Ex Parte Iwata et alDownload PDFPatent Trial and Appeal BoardFeb 12, 201612532957 (P.T.A.B. Feb. 12, 2016) Copy Citation 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. 2 Appeal2014-005652 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. 3 Appeal2014-005652 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 4 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 5 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. 6 Appeal2014-005652 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. 7 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 8 Appeal2014-005652 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 9 Copy with citationCopy as parenthetical citation