Ex Parte Farjam et alDownload PDFPatent Trial and Appeal BoardJun 15, 201613392095 (P.T.A.B. Jun. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/392,095 03/22/2012 AriaFarjam 96897 7590 06/16/2016 PA TENT LAW OFFICES OF DR NORMAN R THOT POSTFACH 10 17 56 RATINGEN, 40837 GERMANY 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 ATTORNEY DOCKET NO. CONFIRMATION NO. TS/HAH 1201 US-PAT 4473 EXAMINER CAMPBELL, IRVING A ART UNIT PAPER NUMBER 2855 MAILDATE DELIVERY MODE 06/16/2016 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 ARIA F ARJAM, ROLF UTHEMANN, KAI BERGGOLD, ULRICH LUNDGREEN, and BAS DE HEIJ Appeal2015-000596 Application 13/392,095 Technology Center 2800 Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and NATHAN A. ENGELS, Administrative Patent Judges. WINSOR, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection of claims 9, 10, 12-15, and 17-21. We have jurisdiction under 35 U.S.C. § 6(b ). Claims 1-8, 11, and 16 are canceled. See App. Br. (Claims App 'x) 17, 18. We affirm. 1 According to Appellants, the real party in interest is Hach Lange GmbH. App. Br. 2. Appeal2015-000596 Application 13/392,095 STATEMENT OF THE CASE The Invention "The subject matter of the present invention refers to a water analysis device comprising a pneumatically operated multi-chamber peristaltic pump." Spec. i-f 2. Claims 9 and 17 are independent. Claim 9 is illustrative of the subject matter on appeal: 9. A water analysis device with a pneumatically actuated multi-chamber peristaltic pump, the water analysis device compnsmg: a base plate comprising a plurality of proximally open pump chambers disposed on a proximal side of the base plate; a pump membrane configured to be liquid-tight and elastic disposed on the proximal side of the base plate, the pump membrane being configured to close the proximally open pump chambers; a cover plate disposed on the pump membrane, the cover plate comprising a respective pneumatic actuator channel in a region of each of the proximally open pump chambers, the pneumatic actuator channel being configured so as to be connected to an overpressure source configured to actuate the pump membrane; a connection channel disposed between two of the proximally open pump chambers, the connection channel being formed as a groove on a distal side of the base plate; and a separate groove cover disposed on the distal side of the base plate in a region of the groove, the separate groove cover being configured to close a distal opening side of the groove; a base module comprising all electric components; and an exchangeable cartridge module comprising an entire fluidic system which comprises the pneumatically actuated multi-chamber peristaltic pump, wherein the separate groove cover is a flexible cover film. See App. Br. (Claims App'x) 17. 2 Appeal2015-000596 Application 13/392,095 Rejections on Appeal Claims 9, 10, 12-15, and 17-21 stand rejected under 35 U.S.C § 103(a) as unpatentable over Greisch et al. (US 5,593,290; issued Jan. 14, 1997) ("Greisch"), Sigdell (DE 26 39 992 Al; published Mar. 9, 1978), Padmanabhan et al. (US 2007/0144277 Al; published June 28, 2007) ("Padmanabhan"), and Peters et al. (WO 9946045 Al; published Sept. 16, 1999) ("Peters"). See Final Act. 5-13. ISSUE The issue raised by Appellants' contentions is as follows: Did the Examiner err in combining Greisch, Sigdell, Padmanabhan, and Peters to arrive at Appellants' invention as recited in claim 9? ANALYSIS The Examiner found Greisch teaches a "pneumatically actuated multi- chamber peristaltic pump" and "a connection channel disposed between two of the proximally open pump chambers," as recited in claim 9. See Final Act. 5---6 (citing Greisch Spec. Fig. 1 (items 10, 18, 20, 22)). The Examiner found Sigdell teaches the connection channel "being formed as a groove on a distal side of the base plate" (see Ans. 4; Sigdell Spec. Fig. 1 (items 6, 10)) and "a separate groove cover disposed on the distal side of the base plate in a region of the groove, the separate groove cover being configured to close a distal opening side of the groove" (see Final Act. 6-7; Sigdell Spec. Fig. 1 (item 5)), as further recited in claim 9. The Examiner concluded "[i]t would [have been] obvious to one of ordinary skill in the art to modify the pump as disclosed by Greisch by replacing a lower portion of the base plate as 3 Appeal2015-000596 Application 13/392,095 disclosed by Greisch with the separate groove cover as disclosed by Sigdell." Final Act. 7. According to the Examiner, "[t]his modification places the groove on the distal side of the base plate and uses the separate groove cover to close the distal opening caused by the removal of the bottom of the base plate." Id. The Examiner further concluded that the resulting combination of Greisch and Sigdell "is both lighter and results in less material usage." Id. Appellants contend the Examiner erred because one of ordinary skill in the art would not have combined Greisch, Sigdell, Padmanabhan, and Peters to arrive at Appellants' claimed invention, absent impermissible hindsight. See App. Br. 12-13. In support of this contention, Appellants point to the particular physical modifications that allegedly would need to be made to Greisch' s pump in order to incorporate the teachings of Sigdell, Padmanabhan, and Peters, so as to arrive at the claimed invention. See id. Appellants emphasize ( 1) the differences between Greisch' s conduit/ channel formed through the middle of the base plate and the claimed "connection channel ... formed as a groove on a distal side of the base plate," and (2) that Sigdell's single-chamber, non-peristaltic infusion pump is not a "pneumatically actuated multi-chamber peristaltic pump" as claimed. See App. Br. 10-12. We are unpersuaded of error. As an initial matter, to the extent Appellants argue none of Greisch, Sigdell, Padmanabhan, and Peters individually teaches or suggests the "connection channel" and "separate groove cover" limitations as recited in claim 9 (see App. Br. 10-12), we are unpersuaded because the arguments attack each reference individually and fail to substantively address what a person of ordinary skill would have understood from the references' 4 Appeal2015-000596 Application 13/392,095 combined teachings. Jn re Keller, 642 F.2d 413, 426 (CCPA 1981) ("one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references"). Moreover, we are unpersuaded because, although Appellants specify the particular physical modifications allegedly needed to combine Greisch with Sigdell, Padmanabhan, and Peters, Appellants have not presented persuasive evidence or argument sufficient to show that relocating Greisch's conduit/channel or replacing it with Sigdell's channel was "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-19). Likewise, Appellants' Specification does not place any particular significance on locating the groove on the distal side of the base plate. See Spec. i-fi-1 7, 11, 26. Accordingly, consistent with the Examiner's findings and conclusions, we conclude that modifying Greisch's pump to achieve a conduit/channel on the distal side of edge of the base plate with a separate groove cover disposed thereon would have been an obvious modification within the "inferences and creative steps that a person of ordinary skill in the art would employ," KSR, 550 U.S. at 418. See Final Act. 7-8; Ans. 6-7; In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) ("the particular placement of [an electrical] contact provides no novel or unexpected result. The manner in which electrical contact is made for Smith's battery would be an obvious matter of design choice within the skill of the art."); In re Gazda, 219 F.2d 449, 451-52 (CCPA 1955) (affirming finding that "the location of the ratchet means [for winding a clock] at the input end instead of the output end of the winding connection is merely a 5 Appeal2015-000596 Application 13/392,095 matter of choice and expediency"); cf Jn re Japikse, 181 F .2d 1019, 1023 (CCPA 1950) (affirming finding that "there would be no invention in shifting the starting switch disclosed by Cannon to a different position since the operation of the device would not thereby be modified"). Further, we are unpersuaded of error arising from the Examiner's use of Sigdell' s single-chamber, non-peristaltic infusion pump in the cited combination of references. The well-known need to precisely dispense metered amounts of fluid materials and the common use of a variety of different pumps to meet this need would have prompted one of skill in the art to look outside the realm of peristaltic pumps to consider other types of pumps such as the infusion pump of Sigdell. See Greisch col. 1, 11. 8-12, 19-21, 40-42, 55---60, 66---67 ("Known pumps can be subject to metering error"); Sigdell 6, 11. 1-5 (describing peristaltic pumps as known pumping arrangements); KSR, 550 U.S. at 417-18 ("When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one."). Next, Appellants contend a prima facie case of obviousness has not been made because the Examiner failed to resolve the level of ordinary skill in the art. See App. Br. 14. We are unpersuaded by Appellants' contention and agree with the Examiner that the resolution of the level of ordinary skill in the art is implicit within the prior art used by the Examiner to reject the claimed invention. See Ans. 8. "[T]he absence of specific findings on the level of skill in the art does not give rise to reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown." Okajima v. Bourdeau, 261F.3d1350, 1355 (Fed. Cir. 2001) (citations and internal quotations omitted). 6 Appeal2015-000596 Application 13/392,095 Last, Appellants contend the Examiner's articulated reasons to combine the cited prior art (see Final Act. 7-8) lack rational underpinning per se because they are different from the advantages proffered by Appellants in their Specification. See App. Br. 14. We disagree. "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim. If the claim extends to what is obvious, it is invalid under§ 103." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). As is the case here, "[a]s long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor.~' ln re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); see Final Act. 7-8. [T]he problem motivating the patentee may be only one of many addressed by the patent's subject matter. The question is not \'l1hether the combination \'l/as obvious to the patentee but \'l1hether the combination was obvious to a person with ordinary skill in the art. Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed. KSR, 550 U.S. at 420 (2007). In view of the foregoing, we conclude the Examiner did not employ improper hindsight (see Ans. 8; In re McLaughlin, 443 F.2d 1392, 1395) and did not otherwise err in combining Greisch, Sigdell, Padmanabhan, and Peters. Accordingly, we sustain the Examiner's rejection of claim 9, as well as claims 10, 12-15, and 17-21, which were argued together with claim 9. See generally App. Br. 6-15; Reply Br. 3-9. 7 Appeal2015-000596 Application 13/392,095 DECISION The decision of the Examiner to reject claims 9, 10, 12-15, and 17-21 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l) (2013). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation