Catalin Andrei et al.

Patent Trials and Appeals Board

Jul 29, 2020

13704270 - (D) (P.T.A.B. Jul. 29, 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.
13/704,270 12/14/2012 Catalin Andrei 246379-US-4 (34428-0462) 8962
29052 7590 07/29/2020
EVERSHEDS SUTHERLAND (US) LLP
999 PEACHTREE STREET, N.E.
SUITE 2300
ATLANTA, GA 30309
EXAMINER
ALI, WAQAAS A
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
07/29/2020 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):
patentdocket@eversheds-sutherland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CATALIN ANDREI, MIKAEL BERG, TORBJORN BLANK,
ENRIQUE CARREDANO, KARL EKSTROM, TOMAS M. KARLSSON,
JAN-ERIK LYNGA, ROGER NORDBERG, GUSTAV RODRIGO, and
HENRIK SANDEGREN
Appeal 2019-006470
Application 13/704,270
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
DONNA M. PRAISS, Administrative Patent Judges.
TIMM, 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 36–39, 41–43, 47–51, 56–66, and 73.
See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 GE Healthcare
Bio-Sciences AB. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims on appeal are directed to a method of preparing liquid
mixtures. See, e.g., claims 36 and 73. Claim 36, reproduced below with the
limitations most at issue highlighted, is illustrative of the claimed subject
matter:
36. A process for providing a mixed liquid, the process
comprising:
combining, in a system, flows of a plurality of liquid
components to obtain the mixed liquid, the combining
including:
providing the mixed liquid as an output of the process
using a set of conduits of the system consisting of a first
conduit and a second conduit joined at a first junction, a third
conduit and a fourth conduit joined at a second junction, and
an output conduit connecting to the first, second, third and
fourth conduits at a common junction, and wherein the output
conduit includes at least one sensor;
varying flow rates of a first liquid component introduced
in the system via the first conduit and of a second liquid
component introduced in the system via the second conduit, the
varying performed while keeping a flow rate of the mixed
liquid at a predetermined level, and wherein the first and second
liquid components are amongst the plurality of liquid
components and wherein the mixed liquid further includes a
third liquid component introduced in the system via the third
conduit;
measuring, in the output conduit using the at least one
sensor a current value of a first property in the mixed liquid and
a current value of a second property in the mixed liquid,
wherein the first and second properties are different;
adjusting the flow rates of the first and second liquid
components based on a first feedback loop associated with the
first property and a second feedback loop associated with the
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second property until the current value of at least one of the first
and second properties reaches a set-point;
providing the mixed liquid as the output of the process at
the fourth conduit, when the current value of the at least one
first and second properties reaches the set-point; and
adjusting the current value of the first property to a first
threshold or the current value of the second property to a
second threshold by varying a flow rate of at least one liquid
component.
Appeal Br. 15 (emphasis added). Claim 73 is similar, but does not require
third and fourth conduits joined at a second junction. Instead, it requires an
end conduit joined to two conduits at a common junction via a set of
intervening conduits.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Stafström US 6,221,250 B1 Apr. 24, 2001
Peltzer US 6,224,778 B1 May 1, 2001
Bellafiore2 US 8,271,139 B2 Sept. 18, 2012
Paul US 2003/0052007 A1 Mar. 20, 2003
Taiichiro JP H05264500A (as
translated)
Oct. 12, 1993

REJECTIONS
The Examiner maintains the following rejections.

2 The Examiner’s citations are to the Pre-Grant publication
US 2008/0279038 A1, published Nov. 13, 2008. We will also cite to this
document.
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Claims 36–39, 41–43, 47–51, 56–66, and 73 are provisionally rejected
on the ground of nonstatutory double patenting as being unpatentable over
claims 1 and 4–8, of copending Application No. 13/497,896 (now US
9,327,212).
Claims 36–39, 41–43, 47, 49–51, 56–58, 64–66, and 733 are rejected
under 35 U.S.C. § 103 as being unpatentable over Bellafiore in view of Paul
or Peltzer.
Claims 59–634 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bellafiore in view of Peltzer or Paul, further in view of
Stafström.
Claim 48 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bellafiore in view of Peltzer or Paul, further in view of Taiichiro.

OPINION
Nonstatutory Double Patenting
Appellant requests that the provisional nonstatutory double patenting
rejection be held in abeyance. Appeal Br. 10. Given that Appellant advances
no arguments against the rejection, we summarily affirm the nonstatutory
double patenting rejection.

3 The claim listing in the Examiner’s opening statement of the rejection does
not match the claims discussed in the body of the rejection. Final Act. 4;
Ans. 6. The opening statement also includes canceled claims. Final Act. 4;
Ans. 6. We list only those claims the Examiner discusses in the body of the
rejection.
4 The Examiner also lists claim 53 as rejected, but this claim has been
canceled. Final Act. 9; Ans. 10.
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Obviousness
Turning to the obviousness rejections, Appellant presents arguments
calling into question the Examiner’s rejection of claim 36 as obvious over
Bellafiore in view of Paul or Peltzer. Appeal Br. 11–13. Appellant argues
that the Examiner erred in finding that Bellafiore teaches the step of
providing the mixed liquid as an output of the process using the set of
conduits recited in claim 36. Appeal Br. 11–12. Appellant has not persuaded
us of reversible error.
Appellant’s first argument is that the conduit the Examiner identifies
as the output conduit does not provide an output of a process. Appeal Br. 11.
This argument fails because it reads “a process” and “an output of the
process” too narrowly. We further explain below.
As shown in the Examiner’s annotation of Bellafiore’s Figure 11
reproduced below, the Examiner relies on the conduit including sensors 1
and 2 as the output conduit.
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Figure 11 reproduced above is a schematic of a third embodiment of
Bellafiore’s multistage blending system including the Examiner’s
annotations identifying various claim structures. Bellafiore ¶ 29; Ans. 13.
Bellafiore’s Figure 11 embodiment is similar to Bellafiore’s first and second
embodiments in that it includes a recirculation loop (labeled 222 in Figure
9). Compare Fig. 11, with Fig. 9; see also ¶¶ 68, 81. In the Figure 11
embodiment, Components 1 and 2 flow through conduits joined at what the
Examiner labels the first junction. From there, the blend of Components 1
and 2 flows to a common junction where the blend enters the recirculation
mixing loop. Bellafiore ¶ 68. Component 3 enters the recirculation loop
through a third conduit. The blend of Components 1–3 passes through a
portion of the recirculation loop where it is sensed by Sensors 1 and 2, which
may sense for instance pH and conductivity. Only when target values of,
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e.g., pH and conductivity, have been attained will delivery valve 232 open to
deliver the output of the recirculation loop. Bellafiore ¶ 71; Fig. 9.
We agree with Appellant that Bellafiore’s recirculation loop leads to
another conduit Bellafiore labels as “Outlet to Process.” Appeal Br. 11;
Bellafiore Fig. 11. But, we also agree with the Examiner that the mixed
liquid flowing past the sensors is being output by a process, i.e., the process
taking place in the recirculation loop. Ans. 14. It is the recirculation loop in
which the mixing process is conducted. The process is a process of mixing
solutions, detecting its properties, and when target values for those
properties are reached at the point of detection in the Examiner-labeled
output conduit, the process is completed. Bellafiore ¶¶ 68–72. The portion of
the recirculation loop containing sensors 1 and 2 provides the mixed liquid
as “an output of a process” as required by claim 36. That there is a further
conduit for delivering the mixture to another process is not excluded by
claim 36.
Appellant also contends “Bellafiore does not disclose first and second
conduits joined at a first junction and third and fourth conduits joined at a
second junction” and “there is no common junction” between the conduits.
Appeal Br. 12. The issue here boils down to whether the lower part of
Bellafiore’s recirculation loop meets the requirements of the fourth conduit
and whether there is a common junction meeting the claim requirements.
Appeal Br. 12. As we explain below, we agree with the Examiner that the
claim language sweeps in the conduit and junction arrangement of
Bellafiore. Claims that sweep in the prior art are not patentable. See In re
Hiniker Co., 150 F.3d 1362, 1368–69 (Fed. Cir. 1998) (“When given their
broadest reasonable interpretation, the claims on appeal sweep in the prior
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art, and the prior art would have directed an artisan of ordinary skill to make
the combination cited by the examiner. . . . The invention disclosed in
Hiniker’s written description may be outstanding in its field, but the name of
the game is the claim.”).
The conduits labeled third and fourth conduits by the Examiner are
joined at a junction as required by claim 36. In Bellafiore, component 3
flows through a conduit (Examiner’s third conduit) to a junction in the
recirculation loop (Examiner’s second junction). The Examiner labels the
lower recirculation loop the fourth conduit. Thus, there is “a third conduit
and a fourth conduit joined at a second junction” as required by claim 36.
This leaves the question of whether there is a common junction as required
by the claim.
The conduits have the required common junction. Claim 36 requires
“an output conduit connecting to the first, second, third and fourth conduits
at a common junction.” There can be little dispute that the conduit the
Examiner labels the output conduit joins the first and second conduits at a
common junction that is similar to Appellant’s common junction. Compare
annotated Fig. 11, with Appellant’s Fig. 1 at 7. Liquid from Bellafiore’s
third conduit and the lower portion of the recirculation conduit (Examiner’s
fourth conduit) also flows to the common junction. Thus, Appellant has not
persuaded us of a reversible error in the Examiner’s finding that Bellafiore
teaches the required structure.
Appellants rely on the above addressed arguments for all the claims
and rejections. Appellant makes the substantive arguments under the
heading “Independent Claims 36, 67, and 73 are Allowable,” Appeal Br. 11.
Although Appellant’s heading would seem to extend the argument to claims
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67 and 73, it does not in fact so extend the argument. First, claim 67 is not
under rejection. Claim 67 was withdrawn from consideration. Final Act. 2.
Second, claim 73 is of different scope than claim 36. Thus, the argument
against the rejection of claim 36 does not apply to claim 73. Appellant has
not identified a reversible error in the Examiner’s rejection of claim 73 for
this further reason.
CONCLUSION
As Appellant has not identified a reversible error in any of the
Examiner’s rejections, we affirm.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
36–39, 41–
43, 47–51,
56–66, 73
Provisional
Nonstatutory
Double Patenting
13/497,896 (now
US 9,327,212)
36–39, 41–
43, 47–51,
56–66, 73

36–39, 41–
43, 47, 49–
51, 56–58,
64–66, 73
103(a) Bellafiore, Paul 36–39, 41–
43, 47, 49–
51, 56–58,
64–66, 73

36–39, 41–
43, 47, 49–
51, 56–58,
64–66, 73
103(a) Bellafiore, Peltzer 36–39, 41–
43, 47, 49–
51, 56–58,
64–66, 73

59–63 103(a) Bellafiore, Paul,
Stafström
59–63
59–63 103(a) Bellafiore, Peltzer,
Stafström
59–63
48 103(a) Bellafiore, Paul,
Taiichiro
48
48 103(a) Bellafiore, Peltzer,
Taiichiro
48
Overall
Outcome
36–39, 41–
43, 47–51,
56–66, 73

TIME PERIOD FOR RESPONSE
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).
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AFFIRMED