Rosemount Inc.

Patent Trials and Appeals Board

Apr 29, 2021

2020000195 (P.T.A.B. Apr. 29, 2021)

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.
14/626,050 02/19/2015 Bradley A. Butcher R290.12-0076 1335
117849 7590 04/29/2021
Kelly, Holt & Christenson, P.L.L.C.
141 West 1st Street, Suite 100
Waconia, MN 55387
EXAMINER
SIEFKE, SAMUEL P
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
04/29/2021 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):
patents@khcip.com
wmalherek@khcip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRADLEY A. BUTCHER
and CHANG-DONG FENG
Appeal 2020-000195
Application 14/626,050
Technology Center 1700
Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
MONTÉ T. SQUIRE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 3–9. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Rosemount Inc. as the real party in
interest. Appeal Brief (“Appeal Br.”) filed April 19, 2019, 3.
Appeal 2020-000195
Application 14/626,050

2
CLAIMED SUBJECT MATTER
The invention relates to a colorimetric analyzer including a reaction
chamber configured to receive a sample and at least one reagent, a
measurement cell having an illumination source and detector, a fill conduit
operably interposed between the reaction chamber and the measurement cell
configured to reduce bubbles, and a controller coupled to the illumination
source and detector configured to generate an analytic output based on a
signal received from the detector. Specification (“Spec.”) filed February 19,
2015 ¶ 5.2
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter. The limitation at issue is
italicized.
1. A colorimetric analyzer comprising:
a reaction chamber configured to receive a sample and at
least one reagent;
a measurement cell operably coupled to the reaction
chamber, the measurement cell having an illumination source
and an illumination detector spaced from the illumination
source such that illumination from the illumination source
passes through the reacted sample to the illumination detector;
a controller coupled to the illumination source and the
illumination detector, the controller being configured to
generate an analytic output based on a signal from the
illumination detector; and
a fill conduit operably interposed between the reaction
chamber and the measurement cell, the fill conduit comprising

2 This Decision also cites to the Final Office Action (“Final Act.”) dated
July 30, 2018, the Examiner’s Answer (“Ans.”) dated August 6, 2019, and
the Reply Brief (“Reply Br.”) filed October 3, 2019.
Appeal 2020-000195
Application 14/626,050

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a first material and a fluidically-sealed, hydrophobic second
material disposed along an inner diameter of the first material.
REFERENCES
The Examiner relies on the following prior art:

Name Reference Date
Salpeter US 5,550,053 Aug. 27, 1996
Blank et al. (“Blank”) US 2005/0187439 A1 Aug. 25, 2005
Ludowise et al.
(“Ludowise”)
US 2012/0293796 A1 Nov. 22, 2012

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections under 35 U.S.C. § 103:
1. Claims 1 and 5–9 as unpatentable over Salpeter in view of
Blank; and
2. Claims 3 and 4 as unpatentable over Salpeter in view of
Blank, and further in view of Ludowise.
OPINION
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.”). Meeting that burden requires establishing that the applied
prior art would have provided one of ordinary skill in the art with an
apparent reason to modify the prior art to arrive at the claimed invention.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Appeal 2020-000195
Application 14/626,050

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The Examiner finds that Salpeter discloses a colorimetric analyzer as
recited in claim 1, including fill conduit 60, 66, 70 operably disposed
between reaction chamber 24 and measurement cell 28, wherein the fill
conduit is configured to reduce bubbles. Final Act. 3–4. The Examiner finds
that Salpeter’s fill conduit is made of glass, but acknowledges that Salpeter
fails to teach that the fill conduit includes a hydrophobic second material
disposed along its inner diameter. Id. at 4. For this feature, the Examiner
finds that Blank discloses an apparatus for automated delivery of a fluid
between an analyzer and a sample site, wherein a means is provided to
minimize formation of gaps, such as bubbles, in the delivery of the fluid to
the sample site. Id. The Examiner finds that one such means is a coating on
the interior surface of the fluid delivery line that is hydrophilic or
hydrophobic depending on the fluid. Id. at 4–5. The Examiner concludes that
it would have been obvious to provide a coating on the inner diameter of
Salpeter’s fill conduit to reduce gas bubbles therein, ensuring less
interference with the optical detector. Id. at 5.
Appellant argues that Salpeter teaches away from such a modification
to the fill conduit by purposefully introducing air bubbles into the process
samples and eliminating or reducing such bubbles only when (and not
before) the sample is within the measurement cell. Appeal Br. 6–7.
Appellant asserts that Salpeter specifically introduces air bubbles to the flow
cell, including while within the fill conduit, to permit sample separation,
which avoids averaging, to improve mixing, and to scrub the wall of the
glass tubes. Id. at 6; Reply Br. 2–3. As such, Appellant contends that an
ordinary artisan would not have been motivated to modify Salpeter’s fill
conduit to reduce and/or eliminate air bubbles therein. Reply Br. 3.
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Application 14/626,050

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Appellant’s argument is persuasive of reversible error in the
Examiner’s obviousness rejections because Salpeter teaches away from a
modification to the fill conduit to reduce or eliminate air bubbles therein.
When the prior art teaches away from a combination, that combination is
more likely to be nonobvious, KSR Int’l., 550 U.S. at 417. “A reference may
be said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Further, references in a combination may be said to teach away where their
combined teachings would produce a “seemingly inoperative device.” See In
re Sponnoble, 405 F.2d 578, 587 (CCPA 1969). In addition, there is no
suggestion or motivation to make a proposed modification if doing so would
render the prior art invention being modified unsatisfactory for its intended
purpose. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984); see also DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed.
Cir. 2009) (“[T]he ‘predictable result’ discussed in [KSR] refers not only to
the expectation that prior art elements are capable of being physically
combined, but also that the combination would have worked for its intended
purpose.”).
As Appellant asserts and the Examiner acknowledges (Ans. 3),
Salpeter deliberately introduces air bubbles into the flow cell, including the
structures the Examiner identifies as corresponding to a fill conduit, for the
express purpose of separating samples to avoid averaging and to scrub the
Appeal 2020-000195
Application 14/626,050

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walls of the flow cell.3 Although the Examiner finds that Salpeter removes
the bubbles prior to reaching the measurement cell, we note that Salpeter’s
venting tube 69 is disposed directly above measurement cell 62 at the
connection of tube 70 to this cell. As Appellant asserts, bubbles separating
the samples in Salpeter’s fill conduit are vented or removed only upon
delivery of each sample to measurement cell 62. Therefore, the Examiner’s
finding that Salpeter removes bubbles prior to reaching the measurement cell
misinterprets Salpeter’s disclosure.
Moreover, the Examiner fails to adequately explain how modifying
Salpeter’s fill conduit to provide a hydrophobic coating on an inner diameter
would not have rendered Salpeter’s apparatus unsatisfactory for its defined
purpose. As the Examiner finds, providing Salpeter’s fill conduit with a
hydrophobic coating on an inner diameter thereof would reduce or eliminate
bubbles therein. However, Salpeter deliberately introduces bubbles to
separate samples to avoid averaging. Removing such bubbles in the fill
conduit would eliminate sample separation thereby causing averaging, which
Salpeter expressly discourages.

3 The Examiner finds that Salpeter’s measurement cell corresponds to flow
cell 28, but finds that reservoir 60, inlet pipe 66, and U-shaped tube 70
correspond to a fill conduit operably interposed between reaction cell 24 and
measurement cell 28. Final Act. 3–4. However, reservoir 60, inlet pipe 66,
and U-shaped tube 70 are all part of flow or measurement cell 28, whereas
tube 26 is operably interposed between reaction cell 24 and measurement
cell 28. For purposes of this Decision, we interpret Salpeter’s measuring
chamber 62 as corresponding to the claimed measurement cell such that
reservoir 60, inlet pipe 66, and U-shaped tube 70 may properly correspond
to the claimed fill conduit.
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Application 14/626,050

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Accordingly, we do not sustain the Examiner’s obviousness rejections
because the Examiner has not carried the burden of establishing, by a
preponderance of the evidence, the factual basis for the conclusion that the
claimed invention would have been obvious.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Appeal and Reply Briefs, the Examiner’s decision to reject claims
1 and 3–9 under 35 U.S.C. § 103 as unpatentable over Salpeter in view of
Blank, alone or further in view of Ludowise, is reversed.
DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5–9 103 Salpeter, Blank 1, 5–9
3, 4 103 Salpeter, Blank,
Ludowise
3, 4
Overall
Outcome
1, 3–9

REVERSED