Entech Instruments Inc.

Patent Trials and Appeals Board

Mar 19, 2021

2020004759 (P.T.A.B. Mar. 19, 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.
15/479,122 04/04/2017 Daniel B. CARDIN 777472000200 1605
160992 7590 03/19/2021
Kubota & Basol LLP
445 S. Figueroa Street
Suite 2140
Los Angeles, CA 90071
EXAMINER
XU, XIAOYUN
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
03/19/2021 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):
docket@kuba-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL B. CARDIN
Appeal 2020-004759
Application 15/479,122
Technology Center 1700

Before TERRY J. OWENS, N. WHITNEY WILSON, and
LILAN REN, Administrative Patent Judges.

REN, 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, 2, 4–7, 9–12, 19–22, and 24. See
Non-Final Act. 2.2 Oral argument was held on March 2, 2021. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 “Entech
Instruments Inc.” Appeal Br. 2.
2 The record before us shows at least a Non-Final Action of December 4,
2017 and a Final Action of April 23, 2018.
Appeal 2020-004759
Application 15/479,122
2
CLAIMED SUBJECT MATTER
The claims “relate[] to traps for pre-concentrating a sample for use in
various chromatography techniques such as gas chromatography (GC)
and/or gas chromatography-mass spectrometry (GCMS).” Spec. ¶ 2. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. A first trap for pre-concentrating a sample before chemical
analysis, the first trap comprising a first primary capillary
column, a second primary capillary column, and a third primary
capillary column connected in series with increasing affinity,
wherein:
the first primary capillary column has an interior surface
coated by a first sorbent, the first primary capillary column
having a length between 0.2 and 5 meters, the first primary
capillary column with the first sorbent having a first affinity for
one or more compounds of the sample, wherein the first primary
capillary column having the interior surface coated by the first
sorbent is configured to adsorb one or more compounds while
the first primary capillary column has a temperature between 20
and 50 degrees Celsius;
the second primary capillary column has an interior
surface coated by a second sorbent, the second sorbent having a
higher affinity for the one or more compounds than an affinity
the first sorbent has for the one or more compounds, the second
primary capillary column having a length between 0.2 and 5
meters, the second primary capillary column with the second
sorbent having a second affinity for the one or more compounds
of the sample, the second affinity greater than the first affinity,
wherein the second primary capillary column having the interior
surface coated by the second sorbent is configured to adsorb one
or more compounds while the second primary capillary column
has a temperature between 20 and 50 degrees Celsius;
the third primary capillary column has an interior surface
coated by a third sorbent, the third sorbent having a higher
affinity for the one or more compounds than the affinity the
second sorbent has for the one or more compounds, the third
primary capillary column having a length between 0.2 and 5
meters, the third primary capillary column with the third sorbent
Appeal 2020-004759
Application 15/479,122
3
having a third affinity for the one or more compounds of the
sample, the third affinity greater than the second affinity,
wherein the second primary capillary column is coupled between
the first primary capillary column and the third primary capillary
column in series, wherein the third primary capillary column
having the interior surface coated by the third sorbent is
configured to adsorb one or more compounds while the third
primary capillary column has a temperature between 20 and 50
degrees Celsius; and
one or more valves configured to:
during an adsorption process during which the first
primary capillary column, the second primary capillary column
and the third primary capillary column are at an adsorption
temperature between 20 and 50 degrees Celsius, facilitate the
sample to flow through the first primary capillary column, the
second primary capillary column, and the third primary capillary
column in a first direction, the first direction being from the first
primary capillary column to the third primary capillary column,
and
during a desorption process, facilitate a desorption
gas to flow through the first primary capillary column, the second
primary capillary column, and the third primary capillary column
in a second direction, the second direction being from the third
primary capillary column to the first primary capillary column.

Claims Appendix (Appeal Br. 34–35).
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Klemp US 5,547,497 Aug. 20, 1996

REJECTION
Claims 1, 2, 4–7, 9–12, 19–22, and 24 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Klemp. Non-Final Act. 2.
Appeal 2020-004759
Application 15/479,122
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OPINION
The Examiner acknowledges that Klemp does not disclose a “first
primary capillary column having the interior surface coated by the first
sorbent is configured to adsorb one or more compounds while the first
primary capillary column has a temperature between 20 and 50 degrees
Celsius” as recited in claim 1. Non-Final Act. 4. Citing Klemp’s disclosure
that “[w]hile the above description constitutes the preferred embodiments of
the present invention, it will be appreciated that the invention is susceptible
of modification, variation and change without departing from the proper
scope and fair meaning of the accompanying claims,” the Examiner finds
that “[i]t is well known that the affinity of a compound to a capillary column
depends on the coating of the sorbent on the column and the temperature of
the sorbent.” Id. (citing Klemp 10:53–56); see also Ans. 10 (citing Klemp
10:53–56 and finding that “[i]t is well known that the affinity of a compound
to a capillary column depends on the coating of the sorbent on the column
and the temperature of the sorbent, and different compound of interest would
require different optimal temperature of the sorbent”).3 Based on this
disclosure of Klemp, the Examiner further finds that “it would have been

3 The Examiner also cites Klemp Figure 1 and 4:46–51 for the finding that
“Klemp teaches that the interior surface of the third primary capillary
column (15) is coated by a third sorbent that is configured to adsorb one or
more compounds while the third primary capillary column has a temperature
between 20 and 50 degrees.” Ans. 10. These portions of Klemp do not
mention the recited sorbent and the recited temperature range and therefore
do not support the Examiner’s findings. See Klemp Fig. 1, 4:46–51 (“A
second portion of the cold trap 12a-b may be referred to as a porous layer
open tubular (PLOT) trap 12b, comprising a PLOT column 15 which
effectuates trapping and focusing of lower boiling point compounds that are
not sufficiently trapped by and have traversed through capillary trap 12a.”).

Appeal 2020-004759
Application 15/479,122
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obvious to one of ordinary skill in the art to select the right sorbent and
suitable temperature of the sorbent for trapping the right compound of
interest.” Non-Final Act. 4.
To establish a prima facie case of obviousness, an examiner must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
“[T]he Examiner bears the burden of establishing a prima facie case of
obviousness based upon the prior art. ‘[The Examiner] can satisfy this
burden only by showing some objective teaching in the prior art or that
knowledge generally available to one of ordinary skill in the art would lead
that individual to combine the relevant teachings of the references.’” In re
Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992) (citations omitted).
In this case, the Examiner’s determination that a skilled artisan would
have chosen the sorbent at the corresponding temperature is not supported
by Klemp’s general statement regarding non-limiting embodiments. We
cannot sustain the rejection as the record before us does not show that each
and every limitation is taught or suggested by the prior art.4
CONCLUSION
The Examiner’s rejection is reversed.

4 We further note that the record does not show other limitations of claim 1
are taught or suggested by Klemp. For example, the Examiner acknowledges
that Klemp does not disclose the recited first, second, and third primary
capillary columns “having a length between 0.2 and 5 meters” as recited.
Non-Final Act. 4. The Examiner’s finding that “the adsorption of compound
depends on the length of the capillary column” lacks evidentiary support.
See id. The record does not reflect that the Examiner invokes official notice
for this finding.
Appeal 2020-004759
Application 15/479,122
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–7, 9–
12, 19–22,
24
103 Klemp 1, 2, 4–7, 9–
12, 19–22,
24

REVERSED