Ex parte KLEE et al.

Board of Patent Appeals and Interferences

Jul 31, 2000

08255040 (B.P.A.I. Jul. 31, 2000)

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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MATTHEW S. KLEE and MU Z. WANG
____________
Appeal No. 1997-1738
Application No. 08/255,040
____________
ON BRIEF
____________
Before STONER, Chief Administrative Patent Judge, OWENS and
LAZARUS, Administrative Patent Judges.
LAZARUS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 11 and 13-20, which are all of the claims
pending in this application.
We reverse.
Appeal No. 1997-1738
Application No. 08/255,040
2
BACKGROUND
The appellants’ invention relates to an apparatus for
separating and quantifying classes of hydrocarbons in a
sample. A copy of the claims under appeal is set forth in the
appendix to the appellants’ brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Lauer et al. (Lauer) 3,686,117 August 22, 1972
Saxena 4,840,730 June 20, 1989
Nickerson et al. (Nickerson) 5,009,778 April 23, 1991
Snyder, Introduction to Modern Liquid Chromatography, John
Wiley and Sons, 1979, pages 204-206
The following rejections are before us for review.
Claim 11 stands rejected under 35 U.S.C. § 102(b) as
being anticipated by Saxena, or, alternatively, under 35
U.S.C. § 103 as being unpatentable over Saxena.
Claims 11, 13 and 18-19 stand rejected under 35 U.S.C. §
103 as being unpatentable over Saxena in view of Nickerson.
Appeal No. 1997-1738
Application No. 08/255,040
3
Claims 14-17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Saxena in view of Nickerson and
further in view of Lauer.
Claim 20 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Saxena in view of Nickerson and further in
view of Snyder.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 10,
mailed May 16. 1996) and the supplemental answer (Paper No.
15, mailed November 22, 1996) for the examiner's complete
reasoning in support of the rejections, and to the brief
(Paper No. 9, filed May 8, 1996) and reply brief (Paper No.
11, filed July 19, 1996) for the appellants’ arguments
thereagainst.
OPINION
Appeal No. 1997-1738
Application No. 08/255,040
4
In reaching our decision in this appeal, we have given
careful consideration to the appellants’ specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
At the outset, we note that independent claim 11 requires
"a supercritical fluid chromatograph for receiving the sample
in an input stream and for producing an effluent stream" and
"a variable orifice restrictor for receiving a second portion
of the effluent stream and for independently controlling the
pressure and flow rate of the input stream".
With respect to the primary reference, appellants urge
two grounds for reversal, that "Saxena lacks any disclosure or
suggestion of a supercritical fluid chromatograph…" (brief,
page 5) and that Saxena lacks an effluent stream variable
valve for input stream control (brief, page 5 and reply brief,
page 4).
Appeal No. 1997-1738
Application No. 08/255,040
5
We note the examiner’s position that "There is no
structural difference between a generic disclosure of a column
and a supercritical column" (answer, page 6). Appellants
argue otherwise, that "[T]here is a structural difference
between a generic disclosure of a column and a supercritical
fluid chromatograph" (reply brief, page 4). In support of the
differences, appellants cite Lee (Milton L. Lee, Analytical
Supercritical Fluid Chromatography and Extraction,
Chromatography Conferences, Inc., 1990) and provide a copy of
Lee appended to the reply brief.
Lee’s description of a supercritical fluid chromatograph
portrays an apparatus capable of providing a mobile phase in a
column at very high pressure, "practical pressures for
applications range from less than 50 atm to more than 500 atm"
(Lee, page 13). Further, Lee describes other aspects unique
to a supercritical fluid chromatograph like "[T]he pressure-
controlled pumping system which is essential for pressure or
density programming, and the flow or pressure restrictor at
the end of the column which is required to maintain
supercritical pressures inside the column" (Lee, page 145).
Appeal No. 1997-1738
Application No. 08/255,040
6
To support a rejection of a claim under 35 U.S.C. '
102(b), it must be shown that each element of the claim is
found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v.
Kimberly-Clark Corp., 713
F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984).
It is our conclusion that the low pressure chromatography
systems of Saxena do not anticipate, or render obvious, the
supercritical fluid chromatograph limitation of appellants’
claim and we reverse the examiner’s rejection of claim 11
under 35 U.S.C. § 102(b) as being anticipated by Saxena, or,
alternatively, under 35 U.S.C. § 103 as being unpatentable
over Saxena.
We find that the Saxena reference does not teach a
supercritical fluid chromatograph as recited in claim 11 on
appeal. Saxena teaches chromatography systems using flow
columns (Figs. 1 and 2) and explains that high pressure, high
Appeal No. 1997-1738
Application No. 08/255,040
7
performance systems are "more expensive and pose a health
hazard" (col. 2, line 27). The objective stated in Saxena is
to "[P]rovide a chromatography system capable of high
performance while operating at relatively low pressures" (col.
2, lines 32-34). Thus, Saxena teaches a low pressure
chromatograph, not a supercritical fluid chromatograph.
The examiner suggests appellants' "specification is more
pertinent as to what is meant by the term 'supercritical fluid
chromatograph' than Lee" and points to the specification and
original claims 19 and 20 where "the only" structure given is
"a column packed with an adsorbent such as silica"
(supplemental answer, page 4).
We do not agree that "supercritical fluid chromatograph"
is limited by appellants to mean merely the column.
Appellants describe "a supercritical fluid chromatograph that
includes a column…" (specification, page 4, line 31-33). The
term "includes" is open and not limited to just the column,
but embraces other necessary elements obvious to a person
having ordinary skill in the art. Despite the examiner's
Appeal No. 1997-1738
Application No. 08/255,040
8
comment that "[s]upercritical pertains to the fluid state of
the fluid to be chromatographed and not to the structure of
the column", (answer, page 6) we find that the column in
Saxena is combined with additional unique supercritical fluid
chromatographic components.
Lee explains that supercritical fluid chromatographic
components include pressure-controlled pumping and other
apparatus necessary to perform supercritical fluid
chromatographic operations (Lee, page 145).
The examiner has not explained where the "supercritical
fluid chromatograph" (which includes apparatus necessary to
perform supercritical fluid chromatographic operations) are
taught in Saxena. Accordingly, since the teachings and
suggestions found in Saxena neither anticipated nor made the
subject matter as a whole of claim 11 on appeal obvious to one
of ordinary skill in the art at the time of appellants'
invention, we must refuse to sustain the examiner's rejection
of claim 11 under under 35 U.S.C. § 102(b), or, alternatively,
under 35 U.S.C. § 103.
Appeal No. 1997-1738
Application No. 08/255,040
9
Regarding the rejection of claim 11 under 35 U.S.C. ' 103
as unpatentable over Saxena in view of Nickerson, we find that
Nickerson does not overcome the above noted deficiencies of
Saxena. Nickerson teaches an axially-driven variable
restrictor valve controlled fluid trapping assembly useful for
instruments such as chromatographs. However, even if the
valves in the apparatus of Saxena were to be of the type shown
by Nickerson (as suggested by the examiner), rejection of
claim 11 would not be sustained since the above-noted
deficiencies of Saxena would not be overcome.
We have also reviewed the Lauer, Nickerson and Snyder
references additionally applied in the other rejections of
claims 13-20, but find nothing therein which makes up for the
deficiencies of Saxena discussed above. Accordingly, we
cannot sustain the examiner's rejection of appealed claims 13-
20 under 35 U.S.C. ' 103.
CONCLUSION
To summarize, the decision of the examiner to reject
Appeal No. 1997-1738
Application No. 08/255,040
10
claim 11 under 35 U.S.C. ' 102(b) or, in the alternative,
under 35 U.S.C. ' 103 is reversed. It follows that the
examiner's other rejections of claims 13-20 under 35 U.S.C. '
103 as obvious over Saxena, Nickerson, Lauer and/or Snyder are
also reversed.
REVERSED
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
RICHARD B. LAZARUS )
Administrative Patent Judge )
Appeal No. 1997-1738
Application No. 08/255,040
RECORDS MANAGER
LEGAL DEPARTMENT, 20BO
HEWLETT-PACKARD COMPANY
P.O. BOX 10301
PALO ALTO, CA 94303-0890
APPEAL NO. 1997-1738 - JUDGE
LAZARUS
APPLICATION NO. 08/255,040
APJ LAZARUS
APJ OWENS
CAPJ STONER
DECISION: REVERSED
DRAFT TYPED: July 20, 2000
FINAL TYPED: