Waters Technologies Corporation

Patent Trials and Appeals Board

Sep 14, 2020

14382850 - (D) (P.T.A.B. Sep. 14, 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.
14/382,850 09/04/2014 Kurt D. Joudrey W-789-US2 (WAT-063US) 3773
14299 7590 09/14/2020
Schmeiser, Olsen & Watts LLP
33 Boston Post Road West
Suite 410
Marborough, MA 01752
EXAMINER
KEE, FANNIE C
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
09/14/2020 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):
docketing@iplawusa.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte KURT D. JOUDREY,
SYLVAIN CORMIER, JAMES USOWICZ,
EMILY J. BERG, and CHRISTOPHER SEITH
__________

Appeal 2020-001194
Application 14/382,850
Technology Center 3600
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5 and 12–14. Claims 6–11 have been
withdrawn from consideration. See Final Act. 1 (Office Action Summary).
We have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Waters
Technologies Corporation.” Appeal Br. 2.
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below, we do not find error in the Examiner’s rejections of these claims.
Accordingly, we AFFIRM the Examiner’s rejections.

CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a device and a method for
coupling high pressure fluidic paths in liquid chromatography systems.”
Spec. 1:9–10. Apparatus claims 1 and 12 are independent. Claim 1 is
illustrative of the claims on appeal and is reproduced below.
1. A high pressure fitting for coupling fluidic paths in
a liquid chromatography system, comprising:
a compression nut having a threaded outer surface
configured to engage a threaded bore of a receiving port;
a tube assembly having an outer surface and an end face
configured to contact a sealing surface of the receiving port, the
tubing assembly configured for transferring fluid in the liquid
chromatography system; and
a compression member pre-staked to the outer surface of
the tube assembly at a distance from the end face with a force
sufficient to prevent inadvertent movement of the compression
member along the tube assembly during insertion of the tube
assembly into the receiving port and not so great as to prevent
movement of the compression member along the tube assembly
during rotation of the compression nut, the compression member
having a tapered surface configured to engage a surface of the
receiving port, the distance permitting the tube assembly to be
inserted into the receiving port so that the end face is configured
to make contact with the sealing surface without the tapered
surface engaging a surface of the receiving port and so that the
threaded outer surface of the compression nut is configured to
engage the threaded bore of the receiving port, wherein the
compression member is pre-staked prior to coupling in the
receiving port.

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REFERENCES RELIED ON BY THE EXAMINER
Barree US 4,776,618 Oct. 11, 1988
Ford US 6,095,572 Aug. 1, 2000
Valaskovic US 7,681,926 B2 Mar. 23, 2010

THE REJECTIONS ON APPEAL
Claims 12 and 14 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement. Final Act. 2.
Claims 12 and 14 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. Final Act. 5.
Claims 1–3 and 14 are rejected under 35 U.S.C. § 102(b) as
anticipated by Barree. Final Act. 6.
Claim 12 is rejected under 35 U.S.C. § 102(b) as anticipated by Ford.
Final Act. 8.
Claims 5 and 13 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Barree. Final Act. 9.
Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Barree and Valaskovic. Final Act. 10.

ANALYSIS
The rejection of claims 12 and 14
as failing to comply with the written description requirement
The Examiner determines that the Specification does not provide
support for certain limitations of claims 12 and 14, namely, “wherein the
fixture is not included in the liquid chromatography system” (claim 12) and
“a fixture that is not part of a liquid chromatography system” (claim 14).
Final Act. 3–4. These limitations were added by amendment. See
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Amendments dated June 25, 2018 and December 13, 2018; see also Reply
Br. 2 (“Appellant incorporated this language by way of amendment”).2
The Examiner, in rejecting claims 12 and 14, asks, “Where does the
specification specifically disclose that the fixture is not included in any
liquid chromatography system?” Final Act. 3; see also id. at 4. The
Examiner states, “MPEP [§] 2173.05i defines that Applicants need support
in the specification when adding new negative limitations to the claims,” and
further that “[t]he fact that the drawings do not show the negative limitation
is not evidence enough that the newly added negative limitation has been
supported by the original specification and drawings.” Final Act. 3, 4.
Appellant contends that these limitations are supported by the
Specification because “FIG. 8 clearly shows the claimed fixture 90 . . . as a
bored block and does not include any element of a liquid chromatography
system.” Appeal Br. 7 (emphasis added). “Applicant now claims this
embodiment – i.e. a standalone fixture as shown in FIG. 8 that is not
included in a liquid chromatography system.” Appeal Br. 7; see also Reply
Br. 2. Appellant further asserts that “the [S]pecification makes clear that the
claimed, shown and described fixture is used to ‘pre-stake’ the fitting, and
that this ‘pre-staking’ occurs prior to installation in any liquid
chromatography system.” Appeal Br. 7 (referencing Spec. 5:7–22).
This referenced passage in Appellant’s Specification describes
couplings for “fluidic paths, including high pressure fluidic paths such as

2 We note that seemingly contrary to these limitations, the preamble of claim
12 recites a “fixture for pre-staking . . . in a liquid chromatography system,”
and the preamble of the parent of claim 14 (i.e., claim 1) recites an apparatus
“for coupling fluidic paths in a liquid chromatography system.”
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those included in HPLC, UPLC and SFC systems.”3 Spec. 5:7–9. This
referenced passage does not identify, with any degree of specificity, usage in
any system other than chromatography systems (consistent with Appellant’s
preambles of claims 12 and 14 discussed above).
Compliance with the written description requirement set forth in the
first paragraph of 35 U.S.C. § 112 does not require that the claimed subject
matter be described identically in the written disclosure because “[t]he
content of the drawings may also be considered,” but the application as
originally filed must “reasonably convey[] to the artisan that the inventor
had possession at that time of the later claimed subject matter, rather than
the presence or absence of literal support in the specification for the claim
language.” In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) (citations
omitted). Further, the Manual for Patent Examining Procedure (MPEP)
states that “[a]ny negative limitation or exclusionary proviso must have basis
in the original disclosure.” MPEP § 2173.05(i); see also Ans. 4. In other
words, a negative claim limitation must have written description support like
any other limitation, i.e., there is no heightened standard in such cases. See
Inphi Corporation v. Netlist, Inc., 805 F.3d 1350, 1356 (Fed. Cir. 2015)
(“Nor do we see any reason to now articulate a new and heightened standard
for negative claim limitations.”). We have also been instructed that
“[n]egative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation.”

3 Appellant’s Specification explains that “HPLC” stands for “High
Performance Liquid Chromatography,” that “UPLC” stands for “Ultra
Performance Liquid Chromatography,” and that “SFC” stands for
“Supercritical Fluid Chromatography.” Spec. 1:13–15.
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Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012).
As thus understood, a reliance on silence or an absence in a drawing is not
sufficient for written description support.
As noted above, Appellant relies on Figure 8 for written description
support because no liquid chromatography system is illustrated therein. See
Appeal Br. 7. However, Appellant is equating the establishment of written
description support for this limitation to the absence of the illustration of a
liquid chromatography system in Figure 8. See Reply Br. 2. The Examiner
disagrees stating “[t]he fact that the drawings do not show the negative
limitation is not evidence enough that the newly added negative limitation
has been supported by the original [S]pecification and drawings.” Ans. 4.
The Examiner further states:
The [S]pecification at page 5, lines 7–22 as cited by [A]ppellant
does not disclose or make clear that the fixture is not a part of a
liquid chromatography system but rather speaks to the process of
pre-staking the fitting. This portion of the [S]pecification does
not speak to the fixture of Figure 8 or make it clear that the fixture
is not a part of a liquid chromatography system.
Ans. 4. Additionally, the Examiner states that “this fixture was not
originally disclosed to be excluded from a liquid chromatography system”
(Ans. 4) and thus it is not made clear where Appellant’s Specification
provides a reason for the exclusion. See Santarus, 694 F.3d at 1351.
Appellant argues that because the fixture is used to “pre-stake” and
assist installation of a liquid chromatography system, this means that the
liquid chromatography system is excluded. See Appeal Br. 7. However,
Appellant’s reference to a fixture that is used to install (“pre-stake”) a
chromatography system might, instead, indicate that such fixture is not a
final, installed, or working component of that system; but nevertheless, an
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admitted pre-installation use of a fixture with such a system does not support
the contention that the fixture is not employed in association with that
system.
Additionally, and as noted above, Appellant does not identify any
alternative system in which the claimed structure is to be used, other than
with respect to a liquid chromatography system. See Spec. 5:7–22, 1:13–15.
Hence, one skilled in the art must guess as to what other systems the claimed
invention applies, if it is not to apply to a liquid chromatography system.
While such “guessing” may be more applicable to an indefiniteness rejection
(see below), it is also indicative of the lack of written support for what other
systems the fixture may be used with. For example, in responding to the
indefiniteness rejection, Appellant states that “the point of Appellant’s
invention [is] to pre-stake a tube assembly so that it makes attaching or
connecting to a liquid chromatography system easier by a person that is
eventually installing the tube assembly.” Reply Br. 3. If, as Appellant
alleges, the component is used for the liquid chromatography system, and
does not identify any other system to which it applies, then it is not made
clear where written description support can be found for excluding its usage
with respect to liquid chromatography systems. In short, Appellant’s
contentions are not indicative that Appellant originally had possession of
that which is presently claimed.
Further, in the Reply Brief, Appellant states “that FIG. 8 clearly
shows that the fixture 90 is a block.” Reply Br. 2. As such, according to
Appellant, “the drawings do shown [sic] the negative limitation – i.e. a block
that is not possibly configured for implementation into any system, as it has
no provided means for incorporation or attachment.” Reply Br. 2. We note
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that if it is not possible to configure the “block” shown in Figure 8 “for
implementation into any system” as expressed above, then perhaps there is a
lack of utility with respect to this “block” as well. Nonetheless, Appellant’s
argument is unpersuasive because, as explained by the Examiner, “the mere
absence of a positive recitation is not a basis for an exclusion.” Ans. 4.
Accordingly, Appellant’s contentions do not apprise us of Examiner
error in the rejection of these claims for the reasons stated above. We
sustain the Examiner’s rejection of claims 12 and 14 as lacking written
description support.
The rejection of claims 12 and 14
as being indefinite
The Examiner determines that the claim 12 limitation of “[a] fixture
for pre-staking a compression member to a tube assembly configured to
transfer fluid in a liquid chromatography system” conflicts with the
recitation “wherein the fixture is not included in the liquid chromatography
system.” Final Act. 5. This is because, as per the Examiner, it is not clear
how “the fixture [is] being used in the field of liquid chromatography but is
also not to be included in any liquid chromatography system.” Final Act. 5.
Claim 14 recites similar limitations because claim 14: (1) recites “a fixture
that is not part of a liquid chromatography system,” and (2) depends from
claim 1 whose preamble recites “[a] high pressure fitting for coupling fluidic
paths in a liquid chromatography system.” Claims Appendix. As such, the
Examiner finds that claim 14 has the same conflict as claim 12 above. Final
Act. 5–6.
Appellant contends that claim 12 “is claiming a separate fixture that is
configured to perform this pre-staking on the fitting – a fixture that is not
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included in a liquid chromatography system” and, in regard to claim 14, “the
liquid chromatography system is not positively recited in independent claim
1 or dependent claim 14.” Appeal Br. 8; see also Reply Br. 3.
A claim is properly rejected as being indefinite under 35 U.S.C. § 112
second paragraph if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
because the claim “contains words or phrases whose meaning is unclear.” In
re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).
Here, the Specification does not define a “liquid chromatography
system” nor is there a boundary set forth for this term. See Spec., passim.
Thus, employing the broadest reasonable interpretation of this phrase in light
of Appellant’s Specification, the Examiner determines that
[a] liquid chromatography system would include any elements
that work together to create the system as a whole such as using
the fixture to pre-stake the fitting that is a part of a liquid
chromatography system. The fixture is a part of the liquid
chromatography system as the fixture is used to pre-stake the
fitting for use in the liquid chromatography system. The fixture
is a part of the system that forms the final assembly for a liquid
chromatography system.
Ans. 5–6. As such, the Examiner concludes that the recited fixture is a part
of the chromatography system, but that the claims recite otherwise. See Ans.
5 (“[I]t is not clear how the fixture is being used in the field of liquid
chromatography but is being claimed as not being included in a liquid
chromatography system.”). As noted above, Appellant identifies usage only
in chromatography systems, and as such, Appellant’s contentions do not
apprise us of Examiner error on this point because a skilled person must rely
on conjecture as to what other systems Appellant is referencing.
Accordingly, we agree with the Examiner that claims 12 and 14 contain
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words or phrases whose meanings are unclear, thereby rendering the metes
and bounds of the claims likewise unclear.
We sustain the rejection of claims 12 and 14 as indefinite.
The rejection of claims 1–3 and 14
as anticipated by Barree
Appellant presents arguments for claims 1–3 and 14 together. See
Appeal Br. 9–10. We select independent claim 1 for review, with claims 2,
3, and 14 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding claim 1, the Examiner finds that Barree discloses a
compression nut (body 10), a tube assembly (pipe 20), and a compression
member (ferrules 30, 40). Final Act. 6–7 (citing Barree 1:42–44, 50–51;
2:45–46); see also Barree Fig. 1. Appellant, does not dispute such
disclosures, but instead contends that Barree does not mention liquid
chromatography. Appeal Br. 9; see also id. at 10; Reply Br. 4.
Barree discloses “[a] high-pressure coupling for small-diameter pipe”
“up to and in excess of 10,000 pounds per square inch.” Barree Abstract,
1:6–8. Appellant describes typical liquid chromatography systems as
involving pressures ranging from between 1,000 psi to about 6, 000 psi, and
in some cases “approaching 20,000 psi.” Spec. 1:15–20. As such, it is not
made clear why Barree’s high pressure device would not be suitable in at
least some, if not all, instances for coupling fluidic paths in a high pressure
liquid chromatography system. Further, we have been instructed that
“apparatus claims cover what a device is, not what a device does.” Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990).
See also Ans. 8 (“[A]n apparatus must be distinguished from the prior art in
terms of structure rather than function (see MPEP [§] 2114)”).
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Appellant also argues that “Barree teaches a fitting having ferrules
that are ‘compressed so they are “locked” onto a section of pipe.’” Appeal
Br. 9 (referencing Barree 1:42–44); see also Reply Br. 4. Appellant
contends that Barree’s “locking in” of the ferrules is different from the
recited “pre-staking” which allows “a force sufficient to prevent inadvertent
movement of the compression member . . . and not so great as to prevent
movement of the compression member along the tube assembly during
rotation of the compression nut,” as claimed. Appeal Br. 10. To be clear,
claim 1 allows for some movement of the compression member (ferrules)
under certain conditions.
The Examiner explains that Barree’s ferrules are not “permanently
attached or locked to the section of pipe” in an unmoving manner because
otherwise, “the ferrules would be unable to move during rotation of the
compression nut and insertion into a receiving member.” Ans. 6–7. This is
evidenced by the wedge-shaped interface between ferrules 30 and 40. See
Barree Figs. 1–3. More specifically, when describing ferrules 30 and 40 in
greater detail, Barree discloses that each inner bore thereof is “designed to fit
snugly around the pipe.” Barree 2:32–46. Appellant does not explain how
Barree’s explicit teaching of fitting “snugly around the pipe” can be equated
to Appellant’s assertion above that the ferrules are instead “‘locked’ onto a
section of pipe,” i.e., immobile. In other words, Appellant does not explain
how Barree’s ferrules 30 and 40 fail to be wedged together via some
movement along the pipe during assembly so as to withstand “pressures up
to and in excess of 10,000 pounds per square inch” when “tightened by
hand.” Barree 1:6–9.
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In view of Barree’s discussion of a snug fit, Appellant does not
explain how Barree’s manner of securement fails to teach the limitation of
“a compression member pre-staked . . . with a force sufficient to prevent
inadvertent movement [yet] not so great as to prevent movement of the
compression member along the tube assembly during rotation of the
compression nut.” In short, Appellant does not indicate how Barree’s
ferrules fail to likewise be “pre-staked to the outer surface of the tube
assembly” in the manner claimed. See Ans. 6–7.
Appellant further argues that Barree does not disclose pre-staking at a
particular distance. See Appeal Br. 10. This argument is unpersuasive
because claim 1 does not recite “a particular distance” (only “at a distance”)
nor does claim 1 define an upper or a lower limit for the recited “distance.”
Thus, any distance in which Barree’s ferrules 30 and 40 are attached to pipe
20 and spaced from the end thereof would meet the recited “distance” of
claim 1. See Ans. 9. Even a cursory review of Barree’s Figure 1 discloses
ferrules 30 and 40 some distance from the end of tube 20.
In summation, none of Appellant’s contentions are indicative of
Examiner error. Accordingly, the rejection of claims 1–3 and 14 as
anticipated by Barree is sustained.
The rejection of claim 12
as anticipated by Ford
The Examiner finds that Ford discloses all the recited limitations
including a threaded upper bore (bore with threaded surface 24), a middle
bore (cylindrical chamber 58), a conical cavity (tapered chamber 54), and a
lower bore (small diameter passage 60). See Final Act. 8–9 (referencing
Ford Fig. 1).
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Appellant contends that “Ford does not teach a fixture that is a
standalone pre-staking mechanism that is not included in a liquid
chromatography system.” Appeal Br. 12; see also Reply Br. 4–5. Appellant
asserts that “[i]n contrast to Ford, Applicant’s claims require a dedicated
fixture for pre-staking – one that is not part of, or configured to be part of
any other sub system of a liquid chromatography system.” Appeal Br. 12.
To the extent Appellant is arguing “that the fixture is being
specifically claimed to not be a component of a liquid chromatography
system,” the Examiner refers to the “written description rejection of claim
12 as set forth above.” Ans. 10.
Addressing Appellant’s contention regarding the fixture being a
“standalone” fixture, the Examiner explains that claim 12 recites a fixture
“for pre-staking” and thus it is “unclear” how Appellant can argue that the
fixture is, instead, “standalone.” Ans. 10. As to the fixture being a
“standalone pre-staking mechanism” (Appeal Br. 12), the Examiner states
that “[A]ppellant has not defined that the fixture is a standalone dedicated
fixture but rather” is a fixture for use “in a liquid chromatography system.”
Ans. 10. Thus, the Examiner asks “[h]ow is this fixture now being defined
as a ‘standalone dedicated fixture’?” Ans. 10.
It is also noted that Ford’s Figure 1 illustrates a fitting not otherwise
connected to any other system. Thus, alternatively and employing the same
logic Appellant employs above, Ford’s fitting could likewise be considered,
based on this figure alone, as a “stand-alone fixture.” However, the
Examiner references that portion of Ford, which clearly states that the fitting
can be “used to connect miniature fluid conduits utilized in liquid
chromatography” systems. Ans. 10 (referencing Ford 1:5–6).
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The Examiner further notes claim 12’s usage of the transitional term
“comprising,” which is interpreted as permitting the inclusion of elements
and/or steps, not specifically claimed. Ans. 10; see also In re Baxter, 656
F.2d 679, 686–87 (CCPA 1981). Thus, the Examiner correctly responds that
the transition term “comprising” of claim 1 means that other components can
be included as well. Ans. 10.
Accordingly, and based on the record presented, Appellant’s
contentions above are not indicative of Examiner error. We sustain the
Examiner’s rejection of claim 12 as anticipated by Ford.
The rejection of (a) claims 5 and 13
as unpatentable over Barree, and (b) claim 4
as unpatentable over Barree and Valaskovic
Claims 4, 5, and 13 depend from claim 1. Claims Appendix.
Appellant argues that the rejection of these claims are deficient “for the
same reasons described hereinabove . . . as to why independent claim 1 is
patentable.” Appeal Br. 12. As we find no deficiencies in the Examiner’s
rejection of independent claim 1, we likewise sustain the Examiner’s
rejections of claims 4, 5, and 13 in view of the art referenced above.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
12, 14 112, first
paragraph
Written
Description
12, 14
12, 14 112, second
paragraph
Indefiniteness 12, 14
1–3, 14 102(b) Barree 1–3, 14
12 102(b) Ford 12
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Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
5, 13 103(a) Barree 5, 13
4 103(a) Barree,
Valaskovic
4
Overall
Outcome
1–5, 12–14
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