Ex Parte Iwata et al

Patent Trial and Appeal Board

Feb 12, 2016

12532957 (P.T.A.B. Feb. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/532,957 0912412009
74384 7590
Cheng Law Group, PLLC
1133 13th St. N.W.
Suite C2
Washington, DC 20005
02/12/2016
FIRST NAMED INVENTOR
Ren Iwata
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.
NOG-0336 2141
EXAMINER
JAIN, SAUL
ART UNIT PAPER NUMBER
1756
MAILDATE DELIVERY MODE
02/12/2016 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
Exparte
REN IWATA, EIICHI OZEKI, HIROAKI NAKANISHI,
KA TSUMASA SAKAMOTO, and RYO Y AMAHARA
Appeal2014-005652
Application Number 12/532,957
Technology Center 1700
Before BEYERL YA. FRANKLIN, JAMES T. MOORE, and
JULIA HEANEY, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 seeks our review under 35 U.S.C. § 134(a) of a
decision of the Primary Examiner to reject claims 1-3 and 5-9. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real parties in interest as Shimadzu Corp. and
Tohoku University. Br. 2.
Appeal2014-005652
Application No. 12/532,957
BACKGROUND
The presently rejected patent application is directed to a radioactive
fluorine anion concentrating device. Specification, p. 1, 1. 9. Radioactive
fluorine anions have use as tracers in positron emission tomography scans.
Id.at 1. 25. With their short half-life, efficient and fast separation of the
anions are desirable.
The invention as claimed is represented by exemplary independent
claim 1 reproduced below.
1. A radioactive fluoride anion concentrating device
compnsmg:
a flow cell having a pair of plate electrodes which are
opposed to each other in parallel, and at least one of which is a
carbon plate electrode, and a flow channel provided between the
plate electrodes spaced 500µm or less apart to allow a [l 80]H20
solution containing l 8F- ions to flow therethrough;
an insulating sheet having a through groove serving as the flow
channel, the insulating sheet being sandwiched between the plate
electrodes and having a thickness of 500µm or less to define the space
between the plate electrodes;
a power source connected between the plate electrodes to apply
a direct current voltage between the plate electrodes and capable of
reversing a polarity of the direct current voltage; and
a liquid sending device for sending the solution to the flow
channel,
wherein the flow channel has a rectangular shape having a ratio
of a length to a width equal to or more than 11, and
wherein the flow channel has a volume of 1 OOµL or less.
App. Br. 19.
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Application No. 12/532,957
THE REJECTIONS
Claims 1, 2, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over U.S. Patent No. 5,770,030 issued on June 23, 1998 to
Hamacher et al.("Hamacher") and U.S. Patent 6,462,935 Bl issued October
8, 2002 to Shiue et el. ("Shiue"). Fin. Rej. 2.
Claims 3 and 7-9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hamacher, Shiue, and Bilitewski et al. WO 98/32008
("Bilitewski"). Fin. Rej. 6.
Claim 1 stands rejected as unpatentable for obviousness-type double
patenting over claims 1 and 2 of U.S. Patent No. 8,491,776, issued from
application 12/647,001 in view of Hamacher and Shiue. Ans. 19.
It should be noted that the claims are not substantively argued
separately. Br. 8-9. Accordingly, we focus our analysis on claim 1, and the
remaining claims stand or fall with claim 1.
DISCUSSION
I. Obviousness
A. Claims 1, 2, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hamacher and Shiue.
Claim 1
The Examiner found that Hamacher describes all of the elements of
the claim except for (a) the gap between the two parallel plate electrodes is
less than 500µm and (b) the flow channel has a volume of 100 µLor less.
Fin. Rej. 3--4, citing Hamacher 4:36-57, FIG. 1, and 3:31--40. Shiue was
found to describe that the electrode gap can vary from 0.3 mm to 1 mm. Fin.
Rej. 4, citing Shiue 7:48-55. These citations are factually accurate.
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Application No. 12/532,957
The Examiner concluded that it would have been obvious to a person
having ordinary skill in the art at the time the invention was made to modify
the device of Hamacher by reducing the gap to less than 500 µm as taught by
Shiue, because Shiue teaches that a smaller gap yields a higher capacitance.
Fin. Rej. 4-5, citing Shiue 7:48-55.
The Appellant initially urges that the Final Rejection fails to establish
a prim a facie case of obviousness because the cited references, taken in the
combinations set forth in the Final Office Action, fail to teach, disclose, or
suggest all of the features of the presently claimed invention. Br. 5.
With more particularity, the Appellant states that "a flow channel
provided between the plate electrodes spaced 500 µm or less," "the
insulating sheet being sandwiched between the plate electrodes and having a
thickness of 500 µm or less to define the space between the plate
electrodes," "wherein the flow channel has a rectangular shape having a
ratio of a length to a width equal to or more than 11," "wherein the flow
channel has a volume of 1 OOµL or less" are not described. Br. 5-6.
The Appellant argues that Hamacher describes a flow cell for
18F/H2 180 separation comprising plates with a spacing of about 2mm. The
plates are said to be separated by a plastic strip which electrically isolates
them and seal a rectangular passage through which fluid can be conducted
while an electrical field is applied. Id.
The Appellant takes particular exception to the combination with
Shiue, in that Shiue' s preferred range is 0. 5 mm to 1. 0 mm. According to
the Appellant, even if one of ordinary skill in the art were to modify
Hamacher et al. '030 in view of Shiue, "he/she would reduce the electrode
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Appeal2014-005652
Application No. 12/532,957
gap from 2 mm to within this preferred range and thus, the electrode gap still
would not be less than 500 µm." Br. 7.
states:
This argument overlooks the import of the description in Shiue which
Nevertheless, the capacitance of capacitors is determined by the
distance between electrodes. As smaller gap yields a higher
capacitance on one hand, it produces a greater restriction to liquid-
flow on the other. The thickness of the dividing strips is thereby a
balance between capacitance and liquid-flow resistance. The electrode
gap can vary from 0.3 mm to 1 mm, or preferably from 0.5 mm to 1
mm.
Shiue 7:48-55.
An electrode gap of 0.3 mm is within the claimed range.
Accordingly, the Examiner did not err in determining that this range
overlaps the claimed range, and that the adjustment thereof was known to be
a result-effective variable between flow and capacitance.
Appellant next urges that the size and shape of the flow channel sets
the claimed invention apart from the cited art in that it provides superior
results. Br. 8, citing Specification iJ 0017, reproduced below:
According to the present invention, the distance between the
electrodes constituting the flow cell is 500 µm or less, and therefore, a
potential gradient between the electrodes is large even when a voltage
applied between the electrodes is low so that a large force acts on l 8F
ions. Further, by providing a space having a volume of several
hundred micro liters or less as the flow channel of the flow cell, it is
possible to increase the specific surface area of the glassy carbon
electrode per unit volume of the flow channel. Therefore, the
radioactive fluoride anion concentrating device according to the
present invention can achieve the following: (1) to treat [180]H20
containing l 8F ions in a shorter period of time as compared to the
conventional methods 1 and 2; (2) to treat a larger amount of
[l 80]H20 containing 18F- ions as compared to the conventional
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Appeal2014-005652
Application No. 12/532,957
,., ., - /-"- , , , rlQ....-,,.,TT r... , • • 1QT"""'I_ • , ., .,. ., memoa L; ~j) to treat L iuu Jtl2U contammg iv!'- 10ns at a 10wer appnea
voltage as compared to the conventional method 2; and (4) to reduce
the volume of an obtained organic solvent solution containing 18F-
ions to achieve a higher efficiency of concentration of 18F- ions as
compared to the conventional method 2.
Specification iJ 001 7.
The Examiner has found that, as the pertinent parameter to maximize
the adsorption rate is the inter-electrode gap, an ordinary practitioner would
have optimized the inter-electrode gap and achieved any desired value of
volume including values of volume less than 100 µm, by varying the value
of surface area A. The Examiner has also found that this is a result-effective
variable. Ans. 22, Fin. Rej. 5. The evidence of record, reproduced above,
supports this finding. Furthermore, the Examiner found Hamacher to
describe a length to diameter, or width, ratio of 10. Fin. Rej 4, citing
Hamacher 4:36-37. Again, we observe that the reference does in fact teach
such measurements.
The Appellant urges that adjustment of the shape and size of the flow
channel are not result effective variables. Br. 11. Appellant also urges that
capture of the l 8F- ions occurs throughout the flow channel and there is no
accumulation of air bubbles in the rectangular channel. Br. 12-13.
The Appellant's specification asserts that there is an increase in
efficiency, but even accepting this unswom evidence (Specification, iii!
0045-0047 and Figures 3A, 3B, and 3C) as true, this appears to us to be
optimization of the result effective variables within the ability of one of
ordinary skill in the art. Hamacher, FIG. 3 and 4:49-57 generally describe
the size and shape of the central rectangular passage.
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Application No. 12/532,957
Where general conditions of the appealed claim are disclosed in the
prior art, it is not inventive to discover optimum or workable ranges by
routine experimentation, and appellants have the burden of proving any
criticality. In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220
F.2d 454, 456 (CCPA 1955). Adjusting the size and shape of the flow
channel appears to us to give predictable results.
The Appellant urges that Shiue has to process large amounts of water
by removing charged species from industrial waste streams, city sewage, and
seawater. Br. 10. Hamacher is said to process very small amounts of target
liquids and does not suggest that higher capacitance is preferable for
separation of radio nuclides from target liquids. Id.
We also are unpersuaded by the arguments concerning the references
individually and their individual shortcomings. Br. 10. It is the combination
of references relied upon by the Examiner which reveals the adjustment of
electrodes to increase efficiency. We find them to logically commend
themselves to one of ordinary skill in the art.
Having not been persuaded of error, we affirm this rejection.
B. Claims 3 and 7-9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hamacher, Shiue, and Bilitewski.
The Appellant has not addressed separate substantive argument to this
rejection, stating only that Bilitewski fails to cure the deficiencies of
Hamacher and Shiue. Br. 8.
Accordingly, we affirm this ground of rejection.
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Appeal2014-005652
Application No. 12/532,957
IL Double Patenting
A. Claim 1 stands rejected on the ground of nonstatutory
obviousness-type double patenting over U.S. Patent 8,491,776, issued July
23, 2013.
The Examiner found that Claims 1 and 2 of the '77 6 patent teach
almost all of the limitations of claim 1 of the instant application, with the
exception of the rectangular flow channel and volume. Ans. 16. The
Examiner has also found that the rectangular flow channel with a volume of
100 µL or less would have been obvious in view of Hamacher and Shiue.
Ans. 17-18. Claims 1and2 of the '776 patent are reproduced below:
1. A flowcell for concentrating radioactive fluoride anion comprising:
a cell main body in which a pair of insulating substrates are
directly bonded to each other to form a channel in the inside thereof
such that said channel is surrounded by said insulating substrates on
all sides: and
a pair of electrodes that arc disposed in parallel with each other
so as to oppose each other in the channel and firmly fixed onto each of
the substrates, with at least one of the electrodes being a carbon
electrode made of a pyropolymer,
wherein the channel is formed by a flat surface of one substrate
of the pair of insulating substrates and a groove formed in the other
substrate, and
the carbon electrode is formed on the flat surface, and the
electrode opposed to the carbon electrode is formed within the groove.
2. The flowcell according to claim 1, wherein the interval
between the pair of electrodes is 500 µm or less.
The Appellant argues that the channel in the instant claims has a
rectangular shape having a ratio of a length to a width equal to or more than
11" and "wherein the flow channel has a volume of 100 µL or less" renders
the present claims patentably distinct from 12/674,001. More specifically,
the Appellant urges that only modification of a variable which is known to
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Application No. 12/532,957
achieve a recognized result before the determination of the optimum or
workable ranges of said variable can be characterized as routine
experimentation.
We note that Hamacher describes the concept of a rectangular
elongated passage FIG 3 and 4:48-55 in an embodiment. Shiue describes
varying spacing to affect flow and field strength. Shiue 7:48-51. While the
Appellant has pointed to some improved results contained in the
specification, we are not persuaded that the Examiner erred in determining
that these results were predictable based upon optimization of the volume
and shape of the flow channel.
Accordingly, this rejection is affirmed.
SUMMARY
The Examiner's final decision to reject claims 1, 2, 5, and 6 under 35
U.S.C. § 103(a) as unpatentable over Hamacher and Shiue is affirmed.
The Examiner's final decision to reject claims 3 and 7-9 under 35
U.S.C. § 103(a) as unpatentable over Hamacher, Shiue, and Bilitewski is
affirmed.
The Examiner's final decision to reject claim 1 as unpatentable for
obviousness-type double patenting over claims 1 and 2 of U.S. Patent No.
8,491,776, in view of Hamacher and Shiue, is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ).
AFFIRMED
KRH
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