90013822 (P.T.A.B. Aug. 29, 2018)

Ex Parte 6648609 et al

Patent Trial and Appeal BoardAug 29, 2018

90013822 (P.T.A.B. Aug. 29, 2018)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 90/013,822 09/29/2016 6648609 AGI01.001 1100 13871 7590 08/29/2018 WOMBLE BOND DICKINSON (US) LLP / Waters ATTN: IP DOCKETING P.O. BOX 7037 ATLANTA, GA 30357-0037 EXAMINER KAUFMAN, JOSEPH A ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 08/29/2018 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 ____________________ Ex parte THAR INSTRUMENTS, INC. ____________________ Appeal 2018-004777 Reexamination Control 90/013,822 Patent US 6,648,609 B21 Technology Center 3900 ____________________ Before JOHN C. KERINS, JEFFREY B. ROBERTSON, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Patent Owner2 appeals under 35 U.S.C. § 134 of the Examiner’s rejection of claims 3, 12, and 13. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Issued to Berger et al. on Nov. 18, 2003. 2 The real party in interest as Patent Owner is Waters Technologies Corporation. (Patent Owner’s Brief 2) Appeal 2018-004777 Reexamination Control 90/013,822 Patent US 6,648,609 B2 2 THE INVENTION Appellant’s claims are directed generally to a “device and method for using a pump as a pressure source, instead of a flow source, in a high- pressure chromatography system, such as a supercritical fluid chromatography. Spec. col. 1, ll. 9-12. Claim 3, reproduced below, is illustrative of the claimed subject matter: 3. A system for using a pump as pressure source in a flow stream containing a highly compressed gas, compressible liquid, or supercritical fluid, comprising: a restrictor for restricting flow downstream of the pump, a forward pressure regulator located upstream of the restrictor for controlling the outlet pressure from the pump, a back-pressure regulator located downstream of the restrictor, and a differential pressure transducer; where the back- pressure regulator; forward-pressure regulator, and the differential pressure transducer control the pressure drop across the restrictor, and a temperature controller to control temperature across the restrictor such that the temperature remains as constant as practicable. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Azimov Shoji Burnham US 4,799,511 US 5,952,556 US 6,616,434 B1 Jan. 24, 1989 Sep. 14, 1999 Sep. 9, 2003 REJECTIONS The Examiner made the following rejections: Claims 3, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Burnham and Azimov. Ans. 4. Appeal 2018-004777 Reexamination Control 90/013,822 Patent US 6,648,609 B2 3 Claims 3, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Burnham, Shoji, and Azimov. Ans. 5. ANALYSIS The Examiner rejects the claims as obvious over Burnham and Azimov, stating that Burnham teaches all elements of the claims, except for the inclusion of a back pressure regulator, which the Examiner finds is taught by Azimov. Ans. 4. The Examiner then concludes obviousness by stating that one of skill in the art would “make the downstream regulator of Burnham et al. a back pressure regulator as taught by Azimov as it ‘establishes and maintain[s] constant pressure….in conduit line.” Id. (citing Azimov col 6, ll. 47, 48). The Patent Owner does not necessarily take issue with the individual teachings of the references, but asserts that “[t]here simply is no proper rationale to modify Burnham with Azimov.” App. Br. 9. Patent Owner first argues that the Examiner has engaged in improper hindsight analysis in concluding obviousness. App. Br. 10. Specifically, Patent Owner asserts that the Examiner has not explained why one of skill in the art would use a back pressure regulator as the pressure regulator in Burnham. App. Br. 12. Patent Owner notes that the Examiner merely states that one basis for doing so is because Azimov teaches that it was known that back pressure regulators maintain constant pressure. Id. (citing Final Act. 6). In expounding on that basis, the Examiner stated that one of skill in the art “would look to Azimov to provide the back pressure regulator if it was essential to have a constant pressure in the conduit line as desired by the instant invention.” Final Act. 6. We agree with Patent Owner, however, Appeal 2018-004777 Reexamination Control 90/013,822 Patent US 6,648,609 B2 4 “that relying on the problems solved by or desires of the present invention amounts to the application of impermissible hindsight.” App. Br. 13. Patent Owner further argues that the Examiner’s modification of Burnham “would create an unregulated pressure at Burnham’s port 22, thereby [reintroducing] the problem addressed by Burnham.” App. Br. 15. In response, the Examiner alleges that in addition to the back pressure regulator, one of skill in the art could also add an additional forward pressure regulator after the back pressure regulator so as to alleviate the problem created by the substitution. Final Act. 6. We agree with Patent Owner that “one of ordinary skill in the art does not look to add in further components (thereby increasing the complexity and cost) without achieving an additional benefit.” App. Br. 17. The fact that the Examiner’s combination actually requires additional components to correct problems created by the additions suggests that one of ordinary skill in the art would not replace pressure regulator 42 with Azimov’s back pressure regulator, thus reinforcing Patent Owner’s argument. As such, we conclude that the Examiner’s basis for the combination is based on insufficient rational underpinnings. In particular, the Examiner does not provide a sufficient reason why one of ordinary skill in the art would want to achieve constant pressure, other than for the reasons stated in Patent Owner’s disclosure, which amounts to use of impermissible hindsight. Accordingly, we do not sustain the Examiner’s rejection over Burnham and Azimov. The inclusion of Shoji in the second rejection does not cure this deficiency and so we do not sustain that rejection for the same reasons. Appeal 2018-004777 Reexamination Control 90/013,822 Patent US 6,648,609 B2 5 DECISION For the above reasons, we REVERSE the Examiner’s decision to reject claims 3, 12, and 13. REVERSED Klh Appeal 2018-004777 Reexamination Control 90/013,822 Patent US 6,648,609 B2 6 For PATENT OWNER: Womble Bond Dickinson (US) LLP / Waters ATTN: IP DOCKETING P.O. Box 7037 Atlanta, GA 30357-0037 For THIRD PARTY REQUESTER: Keith D. Nowak Carter Ledyard & Milburn LLP 2 Wall Street New York, NY 10005