PHARMAFLUIDICS NV

Patent Trials and Appeals Board

May 1, 2020

2019004447 (P.T.A.B. May. 1, 2020)

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.
14/765,629 08/04/2015 Wim DE MALSCHE 19828.121 8980
22913 7590 05/01/2020
Workman Nydegger
60 East South Temple
Suite 1000
Salt Lake City, UT 84111
EXAMINER
PEO, KARA M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
Docketing@wnlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WIM DE MALSCHE, GERT DESMET,
JEFF OP DE BEECK, and PAUL JACOBS
____________

Appeal 2019-004447
Application 14/765,629
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, MICHELLE N. ANKENBRAND, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 22–37.3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed Aug. 8, 2014 (“Spec.”);
Final Office Action dated July 30, 2018 (“Final Act.”); Advisory Action
dated Oct. 10, 2018 (“Advisory Act.”); Appeal Brief filed Jan. 30, 2019
(“Appeal Br.”); Examiner’s Answer dated Mar. 14, 2019 (“Ans.”); and
Reply Brief filed May 14, 2019 (“Reply Brief”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies PHARMAFLUIDICS NV as the
real party in interest. Appeal Br. 2.
3 Claims 1–21 are cancelled and claims 38–41 are withdrawn. Appeal Br. 4.
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CLAIMED SUBJECT MATTER
The invention relates to chemical reactors and more specifically, to
chemical reactors based on a system with elongated pillar structures with a
high width-to-length aspect ratio, such as, for example, a liquid
chromatography system. Spec. 1; Abstract. Claim 22 illustrates the subject
matter on appeal and is reproduced below from the Claims Appendix to the
Appeal Brief:
22. A chemical reactor device based on a fluid flow, the
chemical reactor device comprising:
a substrate with a fluid channel defined by a channel wall,
wherein the channel has an inlet and an outlet and the channel
has a longitudinal axis in accordance with an average fluid flow
direction of a liquid in the channel from the inlet to the outlet,
an ordered set of pillar structures positioned in the
channel, wherein the individual pillar structures have a length in
the direction of the longitudinal axis of the channel and a width
in a direction perpendicular to the longitudinal axis,
wherein the individual pillar structures have a width-to-length
ratio of at least 7.
Appeal Br. 18 (key disputed claim language italicized and bolded).
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Desmet US 2010/0166611 A1 July 1, 2010
Stemmet WO 2012/025224 A1 Mar. 1, 2012
He et al., Fabrication of Nanocolumns for Liquid Chromatography, Anal.
Chem. Vol. 70, No. 18 pp. 3790–3797 (1998) (“He”).
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REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 22–31, 33–35, and 37 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Desmet in view of Stemmet
(“Rejection 1”). Ans. 3; Final Act. 2.
2. Claims 32 and 36 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Desmet in view of Stemmet, as noted
above, further in view of He (“Rejection 2”). Ans. 11; Final Act. 10.
OPINION
Having considered the respective positions the Examiner and
Appellant advance in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer,
Advisory Action, and Final Office Action, which we adopt as our own. We
add the following primarily for emphasis.
Rejection 1
The Examiner rejects claims 22–31, 33–35, and 37 under § 103 as
obvious over Desmet in view of Stemmet. Ans. 3–11. In response to the
Examiner’s rejection, Appellant presents arguments for the patentability of
claim 22 and relies on the same arguments for the patentability of claims
23–31, 33–35, and 37. Appeal Br. 8, 9. We select claim 22 as
representative and claims 23–31, 33–35, and 37 stand or fall with claim 22.
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Desmet and
Stemmet suggests a chemical reactor device satisfying the limitations of
claim 22 and concludes the combination would have rendered the claim
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obvious. Ans. 3–5 (citing Desmet, Abstract, Figs. 1a, 1b, ¶¶ 6–9, 20, 25, 27,
28, 31–34, 36; Stemmet, Abstract, 4:31–32, 5:20–34, 7:6–11, 16:31–17:19,
17:29–36).
The Examiner finds Desmet teaches the majority of the limitations of
claim 22, but that the reference does not explicitly teach “wherein the
individual pillar structures have a width-to-length ratio of at least 7,” as
recited in the claim. Ans. 4. The Examiner, however, relies principally on
Stemmet for teaching or suggesting that limitation of the claim. Id. In
particular, the Examiner finds Stemmet teaches a chemical reactor device
comprising a fluid channel with an ordered set of pillar structures (support
elements) and each individual structure having, for example, a
width-to-length ratio of 1 to 25. Id. (citing Stemmet, Abstract, 4:31–32,
5:20–34). As the Examiner further finds, Stemmet teaches that the pillar
structures are designed to balance dead volume and flow rate requirements
within the fluid channel. Id. (citing Stemmet 7:6–11). Stemmet also teaches
reducing both the dead volume and the residence time distribution of a
reacting fluid by adjusting the width-to-length ratio of the pillar structures.
Id. at 4 (citing Stemmet 16:31–17:19, 17:29–36).
Based on the above findings, the Examiner determines one of ordinary
skill in the art would have considered the width-to-length ratio of the pillar
structures to be a result-effective variable and, as such,
one of ordinary skill in the art at the time the invention was
made would have optimized, by routine experimentation,
the width to length ratio of the pillar structures in the
device of Desmet to obtain the desired balance between
the mixing efficiency and residence time.
Id. at 5 (citing In re Boesch, 617 F.2d 272, 276 (CCPA 1980) and In re
Aller, 220 F.2d 454, 456 (CCPA 1955)).
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Appellant argues the Examiner’s rejection of claim 22 should be
reversed because the cited art does not disclose or suggest “wherein the
individual pillar structures have a width-to-length ratio of at least 7,” as
recited in the claim. Appeal Br. 11; Reply Br. 2–3 (same). Appellant
contends none of the examples of Stemmet discloses or suggests a pillar
structure having the recited width-to-length ratio. Appeal Br. 13–15. In
particular, Appellant contends that
[i]n each example described and shown by Stemmet, the
length L in the longitudinal direction of the support
elements 7a, 7b is greater than or equal to the width W of
the support elements 7a, 7b.
Id. at 14; see also Reply Br. 3 (stating “Stemmet fails to describe, show, or
suggest a single example of a support element 7a, 7b having a width W
greater than the length L”).
Appellant further contends that, in contrast to the claimed
width-to-length ratio of at least 7, Stemmet describes an aspect ratio (d1/d2)
as the ratio of the length/width (L/W) of “between 1 and 25,” which
corresponds to a width-to-length ratio of 0.04 to 1 and thus, does not fall
within the claimed range. Appeal Br. 14–15 (quoting Stemmet 5:20); see
also Reply Br. 4 (arguing “the numerator and denominator of the aspect ratio
of Stemmet is the inverse of that required by claim 22”).
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection based on the Examiner’s fact-finding and
reasoning provided at pages 3–5 and 15–20 of the Answer, which a
preponderance of the evidence supports. Desmet, Abstract, Figs. 1a, 1b, ¶¶
6–9, 20, 25, 27, 28, 31–34, 36; Stemmet, Abstract, 4:31–32, 5:20–34, 7:6–
11, 16:31–17:19, 17:29–36. As the Examiner finds (Ans. 15, 19), Desmet
teaches individual pillar structures having a width-to-length ratio of greater
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than 1.5 and the pillar structures being positioned to promote lateral
distribution of the liquid and mixing within the fluid channel. Desmet ¶¶ 25,
27, 28, 32, 36. As the Examiner further finds (Ans. 15, 19), Desmet teaches
the pillar structures having a shape, size, and positioning pattern selected for
desired flow distribution and, in particular, designing the structures to
promote lateral mixing and reduce band distortions. Desmet ¶¶ 33, 34, 36.
As the Examiner also finds (Ans. 15–16), Stemmet teaches a fluid
channel with an ordered set of pillar structures and each individual structure
having, for example, a width-to-length ratio ranging from 1 to 25. Stemmet,
Abstract, 4:31–32, 5:20–34. As the Examiner finds (Ans. 16, 19–20),
Stemmet teaches reducing both the dead volume and the residence time
distribution of a fluid within the channel by adjusting, for example, the
width-to-length ratio of the pillar structures. Stemmet 7:6–11, 16:31–17:19,
17:29–36. That is, the width-to-length ratio of the pillar structures is a
result-effective variable. See In re Applied Materials, Inc., 692 F.3d 1289,
1297 (Fed. Cir. 2012) (“A recognition in the prior art that a property is
affected by the variable is sufficient to find the variable result-effective.”).
Thus, we find the Examiner correctly determines (Ans. 16–17, 20)
that it would have been obvious to one of ordinary skill in the art to have
arrived at the claimed width-to-length ratio of “at least 7” through routine
experimentation by varying/optimizing the width-to-length ratio of the pillar
structures in Desmet’s device to obtain the desired balance between the
mixing efficiency and residence time. In re Aller, 220 F.2d 454, 456 (CCPA
1955) (“[W]here the general conditions of a claim are disclosed in the prior
art, it is not inventive to discover the optimum or workable ranges by routine
experimentation.”); see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980)
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(“[D]iscovery of an optimum value of a result effective variable . . . is
ordinarily within the skill of the art.”).
Appellant’s arguments do not reveal reversible error in the
Examiner’s factual findings and analysis in this regard. Appellant’s
contentions regarding none of the examples of Stemmet showing pillar
structures having the claimed width-to-length ratio (Appeal Br. 13–14;
Reply Br. 3) are not persuasive of reversible error in the Examiner’s
rejection because Stemmet’s teachings are not limited to the disclosures in
its examples or preferred embodiments. See In re Mills, 470 F.2d 649, 651
(CCPA 1972) (“[A] reference is not limited to the disclosure of specific
working examples.”); see also In re Susi, 440 F.2d 442, 445-46 (CCPA
1971) (explaining that disclosure of particular preferred embodiments does
not teach away from a prior art reference’s broader disclosure).
As the Examiner finds (Ans. 18), Stemmet teaches pillar structures
having dimensions d1 and d2 in two different directions, that d1 represents
the largest dimension in a first direction and d2 represents the largest
dimension in a second direction, and that the first direction and second
direction may be perpendicular to one another. Stemmet 5:26–29
(disclosing “d1 represents the largest dimension of the support elements in a
first direction; and d2 represents the largest dimension of the support
elements in a second direction [and] . . . [t]he second direction may be
substantially perpendicular to the first direction”).
Although Stemmet describes specific examples of pillar structures
having various orientations, including, for example, structures having a
length L that is greater than or equal to the width W (Stemmet 16:35–17:7,
Figs. 1C, 2, 3A–3C), such disclosure is exemplary or merely preferred
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embodiments and, without more, does not negate or take away from
Stemmet’s broad disclosure regarding pillar structures having dimensions d1
and d2 in two different directions with the first and second direction being
perpendicular to one another. See In re Preda, 401 F.2d 825, 826 (CCPA
1968) (explaining that a prior art reference’s disclosure must be considered
for all that it teaches, including “the inferences which one skilled in the art
would reasonably be expected to draw therefrom”). As the Examiner finds
(Ans. 18), and contrary to what Appellant’s argument suggests, Stemmet
does not require that the d1 dimension necessarily correspond to the length
of a pillar structure or the d2 dimension necessarily correspond to a pillar
structure’s width.
Appellant’s contentions that “Stemmet describes an aspect ratio
(d1/d2) as the ratio of the length/width (L/W)” (Appeal Br. 14–15) and “the
numerator and denominator of the aspect ratio of Stemmet is the inverse of
that required by claim 22” (Reply Br. 3) are equally unpersuasive because
they too are based on the specific examples described in Stemmet and, as
discussed above, Stemmet’s teachings are not limited to the disclosures in its
examples. Mills, 470 F.2d at 651.
Appellant’s arguments in this regard are also not well-taken because
they are premised on what Appellant contends the Stemmet reference
teaches individually, and not the combined teachings of the Desmet and
Stemmet references as a whole, and what the combined teachings would
have suggested to one of ordinary skill in the art. One cannot show
non-obviousness by attacking references individually where the rejection is
based on a combination of references. See In re Keller, 642 F.2d 413,425
(CCPA1981). The Examiner does not rely upon Stemmet in the rejection for
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teaching the specific orientation of width-to-length of the pillar structures.
Ans. 17. Rather, the Examiner relies upon Desmet for teaching the
orientation of the width-to-length of the pillar structures positioned in the
channel, including, for example, the individual pillar structures having a
width-to-length ratio larger than 1.5. Ans. 17; Desmet ¶ 25 (disclosing the
“micro-machined pillars 30 having a ratio of lateral width 31 to axial width
32 (FIG. 1b) that is larger than 3/2 and sufficiently closely packed to induce
a lateral permeability that is at least 2 times larger than the axial
permeability”).
As the Examiner further finds (Ans. 19–20), and as previously
discussed above, it is the combined teachings of Desmet and Stemmet which
would have indicated to one of ordinary skill that the width-to-length ratio is
a result effective variable and would have led one of ordinary skill to the
claimed width-to-length ratio through routine experimentation by
varying/optimizing the width-to-length ratio of the pillar structures to obtain
the desired balance between the mixing efficiency and residence time.
Accordingly, we affirm the Examiner’s rejection of claims 22–31,
33–35, and 37 under pre-AIA 35 U.S.C. § 103(a) as obvious over the
combination of Desmet and Stemmet.
Rejection 2
In response to the Examiner’s rejection of claims 32 and 36 under
§ 103 as obvious over Desmet in view of Stemmet and He (Ans. 11–13),
Appellant does not present any new or additional substantive arguments.
Rather, Appellant relies on the same arguments previously discussed and
presented above in response to the Examiner’s rejection of claim 22. See
Appeal Br. 16 (stating “claims 32 and 36 are believed to be in condition for
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allowance due to their dependency from claim 22” and “He fails to remedy
the above-noted deficiencies of Desmet and Stemmet”); see also Reply Br. 5
(same).
Thus, based on the fact-finding and reasoning the Examiner provides,
and for principally the same reasons discussed above for affirming the
Examiner’s rejection of claim 22, we affirm the Examiner’s rejection of
claims 32 and 36 under 35 U.S.C. § 103(a) as obvious over the combination
of Desmet, Stemmet, and He.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
22–31,
33–35, 37
103(a) Desmet, Stemmet 22–31,
33–35, 37

32, 36 103(a) Desmet, Stemmet,
He
32, 36
Overall
Outcome
22–37

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