WATERS TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Jul 20, 2020

2019007025 (P.T.A.B. Jul. 20, 2020)

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.
14/381,980 08/28/2014 Joshua A. Shreve W-787-US2 5145
13871 7590 07/20/2020
WOMBLE BOND DICKINSON (US) LLP / Waters
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
KEASEL, ERIC S
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
07/20/2020 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):
BostonDocket@wbd-us.com
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSHUA A. SHREVE

Appeal 2019-007025
Application 14/381,980
Technology Center 3700
____________

Before BENJAMIN D. M. WOOD, MICHAEL J. FITZPATRICK, and
BRANDON J. WARNER, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1–8 and 12–20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies Waters Technologies Corporation as the sole real party
in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
The Specification
Appellant’s “disclosure relates to systems and methods that minimize
force variation in a solenoid, and, in particular, to systems and methods that
create a near constant or substantially constant force for a solenoid through
an operating stroke for controlling pressure in a pressurized flow application,
such as, for example CO2-based chromatography.” Spec. ¶2.
The Claims
Claims 1–8 and 12–20 are rejected. Final Act. 1. No other claims are
pending. Id. Claims 1 and 12 are independent. Claim 1 is representative of
the claimed subject matter on appeal and is reproduced below.
1. A pressure regulator comprising:
a body section;
a head section comprising a needle and a seat defining a
bore, the needle and seat positioned such that movement of the
needle within the bore of the seat creates a pressure differential
through the seat when a flow of a fluid is supplied to the head
section;
an actuator section located at least partially within the
body section and positioned to communicate with the needle to
move the needle within the bore of the seat, the actuator section
comprising a shaft driven in a first direction, wherein the first
direction is toward the seat, by a solenoid and a balancing
spring, the solenoid applying a negative spring rate to the shaft
in the first direction and the balancing spring applying a
positive spring rate to the shaft in the first direction, the value
of the positive spring rate being greater than the negative spring
rate to provide an overall positive spring rate in the first
direction to the shaft, and a compression collar bearing upon the
balancing spring and connected to the shaft; and
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a calibration collar releasably secured to the shaft and
configured to prevent movement of the shaft when in a locked
position.
Appeal Br. 16.
The Examiner’s Rejection
The sole rejection before us is the rejection of claims 1–8 and 12–20
under 35 U.S.C. § 112(b) as being indefinite. Final Act. 5.2
DISCUSSION
Appellant argues the patentability of all claims together. Appeal Br.
6–15. We choose claim 1 as representative of all claims in deciding the
appeal of the rejection. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner
determined that claim 1 is indefinite for multiple reasons. Final Act. 5; Ans.
3–11. We agree with the Examiner in at least two respects, as discussed
below.
In determining whether a claim is definite under 35 U.S.C. § 112,
“[t]he USPTO, in examining an application, is obliged to test the claims for
reasonable precision.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014).
“[A] claim is indefinite when it contains words or phrases whose meaning is
unclear.” Id. at 1322 (citing MPEP § 2173.05(e)).
“a calibration collar . . . configured to prevent
movement of the shaft”
Claim 1 recites “a calibration collar releasably secured to the shaft and
configured to prevent movement of the shaft when in a locked position.”

2 The Examiner also initially rejected claims 1–8 and 12–20 for obviousness-
type double patenting. Final Act. 6–12. The Examiner ultimately withdrew
those rejections in view of a terminal disclaimer. Ans. 3.
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Appeal Br. 16. The Examiner determined that it is “unclear what the
prevention of movement is with respect to.” Final Act. 5.
Appellant argues, with reference to the embodiment illustrated in
Appellant’s Figure 6, that, “[i]f both locking mechanisms [of calibration
collar 110] are locked tightly, then the shaft cannot move with respect to the
exterior liner because the tightened fasteners cause the locking mechanisms
to grip both the shaft and the exterior liner.” Appeal Br. 8 (emphasis added).
Appellant’s argument explains how, in a particular disclosed embodiment,
the calibration collar can be locked to prevent movement of the shaft with
respect to its exterior liner. But, as the Examiner responded:
It appears that the shaft is intended to move in use by the solenoid
and/or spring forces when the calibration collar is locked. Also,
when the calibration collar is unlocked during calibration, the
shaft moves in order to calibrate its position. The shaft does not
appear to be prevented from movement by any structure of the
calibration collar. It appears that appellant is taking the position
that they have explained how the shaft, a liner, and the calibration
collar can be locked together; therefore the claim language is
definite. However, this does not explain the scope of how, or if,
movement of the shaft is prevented. It appears that when the
shaft, a liner, and the calibration collar are locked together, they
will move with each other and there is no structure of the
calibration collar which prevents the movement of the shaft when
locked together with a liner and the calibration collar. With
respect to the last limitation in claims 1 and 12, it remains unclear
what structure is meant to be covered by the functional language
that the calibration collar is “configured to prevent movement of
the shaft when in a locked position.”
Ans. 5–6. The Examiner is correct. Appellant’s argument does not clarify
the indefinite scope of claim 1, as claim 1 does not recite an exterior liner
and does not include any language limiting the meaning of “movement.”
Accordingly, “movement” would encompass movement of the shaft with
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Application 14/381,980

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respect to the “pressure regulator” generally or with respect to the “body
section” or “head section” more specifically. Yet, such movement is
intended and is indeed critical to proper function of the disclosed pressure
regulator.
As such, the scope of claim 1 is not reasonably precise, and claim 1 is,
thus, indefinite under 35 U.S.C. § 112(b).
“negative spring rate”
Claim 1 recites an “actuator section comprising a shaft driven in a first
direction, wherein the first direction is toward the seat, by a solenoid and a
balancing spring.” Appeal Br. 16. Despite that the shaft is recited as being
“driven in a first direction” by both the solenoid and balancing spring,
claim 1 recites “the solenoid applying a negative spring rate to the shaft in
the first direction and the balancing spring applying a positive spring rate to
the shaft in the first direction.” Id. (emphasis added). Thus, the “solenoid”
applies a force in the first direction and a force in the opposite direction.
This “ambiguity is the basis of a portion of the 112 rejection.” Jan. 18,
2019, Advisory Act. 2.
Appellant responds that the solenoid, in fact, does apply forces in
either of two opposing directions, depending on whether the solenoid is
activated or not, explaining as follows:
The solenoid applies a negative spring rate to the shaft, while the
balancing spring applies a positive spring rate. In other words,
the solenoid pulls the shaft to the right (towards the end labeled
B in FIG. 6), while the balancing spring pushes the shaft to the
left (towards the end labeled A in FIG. 6). This is completely
consistent with the description found in paragraph [0057] of the
application. Specifically, paragraph [0057] describes how
“actuator/solenoid 90 has a negative spring rate, such that shaft
94 when the actuator 90 is in an inactive state is forced in a
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direction opposite the outlet 80 (i.e. towards the end of the device
labeled B along axis L).” Once the solenoid is activated and
current is directed through the solenoid, the negative pulling
force of the solenoid decreases (see Application paragraph
[0057] stating that the negative force of the solenoid “reduces as
the solenoid stroke increases”). As additional current flows
through the solenoid, the solenoid begins to apply a positive
force and pushes the shaft to the left (see Application paragraph
[0056] describing how “the greater the electrical current the
closer the needle 86 and shaft 94 are from the seat”).
Appeal Br. 11.
Appellant’s explanation above, which is based on limitations
described in the Specification but not recited in claim 1, does not clarify the
scope of the claim. In particular, claim 1 lacks recitations regarding the
solenoid being active or inactive.
Even if we were to interpret “the solenoid applying a negative spring
rate to the shaft in the first direction” as limited to when the solenoid is
inactive, as Appellant urges, the scope of the claim would remain unclear.
In that regard, we agree with the Examiner that “use of the term ‘spring rate’
to describe a force from a solenoid is awkward as best.” Ans. 6. Further,
use of such a term is hopelessly unclear to describe a force from an inactive
solenoid. A person of ordinary skill in the art is left to guess what not
recited feature of claim 1 actually provides the “negative spring rate.”
For this additional reason, the scope of claim 1 is not reasonably
precise, and claim 1 is, thus, indefinite under 35 U.S.C. § 112(b).
CONCLUSION
For each of the reasons discussed above, we affirm the indefiniteness
rejection of claims 1–8 and 12–20.

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Application 14/381,980

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SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–8, 12–20 112(b) Indefiniteness 1–8, 12–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED