Ex Parte XIONG et al

Patent Trial and Appeal Board

Feb 8, 2019

12986477 (P.T.A.B. Feb. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/986,477 01/07/2011 RENQIANG XIONG
545 7590 02/12/2019
K&L GATES LLP-New York
599 Lexington A venue
33rd Floor
New York, NY 10022-6030
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.
0813715.10101 6470
EXAMINER
PEO,KARAM
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
02/12/2019 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RENQIANG XIONG and
JOHN MICHAEL BERNARD
Appeal2017-004848
Application 12/986,477
Technology Center 1700
Before TERRY J. OWENS, MONTE T. SQUIRE, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-5, 7-12, and 24--33. We have jurisdiction. 35
U.S.C. § 6(b). An oral hearing was held on February 6, 2019. 2
We REVERSE.
1 According to Appellants, the real party in interest is Microfluidics
International Corporation. Appeal Br. 2.
2 A written transcript of the oral hearing will be entered into the record when
the transcript is made available.
Appeal2017-004848
Application 12/986,477
STATEMENT OF THE CASE3
Appellants describe the invention as relating to a high pressure mixing
chamber that could be used, for example, to process and mix liquid drugs.
Spec. ,r 2. In particular, the chamber seeks to use fewer components of
smaller size to reduce holdup volume thereby saving resources. Id. at ,r 11.
Claim 1, reproduced below with formatting modified for readability and
emphasis added to key recitations, is illustrative of the claimed subject
matter:
1. A compact interaction chamber assembly comprising:
(a) a first housing with a first central axis, the first
housing including:
( 1) a first opening at a bottom face of the first
housing, the first opening having a generally
cylindrical shape of a first opening diameter and
sharing the first central axis; and
(2) a first protrusion extending from a top face of
the first housing including a first flow path, the first
flow path extending from the first opening through
the first protrusion and sharing the first central axis;
(b) a second housing having a generally cylindrical
shape with a second central axis,
the second housing including:
(1) a second opening at a bottom face of the
second housing, the second opening having a
generally cylindrical shape and sharing the second
central axis; and
(2) a second protrusion of a second diameter
extending from a top face of the second housing
including a second flow path, the second flow path
extending from the second opening through the
second protrusion and sharing the second central
3 In this Decision, we refer to the Final Office Action dated April 27, 2016
("Final Act."), the Appeal Brief filed September 26, 2016 ("Appeal Br."),
the Examiner's Answer dated December 21, 2016 ("Ans."), and the Reply
Brief filed February 3, 2017 ("Reply Br.").
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Application 12/986,477
axis, the second housing configured to be fastened
to the first housing such that:
(A) the second central axis is collinear with
the first central axis of the first housing; and
(B) the second protrusion is configured to
extend into the first opening when the first
housing is fastened to the second housing;
( c) a first mixing chamber element and a second mixing
chamber element, the first and second mixing chamber
elements configured to reside within the first opening
of the first housing, and be radially secured within the
first opening by hoop stress of the first housing applied
with thermal expansion and contraction without using
a tube member that is stretched axially to hold the first and
second mixing chamber elements radially, an outer surface
of each of the first and second mixing chamber elements
configured to make contact with an inner surface of the
first opening of the first housing such that the first and
second mixing chamber elements are compressed axially
to cause a fluid tight seal between the outer surface of each
of the first and second mixing chamber elements and an
inner surface of the first opening of the first housing,
wherein the axial compression is greater than or equal to
30,000 pounds per square inch,
wherein, the first mixing chamber element is squeezed
together with the second mixing chamber element so that
a bottom face of the first mixing chamber element makes
fluid tight contact with a top face of the second mixing
chamber element; and
( d) at least one retaining member configured to reside
within the first opening of the first housing, and
configured to retain the first and second mixing chamber
elements.
Appeal Br. 27 (Claims App.). Claim 25 similarly recites, for example, "first
and second mixing chamber elements configured to reside within the first
opening of the housing, and be radially secured within the first opening by
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Application 12/986,477
hoop stress of the first housing applied with thermal expansion and
contraction." Id. at 29--30.
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Yang
Onodera et al.
("Onodera")
Bocazzi et al.
("Bocazzi")
us 5,664,938
us 5,984,519
US 2005/0089993 Al
Sept. 9, 1997
Nov. 16, 1999
Apr. 28, 2005
Ehrfeld et al. US 2007/0291581 Al Dec. 20, 2007
("Ehrfeld")
Panagiotou et al. US 2009/0269250 Al Oct. 29, 2009
("Panagiotou")
Basic Microfluidic Concepts, http://faculty.washington.edu/yagerp/
microfluidicstutorial/basicconcepts.htm ( visited June 24, 2014)
("Schilling").
Microchannel, http://Wikipedia, en. wikipedia.org/wiki/Microchannel
(microtechnology) (visited June 24, 2014) ("Microchannel").
REJECTIONS
The following rejections are before us on appeal:
Rejection 1. Claims 1-3, 24--26, and 33 under 35 U.S.C. § 103 as
unpatentable over Onodera in view of Boccazzi. Ans. 3.
Rejection 2. Claims 4, 5, 7-9, and 27-30 under 35 U.S.C. § 103 as
unpatentable over Onodera in view of Boccazzi as evidenced by
Microchannel and Schilling. Id. at 8.
Rejection 3. Claim 10 under 35 U.S.C. § 103 as unpatentable over
Onodera in view ofBoccazzi and in further view of Yang. Id. at 9.
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Application 12/986,477
Rejection 4. Claims 11 and 31 under 35 U.S.C. § 103 as unpatentable
over Onodera in view of Boccazzi and in further view of Ehrfeld. Id. at 10.
Rejection 5. Claims 12 and 32 under 35 U.S.C. § 103 as unpatentable
over Onodera in view of Boccazzi and in further view of Panagiotou. Id. at
1 1.
ANALYSIS
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398,417 (2007); In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
We first focus on independent claims 1 and 25. The Examiner
determines that claims 1 and 25 are obvious over Onodera in view of
Boccazzi. Ans. 3. The Examiner finds that Onodera teaches a volume
interaction chamber assembly having most elements of the independent
claims. Id. at 4 (citing Onodera). The Examiner finds that Onodera uses a
tube member stretched axially to hold the first and second mixing chamber
elements radially. Id. at 7. With respect to the claims' recitation of "the first
and second mixing chamber elements configured to ... be radially secured
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within the first opening by hoop stress of the first housing applied with
thermal expansion and contraction," the Examiner explains that some hoop
stress is inherent and that Onodera's ceramics are capable of thermal
expansion and contraction:
The first and second mixing chamber elements are radially
secured within the first opening by hoop stress of the first
housing creating a fluid tight seal (C20/L27-38); since the first
and second mixing chamber elements are within the first
opening there will inherently be hoop stress created by the
inner surface of the first opening and the outer surface of
the mixing chamber elements. Hoop stress is the normal
stress in the tangential direction (https://en.wikipedia.org/wiki/
Cylinder stress). The limitation "applied with thermal
expansion and contraction" ( claim 1, line 27) is considered a
product by process limitation and said limitations are not given
patentable weight in product claims. The material of Onodera
used for the first and second mixing chamber and first housing
is capable of thermal expansion and contraction ( ceramic; C4/L
11-15). Ceramic materials are capable of thermal expansion
and contraction; ceramics are known to have a coefficient of
thermal expansion. A ceramic material is capable of
exhibiting some level of expansion and contraction.
Id. at 5---6 ( emphases added). The Examiner relies on Bocazzi as teaching
"clips, spring clamps, threaded holes, and pins" that, according to the
Examiner, could be substituted for Onodera's threaded fastening means.
Ans. 7 ( citing Bocazzi).
Appellants argue that the prior art does not disclose the recitation
"radially secured within the first opening by hoop stress of the first housing
applied with thermal expansion and contraction." Appeal Br. 18 ( emphasis
omitted). On the present record, we agree with Appellants that the Examiner
has not adequately explained how the prior art teaches or suggests this
recitation.
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We begin our analysis with claim construction. Claims 1 and 25 both
recite that the first and second mixing chamber elements must be
"configured to" both "reside within the first opening of the first housing"
and "be radially secured within the first opening by hoop stress of the first
housing applied with thermal expansion and contraction." Appeal Br. 27,
30-31 (Claims App.). The "configured to" recitation requires that the first
and second mixing chamber elements be capable of achieving the recited "be
radially secured within the first opening by first opening by hoop stress of
the first housing applied with thermal expansion and contraction."
The Examiner finds that Onodera's mixing chamber elements will
inherently have hoop stress and that a ceramic material "is capable of
exhibiting some level of expansion and contraction." Ans. 6. The Examiner,
however, does not address how the prior art teaches or suggests first and
second mixing chamber elements capable of being radially secured "by hoop
stress of the first housing applied with thermal expansion and contraction."
Rather, the mixing chamber elements must have specific dimensions relative
to the first opening in order to achieve hoop stress applied with thermal
expansion and contraction. Spec. ,r 26. The Examiner does not address why
it would have been obvious to reach these dimensions in view of the prior
art. Accordingly, we do not sustain the Examiner's rejection of claims 1 and
25.
Because the Examiner's treatment of the dependent claims (including
the Examiner's use of additional references) does not cure this error, we also
do not sustain the Examiner's rejection of those claims.
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Application 12/986,477
DECISION
For the above reasons, we reverse the Examiner's rejections of
claims 1-5, 7-12, and 24--33.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED
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