Ex Parte Young

Board of Patent Appeals and Interferences

Feb 29, 2012

11058528 (B.P.A.I. Feb. 29, 2012)

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.
11/058,528 02/15/2005 Li Young LIY-109C 6865
7590 02/29/2012
Kenneth P. Glynn
24 Mine Street
Flemington, NJ 08822
EXAMINER
HYUN, PAUL SANG HWA
ART UNIT PAPER NUMBER
1772
MAIL DATE DELIVERY MODE
02/29/2012 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 LI YOUNG
____________________

Appeal 2011-000236
Application 11/058,528
Technology Center 1700
____________________

Before FRED E. MCKELVEY, CHUNG K. PAK, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF CASE
The real party in interest and assignee of U.S. Patent Application
Serial Number 11/058,528, Akribio Corp. (hereinafter “Appellant”) (App.
Br. 1), appeals under 35 U.S.C. § 134 from a final rejection of claims 21-24
and 27-30 under 35 U.S.C. § 103(a) as unpatentable over Young
(US 2003/0024801 A1, published February 6, 2003) in view of Johnson
(Johnson et al., US 6,221,319 B1, issued April 24, 2001). We have
jurisdiction under 35 U.S.C. § 6(b).
Appeal 2011-000236
Application 11/058,528

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We affirm. However, because our affirmance relies on a different
interpretation of claim 21 and different reasoning than the Examiner’s
reasoning, we designate our affirmances as new grounds of rejection.
The Invention
Appellant’s invention relates to an instrument for conducting “bench
level” chemical and physical reactions in a plurality of reaction vessels at the
same time (in parallel) that includes separate heating, cooling, and other
functional capabilities for each reaction vessel (Spec. 23:13-19). Claim 21,
reproduced below, is illustrative:
21. A multifunctional multireactor chemical synthesis
instrument, which comprises:
(a.) a main housing having at least three independent
work stations, each work station adapted to receive a reaction
vessel;
(b.) at least one cooling unit functionally connected to
each of said at least three independent work stations to impart
controlled cooling thereto, each said cooling unit including:
(i.) a cooling element in proximity to each of said
at least three independent work stations and having an
inlet port for injection of a phase change coolant, a heat
absorbent area and an outlet port for removal of said
phase change coolant; and,
(ii.) injection means for injecting said phase
change coolant in liquid form via said inlet port to said
cooling element;
(c.) at least one heating unit functionally connected to
each of said at least three independent work stations to impart
controlled heating thereto;
(d.) at least one stirring mechanism connected to each
of said at least three independent work stations;
Appeal 2011-000236
Application 11/058,528

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(e.) control means including a programmable device
that is connected to each cooling unit and each heating unit and
to each stirring mechanism, said control means including
preprogrammable capability independently for each workstation
and also for coordination capabilities among two or more work
stations, for programmable automatic control of said injection
means to separately control at least one of on/off flow and rate
of flow, to separately control at least one of on/off heating and
rate of heating, and to separately control each stirring
mechanism, and said control means including software for
cyclical on/off control thereof to establish at least one
predetermined temperature sequence involving a plurality of
diverse, programmable temperature levels, for each work
station independently and for coordination among two or more
work stations.
(App. Br., Claims App’x 11-12).
Appellants have not separately argued any particular claim on appeal
(App. Br. 6-9). Accordingly, all the appealed claims stand or fall together
with sole independent claim 21.
II. ISSUES ON APPEAL
The issues on appeal are:
(1) Were the terms “reaction vessel” and “independent work stations”
interpreted too broadly when the Examiner found that these limitations were
met by features of the distillation column disclosed in Young?
(2) Would it have been obvious to one of ordinary skill in the art to
provide each fractionation tray of the distillation column disclosed by Young
with a stirring mechanism in view of the teachings of Johnson?
III. FINDINGS AND ANALYSIS
Appellant contends that the Examiner has taken an extremely broad
interpretation in finding that the individual fractionation trays of an
industrial distillation column would read on a system designed for laboratory
Appeal 2011-000236
Application 11/058,528

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use. (App. Br. 6-7). Appellant supports this contention by purporting
narrower meanings to the term “reaction vessel” and “independent work
stations” that would exclude the claim from reading on an industrial
distillation column, as allegedly disclosed in Young (id. 7-8). We are not
persuaded that “reaction vessel” and “independent work stations” recited in
claim 21 would not have been met by the teachings of Young for two
reasons. First, the distillation column of Young is not limited to an industrial
application. To the contrary, Young teaches that the system disclosed therein
“may be constructed of any size and arrangement convenient for a particular
purpose” and that “the invention could be embodied in the form of a bench
lab setup” (Young, ¶ [0059]).
Second, we do not agree with Appellant’s narrower purported
meaning of the term “independent work stations.” Appellant contends that
the term means that the work stations have “different chemicals (reactants)
and different reaction characteristics (heating, cooling, gas blanket, etc.)”
such that “[i]t is impossible to interpret the functionally interconnected
fractionation trays of a distillation reactor as independent” due to the flow of
liquids and gases of the same chemicals needed for the fractionation reactor
to work (App. Br. 7-8).
During examination, “claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831, 833 (Fed. Cir. 1990)).
Appeal 2011-000236
Application 11/058,528

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“[T]he specification may reveal a special definition given to a claim
term by the patentee that differs from the meaning it would otherwise
possess. In such cases, the inventor’s lexicography governs.” Phillips v.
AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). However, ‘“[w]here an
inventor chooses to be his own lexicographer and to give terms uncommon
meanings, he must set out his uncommon definition in some manner within
the patent disclosure’ so as to give one of ordinary skill in the art notice of
the change.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citation
omitted).
We agree with the Examiner that the broadest reasonable
interpretation of the term “independent work stations,” according to the
skilled artisan when read in light of the Specification, does not require all the
characteristics and features indicated by Appellant. Appellant’s
Specification includes an express definition of the term “work stations” as
“one or more reaction vessel area” functionally connected to a cooling unit
to impart controlled cooling thereto (Spec. 24:10-13). The Specification
does not provide an express definition of the term “independent work
stations” (see generally Spec.). Appellant provides no evidentiary support
for the position that the term “independent” narrows the meaning of the term
“work stations” to require all reaction conditions to be different from one
reaction vessel to another. In particular, we find no requirement in claim 21
that each reaction vessel utilizes different reactants. Accordingly, we
decline to limit the meaning of the term “independent work stations” as
argued by Appellant. See In re Bigio, 381 F.3d 1320, 1324-25 (Fed. Cir.
2004) (“[A]bsent claim language carrying a narrow meaning, the PTO
should only limit the claim based on the specification when those sources
Appeal 2011-000236
Application 11/058,528

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expressly disclaim the broader definition.”); In re Van Geuns, 988 F.2d
1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be read into the claims
from the specification.”). Since the term “work stations” requires controlled
cooling, at most, the term “independent” limits the “work stations” to be
capable of independently controlled cooling.
Since Young teaches independently controlled heating and cooling of
each tray 20 (see Young, Abstract and ¶¶ [0002] and [0031]), the system
providing the heating and cooling operations to each of the plurality of
trays 20 constitutes the limitation in claim 21 of “independent work
stations.”
Appellant asserts that the term “reaction vessel” is clearly defined in
the Specification “as generally referring to bench scale flasks, beakers and
other reactors used by bench researchers” (App. Br. 8).
The Examiner provides a broader interpretation in that a “reaction
vessel” is “any structure capable of holding liquid and intended to be used to
conduct reactions” (Ans. 5) (emphasis added).
We find the Appellant’s Specification provides for an interpretation
narrower than the Examiner’s purported interpretation. Appellant’s
Specification provides an express definition for the term “reaction vessel” in
stating that “[t]he words “reactor”, “micro reactor”, “reaction vessel” and
“vessel” are used interchangeably herein, and generally refer to bench scale
flasks, beakers and other reactors used by bench chemists, biochemists,
physicists, biologists, research doctors, and the like” (Spec. 23:23-24:3).
The Specification includes two examples of a “reaction vessel” in Figures 5
and 6, reproduced below.
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Appeal 2011-000236
Application 11/058,528

9
condition for a liquid reactant, including in a distillation column such as that
taught by Young. To do so would have been no more than the predictable
use of a stirring mechanism according to its established function as a
mechanism for creating a reflux condition. See KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (The question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.”).
Moreover, the problem being addressed by the stirring mechanism is
for obtaining movement of liquid, which is not a problem specific to the type
of reaction taking place. Johnson evinces that such a problem has already
been solved in the art. See Graham v. John Deere Co., 383 U.S. 1, 35-6
(1966) (holding that the problems confronting the insecticide industry were
not insecticide problems but rather mechanical closure problems and the
solution to the particular mechanical closure problem rest on a technical
difference which was old in the art.).
IV. ORDER
For the foregoing reasons, we affirm the rejection of claim 21-24 and
27-30 under 35 U.S.C. § 103(a). Because our rationale for affirming the
obviousness rejection differs from the Examiner’s rationale, we designate
the affirmance as new grounds of rejection under 37 C.F.R. § 41.50(b) in
order to ensure Appellant has a fair opportunity to respond to the rejection.
See In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005) (citing In re Kronig,
539 F.2d 1300, 1302 (CCPA 1976).
V. TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
Appeal 2011-000236
Application 11/058,528

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(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner ….
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ….

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

AFFIRMED, 37 C.F.R. § 41.50(b)

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