Ex Parte Shalliker et al

Patent Trial and Appeal Board

Nov 5, 2018

13897187 (P.T.A.B. Nov. 5, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/897, 187 05/17/2013
44064 7590 11/07/2018
THERMO FINNIGAN LLC
ATTN: IP LEGAL DEPT.
355 RIVER OAKS PARKWAY
SAN JOSE, CA 95134
FIRST NAMED INVENTOR
Ross Andrew Shalliker
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TP15250US 1/NAT 8264
EXAMINER
PEO,KARAM
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
11/07/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ussjo.ip@thermofisher.com
pair_thermofisher@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROSS ANDREW SHALLIKER,
MICHELLE CAMENZULI, and HARALD RITCHIE
Appeal2018-001497
Application 13/897, 187 1
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-12. We have jurisdiction. 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants are the Applicants, Thermo Electron Manufacturing Limited
and the University of Western Sydney, which according to the Appeal Brief,
are also the real parties in interest. Appeal Br. 3.
Appeal2018-001497
Application 13/897,187
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a reaction
chromatography apparatus. Appeal Br. 3. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A reaction chromatography apparatus, comprising:
a chromatography column having a column outlet
assembly;
the column outlet assembly having a plurality of fluid
ports;
at least one reactant source in fluid communication with at
least one of the plurality of fluid ports, wherein the reactant
source is connected to the column outlet assembly and wherein
no separate reaction equipment resides downstream of the
chromatography column;
at least one processing unit in fluid communication with at
least one of the plurality of fluid ports.
Appeal Br. 14 (Claims App.).
REJECTIONS AND REFERENCES
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 1-12 under 35 U.S.C. § 112 as being indefinite.
Ans. 3.
Rejection 2. Claims 1-3 and 8-10 under 35 U.S.C. § 102(b) as being
anticipated by Michelle Camenzuli et al., Active flow management in
preparative chromatographic separations: A preliminary investigation into
2 In this Decision, we refer to the Final Office Action dated March 20, 2017
("Final Act."), the Appeal Brief filed October 4, 2017 ("Appeal Br."), the
Examiner's Answer dated November 17, 2017 ("Ans."), and the Reply Brief
filed November 28, 2017 ("Reply Br.").
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Appeal2018-001497
Application 13/897,187
enhanced separation using a curtain flow inlet fitting and segmented flow
outlet fitting, J. Sep. Sci. 35, 410-415 (2012) ("Camenzuli"). Id.
Rejection 3. Claims 4--7, 11, and 12 under 35 U.S.C. § 103 as
unpatentable over Camenzuli in view of Benjamin L. Legendre Jr., et al., US
2004/0035793 Al, February 26, 2004 ("Legendre"). Ans. 5.
ANALYSIS
Rejection 1. The Examiner rejects claims 1-12 under 35 U.S.C. § 112
as being indefinite. Ans. 3. In particular, the Examiner maintains that the
scope of claim 1 is not clear because the recitation "reaction equipment" is
"extremely broad and not defined in the instant specification." Ans. 3. We
apply the test for indefiniteness approved by the Federal Circuit in In re
Packard, i.e., "a claim is indefinite when it contains words or phrases whose
meaning is unclear." In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014).
Appellants argue that "reaction equipment" is not unclear in view of
the Specification. Appeal Br. 11-13. We agree with the Examiner that the
term "reaction equipment" is broad, but we agree with Appellants that the
term is not unclear. It is well-settled that "[b ]readth is not to be equated with
indefiniteness." In re Miller, 441 F.2d 689, 693 (CCPA 1971).
In view of claim 1 and the Specification (including the portions of the
Specification cited by Appellants), reaction equipment refers to any
equipment capable of facilitating a chemical reaction. As Appellants'
explain, the t-piece described in the Specification is an example of reaction
equipment. Appeal Br. 12; Reply Br. 10-11; see also, e.g., Spec. Fig. 14, ,r
198.
Because the Examiner has not established that claim 1 is unclear, we
do not sustain this rejection.
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Appeal2018-001497
Application 13/897,187
Rejections 2 and 3. The Examiner rejects claim 1 under 35 U.S.C.
§ 102(b) as being anticipated by Camenzuli. Final Act. 3. With respect to
claim 1 's recitation of "at least one reactant source in fluid communication
with at least one of the plurality of fluid ports, wherein the reactant source is
connected to the column outlet assembly," the Examiner refers to "Figure
1 A, three peripheral entry and exit ports and the single central entry or exit
port" without further explanation. Ans. 4.
Appellants argue that Camenzuli does not teach a reactant source and
that no reactant source is illustrated by Figure IA in Camenzuli. Appeal Br.
4--7. We agree with Appellants that Camenzuli does not explicitly refer to
reactants. Rather, Camenzuli is concerned with chromatographic flow
control and separation. Camenzuli, Abstract. The Examiner responds to
Appellants' argument by again citing Figure 1 A and by noting that "reactant
source" is not defined by the Specification. Ans. 12. The Examiner also
states that the recitation must result in a structural difference between the
claimed invention and prior art and that the structure of Camenzuli "is
capable of introducing a reactant source." Id.
The Examiner is correct that, to be patentable over the cited art, the
recited claim 1 structure much be different from the Camenzuli structure.
See, e.g., Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990) ("apparatus claims cover what a device is, not what a device
does."); In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (holding that
burden shifts to patent applicant to show that prior art structure does not
inherently possess functionally defined limitations of claimed apparatus
once the Examiner establishes reason to believe the cited art is capable of
performing the recited functions). We are, however, constrained to reverse
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Appeal2018-001497
Application 13/897,187
the Examiner's rejection on the present record because the Examiner has not
adequately explained what particular feature of Camenzuli the Examiner
considers the "reactant source" and has not explained why there is reason to
believe a Camenzuli feature could function as a reactant source. The
Examiner's position is unclear because the Examiner suggests that the entry
and exit ports of Camenzuli Figure IA are reactant sources (Ans. 12, first
full paragraph (repeating explanation quoted above)) while also stating that
the structure of Camenzuli Figure 1 "is capable of introducing a reactant
source" (Ans. 12, final paragraph). Reply Br. 8-9.
The Examiner's treatment of dependent claims does not cure the error
addressed above. We therefore do not sustain the Examiner's rejections
under 35 U.S.C. § 102 and 35 U.S.C. § 103.
DECISION
For the above reasons, we reverse the Examiner's rejections of
claims 1-12.
REVERSED
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