TA Instruments - Waters L.L.C.

Patent Trials and Appeals Board

Jul 1, 2020

15160615 - (D) (P.T.A.B. Jul. 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.
15/160,615 05/20/2016 Jason L. Chinavare B-2664-US2 8801
13871 7590 07/01/2020
WOMBLE BOND DICKINSON (US) LLP / Waters
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
MORELLO, JEAN F
ART UNIT PAPER NUMBER
2861
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
BostonDocket@wbd-us.com
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON L. CHINAVARE,
SUNOJ NARAYANAN, DAVID L. DINGMANN,
and LITO CRUZ MEJIA
Appeal 2019-005302
Application 15/160,615
Technology Center 2800

Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and LILAN REN,
Administrative Patent Judges.

FRANKLIN, 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 1–8. 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(a). Appellant identifies the real party in interest as TA Instruments
Waters L.L.C. Appeal Br. 2.
Appeal 2019-005302
Application 15/160,615

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
1. An apparatus for testing a prosthesis, comprising:
a first conduit frame disposed to be coupled to a first end
of a conduit, wherein the conduit is disposed to receive a
prosthesis;
a second conduit frame disposed to be coupled to a
second end of the conduit opposite the first end;
a movable shaft disposed to cause relative motion
between the first conduit frame and the second conduit frame,
the prosthesis thereby being exposed to a tensile or a
compressive force as a result of the relative motion; and
a pump fluidly connected to the conduit to provide a flow
of fluid through the conduit and the prosthesis at least while the
movable shaft is in motion.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Lorenz US 8,196,478 B2 June 12, 2012
Conti (“Conti ’534”) US 2007/0185534 A1 Aug. 9, 2007
Weinberg US 2011/0146385 A1 June 23, 2011
J. Conti, A Comprehensive Protocol and Procedural Considerations
Designed to Evaluate the Shedding of Particles from Drug Eluting Stents,
Materials & Processes for Med. Devices Conf. 1–5 (2007)
REJECTIONS
1. Claims 1, 5, 6, and 8 are rejected under 35 U.S.C. § 103 as
being unpatentable over Weinberg in view of Lorenz.
2. Claims 2–4 are rejected under 35 U.S.C. § 103 as being
unpatentable over Weinberg in view of Lorenz and Conti.
Appeal 2019-005302
Application 15/160,615

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3. Claim 7 is rejected under 35 U.S.C. § 103 as being obvious
over Weinberg in view of Lorenz and Conti, and further in view of
Conti ’534.
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, we are persuaded of
reversible error in the appealed rejections for the reasons provided by
Appellant, and add the following for emphasis.
We can focus on the claim element of “a pump fluidly
connected to the conduit to provide a flow of fluid through the conduit
and the prosthesis at least while the movable shaft is in motion” in
making our determinations herein. On the one hand, it is the
Examiner’s position that this claim element is suggested by the
combination of Weinberg in view of Lorenz for the reasons provided
on pages 3–4 of the Final Office Action and on pages 4–7 of the
Answer.
On the other hand, Appellant disagrees with this position for the
reasons provided on pages 6–16 of the Appeal Brief and on pages 2–5
of the Reply Brief.
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The Examiner recognizes that Weinberg does not teach this claim
element, so relies upon Lorenz for curing this deficiency. Final Act. 4.
However, we agree with Appellant’s position that Lorenz inadequately
provides this missing element for the reasons stated by Appellant in the
record. Specifically, the Examiner relies upon col. 15, ll. 9–13 of Lorenz
which discloses that “[i]t is further possible to let water flow through the
tube 17 . . .” Ans. 3–4. However (as pointed out by Appellant on pages 2–3
of the Reply Brief), Lorenz does not disclose or suggest the presence of the
claim element of “a pump fluidly connected to the conduit to provide a flow
of fluid through the conduit”, as required by claim 1. That is, Appellant
argues Lorenz does not teach to attach insertable holder (15) of Lorenz to a
pump. Appellant also argues that the rejection does not address whether and
how the attachment of Lorenz would allow for fluid connection to a pump in
the manner as claimed.2 Id.
Appellant argues that the rejection therefore does not adequately
account for this missing claimed feature and does adequately explain how to
make the proposed modification to meet the claim in this regard. Reply Br.
3. We agree. Hence, a claim element is not adequately addressed in
Rejection 1. We note that “[w]hen determining whether a claim is obvious,
an examiner must make a searching comparison of the claimed invention,
including all its limitations, with the teaching of the prior art.” In re Ochiai,
71 F.3d 1565, 1572 (Fed. Cir. 1995). Thus, “obviousness requires a
suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Corp., 349

2 The Examiner acknowledges this in the last full paragraph on page 4 of the
Answer yet does not explain how the proposed combination of applied art
meets this claimed feature.
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Application 15/160,615

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F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985
(CCPA 1974)). See also In re Wada and Murphy, Appeal No. 2007- 3733
(January 14, 2008) (a Board decision in support of the view that an examiner
cannot skip a claim limitation when rejecting a claim as being obvious).
Furthermore, “[t]o imbue one of ordinary skill in the art with knowledge of
the invention in suit, when no prior art reference or references of record
convey or suggest that knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught is used
against its teacher.” See W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d
1551, 1553 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
We therefore reverse Rejections 1–3 (the Examiner does not rely upon
the additionally applied references in Rejections 2 and 3 to cure the stated
deficiencies of the combination of Weinberg in view of Lorenz).
CONCLUSION
We reverse the Examiner’s decision.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 5, 6, 8 103 Weinberg, Lorenz 1, 5, 6, 8
2–4 103 Weinberg, Lorenz, Conti 2–4
7 103 Weinberg, Lorenz, Conti, Conti ’534 7
Overall
Outcome
1–8
REVERSED