordinary skill in the art to combine two or more
references is a flexible inquiry. A factfinder "need not seek out precise
teachings directed to the specific subject matter of the challenged claim" and
"can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex, Inc., 550
U.S. 398,418 (2007). Nevertheless, obviousness cannot be established "by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." Id. (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
And "references to 'common sense' ... cannot be used as a wholesale
substitute for reasoned analysis and evidentiary support." Arendi S.A.R.L. v.
Apple, Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016).
We find the Examiner's reasoning for modifying the combination of
AAPA and Wolters with the teachings ofHisashi (i.e., "to remove impurities
with the cleaning solution" (Final Act. 5)) fails to provide the required
articulated reasoning to support the legal conclusion of obviousness. The
Examiner fails to provide any explanation as to why one of ordinary skill in
the art would expect impurities to be present in the resultant combination.
The Examiner also fails to explain why one of ordinary skill in the art would
reasonably expect Hisashi's method of removing impurities from a solvent
(see, e.g., Hisashi ,r 12) to successfully remove impurities in the device of
AAP A, as modified by the teachings of Wolters. As such, we are
constrained by the record not to sustain the Examiner's rejection of claim 1.
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Appeal2017-002204
Application 13/783,922
Claim 2 depends from claim 1. Claims 3 and 4 are written in
independent form but incorporate the limitations recited in claim 1. In
rejecting these claims, the Examiner relied on the rejection of claim 1. Final
Act. 5-7. Accordingly, we do not sustain the rejection of claims 2--4 for the
reasons given above.
DECISION
We reverse the Examiner's rejections of claims 1--4 under 35 U.S.C.
§ 103(a).
REVERSED
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