Ex Parte Manz et al

Board of Patent Appeals and Interferences

Jul 11, 2012

10523035 (B.P.A.I. Jul. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/523,035 01/05/2006 Andreas Manz FRYHP0131US 8704
23908 7590 07/11/2012
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
EXAMINER
SORKIN, DAVID L
ART UNIT PAPER NUMBER
1774
MAIL DATE DELIVERY MODE
07/11/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREAS MANZ and TORSTEN VILKNER
____________

Appeal 2011-006755
Application 10/523,035
Technology Center 1700
____________

Before ROMULO H. DELMENDO, BEVERLY A. FRANKLIN, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1-43
directed to a powder mixing microchip and powder mixing system. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal:
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1. A powder mixing microchip, comprising:

a powder mixing unit for mixing a plurality of powder components to
provide a powder mixture, the powder mixing unit including a powder
mixing channel in which powder components are mixed on being
transported therethrough, a powder outlet port through which the powder
mixture is delivered, and a plurality of mixing gas supply channels fluidly
connected to the powder mixing channel at spaced locations along a length
thereof through which mixing gas flows are delivered to effect mixing of the
powder components on being transported through the powder mixing
channel.

The Examiner relies upon the following as evidence of unpatentability
(Ans. 3):1
Church US 3,526,391 Sept. 1, 1970
Gilbert US 6,883,957 B2 Apr. 26, 2005

THE REJECTIONS
Claims 1-3 and 5-43 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Gilbert. Ans. 3. Claim 4 stands rejected under 35 U.S.C.
§ 103(a) as obvious over Gilbert in view of Church. Id. at 4.

ISSUE
The following dispositive issue arises:
Does the Examiner err in finding that Gilbert anticipates the subject
matter of claim 1, and in particular, the limitation requiring an apparatus
adapted “for mixing a plurality of powder components to provide a powder
mixture”?

1 Our analysis makes reference to the Examiner’s Answer mailed March 21,
2011 (“Ans.”) and the Appeal Brief filed February 7, 2011 (“App. Br.”).
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We answer the question in the negative and AFFIRM. We find no
reversible error in the Examiner’s fact finding and application of law.
Therefore, we adopt the fact findings and responses to argument presented in
the Answer and add the following analysis primarily for emphasis.

ANALYSIS
(with Findings of Fact and Principles of Law)
Claim 1 relates to an apparatus adapted “for mixing a plurality of
powder components to provide a powder mixture.”2 The Examiner finds
that Gilbert teaches an apparatus that meets each structural limitation of
claim 1. Ans. 3-4. “While it is agreed that Gilbert does not disclose
‘powder’, a finding of anticipation is still proper,” in the Examiner’s view,
“because ‘powder’ is a material intended to be acted upon by the claimed
apparatus, rather than a required element of the claimed structure.” Id. at 4.
The Appellants contend that Gilbert is directed to an apparatus for
mixing a liquid diluent with a liquid chemical compound. App. Br. 7. The
Appellants contend that, even if the dilution system of Gilbert “were capable
of diluting a powder sample . . . the diluted sample would be a liquid, as a
result of introducing the powder sample into the liquid diluent.” Id. at 7.
The Examiner points out, however, that “powders could be placed in wells
20 and 30,” thus eliminating the liquid components altogether. Ans. 5.
Furthermore, according to the Examiner, “the piston of syringe pump
50/500” disclosed in Gilbert “could be retracted to draw the powder and gas

2 The Appellants argue claims 1-3 and 5-43 as a group. App. Br. 4-8. We
select claim 1 as representative of the group. The Appellants provide no
separate argument regarding the rejection of claim 4. Id. at 8. Claims 1-43
thus stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
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(air) into the system.” Id. Regarding the claims that require a pressurized
gas, the Examiner reasons that “after drawing in the powder and gas, the
piston could be used to create positive gas pressure, and direct powder and
gas out of the system.” Id; see claims 40-43.
The Appellants disagree and contend that the syringe pump disclosed
in Gilbert draws sample from well 20 “only because the chemical compound
sample is a liquid” in Gilbert. App. Br. 6-7. Specifically, the Appellants
contend that, “if a powder sample were to be contained in the sample well
(20)” of Gilbert, the first syringe pump 50 would not draw powder from the
well. Id. at 6-7. On the contrary, the sample would either remain in the well
due to a lack of a pressure differential or, “if the powder sample were packed
into the sample well,” the “sample would be immovable.” Id. at 7. The
Appellants further contend that Gilbert does not disclose operating “syringe
pumps (50/500) to generate a pressurized gas.” Id. at 8. In the Appellants’
view, delivering a pressurized gas via the syringe pumps “would be contrary
to the disclosure of Gilbert” as such operation would “expel sample from the
sample well (20) and diluent from the dilution well (30), rendering the
dilution system of Gilbert . . . inoperable.” Id.
“It is axiomatic that anticipation of a claim under § 102 can be found
if the prior art reference discloses every element of the claim.” In re King,
801 F.2d 1324, 1326 (Fed. Cir. 1986). Claims directed to an apparatus must
be distinguished from the prior art in terms of structure rather than function.
In re Schrieber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997); Hewlett-Packard
Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990)
(“[A]pparatus claims cover what a device is, not what a device does.”). The
material worked upon by an apparatus does not limit an apparatus claim. Ex
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parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) (“expressions relating
the apparatus to contents thereof during an intended operation are of no
significance in determining patentability of the apparatus claim”).
We agree with the Examiner that the Appellants fail to identify “any
structural difference between the structure required by claim 1 and that of
Gilbert.” Ans. 5. We further agree that the relevant inquiry is whether
Gilbert discloses an apparatus that is structurally capable of performing a
powder mixing operation as described in claim 1. Id. On this record, we
find as a matter of fact that the Examiner makes out a prima facie case that
Gilbert’s apparatus is so capable and thus anticipates claim 1.
We have considered the Appellants’ argument that, “if a powder
sample were to be contained in the sample well” of Gilbert, the sample
would either remain in the well due to a lack of a pressure differential or, “if
the powder sample were packed into the sample well,” the “sample would be
immovable.” App. Br. at 6-7. That bare assertion, however, is unpersuasive
in the absence of evidentiary support. We agree with the Examiner,
moreover, that the Appellants bear the burden of proof on this point. Ans. 5
(citing In re Swinehart, 439 F.2d 210, 213 (CCPA 1971) (“where the Patent
Office has reason to believe that a functional limitation asserted to be critical
for establishing novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on”).
We have further considered the Appellants’ argument that operating
the syringe pumps (50, 500) in Gilbert “to deliver a pressurized gas would”
tend “to expel sample from the sample well (20) and diluent from the
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dilution well (30), rendering the dilution system of Gilbert [] inoperable.”
App. Br. 8. This argument is unpersuasive because it ignores the core
premise of the rejections, namely, that Gilberts’ apparatus reasonably
appears to be structurally capable of operating as a powder mixing apparatus
wherein no liquid sample or liquid diluent is present in the system at all. See
In re Schreiber, 128 F.3d at 1477 (claims to an apparatus for dispensing
popped popcorn was not patentable over a structurally similar apparatus for
dispensing liquid oil).
No persuasive argument or evidence having been brought forward by
the Appellants, we affirm the rejections of claims 1-43.

CONCLUSION
We affirm the rejections of claims 1-43.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

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