Ex Parte Manz et alDownload PDFBoard of Patent Appeals and InterferencesJul 11, 201210523035 (B.P.A.I. Jul. 11, 2012) Copy Citation 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: Appeal 2011-006755 Application 10/523,035 2 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.”). Appeal 2011-006755 Application 10/523,035 3 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). Appeal 2011-006755 Application 10/523,035 4 (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 Appeal 2011-006755 Application 10/523,035 5 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 Appeal 2011-006755 Application 10/523,035 6 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 ssl Copy with citationCopy as parenthetical citation