Ex parte KEMPE

Board of Patent Appeals and Interferences

Sep 18, 1998

08209786 (B.P.A.I. Sep. 18, 1998)

Application for patent filed March 11, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte TOMAS KEMPE
__________
Appeal No. 97-1595
Application No. 08/209,7861
__________
ON BRIEF
__________
Before ABRAMS, PATE and McQUADE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-10, which constitute all of the
claims of record in the application.
The appellant's invention is directed to an apparatus for
evaporating solvent from a plurality of solvent-containing
Appeal No. 97-1595
Application No. 08/209,786
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sample vials. The subject matter before us on appeal is best
illustrated by reference to claim 1, which has been reproduced
in an appendix to the Brief on Appeal.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Bowser 4,003,713 Jan. 18,
1977
Friswell 4,707,452 Nov. 17,
1987
THE REJECTION
Claims 1-10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Friswell in view of Bowser.
The rejection is explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief and the Reply Brief.
OPINION
The appellant’s invention provides an apparatus useful
for evaporating solvents from a plurality of solvent-
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containing vials, which are supported in a single chamber
closed by a sealing cover. Associated with each vial is an
air channeling device, such as a needle, which extends through
an aperture in the cover. As described on page 7 of the
specification,
[a]s the vacuum source is begun a vacuum is created
within the chamber, which in turn, draws air or gas
through the air channeling devices within cover
apertures 26. Preferably, the gas flowing through
each aperture is directed to the desired position
within or above each respective vial. The gas flow
through the apertures and into the vials, in turn,
provides a blow-down evaporative effect. Since a
vacuum is being applied, the air or inert gas will
simultaneously flow through the needle and agitate
the solution, being drawn by the vacuum itself. As
the gas is eventually drawn back out of the vial and
through the passageway by continuing vacuum effect,
it will tend to also carry the evaporated solvent
vapors with it.
This is manifested in independent claim 1 by the requirement
that there be “a recessed sample chamber...comprising a
plurality of well positions..., a positionable chamber cover
dimensioned to form an air tight seal...upon the
chamber...[and] comprising a plurality of access apertures.”
A vacuum circuit is specified which connects a source to the
chamber. Similar language appears in independent claim 8.
Appeal No. 97-1595
Application No. 08/209,786
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The claims stand rejected as being unpatentable over
Friswell in view of Bowser. The test for obviousness is what
the combined teachings of the prior art would have suggested
to one of ordinary skill in the art. See In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing
a prima facie case of obviousness under 35 U.S.C. § 103, it is
incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a
prior art reference or to combine reference teachings to
arrive at the claimed invention. See Ex parte Clapp, 227 USPQ
972, 973 (Bd. Pat. App. & Int. 1985). To this end, the
requisite motivation must stem from some teaching, suggestion
or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and
not from the appellant's disclosure. See, for example,
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5
USPQ2d 1434, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
Friswell discloses a system for evaporating liquid from a
chemical sample. It comprises a heated processing station
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(40) in which there are a plurality of test tube holding
receptors (50). The material to be acted upon is placed in a
test tube, which is installed in one of the cavities. The
test tube is closed by a closure (16), through which extends a
gas inlet (18) and an outlet (20). In operation, pressurized
gas is introduced through the inlet in a manner which
establishes a helical pattern (Figure 1). The motion of the
gas induces the removal of the liquid to be evaporated from
the test tube through the outlet.
Friswell fails to disclose or teach a source of vacuum to
induce the flow of gas to be evaporated, a chamber in which
are a plurality of positions for receiving sample vials, a
cover for the chamber, a plurality of apertures in the cover
in alignment with the positions for receiving the vials, and
an air channeling device in each of the apertures.
Bowser discloses a multiple tube evaporator. It
comprises a cover having an aperture for each of a plurality
of test tube receiving stations, which are supported in a
framework. There is no chamber in which multiple tubes are
received. Each test tube is pressed into a conical upper seat
(35), which effects a “semi-closure” of the open top of the
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tube (column 2, line 42). An evaporating needle (37) extends
from a manifold into each tube. According to the patentee,
[w]hen an ordinary vacuum line is connected to the
connector 34 of the intake block 31, a vacuum will
be created through the manifold 23 and effect
evaporation of the contents of each of the test
tubes 20 so as to effect evacuation therefrom.
Through the use of the device, either positive or
negative air pressures may be supplied through the
manifold to effect the evaporation process. Column
2, lines 43-50.
From this, the examiner concludes that it would have been
obvious to have “provided or connected Friswell’s outlet to
conduit with a well known vacuum source” because
it is well known in the art that vacuum evaporation
is advantageous over positive gas flow in some
instances. It is known that positive gas flow
evaporation may blow contaminants into the sample.
Vacuum evaporation is advantageous because it would
minimize the opportunity of foreign material blowing
into the sample during evaporation. Answer, page 5.
Initially, we must point out that there is no evidence of
record in support of these conclusions of the examiner.
Therefore, rather than constituting suggestion to combine the
teachings of the references, they can be regarded only as
speculation and assumption.
From our perspective, neither of the references discloses
or teaches the required chamber having a plurality of
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positions for receiving sample vials, a cover for the chamber
which has an aperture aligned with each of the vial positions,
an air channeling device through each aperture to provide air
into each of the vials, and a vacuum circuit for communicating
a source of vacuum to the chamber. In Friswell, each tube has
its own cover; in Bowser the tubes share a common cover, but
there is no “chamber” containing a plurality of tubes, and
there is no vacuum line in addition to the individual air
channeling devices. This being the case, there is no basis by
which it can be concluded that suggestion exists for
combining the references in such a fashion as to yield the
structure recited in claims 1 and 8.
Also, Friswell relies upon the creation of a helical
pattern in the pressurized gas inflow to evaporate the
solvents, and there is no evidence to support the conclusion
that replacing the pressurized gas injected through the inlet
with a vacuum suction on the outlet would result in the device
operating in the manner intended. This, in our view, would
have operated as a disincentive to one of ordinary skill in
the art to modify Friswell in the manner proposed by the
examiner.
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We therefore will not sustain the rejection of
independent claims 1 and 8 or, it follows, of dependent claims
2-7, 9 and 10.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge)
)
)
)
WILLIAM F. PATE, III ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge)
Appeal No. 97-1595
Application No. 08/209,786
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Philip M. Goldman
Fredrikson & Byron
1100 International Centre
900 Second Avenue South
Minneapolis, MN 55402