2020002831 (P.T.A.B. Apr. 1, 2021)

Arthur HEISS et al.

Patent Trials and Appeals BoardApr 1, 2021

2020002831 (P.T.A.B. Apr. 1, 2021)

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. 13/359,633 01/27/2012 Arthur H. HEISS B0002/7068 9912 64967 7590 04/01/2021 Patrick O''''Shea O''''''''SHEA GETZ PC 10 Waterside Drive, Suite 205 Farmington, CT 06032 EXAMINER SHAIKH, MERAJ A ART UNIT PAPER NUMBER 3763 NOTIFICATION DATE DELIVERY MODE 04/01/2021 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): poshea@osheagetz.com uspto@osheagetz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARTHUR H. HEISS and AJAY KHATRI Appeal 2020-002831 Application 13/359,633 Technology Center 3700 Before BRETT C. MARTIN, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge MARTIN. Opinion dissenting filed by Administrative Patent Judge FITZPATRICK. MARTIN, 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, 7–14, 16, and 17, which constitute 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 Coldedge Technologies. Appeal Br. 3. Appeal 2020-002831 Application 13/359,633 2 all the claims pending in this application. See Final Act. 1. Claims 6 and 15 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to an ultra-low vibration cryogen-free cryostat for an electron paramagnetic resonance system. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An ultra-low vibration cryogen-free cryostat for an electron paramagnetic resonance system having a pair of opposing magnets for use with a closed cycle cryocooler, the cryostat comprising: an elongated, cup-shaped sample well thermally connected to the cryocooler and into which gaseous helium is introduced; a sample stick assembly that holds a sample and is disposed in the sample well; a support mechanism that mechanically aligns the sample stick assembly with the magnets; and a flexible rubber bellows connecting the sample stick assembly to the sample well so that vibration generated by the cryocooler is not transferred to the sample. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Inaguchi US 5,584,184 Dec. 17, 1996 Hess US 5,611,207 Mar. 18, 1997 Retz US 5,884,489 Mar. 23, 1999 Robbie US 2004/0074240 A1 Apr. 22, 2004 Wang US 2009/0293505 A1 Dec. 3, 2009 Woidtke US 2010/0242503 A1 Sept. 30, 2010 Appeal 2020-002831 Application 13/359,633 3 REJECTIONS Claims 1–5, 8, and 11–13 are rejected under pre–AIA 35 U.S.C. § 103(a) as being unpatentable over Hess and in view of Wang and further in view of Robbie . Final Act. 3. Claim 7 is rejected under pre–AIA 35 U.S.C. § 103(a) as being unpatentable over Hess in view of Wang and Robbie as applied to claim 1 above and further in view of Woidtke. Final Act. 8. Claim 14 is rejected under pre–AIA 35 U.S.C. § 103(a) as being unpatentable over Hess in view of Wang and Robbie as applied to claim 13 above and further in view of Woidtke . Final Act. 11. Claims 16 and 17 rejected under 35 U.S.C. § 103(a) as obvious over Hess in view of Wang and Robbie and Woidtke as applied to claim 14 above and further in view of Inaguchi and Retz. Final Act. 12. OPINION Drawing Objections Appellant argues the Examiner’s drawing objections (Appeal Br. 10), but such issues are petitionable, not appealable. Ex Parte Frye, 94 U.S.P.Q.2d 1072 (BPAI 2010). Accordingly, the drawing objections are not properly before us and we will not address them further. Obviousness Appellant argues claims 1 and 12 as a group and provides no separate arguments for any of the dependent claims. We select claim 1 as representative and the claims stand or fall with our disposition of claim 1. Appellant raises two arguments in challenging the Examiner’s rejections of the claims. Appeal 2020-002831 Application 13/359,633 4 First, Appellant argues that the Examiner is incorrect in finding that Hess’ dewar 167 can meet the limitation of a cup-shaped sample well because “Hess discloses immersing the sample into the liquid helium in the liquid helium dewar 167, whereas claim 1 recites gaseous helium with an elongated, cup-shaped sample well.” Reply Br. 2. The Examiner’s only response is that the claims do “not specify[] any features that distinguish between the element (167) of Hess and the claimed elongated cup-shaped well.” Ans. 3. Although this may be true, a dewar is an insulated container for holding liquids below ambient temperature. By definition a dewar is not designed to hold gas and it is unclear whether Hess’ dewar would be capable of holding helium in a gaseous state. Second, Appellant asserts that the Examiner has erred in combining Hess with Wang because “Hess would not be modified by a skilled person at the time of the present invention . . . because Hess emphatically and unambiguously states numerous times that the measurement insert 41 must be supported.” Reply Br. 2–3 (citing Hess col. 5, l. 66 – col. 6, l. 43). The Examiner offers no explanation other than to say that “replacing a mechanical support with a flexible rubber support would dampen the vibrations and prevent the sample from being disturbed by the external vibrations.” Ans. 3–4. Although this may be true, it does not address Appellant’s argument. Appellant correctly argues that Hess specifically points out that the sample is supported at three separate locations. We agree with Appellant that “even if Hess was to be modified as suggested in the Official Action, it still would not replace the three (3) instances of mechanical support/coupling expressly disclosed therein with a flexible rubber bellows.” Appeal Br. 13. The Dissent takes issue with the fact that Appeal 2020-002831 Application 13/359,633 5 Hess does not state that the well must be supported at three locations. We do not see this as significant because the Examiner has only stated that one of the three, i.e., “a support,” may be replaced. The Examiner does not dispense with the other two supports nor does the Examiner suggest replacing all three with flexible bellows. Regardless of what Hess requires, the Examiner’s combination still includes at least two supports that would transfer vibrations in contradiction to the claims. Accordingly, we do not sustain the Examiner’s rejections. CONCLUSION The Examiner’s rejections are REVERSED. More specifically, DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 8, 11– 13 103(a) Hess, Wang, Robbie 1–5, 8, 11– 13 7 103(a) Hess, Wang, Robbie, Woidtke 7 14 103(a) Hess, Wang, Robbie, Woidtke 14 16, 17 103(a) Hess, Wang, Robbie, Woidtke, Inaguchi, Retz 16, 17 Overall Outcome 1–5, 7, 8, 11–14, 16, 17 REVERSED Appeal 2020-002831 Application 13/359,633 6 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ARTHUR H. HEISS and AJAY KHATRI Appeal 2020-002831 Application 13/359,633 Technology Center 3700 Before BRETT C. MARTIN, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DISSENTING I respectfully dissent from the majority’s Decision reversing the Examiner’s rejections. The Decision identifies two purported Examiner errors underlying all of the rejections. However, I do not agree that the Examiner so erred. First, the Decision implicitly finds error in the Examiner’s reading “an elongated, cup-shaped sample well . . . into which gaseous helium is introduced” as recited by independent claims 1 and 12 onto the dewar of Hess. See Dec. 4 (“By definition a dewar is not designed to hold gas and it is unclear whether Hess’ dewar would be capable of holding helium in a gaseous state.”). In the Appeal Brief, Appellant argued “the express Appeal 2020-002831 Application 13/359,633 7 language of Hess states that the element 167 is a liquid helium dewar.” Appeal Br. 11 (citing Hess 4:22). The Examiner responded to that argument, stating “the claim only requires [an] elongated cup-shaped well for holding sample (see claim 1), while not clearly specifying any features that distinguish between the element (167) of Hess and the claimed elongated cup-shaped well.” Ans. 3.2 In reply, Appellant rehashed its Appeal Brief argument, arguing “claim 1 recites the elongated, cup-shaped sample well is thermally connected to the cryocooler and into which gaseous helium is introduced,” whereas “Hess discloses immersing the sample into the liquid helium in the liquid helium dewar 167.” Reply Br. 2. Claims 1 and 12 are apparatus claims, not method claims. Claims 1 and 12 do not recite that the elongated, cup-shaped sample well contains or comprises gaseous helium. Thus, I do not interpret the claims as requiring gaseous helium being present within the well. The Examiner found that Hess’s dewar, although designed to hold liquid helium, constitutes “an elongated, cup-shaped sample well” within the meaning of the claims because it bore the same structural features. Ans. 3. The Examiner challenged Appellant to specify any feature that distinguish Hess’s dewar from the recited elongated cup-shaped well. Id. Appellant responded by presenting arguments not commensurate with the scope of the claims. See Reply Br. 2 (“Hess discloses immersing the sample into the liquid helium in the liquid helium dewar 167, whereas claim 1 recites gaseous helium with an elongated, cup-shaped sample well.”). On the record presented, I would 2 In the Answer, the Examiner cited to Figure 16 of Hess as showing the dewar, but, in the Final Action, the Examiner cited to Figure 22. I believe the former was a typographical error. Appeal 2020-002831 Application 13/359,633 8 sustain the Examiner’s finding that Hess’s dewar constitutes “an elongated, cup-shaped sample well” within the meaning of the claims. The second purported Examiner error identified by the Decision concerns the Examiner’s proposed modification of Hess. The Decision agrees with Appellant that “‘Hess would not [have been] modified by a skilled person at the time of the present invention [by incorporating flexible rubber bellows support for Hess’s mechanical supports] . . . because Hess emphatically and unambiguously states numerous times that the measurement insert 41 must be supported’” and “at three separate locations.” See supra (quoting Reply Br. 2–3). I do not find Appellant’s argument adequately supported in fact. Hess states: “Also shown in FIG. 1 is an independent measurement insert 41 depicted with the system in the loaded position. In the loaded position gate valve 37 is open and measurement insert 41 is supported at three places, as follows.” Hess 5:62–65. Although Hess states that insert 41 “is supported at three places” (Hess 5:65), it does not state that the insert must be supported at three locations. See Appeal Br. 12–13 (block quoting Hess 5:66–6:43, which does not describe the support at three location as mandatory). Additionally, I do not understand what legal significance Appellant ascribes to its argument that Hess’s insert 41 “must” be supported in three places. Appeal Br. 12–13. Without making the argument explicitly, Appellant seems to be suggesting that the proposed modification of Hess would render it inoperative and thus Hess teaches away from Appellant’s claimed invention. See, e.g., In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007) (“[A] reference teaches away from a Appeal 2020-002831 Application 13/359,633 9 combination when using it in that combination would produce an inoperative result.”). However, Appellant has failed to factually support such an argument. First, as already discussed, Hess does not describe its three supports for insert 41 as being mandatory. Second, the Examiner reasonably found that “replacing a mechanical support with a flexible rubber bellows support would dampen the vibrations and prevent the sample from being disturbed by the external vibrations travelling through the well.” Ans. 3–4. Appellant’s Reply Brief does not rebut this finding and instead repeats its Appeal Brief argument that “Hess would not [have been] modified by a skilled person at the time of the present invention as suggested in the Official Action to use a flexible rubber bellows because Hess emphatically and unambiguously states numerous times that the measurement insert 41 must be supported.” Reply Br. 2–3. In my view, that is insufficient to apprise us of error. As persons of scientific competence in the fields in which they work, examiners . . . are responsible for making findings, informed by their scientific knowledge, as to the meaning of prior art references to persons of ordinary skill in the art and the motivation those references would provide to such persons. Absent legal error or contrary factual evidence, those findings can establish a prima facie case of obviousness. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003). In this case, Appellant has not pointed to any legal error affecting the Examiner’s obviousness analysis. Nor has Appellant pointed to sufficient factual grounds on which to question the findings made by the Examiner. For the above-stated reasons, I respectfully dissent from the Decision.