10539045 (B.P.A.I. Aug. 16, 2012)

Ex Parte Ulin et al

Board of Patent Appeals and InterferencesAug 16, 2012

10539045 (B.P.A.I. Aug. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 10/539,045 03/06/2006 Johan Ulin 12090-000016/US 7386 30593 7590 08/16/2012 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 8910 RESTON, VA 20195 EXAMINER WHITE, DENNIS MICHAEL ART UNIT PAPER NUMBER 1772 MAIL DATE DELIVERY MODE 08/16/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BIOTAGE AB (Application 10/539,045) ____________ Appeal 2011-009252 Technology Center 1700 Dennis M. White, Examiner ____________ Before FRED E. MCKELVEY, RICHARD E. SCHAFER and RICHARD TORCZON, Administrative Patent Judges. TORCZON, Administrative Patent Judge. DECISION ON APPEAL The appellant (Biotage) seeks relief from the final rejection of claim 15-29. We AFFIRM. OPINION CLAIMS Biotage discloses a micro vial assembly for performing microwave-assisted chemical reactions on small reaction mixture volumes.1 Claim 15 defines the invention as follows:2 1 Spec. 1. Appeal a c e a se w re o C w o T a produ disclosu vessel 1 compre exposur 2 All cla with ind the cont 3 Spec. 2011-0092 15. ssisted che omprising a mic nd and a c a cap a sea a slee wher s to secure aling the idening po cess form pen upper laim 22 de herein a b f the vesse he clause ct-by-proc re (right) 0 above a ssion 12 po e and dete im langua enting add ested elem 5. 52 A micro mical reac : ro-wave tr losed botto having a t ling diaphr ve, ein the sle the vesse the cap e the vesse open uppe the open rtion, the widen ed in an en the reces end of the pends fro ottom of th l, located "is formed ess limitat illustrates terminal e sitions re ction.3 ge is repro ed as need ent. vial assem tions on s ansparent m end; hrough ho agm; and eve is form l extendin xtending o l to the sle r end of th upper end ing portio d plane of s providin vessel. m claim 15 e vessel i above the through a ion. Figur a radial co nd 13 of th agents in t duced from ed. 37 C 2 bly for per mall volum reaction v le; ed with a g axially th ver the dia eve while c e vessel, of the ves n being re the sleeve g a seat for with the s formed t terminal en radial com e 3 accom mpression e vessel 1 he vessel 1 the claim .F.R. Â§ 1.7 Appli forming m es, the as essel havi through h rough the phragm a lamping t sel being f ceived in , and the widen further lim hrough a r d of the v pression" panying B 12 in the 0. The rad 0 for ener s append 5(i). Emp cation 10/ icrowave sembly ng an open ole, sleeve, nd the sle he diaphra ormed wit a correspo ing portio itation: adial comp essel. indicates iotage's reaction ial gy ix to Biota hasis has b 539,045 - upper eve so gm for h a nding n in the ression ge's brief, een added for Appeal T O 29 unde W w R a U The exa combin J a 5 F Je chemica Figure 1 reaction vessel 1 removab annular attenuat with lea 4 Ans. 3 5 Ans. 9 6 Jennin 7 Id. Â¶00 2011-0092 HE REJEC n appeal, r 35 U.S.C .E. Jennin ith fixed tu . Commar utomatic[] .S. Patent miner mai ation of re .P. Bennet ssemblies f ,520,886 ( ACTS AN nnings di l synthesi 1 (right) i vessel wi 05 rests in le attenua lip that re or 33. A c ves 107 an . . gs Â¶0001. 29. 52 TIONS the examin . 103 in v gs, Micro ning, US mot et al., treatment 4,693,867 ntains5 the ferences p t & W.P. H or materi granted 28 D FINDIN scloses a m s in microw s a cross s th a collet the centra tor 33. Th sts on an in ollet assem d a trunk er mainta iew of the wave-assis 2002/0101 Mineraliz of sample (granted rejection lus: argett, Ex als to be m May 1996 GS icrowave ave assis ectional vi assembly. l opening e vessel 1 ner openi bly 91 ha 110 to urg 3 ins4 the rej following ted chemi 310 A1 (p ation appa s of produ 15 Septem of claim 2 plosion re icrowave ). instrumen ted chemis ew of a 7 A 118 of a 05 has an ng 118 of s a housin e a vessel Appli ection of c the refere cal synthe ub'd 1 Au ratus for cts placed ber 1987). 2 under Â§ sistant rei heated, U. t for try.6 the g 86 cation 10/ laims 15- nces: sis instrum gust 2002) the individ in recipie 103 using nforced co S. Patent 539,045 17, 25 and ent , and ual, nts, the same ntainer 27- Appeal receptor ring 133 vessel 1 the seal T includin claimed Jenning the colle T portion discuss vessel 1 correspo the colle relies on C chemist detail fr 8 Id. Â¶Â¶0 9 Final R through 10 Jennin 11 Final 12 Jennin 13 Final 14 Comm 15 Id. 4: 2011-0092 106 down and a pen 05, with th ed integrit he examin g the hous sealing di s' attenuat t housing he examin of the vial an "annula 05, which nding rec t assembl Commar ommarmo ry involvin om Figure 074-0076 ej. 2-3, e hole')". gs Â¶62. Rej. 2-3. gs Â¶0074 Rej. 5. armot 1:7 9-10. 52 against th etrable se e collet as y of the en er associa ing 86, lea aphragm w or 33.9 A 86, trunk er found t received b r lip porti rests on th ess for the y 91 rather mot for th t discloses g heating 14 (right) . .g., "a colle . -68. e vessel 1 ptum 134. sembly 91 tire assem tes the clai ves 107, v ith Jennin needle 115 110 and ve hat the Jen y a recess on 109" (n e inner op lip, howev than in th e recess in an appara , specifica shows a s t assembl 4 05. A cap The cap a engaging bly.8 med cap w essel rece gs' septum passes fro ssel recep nings did in the slee umber abs ening 118 er, is form e attenuat the sleeve tus for use lly a micro ectional el y 91 havin Appli assembly ssembly i the attenu ith Jennin ptor 106 a 134; the m the nee tor 106 int not discus ve.11 Jen ent from t of the atte ed betwe or (sleeve) in a simil in analyt wave heat evation vi g a throug cation 10/ has a def s deformab ator 33 to gs' collet nd trunk 1 claimed sl dle holder o the vess s the claim nings actu he figure) nuator 33 en the atte itself. Th ar context ic ing.14 A ew15 with h hole ('a 539,045 ormable m le to seal help main assembly 9 10; the eeve with 120 throu el 105.10 ed wideni ally does on the .12 The nuator 33 e examine .13 a cap having etal the tain 1, gh ng and r a Appeal containe peripher shells 8 cover 90 shoulde the claim silent re T Bennett heating, explosiv (right) i reinforc contents containe a depres depress discharg flange 2 cover 2 16 Id. 8: 17 Final 18 Id. 7. 19 Id. 20 Benn 21 Id. 3: 22 Id. 1: 23 Id. 1: 2011-0092 r 12 with y of half-s 6.16 The e with the r 87 with t ed throug garding a he examin discloses which hav e failure o s a central ed sleeve 37 using r 13 has a sion 33. T ion 33 to l e downwa 7 that rest 1.23 22-46. Rej. 3-4. ett 1:8-17. 1-4 & 13-4 43-47. 16-20 & 4 52 an upper e hells 86. xaminer as claimed ca he claimed h hole in "bottom lo er relies o pressure-r e confinin f the cont , sectional 29 for a co microwav skirt (slee he sleeve imit contai rdly.22 Th s on a coll 7. 8-56. dge 14a re A cap 90 a sociates th p, the half recess. T the cap.17 cated abov n Bennett esistant, re g sleeves ainers.20 B , elevation ntainer 13 e energy.2 ve) 31 and 31 operat ner failure e containe ar 25 unde 5 sting on a buts a ring e contain -shells 86 he examin The exam e the term to teach an inforced c to mitigat ennett Fig al view sh for heatin 1 The a bottom es with the and to dir r also has r a seal Appli shoulder 88 that s er 12 with with the c er also as iner finds inal end o extension ontainers e ure 1 owing a g 17 with ect a cation 10/ 87 defined ecures the the claime laimed sle sociates a that Comm f the vess beyond t for use in m 539,045 by the inn half- d vessel, t eve and th tube 95 w armot is el."18 he bottom icrowave er he e ith .19 Appeal 2011-009252 Application 10/539,045 6 ANALYSIS Claim grouping Biotage identifies two groups of claims: group I is claims 15-28 and group II is claim 29.24 Biotage, however, relies on the same arguments for claim 29, while it provides a slight, but separate argument for claim 22.25 The analysis will follow the arguments rather than the proposed grouping. Claim 15 Biotage contends that none of the references disclose a cap extending over a diaphragm and a sleeve.26 In particular, Biotage contends that Jennings' collet does not extend over the sleeve, but rather is positioned within the sleeve.27 The examiner found that the cap is a composite structure including the housing, leaves, trunk and vessel receptor. Jennings cap does not extend over the entire sleeve, but does extend over the diaphragm and as much of the sleeve as directly contacts the vessel. The actual limitation in question requires the cap to extend "over the diaphragm and the sleeve so as to secure the vessel to the sleeve while clamping the diaphragm for sealing the open upper end of the vessel". The broadest reasonable construction of "over" in this context requires only coverage sufficient "to secure the vessel to the sleeve while clamping the diaphragm for sealing the open upper end of the vessel". One skilled in the art would understand the cap in Jennings to accomplish these functions of the claimed cap. 24 Br. 6. 25 Id. 12. 26 Id. 6. 27 Id. 7. Appeal 2011-009252 Application 10/539,045 7 In its reply brief, Biotage argues that Jennings' leaves do not have a through hole.28 The examiner, however, relies on a composite cap of which the leaves are only one element. Biotage does not argue, we do not find, that the leaves would block the through hole in the composite cap that the examiner identified. Biotage also argues that a hole is "for example, reamed, drilled, milled, etc., completely through the substrate".29 The claim language does not require any particular method of hole formation. The passage that Jennings' needle traverses from the needle holder to the vessel through structures the examiner identifies as parts of the cap satisfies the through-hole requirement. Biotage argues that the cap in Jennings is really a different structure, the deformable metal ring 133 over the septum.30 Whether the metal ring is also a cap is irrelevant, however, because it was not the basis for the rejection. The examiner's identification of a composite capping structure in Jennings is facially reasonable. The possibility that another structure could also be considered a cap does not make the examiner's identification wrong. Biotage also argues that Commarmot also does not show a cap extending over the diaphragm and sleeve.31 The examiner, however, relied on Commarmot to show a recess in the sleeve for receiving the vessel lip. Consequently, this deficiency is irrelevant to the rejection actually entered. Biotage contends that there is no motivation to substitute the Commarmot's sleeve for Jennings' sleeve.32 The examiner, however, has demonstrated (using Commarmot) that a recess in the sleeve is a known solution for securing a vessel in 28 Reply 4. 29 Id. 5 (original emphasis). 30 Br. 7. 31 Id. 8. 32 Id. 9. Appeal 2011-009252 Application 10/539,045 8 a sleeve in this art. Substituting one familiar solution alternative for another is typically within the ordinary skill of the art.33 Biotage does not suggest that countersinking the recess in the sleeve rather than forming it between the sleeve and the cap confers some unpredictable advantage. In its reply, Biotage argues that using Commarmot's recess in Jennings' sleeve would be inoperable.34 The argument is not supported with evidence and implies an implausibly low level of ordinary skill. In sum, Biotage has not demonstrated prejudicial error in the rejection of claim 15. Biotage relies on "similar reasons" for challenging the rejection of claim 29 and offers no argument for claims 16-21 and 23-28. Accordingly, these claims fall with claim 15. Claim 22 For claim 22, Biotage provides the additional, abbreviated argument that "there is no motivation in Bennett to provide the bottom of the vessel above the terminal end of the vessel."35 Bennett does, however, provide a reason for extending the vessel below the bottom of the vessel, to wit, mitigating the consequences of vessel failure during heating. In an appeal, it is appropriate to focus on the contested language in the claim.36 Here, the contested limitation only requires a terminal vessel end below the bottom of the vessel. Bennett provides a safety rationale for adopting such a design. Biotage's argument does not demonstrate a prejudicial error in the rejection. 33 In re Trans Texas Holdings Corp., 498 F.3d 1290, 1301 (Fed. Cir. 2007). 34 Reply 7. 35 Br. 12. 36 Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997). Appeal 2011-009252 Application 10/539,045 9 HOLDING The rejections under review areâ€” AFFIRMED For the appellant, JOHN A. CASTELLANO, Harness, Dickey & Pierce, P.L.C., of Reston, Virginia. ack