Ex Parte Yin et al

Board of Patent Appeals and Interferences

Jun 7, 2012

11311960 (B.P.A.I. Jun. 7, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HONGFENG YIN, KEVIN KILLEEN,
and REID BRENNEN
____________

Appeal 2011-004538
Application 11/311,960
Technology Center 1700
____________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
CATHERINE Q. TIMM, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-8, 11-14, 21, and 22. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
Appellants claim a fluidic separation device 10 comprising a holding
chamber 52, 53 for holding a sample, a separation column 18, 25 for
separating the sample, a flow path 28, 69, 26 for conveying the sample from
Appeal 2011-004538
Application 11/311,960

2
the holding chamber to the separation column, and "means for focusing the
sample in the flow path upstream of the separation column to reduce band
broadening thereat" (claim 1; Figs. 1A-1C; see also claim 21).
Representative claim 1 reads as follows:
1. A fluidic separation device, comprising:

a holding chamber for holding a sample;

a separation column for separating the sample, wherein the column is
located downstream from the holding chamber;

a flow path for conveying the sample from the holding chamber to the
separation column; and

means for focusing the sample in the flow path upstream of the
separation column to reduce band broadening thereat.

The Examiner rejects all appealed claims under the second paragraph
of 35 U.S.C. § 112 as failing to particularly point out and distinctly claim the
subject matter which Appellants regards as their invention. According to the
Examiner, the claims are indefinite because it is unclear what is being
referred to by the independent claim term "thereat" (Ans. 3-4).
The Examiner also rejects all appealed claims under the first
paragraph of 35 U.S.C. § 112 as failing to comply with the written
description requirement. Specifically, the Examiner considers Appellants'
original disclosure to lack descriptive support for the independent claim term
"thereat" (id. at 4).
Finally, the Examiner rejects the claims under 35 U.S.C. § 102(b)
and/or 35 U.S.C. § 103(a) as follows:
Appeal 2011-004538
Application 11/311,960

3
(1) Claims 1-8, 11-14, 21, and 22 are rejected under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious over Yin (U.S. Patent Publication No.
2003/0017609 A1, pub. Jan. 23, 2003).
(2) Claim 22 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yin as applied to claims 1-8, 11-14, 21, and 22
above, and further in view of either Karger (U.S. Patent No.
5,872,010, issued Feb. 16, 1999) or Zhao (U.S. Patent Publication
No. 2005/0047969, pub. Mar. 3, 2005).
(3) Claims 1-8, 11-14, 21, and 22 are rejected under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious over Furuno (E.P. 1,329,714 A1, pub. Mar. 28,
2002).
(4) Claim 22 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Furuno as applied to claims 1-8,11-14,21, and
22 above, and further in view of either Karger or Zhao.
(5) Claims 1-8, 11-14, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Furuno in view of Yin.
(6) Claim 22 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Furuno in view of Yin as applied to claims 1-8,
11-14,21, and 22 above, and further in view of either Karger or
Zhao.
(7) Claims 1-8,11-14,21, and 22 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Furuno in view of either Peters (U.S.
Patent No. 5,929,214, issued Jul. 27, 1999) or Yoshizako (U.S.
Patent No. 6,805,793, issued Oct. 19, 2004).
Appeal 2011-004538
Application 11/311,960

4
(8) Claim 22 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Furuno in view of either Peters ‘214 or
Yoshizako as applied to claims 1-8, 11-14, 21, and 22 above, and
further in view of either Karger or Zhao.
(9) Claims 1-8, 11-14, 21, and 22 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Furuno in view of either Peters
‘214 or Yoshizako as applied to claims 1-8, 11-14, 21, and 22
above, and further in view of Yin.
(10) Claim 22 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Furuno in view of either Peters ‘214 or
Yoshizako and Yin as applied to claims 1-8, 11-14, 21, and 22
above, and further in view of either Karger or Zhao.
(11) Claims 1-8, 11-14, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gygi (U.S. Patent Publication
No. 2002/0146349 A1, pub. Oct. 10, 2002) in view of either Peters
‘214 or Yoshizako.
(12) Claim 22 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gygi in view of either Peters ‘214 or Yoshizako
as applied to claims 1-8, 11-14, 21, and 22 above, and further in
view of either Karger or Zhao.
(13) Claims 1-8, 11-14, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gygi in view of either Peters
‘214 or Yoshizako as applied to claims 1-8, 11-14, 21, and 22
above, and further in view of Yin.
(14) Claim 22 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gygi in view of either Peters ‘214 or Yoshizako
Appeal 2011-004538
Application 11/311,960

5
and Yin as applied to claims 1-8, 11-14, 21, and 22 above, and
further in view of either Karger or Zhao.
(15) Claims 1-8, 11-14, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Peters (U.S. Patent No.
5,288,310, issued Feb. 22, 1994) in view of either Peters ‘214 or
Yoshizako.
(16) Claim 22 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Peters ‘310 in view of either Peters ‘214 or
Yoshizako as applied to claims 1-8, 11-14, 21, and 22 above, and
further in view of either Karger or Zhao.
(17) Claims 1-8, 11-14, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Peters ‘310 in view of either
Peters ‘214 or Yoshizako as applied to claims 1- 8, 11-14, 21, and
22 above, and further in view of Yin.
(18) Claim 22 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Peters ‘310 in view of either Peters ‘214 or
Yoshizako and Yin as applied to claims 1-8, 11-14, 21, and 22
above, and further in view of either Karger or Zhao.

The § 112, second paragraph, Rejection
We fully share the Examiner's determination that the claims are
indefinite because it is unclear whether the independent claim term "thereat"
refers to reduced band broadening which occurs (1) in the means for
focusing, (2) in the flow path, (3) at the entrance to the separation column,
(4) in the separation column, and/or (5) at the exit of the separation column
(Ans. 3-4). See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
Appeal 2011-004538
Application 11/311,960

6
("[I]f a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite").
Appellants argue that the independent claims permit only one location
where band broadening can be reduced which is in the recited flow path
(App. Br. 14-15; Reply Br. 2). We cannot agree. In fact, the Examiner's
position is supported by the Specification which discloses that multiple
locations including the separation column contribute to band broadening and
that minimizing these contributions reduces overall band broadening thereby
enhancing chromatographic separation (see, e.g., Spec. para. [0009]).
We sustain the Examiner's § 112, second paragraph, rejection of all
appealed claims.

The § 112, first paragraph, Rejection
Appellants contest this rejection with the argument set forth below:
As discussed in Section 1 of this Argument, "thereat"
refers to "in the flow path upstream of the separation
column". A flow path upstream of a separation column is
described in Appellant's specification at, for example, p. 8,
lines 3-9, par. [0030]; p. 12, line 32 - p. 13, line 2, par.
[0044]; p. 13, lines 15-27, par. [0046]; and in FIGS. 1A-1C,
refs. 28, 69, 26.

App. Br. 16, first para.

The issue raised by this rejection is not whether the Specification
describes a flow path upstream of a separation column as Appellants seem to
believe. Instead, the issue is whether Appellants' original disclosure
Appeal 2011-004538
Application 11/311,960

7
supports their position that the independent claim term "thereat" requires
reduced band broadening in the recited flow path only. For reasons
analogous to those discussed above concerning the § 112, second paragraph,
rejection, this disclosure would not reasonably convey to those skilled in the
art that Appellants had position of such claim subject matter as of their
application filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc) ("[T]he test for [written description]
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.").
We sustain the Examiner's § 112, first paragraph, rejection of all
appealed claims.

The Prior Art Rejections
Appellants' arguments are directed to independent claims 1 and 21
only. No arguments are presented concerning the dependent claims
including separately rejected dependent claim 22 (see, e.g., App. Br. 16-19).
As a consequence, the dependent claims will stand or fall with their parent
independent claims of which claim 1 is representative.
The Examiner reasonably determines that the applied prior art teaches
or would have suggested structure (e.g., a material which is less sample
retentive, a heat source, an inlet, and a trapping column) which is disclosed
in Appellants' Specification as corresponding to their claimed "means for
focusing" (see, e.g., Ans. 4-8). Likewise, the Examiner reasonably
determines that such prior art structure would be capable of performing the
Appeal 2011-004538
Application 11/311,960

8
independent claim function of focusing the sample to reduce band
broadening (id.).
Appellants' arguments fail to reveal harmful error in the findings
and/or conclusions made by the Examiner in support of the prior art
rejections before us.
For example, Appellants repeatedly argue that the prior art contains
no teaching or suggestion of a means for focusing the sample to reduce band
broadening in a flow path upstream of a separation column (see, e.g., App.
Br. para. bridging 19-20, para. bridging 23-24 and Reply Br. 4, 1st full
para.). However, as previously explained, the independent claims are not
limited to reducing band broadening in such a flow path. Regardless of
whether the claims are so limited, Appellants fail to explain why prior art
structures such as a heat source or an inlet are incapable of performing the
claimed function even though these structures are identical to the structures
encompassed by the claimed means. Stated differently, Appellants offer no
evidence or technical reasoning why such prior art structures would not be
capable of focusing a sample to reduce band broadening notwithstanding
their Specification disclosure that such structures are capable of performing
such functions.
For the reasons expressed above and in the Answer, we sustain the
Examiner's § 102 and § 103 rejections of the appealed claims.

Conclusion
The decision of the Examiner is affirmed.

Appeal 2011-004538
Application 11/311,960

9
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a)(1)(iv).
AFFIRMED

ssl