Ex Parte 6561767 et al

Patent Trial and Appeal Board

Sep 24, 2014

95001910 (P.T.A.B. Sep. 24, 2014)

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.
95/001,910 02/29/2012 6561767 1329-201 9039
13871 7590 09/25/2014
McCarter & English LLP / Waters
265 Franklin Street
Boston, MA 02110
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/25/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

AURORA SFC SYSTEMS, INC.,
1

Respondent, Requester

v.

WATERS TECHNOLOGIES CORPORATION,
Appellant, Patent Owner
________________

Appeal 2014-001750
Inter Partes Reexamination Control 95/001,910
Patent No. US 6,561,767 B2
2

Technology Center 3900
________________

Before STEVEN D.A. McCARTHY, JEFFREY B. ROBERTSON and
DANIEL S. SONG, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1
The Requester identifies the real party in interest as “Agilent
Technologies, Inc., successor-in-interest to Aurora SFC Systems, Inc.”
(“Respondents’ Brief” dated August 26, 2013, at 2; “Appellant’s Brief in
Inter Partes Reexamination” dated July 25, 2013, at 2 n.1).

2
Issued May 13, 2003 to Terry A. Berger; Kimber D. Fogelman; L.
Thompson Staats, III; Mark Nickerson; and Paul F. Bente, III (the “′767
patent”). The ′767 patent issued from Appl. 09/918,436, filed August 1,
2001.
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STATEMENT OF THE CASE 1
The Appellant/Patent Owner appeals from the Examiner’s decision 2
adopting rejections of claims 1-16. Independent claims 1 and 7 were 3
amended, and new claims 13-16 were added, during the reexamination 4
proceeding. (Appellant’s Brief in Inter Partes Reexamination dated July 25, 5
2013 (“Patent Owner’s Appeal Brief” or “App. Br. PO”) at 2). The Patent 6
Owner and the Requester participated in an oral argument on April 23, 2014. 7
We have jurisdiction over the Patent Owner’s appeal under 35 U.S.C. 8
§ 134(b) (2011) and 35 U.S.C. § 315(a) (2011).
3
9
We sustain at least one ground of rejection against each claim on 10
appeal. On this basis, we AFFIRM. See 37 C.F.R. § 41.77(a) (2011). 11
The Examiner’s findings and conclusions appear in the “Right of 12
Appeal Notice” mailed February 20, 2013 (“RAN”).
4
The Patent Owner 13
relies on the Patent Owner’s Appeal Brief and a “Rebuttal Brief” dated 14
October 25, 2013 (“Reb. Br. PO”). The Patent Owner also relies on a 15
“Declaration Pursuant to 37 C.F.R. § 1.132” executed by Dr. Lalit Chordia 16
on May 29, 2012 (“Chordia Decl.”). The Requester relies on a 17
“Respondent’s Brief” dated August 26, 2013 (“Resp. Br. Req’r”). The RAN 18
incorporates by reference portions of the “Request for Inter Partes 19
Reexamination of U.S. Patent No. 6,561,767” dated February 29, 2012 20

3
The Requester and the Patent Owner also are parties to a lawsuit in
Waters Technologies Corp. v. Aurora SFC Systems, Inc., et al., Civil Action
No. 11-708-RGA (D. Del.). As presently advised, the lawsuit is stayed
pending the resolution of this proceeding and of Reexamination Control No.
95/001,947. (App. Br. PO 2).

4
The Examiner’s Answer mailed September 25, 2013 incorporates the
RAN by reference.
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(“Request”) and the “Third Party Requester’s Comments to Patent Owner’s 1
Response of May 29, 2012, Pursuant to 37 C.F.R. § 1.947 (and Pursuant to 2
the Notice of July 6, 2012)” dated July 13, 2012 (“Req’r Comments”). 3
Only those arguments actually made by the Patent Owner have been 4
considered. Arguments that the Patent Owner could have made but chose 5
not to make have not been considered and are deemed to be waived. See 37 6
C.F.R. § 41.67(c)(1)(vii) (2011); In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 7
2011). 8
9
THE CLAIMED SUBJECT MATTER 10
The ′767 patent relates to chromatography. As described by Munk 11
′445 (US 4,032,445, issued June 28, 1977), a prior art reference cited by the 12
Requester: 13
Chromatography is a separation method wherein a 14
mixture of components (called the “sample” or 15
“sample mixture”) is placed as a zone at one end of 16
a system containing a stationary phase and a 17
mobile phase. Each component of the sample 18
distributes itself in dynamic equilibrium between 19
the two phases, in a ratio characteristic of that 20
component. As a result, the flowing mobile phase 21
causes each individual component zone to migrate 22
at a characteristic rate, and the zones become 23
separated after a period of time. . . . When the 24
method is used for chemical analysis, a detector is 25
often placed at the other end of the system, so as to 26
monitor the passage of the component zones as 27
they emerge from the system. 28
(Munk ′445, col. 1, ll. 1019 and 3033). The separation of the components 29
of the sample typically occurs in a separation column. 30
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The ′767 patent discusses embodiments designed to perform 1
supercritical fluid chromatography (“SFC”). In SFC, the mobile phase is 2
composed of a mixture of two fluid streams. One fluid stream includes a 3
highly compressed gas, a compressible liquid or a supercritical fluid. The 4
other fluid stream includes a relatively incompressible liquid. The ′767 5
patent suggests using a separate pump for delivering each of the two fluid 6
streams. (′767 patent, col. 1, ll. 1315). Because the properties of the two 7
fluid streams differ, accurate flow rates are required at the pump outlets to 8
provide a reproducible mixture of fluids in the mobile phase and accurate 9
results from the chromatographic analysis. (See, e.g., ′767, patent, col. 1, ll. 10
710 and 2534). 11
The written description portion of the ′767 patent discusses the 12
behavior of reciprocating pumps for use in SFC and in high performance 13
liquid chromatography (“HPLC”): 14
A reciprocating pump has an inlet and outlet check 15
valve. During a fill stroke, the outlet check valve 16
closes, isolating the pump from the high pressure 17
in the downstream [separation] column (Pcol). The 18
pressure from a filling cylinder of source fluid, 19
such as compressed CO2 (Pcyl) forces open the inlet 20
check valve and fills the pump chamber. After the 21
pump is filled at Pcyl, the piston reverses direction, 22
compressing the fluid in the pump until Ppump>Pcyl, 23
which closes the inlet valve. On the compression 24
stroke, the piston moves rapidly until Ppump>Pcol[,] 25
at which point the outlet valve opens and the fluid 26
moves downstream of the pump . . . . The distance 27
the piston must travel just to compress the fluid to 28
Pcol is calculated based on the known volume of 29
the components and a characteristic of the fluid 30
being pumped, called the compressibility factor Z. 31
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With the correct Z, a pump can be controlled to 1
nearly eliminate flow or pressure ripple. 2
(′767 patent, col. 1, l. 63 – col. 2, l. 16). The Patent Owner’s Declarant, Dr. 3
Lalit Chordia (“Dr. Chordia”), declares that: 4
At or near SFC conditions, the first flow stream 5
[that is, the flow stream including a highly 6
compressed gas, a compressible liquid or a 7
supercritical fluid] experiences large changes in Z 8
(i.e., compressibility factor) over small fluctuations 9
in pressure as compared to the second flow stream 10
of relatively incompressible fluid. 11
(Chordia Decl., para. 17). 12
In the case of a reciprocating pump, “compressibility compensation” 13
is a correction to the length of the piston stroke to assure the delivery of a 14
controllable flow rate despite changes in the compression of the fluid. (See 15
′767 patent, col. 2, ll. 3133). To compensate for flow or pressure ripples 16
due to over-compression or under-compression of the pumped fluid, “the 17
more expensive and better liquid chromatography pumps have 18
compressibility adjustments to account for differences in fluid 19
characteristics. High-pressure SFC pumps have an extended compressibility 20
range and the ability to dynamically change the compression compensation.” 21
(′767 patent, col. 2, ll. 2329). 22
The ′767 patent teaches placing a back pressure regulator just 23
downstream of the pump in an SFC system to maintain a constant pressure at 24
the pump outlet greater than either the pressure at the pump inlet or the 25
pressure at any point in the downstream gradient of the SFC system. (′767 26
patent, col. 3, ll. 5861 and col. 5, ll. 3437). As Dr. Chordia declares, the 27
“inventors discovered that by controlling the pressure for the first flow 28
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stream, they could limit the range of Z and thereby provide a controlled flow 1
rate in an unmodified HPLC pump.” (Chordia Decl., para. 17). The ′767 2
patent teaches that, “[b]ecause the pressure on the pump outlet is constant 3
due to the back-pressure regulator 30, the same compressibility 4
compensation is performed regardless of the flow. The flow may vary from 5
the pump and the speed of the pump may change, but the pressure on the 6
outlet of the pump remains constant. Therefore, a different compressibility 7
compensation scheme is not required when the flow rate changes.” (′767 8
patent, col. 6, ll. 2632). 9
Claims 1, 7 and 13 are independent method claims. Claim 1 is 10
illustrative: 11
1. A method for converting a pump for 12
use in a combined flow stream containing a 13
mixture of highly compressed gas, compressible 14
liquid or supercritical fluid; and a relatively 15
incompressible liquid, comprising: 16
controlling pressure of a first flow stream 17
containing a highly compressed gas, compressible 18
liquid, or supercritical fluid, by maintaining an 19
elevated pressure rate after said outlet of said 20
pump but prior to joining a second flow stream of 21
a relatively incompressible liquid; and 22
pumping of said first flow stream consisting 23
of a pure fluid resulting in delivery of a 24
controllable flow rate of said first flow stream at a 25
constant compressibility compensation without the 26
need for dynamically compensating said pump for 27
compressibility changes in said first flow stream. 28
(App. Br. PO at 36 (Claims App’x)). 29
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GROUNDS OF REJECTION ADOPTED BY THE EXAMINER 1
The Patent Owner separately argues the following grounds of 2
rejection adopted by the Examiner in the RAN: 3
claims 1, 2, 5 and 6 under 35 U.S.C. § 102(b) (2011) as 4
being anticipated by Munk ′018 (US 4,942,018, issued July 17, 5
1990) (see RAN 58; App. Br. PO 1920); 6
claims 1 and 46 under §102(b) as being anticipated by 7
Allington (US 4,882,063, issued Nov. 21, 1989) (see RAN 8
1620; App. Br. PO 2324); 9
claims 7, 8, 11 and 13 under § 103(a) as being 10
unpatentable over Munk ′445 and Klesper (E. Klesper and W. 11
Hartmann, Apparatus and Separations in Supercritical Fluid 12
Chromatography, 14 EUROPEAN POLYMER J. 77-88 (Pergamon 13
Press 1978)) (see RAN 2530; App. Br. PO 2527); 14
claims 7, 8, 11 and 13 under § 102(b) as being 15
anticipated by Klesper (see RAN 3235; App. Br. PO 2830); 16
and 17
claims 15 and 16 under § 103(a) as being unpatentable 18
over Klesper and Admitted Prior Art I appearing at column 1, 19
lines 1013 and column 1, line 67 through column 2, line 2 of 20
the ′767 patent (see RAN 3839; Req’r Comments 41; App. Br. 21
PO 32). 22
We sustain the first three grounds of rejection. As to these three grounds of 23
rejection, we designate the independent claims as representative. See 37 24
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C.F.R. § 41.67(c)(1)(vii) (2011). We do not sustain the last two grounds of 1
rejection principally based on Klesper. 2
The Examiner also adopts the following additional grounds of 3
rejection under § 103(a): 4
claim 3 under 35 U.S.C. §103(a) (2011) as being 5
unpatentable over Munk ′018 and Bump (US 5,944,048, issued 6
Aug. 13, 1999) (see RAN 9); 7
claims 4 and 14 under § 103(a) as being unpatentable 8
over Munk ′018 and Admitted Prior Art II appearing at column 9
1, lines 1320 and Figure 1 of the ′767 patent (see RAN 910; 10
Request 27); 11
claims 7, 8, 10, 11 and 13 under §103(a) as being 12
unpatentable over Munk ′018 and Klesper (RAN 1013); 13
claim 9 under §103(a) as being unpatentable over Munk 14
′018, Klesper and Admitted Prior Art II (see RAN 1315; 15
Request 35 (“claim 9 corresponds to claim 4”)); 16
claim 12 under §103(a) as being unpatentable over Munk 17
′018, Klesper and Bump (see RAN 16); 18
claims 15 and 16 under §103(a) as being unpatentable 19
over Munk ′018, Klesper and Admitted Prior Art I (see RAN 20
1315; Req’r Comments 42); 21
claims 79, 11 and 13 under § 103(a) as being 22
unpatentable over Allington , Klesper and Admitted Prior Art 23
III appearing at column 1, lines 4752 and column 7, lines 24
510 of the ′767 patent (see RAN 20-24; Request 50); 25
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claim 12 under § 103(a) as being unpatentable over 1
Allington, Klesper, Admitted Prior Art III and Bump (see RAN 2
25); 3
claims 15 and 16 under § 103(a) as being unpatentable 4
over Allington, Klesper and Admitted Prior Art III (see RAN 5
2024; Req’r Comments 43); 6
claims 15 and 16 under § 103(a) as being unpatentable 7
over Munk ′445, Klesper and Admitted Prior Art I (see RAN 8
3032; Req’r Comments 44); 9
claims 7, 9 and 13 under § 103(a) as being unpatentable 10
over Klesper (see RAN 3537); and 11
claim 12 under § 103(a) as being unpatentable over 12
Klesper and Bump (see RAN 37). 13
The Patent Owner argues only that the secondary references cited in these 14
grounds of rejection fail to remedy deficiencies in the primary references as 15
applied to the independent claims from which the rejected claims ultimately 16
depend. (See App. Br. 2031).

We sustain the first ten of these grounds of 17
rejection. We do not sustain the last two grounds of rejection principally 18
based on Klesper. 19
The Examiner rejects new claims 13 and 16 under 35 U.S.C. § 314(a) 20
(2011) as enlarging the scope of the claims of the ′767 patent. (RAN 39). 21
Because we sustain grounds of rejection of each claim on appeal under 22
§ 102(b) or § 103(a), we need not reach this ground of rejection. See 37 23
C.F.R. § 41.77(a). 24
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ISSUE 1
"Both anticipation under § 102 and obviousness under § 103 are two-2
step inquiries. The first step in both analyses is a proper construction of the 3
claims. . . . The second step in the analyses requires a comparison of the 4
properly construed claim to the prior art." Medichem, S.A. v. Rolabo, S.L., 5
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted). Anticipating 6
or primary references Munk ′018, Allington and Munk ′445 describe 7
chromatography systems using syringe pumps for pumping a flow stream 8
containing a highly compressed gas, compressible liquid, or supercritical 9
fluid against a constant, elevated pressure. (See Munk ′018, col. 2, ll. 1–19; 10
Allington, col. 3, l. 66 – col. 4, l. 3; Munk ‘445, col. 2, ll. 9–19). The 11
primary issue in this appeal turns on whether the step of “pumping of [a] 12
first flow stream . . . resulting in delivery of a controllable flow rate of said 13
first flow stream at a constant compressibility compensation without the 14
need for dynamically compensating said pump for compressibility changes 15
in said first flow stream” is sufficiently broad to encompass pumping of the 16
first flow stream against an elevated pressure using a syringe pump lacking a 17
compressibility compensation adjustment mechanism. (See, e.g., App. Br. 18
PO 617; Reb. Br. PO 211). 19
20
CLAIM INTERPRETATION 21
The Examiner correctly concludes that: 22
The [P]atent [O]wner’s arguments that the prior art 23
pump lacks a [constant compressibility 24
compensation] “adjustment mechanism” capable 25
of compensating for a known Z (compressibility) 26
factor is inconsistent with the [′767] patent’s 27
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disclosure, which teaches that the invention is 1
specifically designed to avoid the use of pumps 2
with variable compression adjustment mechanisms 3
and also teaches that knowledge of the Z factor is 4
not required to implement the invention, i.e., the 5
patent’s disclosure and claims do not require an 6
“adjustment mechanism” capable of compensating 7
for a known Z factor but rather define the claimed 8
pump as not including an “adjustment 9
mechanism.” 10
(RAN 6, citing Req’r Comments 215 and 2324). The Examiner also 11
correctly concludes that the disclosure of the ′767 patent “states that the 12
pump can run with no compressibility compensation and, therefore, the 13
disclosure qualifies a syringe pump, i.e., a pump without compression 14
compensation, as a pump suitable for use in the claimed process which 15
results in operation under [constant compressibility compensation].” (RAN 16
56). 17
Claims under reexamination are to be given their broadest reasonable 18
interpretation. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984). 19
Two canons of claim construction lay out the general relationship between 20
the claims and the written description of a patent: “(a) one may not read a 21
limitation into a claim from the written description, but (b) one may look to 22
the written description to define a term already in a claim limitation, for a 23
claim must be read on view of the specification of which it is a part.” 24
Renishaw PLC v. Marposs SpA, 158 F.3d 1243, 1248 (Fed. Cir. 1998). 25
Extrinsic evidence, such as the declarations of experts, should not be used to 26
introduce limitations into a claim beyond those limitations required by the 27
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claim language read in the context of the specification. See Phillips v. AWH 1
Corp., 415 F.3d 1303, 131819 (Fed. Cir. 2005)(en banc). 2
Each independent claims recites the step of “pumping of said first 3
flow stream . . . resulting in delivery of a controllable flow rate of said first 4
flow stream at a constant compressibility compensation without the need for 5
dynamically compensating said pump for compressibility changes in said 6
first flow stream.” (Italics added for emphasis.) The claim language itself 7
permits two observations to be made. First, the claim language contrasts 8
“delivery of a controllable flow rate of said first flow stream at a constant 9
compressibility compensation” with a “need for dynamically compensating 10
said pump for compressibility changes in said first flow stream.” This 11
contrast implies that delivery “at constant compressibility compensation” 12
does not require a dynamic compressibility compensation adjustment 13
mechanism. Second, the claim language identifies “delivery of a 14
controllable flow rate of said first flow stream at a constant compressibility 15
compensation” as resulting from the pumping of the fluid, either against a 16
back pressure as recited in claims 7 and 13, or in the presence of a back 17
pressure maintained in a previous method step upstream of the pump outlet 18
as recited in claim 1. 19
At least in the case of a reciprocating pump, “compressibility 20
compensation” is a correction to the length of the piston stroke to assure the 21
delivery of a controllable flow rate despite changes in the compression of the 22
fluid. (See ′767 patent, col. 2, ll. 3133). This correction is calculated based 23
on the known volume of the fluid component in the pump and the 24
compressibility factor Z of the component. (See ′767 patent, col. 2, ll. 25
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1014). The effect of maintaining an elevated back pressure at the pump 1
outlet is to limit the range of values of the compressibility factor Z, 2
potentially limiting it to a constant value. (See Chordia Decl., para. 17). 3
This is particularly true where pump inlet pressure and fluid temperature 4
also are controlled. (See ′767 patent, col. 4, ll. 13). If the compressibility 5
factor is held constant or substantially constant by the back pressure at the 6
pump outlet, any correction to the stroke will depend on the known volume 7
of the fluid component alone. In the Examiner’s words, the delivery of a 8
controllable flow rate at constant compressibility compensation “is merely 9
the result of placing a back pressure regulator downstream of a pump to 10
create an unchanging compression.” (RAN 6). A variable compressibility 11
compensation adjustment device will deliver a controllable flow rate at a 12
constant compressibility compensation because the compressibility factor 13
will be substantially constant. 14
By way of background, “[s]yringe-type pumps generally consist of a 15
cylinder that holds the mobile phase [or a component of the mobile phase] 16
which is expelled by a piston.” Y. Kazekevich, HPLC_Book, https://hplc 17
.chem.shu.edu/NEW/HPLC_Book/Instrumentation/pmp_syrg.html (last 18
visited September 22, 2014). A syringe pump acting against a constant, 19
elevated back pressure will perform the step of pumping a flow stream 20
substantially identically to a reciprocal pump having a compressibility 21
compensation adjustment mechanism acting against a constant, elevated 22
back pressure. In both cases, the compression of the fluid in the pump will 23
be set by the back pressure. The stroke length of the piston pumping the 24
flow stream will not change due to changes in the compression, because 25
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there will be no changes in the compression. In other words, the use of a 1
syringe pump to pump the first flow stream either against a back pressure as 2
recited in claims 7 and 13; or in the presence of a back pressure maintained 3
in a previous method step upstream of the pump outlet as recited in claim 1, 4
will result in “delivery of a controllable flow rate of said first flow stream at 5
a constant compressibility compensation.” 6
The testimony of the Patent Owner’s Declarant, Dr. Chordia, is not 7
persuasive that the phrase “at constant compressibility compensation” had a 8
different ordinary or customary meaning in the pertinent art. Dr. Chordia’s 9
description of the claimed subject matter addresses only the avoidance of 10
dynamic compressibility compensation. (See, e.g., Chordia Decl., paras. 16 11
and 17). The testimony that syringe pumps are not designed to be capable of 12
providing “constant compressibility compensation” because syringe pumps 13
“do not have reciprocating check valves nor the software/hardware needed 14
to compress fluid based on a known volume of components and Z” (Chordia 15
Decl., para. 2224; see also id., paras. 19, 20, 23 and 24) appears to conflate 16
“constant compressibility compensation” with dynamic compressibility 17
compensation, in which changes in the compressibility factor Z require 18
recalculation of the stroke length in order to control the flow rate.
5
Nowhere 19
does Dr. Chordia provide any citation to any evidence which might 20

5
Likewise, Dr. Chordia’s testimony that the syringe pump described in
Allington “cannot be changed based on a compressibility factor Z” (Chordia
Decl., para. 27) appears to address whether the syringe pump is capable of
dynamic compressibility compensation rather whether the use of the pump
to pump a flow stream against an elevated pressure would result in delivery
of a controllable flow at constant compressibility compensation.

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demonstrate a specialized meaning inconsistent with the Examiner’s 1
interpretation. 2
The interpretation of the phrase “at constant compressibility 3
compensation” as encompassing pumps lacking compressibility 4
compensation adjustment mechanisms is consistent with the Specification. 5
For example, the ′767 patent teaches that “[t]he present invention does not 6
require knowledge of the compressibility constant;” that the “pump can run 7
at different flowrates in an open loop with no compressibility 8
compensation;” and that “[t]he present invention does not require the 9
calculation of how far to move the pumping pistons or how far to move the 10
intake strokes.” (′767 patent, col. 5, l. 66 – col. 6, l. 13 (italics added for 11
emphasis)). Each of these passages implies that the pumping step of the 12
“present invention” (that is, the pumping step recited in claims 1, 7 and 13) 13
may be performed by a pump lacking a compressibility compensation 14
adjustment mechanism and without any ability to calculate a dynamic 15
adjustment to the manner in which the first flow stream is pumped based on 16
the compressibility factor Z. 17
The ′767 patent also teaches that: 18
An exemplary embodiment of the present 19
invention could use a relatively inexpensive pump 20
to deliver reproducible and controllable flow, 21
without the close monitoring and adjustment 22
typically required for SFC. Various types of 23
pumps are also capable of delivering the flow, 24
such as reciprocating, duel-piston, diaphragm and 25
screw pumps. 26
(′767 patent, col. 6, ll. 20-25). Reciprocating pumps are but one type of 27
pump mentioned as being suitable for the invention. The Requester 28
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correctly points out (see Resp. Br. Req’r 8 and 12), and the Patent Owner 1
does not appear to deny, that at least diaphragm pumps and screw pumps 2
lack compressibility compensation adjustment mechanisms. Once again, 3
this passage implies that the independent claims of the ′767 patent are 4
sufficiently broad to encompass pumping of a first flow stream by means of 5
a pump lacking a compressibility compensation adjustment mechanism.
6
6
The Patent Owner argues that the Examiner’s interpretation of the 7
phrase “delivery of a controllable flow rate of said first flow stream at a 8
constant compressibility compensation” as used in claims 1, 7 and 13 results 9
from a misunderstanding of the problem addressed by the claimed subject 10
matter. (See App. Br. PO 8). The ′767 patent identifies the problem 11
addressed by the “present invention” as being “how to accomplish accurate 12
composition of the flow stream [that is, the mobile phase] and steady flow 13
rates while avoiding variable compression compensation adjustments to a 14
flow pump that is delivering a highly compressible fluid, such as carbon 15
dioxide, to a supercritical fluid chromatography class of system.” (′767 16
patent, col. 3, ll. 21-26; see also id., Abstract). The patent also teaches that 17
the “result of the invention is controllable flow of a compressible fluid 18
delivered downstream of the [back-pressure] regulator to the mobile phase 19
and into the SFC column without performing dynamic compression 20
compensation or other types of compensations for leaks and ripples in flow 21
on the pump.” (′767 patent, col. 3, ll. 37-42). Although each passage speaks 22

6
The Patent Owner argues on page 13 of the Appeal Brief that, “if one
tried to pump a density controlled flow stream of a compressible fluid, such
as CO2, with a pump that has no compressibility compensation, a
controllable flow could not be achieved.” This argument is belied by the
teaching reproduced above from column 6, lines 20-25, of the ′767 patent.
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of avoiding a need for variable or dynamic compressibility compensation, 1
neither passage expresses a need for a compressibility compensation 2
adjustment mechanism of any sort. The Patent Owner has not shown that 3
the Examiner’s interpretation of claims 1, 7 and 13 reflects a 4
misunderstanding of the problem addressed by the claimed subject matter. 5
The one mention of “constant compressibility compensation” in the 6
′767 patent outside the claims appears at column 3, lines 17-20. The usage 7
does not contradict the conclusion that the phrase “at constant 8
compressibility compensation” encompasses pumps having limited or no 9
capacity for compressibility compensation and no ability to dynamically 10
compensate for compressibility changes. More specifically, the usage does 11
not exclude converting a pump having no compressibility compensation 12
adjustment mechanism for use in gradient elution SFC. Likewise, the ′767 13
patent teaches that the “method of the present invention permits unmodified 14
HPLC pumps to deliver accurate flow composition under isocratic 15
conditions, despite having limited compressibility compensation ranges and 16
no ability to dynamically compensate for compressibility changes.” (′767 17
patent, col. 5, ll. 11-15). This teaching does not exclude the possibility that 18
the “method of the present invention” might also permit diaphragm pumps 19
or screw pumps as described in column 6, lines 23-25, of the ′767 patent, as 20
well as other pumps lacking compressibility compensation adjustment 21
mechanisms to deliver accurate flow composition. Despite the Patent 22
Owner’s argument that these passages imply claims 1, 7 and 13 are limited 23
to pumping using pumps having compressibility compensation adjustment 24
mechanisms (see, e.g., App. Br. PO 8; Reply Br. PO 5-6 and 9-10), the 25
language of the claims is broad. 26
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The Examiner, the Requester and the Patent Owner appear to agree, at 1
least for purposes of this appeal, that a syringe pump has no compressibility 2
compensation adjustment mechanism. Nevertheless, the use of a syringe 3
pump to pump a first flow stream either against a back pressure as recited in 4
claims 7 and 13; or in the presence of a back pressure maintained in a 5
previous method step upstream of the pump outlet as recited in claim 1, will 6
result in “delivery of a controllable flow rate of said first flow stream at a 7
constant compressibility compensation without the need for dynamically 8
compensating said pump for compressibility changes in said first flow 9
stream.” 10
11
COMPARISON OF THE PRIOR ART TO THE CLAIMED SUBJECT 12
MATTER 13
Rejections of claims 1, 2, 5 and 6 under § 102(b) as being anticipated by 14
Munk ′018; claim 3 under §103(a) as being unpatentable over Munk ′018 15
and Bump; claims 4 and 14 under § 103(a) as being unpatentable over 16
Munk ′018 and Admitted Prior Art II; claims 7, 8, 10, 11 and 13 under 17
§103(a) as being unpatentable over Munk ′018 and Klesper; claim 9 under 18
§103(a) as being unpatentable over Munk ′018, Klesper and Admitted Prior 19
Art II; claim 12 under §103(a) as being unpatentable over Munk ′018, 20
Klesper and Bump; and claims 15 and 16 under §103(a) as being 21
unpatentable over Munk ′018, Klesper and Admitted Prior Art I 22
Rejections of claims 1 and 46 under §102(b) as being anticipated by 23
Allington; claims 79, 11 and 13 under § 103(a) as being unpatentable over 24
Allington , Klesper and Admitted Prior Art III; claim 12 under § 103(a) as 25
being unpatentable over Allington, Klesper, Admitted Prior Art III and 26
Bump; and claims 15 and 16 under § 103(a) as being unpatentable over 27
Allington, Klesper and Admitted Prior Art III 28
Rejections of claims 7, 8, 11 and 13 under § 103(a) as being unpatentable 29
over Munk ′445 and Klesper; and claims 15 and 16 under § 103(a) as being 30
unpatentable over Munk ′445, Klesper and Admitted Prior Art I 31
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The Examiner rejects independent claim 1 under § 102(b) as being 1
anticipated by Munk ′018. (See RAN 5; Request 1822). Munk ′018 2
describes a chromatography system using a mobile phase formed by mixing 3
flow streams from two or more syringe pumps. Munk ′018 teaches 4
attenuating an oscillating mode resulting from differences in the viscosity 5
and compressibility of the two flow streams by placing individual back 6
pressure regulating valves at the outlet of each syringe pump. (See Munk 7
′018, col. 2, ll. 119). 8
The Examiner also rejects independent claim 1 under § 102(b) as 9
being anticipated by Allington. (See RAN 1620; Request 37-41). 10
Allington describes a chromatographic system 10 including first and second 11
single-stroke syringe pumps 16, 18. (Allington, col. 3, l. 66 – col. 4, l. 3).
7
12
The first and second syringe pumps 16, 18 pump first and second flow 13
streams against back pressure applied by a spring-loaded poppet 80 and an 14
O-ring 84. (Allington, col. 6, ll. 4062 and col. 16, ll. 6367). The Patent 15
Owner’s sole argument is that Allington does not anticipate claim 1 because 16
Allington, like Munk ′018, describes the use of syringe pumps; and the 17
Examiner, the Requester and the Patent Owner agree that syringe pumps do 18
not have compressibility compensation adjustment mechanisms. 19
The Examiner additionally rejects independent claims 7 and 13 under 20
§ 103(a) as being unpatentable over Munk ′445 and Klesper. (See RAN 21

7
We address Allington’s pumps 16, 18 as they have been characterized
by the parties in their briefs. Nevertheless, we note that Allington teaches
replacing the syringe pumps with reciprocating pumps for SFC operation.
(See Allington, col. 10, ll. 42-46; Lefferson (US 3,985,467, issued Oct. 12,
1976) at col. 1, ll. 61-62).
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2530). Claim 7 recites a method including the step of “pumping of [a] first 1
flow stream . . . against an elevated pressure rate resulting in delivery of a 2
controllable flow rate of said first flow stream at a constant compressibility 3
compensation without the need for dynamically compensating said pump for 4
compressibility changes in said first flow stream.” (App. Br. PO 37 (Claims 5
App’x)). Munk ′445 describes a liquid chromatographic system 10 6
including first and second reservoirs 12, 14 containing different solvents 16, 7
18 as well as first and second pistons 20, 22 for displacing the solvents 16, 8
18 in the reservoirs 12, 14. (Munk ′445, col. 4, ll. 32– 42). This description 9
is consistent with the use of syringe pumps for pumping the solvents 16, 18.
8
10
Munk ′445 teaches incorporating a manually operated back pressure 11
regulating valve 50 into the system 10 to address problems deriving from 12
failure to account for the differing compressibilities of the solvents. (See 13
Munk ′445, col. 6, ll. 60-63; see also id, col. 2, ll. 20-38 and col. 4, l. 67  14
col. 5, l. 1). 15
The Patent Owner’s sole argument with respect to each of these 16
grounds of rejection is that Munk ′018; Allington; and Munk ′445 teach the 17
use of syringe pumps; the Examiner, the Requester and the Patent Owner 18
agree that syringe pumps do not have compressibility compensation 19
adjustment mechanisms; and, in the rejection of claims 7 and 13 under 20

8
The Examiner and the Requester appear to characterize the pumps as
syringe pumps for purposes of this appeal. (See, e.g., RAN 2528).
Nevertheless, we note that the Requester characterized the pumps as
reciprocating pumps in the Request based on the recitations of claim 5 of
Munk ′445. (See Request 57, citing Munk ′445, col. 9, ll. 3-6).
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§ 103(a), that this constitutes a deficiency in the teachings of Munk ′445 1
which Klesper fails to remedy. (See App. Br. 1920, 2324 and 2527). 2
Nevertheless, for the reasons discussed above, syringe pumps are capable of 3
“pumping of [a] first flow stream . . . against [a constant,] elevated pressure 4
rate resulting in delivery of a controllable flow rate of said first flow stream 5
at a constant compressibility compensation without the need for dynamically 6
compensating said pump for compressibility changes in said first flow 7
stream.” Therefore, seeing no deficiency in the disclosures of Munk ′018, 8
Allington and Munk ′445, we sustain the rejection of claims 1, 2, 5 and 6 9
under § 102(b) as being anticipated by Munk ′018; the rejection of claims 1 10
and 46 under §102(b) as being anticipated by Allington; and the rejection 11
of claims 7, 8, 11 and 13 under § 103(a) as being unpatentable over Munk 12
′445 and Klesper. 13
The Patent Owner argues the rejections under §103(a) of claim 3 as 14
being unpatentable over Munk ′018 and Bump; claims 4 and 14 as being 15
unpatentable over Munk ′018 and Admitted Prior Art II; claims 7, 8, 10, 11 16
and 13 as being unpatentable over Munk ′018 and Klesper; and claim 9 as 17
being unpatentable over Munk ′018, Klesper and Admitted Prior Art II, 18
solely on the basis that the teachings of the secondary references fail to 19
remedy deficiencies in the teachings of Munk ′018 as applied to claim 1. 20
(See App. Br. PO 2022). The Patent Owner likewise argues the rejections 21
under § 103(a) of claims 79, 11 and 13 as being unpatentable over 22
Allington, Klesper and Admitted Prior Art III; claim 12 as being 23
unpatentable over Allington, Klesper, Admitted Prior Art III and Bump; and 24
claims 15 and 16 as being unpatentable over Allington, Klesper and 25
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Admitted Prior Art III, solely on the basis that the teachings of the secondary 1
references fail to remedy deficiencies in the teachings of Allington as 2
applied to claim 1. (See App. Br. PO 2425). The Patent Owner argues the 3
rejection of claims 15 and 16 under § 103(a) as being unpatentable over 4
Munk ′445, Klesper and Admitted Prior Art I solely on the basis that the 5
teachings of the secondary references fail to remedy deficiencies in the 6
teachings of Munk ′018 as applied to claim 1. (See App. Br. PO 2728). 7
Seeing no such deficiencies, we sustain these grounds of rejection. 8
9
Rejection of claims 7, 8, 11 and 13 under § 102(b) as being anticipated by 10
Klesper 11
The Examiner rejects independent claims 7 and 13 under 12
§ 102(b) as being anticipated by Klesper (see RAN 3235). Klesper 13
describes a chromatography system having two solvent supply systems 1. 14
Each of the two solvents is fed through a double-headed membrane pump 2. 15
(Klesper 78). Figure 1 of page 78 of Klesper depicts a second, single-16
headed membrane pump 17 connected in parallel with one head of the 17
double headed membrane pump 2 to raise the pressure up to 3000 bars. 18
Page 100 of the Request argues that “Klesper teaches that a second pump in 19
the compressible or supercritical fluid flow stream . . . can elevate the 20
pressure in the flow stream prior to mixing with a second relatively 21
incompressible solvent flow stream.” In other words, the Request appears to 22
argue that the second pump maintains an elevated pressure at the outlet of 23
the double-headed membrane pump so that the pumping of a flowstream by 24
one head of the double-headed membrane pump results in “delivery of a 25
controllable flow rate of said first flow stream at a constant compressibility 26
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compensation without the need for dynamically compensating said pump for 1
compressibility changes in said first flow stream.” The Examiner 2
incorporates this argument by reference into the RAN. (See RAN 32). 3
Dr. Chordia declares that “Klesper fails to teach or disclose any 4
control over either [solvent flow] stream. We know the methods fail to 5
provide controlled flow rates, because a dampening [sic] coil is required to 6
remove turbulence in the mixed n-pentane stream.” (Chordia Decl., para. 7
28, citing Klesper 78). This testimony is uncontested and persuasive. (See 8
generally Resp. Br. Req’r 23-24). The arguments of counsel appearing at 9
page 38 of the Comments are not supported by persuasive evidence. We do 10
not sustain the rejection of claims 7, 8, 11 and 13 under § 102(b) as being 11
anticipated by Klesper. 12
13
Rejections of claims 15 and 16 under § 103(a) as being unpatentable over 14
Klesper and Admitted Prior Art I; claims 7, 9 and 13 under § 103(a) as 15
being unpatentable over Klesper; and claim 12 under § 103(a) as being 16
unpatentable over Klesper and Bump 17
The Examiner also rejects independent claims 7 and 13 under § 103(a) 18
as being unpatentable over Klesper. Klesper’s chromatographic apparatus 19
includes an oven 3 downstream of the mixing of the two solvent flow 20
streams for heating the mobile phase to supercritical temperature. The oven 21
includes a buffering coil h “to act as a buffering volume for smoothing the 22
pressure fluctuations of the pumps.” (Klesper 78). A metering valve c 23
controlled by an electric feedback loop 12 lies immediately downstream of 24
the buffering coil h. The combination of the buffering coil h, the metering 25
valve c and the electronic feedback loop 12 maintains a constant back 26
pressure. Klesper teaches that the combination of the buffering coil h and 27
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the metering valve c “usually suffices already at room temperature for 1
depulsification without taking recourse to the more easily compressible 2
supercritical state.” (Id.) 3
The Requester argues that it would have been obvious to move the 4
buffering coil h and the metering valve c upstream of the mixing of the two 5
solvent flow streams, either as a matter of “design variation” (that is, design 6
choice) or as a predictable use of a known technique for improving a similar 7
chromatography apparatus. (Request 10102; Req’r Comments 39-40). 8
The Examiner incorporates this argument by reference into the RAN. (See 9
RAN 35). 10
Dr. Chordia declares that the “location of the damping coil in 11
Klesper’s apparatus is important to Klesper’s proper operation. If the 12
damping coil is moved to a location upstream of mixing, on one of the two 13
flow streams, it would not provide depulsification of the combined flow 14
streams as required.” (Chordia Decl., para. 29, citing Klesper 78). This 15
testimony is uncontested and persuasive. In view of Dr. Chordia’s 16
testimony, the proposed positioning of the buffering coil h and the metering 17
valve c upstream of the mixing of the two solvent flow streams would not 18
have been be a matter of mere “design variation.” Neither has the Examiner 19
or the Requester shown that the positioning of the buffering coil h and the 20
metering valve c upstream of the mixing of the two solvent flow streams was 21
a known technique for improving a chromatography apparatus. We do not 22
sustain the rejection of claims 7, 9 and 13 under § 103(a) as being 23
unpatentable over Klesper. 24
With regard to the rejection of claim 12 under § 103(a) as being 25
unpatentable over Klesper and Bump, the Requester appears to cite Bump as 26
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teaching the step of determining the mass flow rate of a flow stream by 1
means of a mass flow instrument. (See Request 94 (discussing a proposed 2
but non-adopted rejection of claim 3)). With regard to the rejection of 3
claims 15 and 16 under § 103(a) as being unpatentable over Klesper and 4
Admitted Prior Art I, the Requester appears to cite Admitted Prior Art I to 5
show the application of a chromatography system to SFC. (See Req’r 6
Comments 41). In neither case do the cited teachings of the secondary 7
reference remedy the deficiencies in the teachings of Klesper as applied to 8
parent claim 7 or 13. We do not sustain these rejections, either. 9
10
DECISION 11
We AFFIRM the Examiner’s decision rejecting claims 1-16. 12
Requests for extensions of time in this inter partes reexamination 13
proceeding are governed by 37 C.F.R. § 1.956 (2011). 14
In the event neither party files a request for rehearing within the time 15
provided in 37 C.F.R. § 41.79, and this decision becomes final and 16
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must 17
timely serve notice on the Director of the United States Patent and 18
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. 19
20
AFFIRMED 21
22

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ack
Patent Owner:

MCCARTER & ENGLISH LLP / WATERS
265 FRANKLIN STREET
BOSTON, MA 02110

Third Party Requester:

LIEBERMAN & BRANDSDORFER, LLC
802 STILL CREEK LANE
GAITHERSBURG, MD 20878