Ex Parte Manz et al

Board of Patent Appeals and Interferences

Jun 29, 2006

10046564 (B.P.A.I. Jun. 29, 2006)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte ANDREAS MANZ
and
NILS GOEDECKE
____________

Appeal No. 2005-2077
Application No. 10/046,564
_____________

ON BRIEF
_____________

Before GARRIS, KRATZ, and JEFFREY T. SMITH, Administrative Patent Judges.
JEFFREY T. SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the Examiner’s final rejection of claims 1 and 3 to
20, all of the pending claims. We have jurisdiction under 35 U.S.C. § 134.
Appeal No. 2005-2077
Application No. 10/046,564

BACKGROUND
The present invention relates to a micro-fabricated chromatographic system including
an apparatus for transporting fluid through a fluid inlet, a separation channel and through a
fluid outlet in order to implement a chromatographic analysis of the fluid. (Brief, page 3).
Representative claim 1, as presented in the appendix to the Brief, appears below:
1. A micro-fabricated chromatographic system, said system comprising:
a transport channel including at least one fluid inlet and a separation channel; and

an evaporator including at least one evaporator channel arranged to receive fluid, each
evaporator channel having at least one open fluid outlet operable to evaporate fluid at the at
least one fluid outlet so as to cause the flow of fluid through the transport channel.

The Examiner cited the following references in rejecting the appealed claims:
Overton US 6,068,684 May 30, 2000
Sutton et al. (Sutton) US 6,103,112 Aug. 15, 2000
Zare et al. (Zare) US 6,136,187 Oct. 24, 2000
Hatch US 6,238,565 May 29, 2001
Henderson et al. (Henderson) US 6,258,263 July 10, 2001

Miyazaki (EPA) EP 0 568 024 A2 Nov. 3, 1993
The Examiner entered the following rejections (Answer, pages 3-6):
Claims 1, 5, and 7-19 stand rejected under 35 U.S.C. § 103(a) as obvious over
Henderson in view of Miyazaki.
Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) over Henderson in view of
Miyazaki and further in view of Zare.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as obvious over Henderson in view
of Miyazaki and further in view of Sutton or Overton.
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Claim 20 stands rejected under 35 U.S.C. § 103(a) as obvious over Henderson in
view of Miyazaki and further in view of Hatch.
Rather than reiterate the conflicting viewpoints advanced by the Examiner and the
Appellants regarding the above-noted rejections, we make reference to the Answer (mailed
October 19, 2004) for the Examiner’s reasoning in support of the rejections, and to the
Brief (filed September 2, 2004) for Appellants’ arguments thereagainst. We affirm the
Examiner’s § 103 rejections. Our reasons follow.
OPINION
Claims 1, 5, and 7 to 19 stand rejected under 35 U.S.C. § 103(a) as obvious over
Henderson in view of Miyazaki. We select claim 1 as representative of the rejected claims.
The Examiner asserts Henderson describes a micro-fabricated chromatographic
system that differs from the claimed invention in the presence of a particular micro pump.
(Answer, page 3). The Examiner relies upon the Miyazaki reference for teaching a suitable
micro pump. The Examiner determined (Answer, page 4) that the micro pump of Miyazaki
operates through an evaporation operating mechanism. Miyazaki discloses, columns 3 and
4, various methods for evaporating a liquid to operate the pump. The Examiner also
determined that the micro pump of Miyazaki has the advantage of being compact and does
not pulsate the flow. (Answer, page 4). The Examiner concluded that it would have been
obvious to a person of ordinary skill in the art to employ a known micro pump, such as
disclosed by Miyazaki, in the system of Henderson. We agree.
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Application No. 10/046,564

Appellants argue (Brief, page 6) that Henderson does not recognize the advantages
that are achieved by including an internal pumping system. This argument is not
persuasive. The invention of Henderson recognizes the need to transport liquid test
samples through the apparatus. (column 8, lines 35-45).
Appellants argue that the Miyazaki does not disclose the use of fluid evaporation to
cause the flow through a transfer channel. (Brief, pages 7 and 9). Appellants’ argument is
not persuasive. Miyazaki discloses (columns 3 and 4) evaporation propelled fluid transport
system and techniques. This system includes flowing a liquid through a flow path (1) that
is equivalent to the argued transport channel.
Appellants argue the cited references fail to teach the claimed structure for causing
the flow of fluid through a transport channel by means of an evaporator. (Brief, pages 11-
12). Appellants also argue that even if the references were combined they fail to teach the
subject matter of claim 1. (Brief, page 12).
Appellants’ arguments are not persuasive. The systems of both Miyazaki and
Henderson describe the transporting of fluid from an inlet system through a transport
channel and to an outlet port. While Henderson discloses the use of a pump, Miyazaki
describes a pumping mechanism that relies on the gasifying (evaporating) the liquid for
transport through the system. A person of ordinary skill in the art would have reasonably
expected that the pumping mechanism described by Miyazaki would also have been
suitable for transporting a liquid through the system of Henderson. “For obviousness under
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§ 103, all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d
894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
Appellants argue that the Examiner has failed to provide any reason of motivation for
combining the Henderson and Miyazaki references. (Brief, pages 13-14).
Appellants’ arguments are not persuasive. Both the Henderson and Miyazaki
references describe systems that rely on the transportation (pumping) of fluid through the
apparatus. The Miyazaki reference is described as an improvement on micro pump
technology. (Note columns 1 and 2). Thus, a person of ordinary skill in the art would have
been motivated to utilize the pumping mechanism described by Miyazaki and the apparatus
of Henderson in order to obtain the advantages stated by the Examiner and expressed in the
Miyazaki reference.
Appellants argue that the Henderson and Miyazaki references teach away from any
combination. (Brief, pages 14 and 5). This argument is not persuasive for the reasons
expressed above.
Appellants’ arguments (Brief, page 10) regarding the rejection of claims 3, 4, 6 and
20 have been noted. For each of the stated rejections the Appellants state their
understanding as to the Examiner’s basis of citing the additional prior art references.
However, Appellants have not argued that the teachings of the cited references could not be
utilized with the teaching of Henderson and Miyazaki as proposed by the Examiner. The
Examiner has presented factual determinations regarding the suitability of adding the
additional prior art references (see Answer, pages 4-5). These determinations are
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reasonable. Since Appellants have failed to specifically challenge the Examiner’s factual
determinations, we presume that they are in agreement with the Examiner. Thus, for the
reasons presented above regarding independent claim 1 and the reasons expressed by the
Examiner we will uphold these rejections.
CONCLUSION
For the foregoing reasons and those set forth in the Answer, given due weight to
Appellants’ arguments, we determine that the preponderance of evidence weighs in favor
of the Examiner’s rejections. Accordingly, the Examiner’s rejections under 35 U.S.C.
§ 103(a) are affirmed.
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No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a)(iv)(effective Sept. 13, 2004).

AFFIRMED

Bradley R. Garris )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Peter F. Kratz ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Jeffrey T. Smith )
Administrative Patent Judge )

JTS/cam
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