Entech Instruments Inc.Download PDFPatent Trials and Appeals BoardMar 19, 20212020004759 (P.T.A.B. Mar. 19, 2021) Copy Citation 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 4 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 5 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 6 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 Copy with citationCopy as parenthetical citation