AGILENT TECHNOLOGIES, INC.

Patent Trials and Appeals Board

Oct 5, 2020

14595947 - (D) (P.T.A.B. Oct. 5, 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.
14/595,947 01/13/2015 Ansgar Waldbaur 20130354-02 1067
22878 7590 10/05/2020
Agilent Technologies, Inc.
Global IP Operations
5301 Stevens Creek Blvd
Santa Clara, CA 95051
EXAMINER
PEO, KARA M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
10/05/2020 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):
Agilentdocketing@cpaglobal.com
ipopsadmin@agilent.foundationip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANSGAR WALDBAUR,
ARMIN STEINKE, and RALF SCHAEFFER
____________

Appeal 2020-000234
Application 14/595,947
Technology Center 1700
____________
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10, 13, 15, 16, 18, 20, and 212 of
Application 14/595,947. Final Act. (October 9, 2018). We have jurisdiction
under 35 U.S.C. § 6.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Agilent Technologies, Inc., as the real
party in interest. Appeal Br. 3.
2 The Revised Appeal Brief (“Appeal Brief”), filed April 3, 2019,
erroneously states that claims 14, 19, 22, and 23 were rejected in the Final
Action. Appeal Br. 8. These claims have been withdrawn from
consideration, Final Act. 1, and are not before us in this appeal.
Appeal 2020-000234
Application 14/595,947
2
For the reasons set forth below, we reverse.
I. BACKGROUND
The ’947 Application describes an arrangement for mounting
components in a heating chamber for heating a fluid of the fluid separation
apparatus, e.g., an HPLC system. Spec. ¶ 2. The claimed invention is said to
enable flexible management of various components in the heating chamber
in a user-convenient manner. Id. ¶ 7.
Claim 1 is representative of the ’947 Application’s claims and is
reproduced below from the Appeal Brief’s Claims Appendix.
1. An arrangement for mounting components in the heating
chamber for heating a fluid of a fluid separation apparatus, the
arrangement comprising:
a mounting board comprising at least one mounting
recess, the at least one mounting recess comprising slanted
surfaces forming a V-shape; and
a pre-heater assembly configured for heating the fluid
upstream and/or downstream of a separation unit of the fluid
separation apparatus, the pre-heater assembly comprising
slanted surfaces forming V-shape, wherein the pre-heater
assembly is configured to be mountable in the at least one
mounting recess,
where in the slanted surfaces of the pre-heater assembly
are complementary to the slanted surfaces of the at least one
mounting recess such that the pre-heater assembly and the at
least one mounting recess have corresponding lateral surfaces
substantially covering each other and faces of the lateral
surfaces are pressed against each other.
Appeal Br. Claims App. 1.
Appeal 2020-000234
Application 14/595,947
3
II. REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 1–10, 13, 15, 16, 18, 20, and 21 are rejected under 35
U.S.C. § 103 as unpatentable over the combination of Maillet3 and
Xie.4 Final Act. 2.
III. DISCUSSION
Appellant argues for reversal of the rejection on the basis of
limitations present in claim 1 and does not present separate argument for
reversal of the rejection of any of the other claims. Appeal Br. 8 – 15.
Accordingly, we select claim 1, the sole independent claim on appeal, as
representative of the claims on appeal. 37 C.F.R. § 41.37(c)(1)(iv).
In rejecting claim 1, the Examiner found that Maillet describes each
limitation of the claim except for the V-shaped mounting recess and pre-
heater. Final Act. 2 – 3. The Examiner also found that Xie teaches that
chromatography columns can be a variety of shapes, including triangular. Id.
at 3 (citing Xie ¶¶ 76, 124, 143, 195).
The Examiner offers three reasons why a person having ordinary skill
in the art would have modified Maillet’s structure in view of Xie’s
description of a triangular chromatography column Id. at 4.
For the reasons set forth below, we determine that none of these
reasons is sufficient to justify the combination of Maillet and Xie in the
absence of hindsight. See In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir.
1998) (inferring hindsight when the specific understanding or principal

3 WO 2013/028450 A1, published February 28, 2013.
4 US 2004/0000522 A1, published January 1, 2004.
Appeal 2020-000234
Application 14/595,947
4
within the knowledge of one of ordinary skill in the art leading to the
modification of the prior art to arrive at the claimed invention has not been
explained).
First, the Examiner found that a person of ordinary skill in the art
would have combined Maillet and Xie “to increase the efficiency of heat
exchange.” Final Act. 4.
This argument is not persuasive because the Examiner has not
explained how the change from Maillett’s design to the Examiner’s
proposed combination would increase heat exchange efficiency. In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”).
Second, the Examiner also found that a person of ordinary skill in the
art would have combined Maillet and Xie “to accommodate the desired
shape of the chromatography column.” Id.
This argument is not persuasive because it assumes that a person
having ordinary skill in the art would want to change the shape of Maillet’s
pre-heating section and column. The Examiner’s argument assumes the
answer to the critical question and does not provide a sufficient reason to
combine references in support of an obviousness rejection.
Third, the Examiner found that Xie establishes that all
chromatography column shapes are equivalent. Id.; see also Answer 4
(citing Xie ¶¶ 76, 124, 143, 195). Thus, according to the Examiner, using
Xie’s triangular column in Maillet’s chromatography system would have
involved the mere substitution of known equivalent structures, which was
well within the level of ordinary skill in the art. Id. The Examiner also found
Appeal 2020-000234
Application 14/595,947
5
that it would have been obvious to a person of ordinary skill in the art to
change the shape of the mounting recess to correspond to the shape of the
chromatography column. Id.
This argument is not persuasive because the Examiner erred by
finding that Xie establishes the equivalence of all chromatography column
shapes. We begin by pointing out that the Final Action does not cite any
particular portion of the Xie in support of its assertion. See Final Act. 4. The
portions of Xie cited in the Examiner’s Answer do not establish the
equivalence of all chromatography column shapes. Rather, these passages
state that Xie’s method for forming the method for filling the column with a
stationary phase by pressurized polymerization can be used in a column of
any shape. See Xie ¶¶ 76, 124, 143, 195. Thus, the Examiner’s statement
regarding the known equivalent of various chromatography column shapes is
unsupported by evidence in the record.
In view of the foregoing, we reverse the rejection of claim 1. Thus, we
also reverse the rejection of claims 2 – 10, 13, 15, 16, 18, 20, and 21.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–10, 13, 15, 16,
18, 20, 21 103 Maillet, Xie
1–10, 13, 15,
16, 18, 20, 21
REVERSED