Takaei Kitagawa

Patent Trials and Appeals Board

Aug 22, 2019

14643135 - (D) (P.T.A.B. Aug. 22, 2019)

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.
14/643,135 03/10/2015 Takaei Kitagawa 1451340.109US5 9151
21874 7590 08/22/2019
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
ZALASKY, KATHERINE M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
08/22/2019 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKAEI KITAGAWA
Appeal 2018-008598
Application 14/643,135
Technology Center 1700
Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
DEBRA L. DENNETT, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Shimadzu Corporation,
appeals from the Examiner’s decision to reject claims 2–5, 8, 9, and 11

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 Shimadzu
Corporation. Appeal Br. 2.
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under 35 U.S.C. § 103(a) as obvious over Gerhardt2 in view of Richardson3,
Jameson4, and Weissgerber5. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to a split-type gradient solution sending
apparatus that mixes two solutions and sends the mixture to, for instance, a
liquid chromatography column. Claim 2; Spec. ¶ 1.
Figure 1 depicts an embodiment of the apparatus. The apparatus
includes two lines for conveying the solution (solution sending flow
channels 13a, 13b). Each solution sending flow channel (13a, 13b) includes
a pump (2a, 2b) and a splitter (3a, 3b). Spec. ¶¶ 32, 34. The splitters split
the solution and deliver one portion of each to a mixer (5) where the two
solutions are mixed. Spec. ¶ 34.
According to the Specification, the solutions are mixed at different
ratios to create a gradient rise where the concentration ratio becomes 100:0
or 0:100 between the two solutions. Spec. ¶ 45. At very small solution
concentrations, there is a risk of back flow. Spec. ¶ 46. The apparatus
includes a control device (gradient controller 11) that sets the flow rate of
the solution to zero. Spec. ¶ 47. Flow meter 4a confirms whether or not the
actual rate becomes zero. Id. When actual flow rate computing unit 24 (Fig.
2) of control device 11 detects back flow, the number of revolutions of the

2 Gerhardt et al., US 2005/0109698 A1, published May 26, 2005.
3 Richardson et al., US 2004/0108273 A1, published June 10, 2004.
4 Jameson et al., US 5,360,320, issued Nov. 1, 1994.
5 Weissgerber et al., WO 2005/050190 A2, published June 2, 2005. The
Examiner cites to the corresponding U.S. publication, US 2006/0288803,
without objection by Appellant. Thus, we rely on and cite to the U.S.
publication.
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Application 14/643,135

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pump motor (revolving speed) is adjusted so the actual flow rate becomes
zero. Id.
Claim 2 is illustrative of the claims on appeal. The last clause of the
claim is particularly at issue.
2. A gradient solution sending apparatus comprising:
a plurality of solution sending flow channels,
each solution sending flow channel including a
solution sending pump and a splitter,
the solution sending pump sending a solution of a
mobile phase, and
each splitter delivering a part of the mobile phase
passing through each solution sending pump to a mixer
and discharging the rest of the mobile phase from the
solution sending flow channel;
the mixer located downstream of the solution sending
flow channels so as to mix the mobile phases sent through the
solution sending flow channels;
a control device configured to control the solution
sending flow rate of the mobile phase in each solution sending
flow channel based on a predetermined solution sending flow
rate of the mobile phase for gradient;
a flow meter configured to measure a solution sending
flow rate of the mobile phase in each solution sending flow
channel,
wherein the control device comprises an actual flow rate
computing unit taking in a signal from the flow meter and
computing an actual flow rate of the mobile phase, and
wherein when the solution sending flow rate of one of the
mobile phases is set to zero in a starting of the gradient, a
solution sending operation is not stopped in the solution
sending pump on a side of which the solution sending flow rate
is set to zero, and the control device controls a revolving speed
of the solution sending pump on the side of which the solution
sending flow rate is set to zero so as to keep the actual flow rate
measured by the actual flow rate computing unit being zero.

Appeal Br. of May 14, 2018, Claim Appendix (Clean Copy) 2.
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OPINION
Appellant does not argue any claim apart from the others. We select
claim 2 as representative for deciding the issues on appeal.
We sustain the rejection for the well-supported reasons provided by
the Examiner in the Final Action and Answer. We add the following for
emphasis.
There is no dispute that Gerhardt teaches a gradient solution sending
apparatus including the flow channels, splitters, solution sending pumps,
mixer, and flow meter required by claim 2. Compare Final 3–4, with Appeal
Br. 9–14. The Examiner finds that Gerhardt teaches a control device
(system controller 219) configured to adjust the pumps (206, 218) to keep an
actual flow rate at the previously determined flow rate. Final 3 (citing
Gerhardt ¶¶ 66–71). According to the Examiner:
the structure of the system controller of Gerhardt is configured
to adjust the pumps to keep the actual flow rate at the set flow
rate. Therefore, the system controller is inherently capable of
making this adjustment at any set flow rate, such as when the
flow rate is set to zero. The structure of the controller (i.e. the
programming required to maintain the flow rate at the preset
flow rate) does not appear to change based upon the numerical
value of the preset flow rate.
Final 4.
The Examiner acknowledges that Gerhardt does not disclose “that the
controller is configured to make these adjustments using the revolving speed
of a drive motor of the pumps specifically in response to variations between
the preset flow rate (such as zero) and the actual measured flow rate, such as
during back flow.” Final 4. The Examiner finds that “[i]t is well established
in the art, however, to make adjustments in chromatography gradient
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delivery systems in response to detection of back flow” and relies on
Richardson, Jameson, and Weissgerber to find a reason “to configure the
system controller, flow sensors, and pumps of Gerhardt to detect back flow
and in response to back flow, adjust the speed of the pumps to compensate
for the back flow and return the pressure to the preset pressure.” Final 5.
The reason is to “better control the composition of the gradient flow and
performance of the pumps, as suggested by Richardson and Jameson.” Id.
Appellant contends that Gerhardt teaches away from the adjustment of
the pumps to keep the actual flow rate at the set flow rate. Appeal Br. 10.
Appellant points to Gerhardt’s opening of a waste valve 221 during system
startup. Id. However, we agree with the Examiner’s response that the waste
valve 221 is not used to adjust the flow rate to a set flow rate as argued by
Appellant. Ans. 7–8. During startup, Gerhardt opens waste valve 221 to
vent trapped air and to flush solvent trapped in the fluidic cross pressure
transducer 217 or tube leading to it. Gerhardt ¶ 72. Waste valve 221 resides
in a different line than lines 203 and 205. It is lines 203 and 205 that deliver
the solutions to mixer 216 and it is the flow rate within lines 203 and 206
that must be controlled. The evidence supports the Examiner’s finding that
Gerhardt expressly discloses using the system controller 219 to adjust the
first pump 206 and second pump 218 flow delivery rates to control the flow
rates in lines 203 and 206. Ans. 8; see also Gerhard ¶ 69. Thus, Appellant
has not persuaded us of a reversible error in the Examiner’s findings as to
Gerhardt.
Appellant’s other arguments directed to the secondary references are
not persuasive of reversible error and are well-addressed by the Examiner’s
response (Ans. 9). Adjusting the revolving speed of a pump is a well-
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established way of controlling the flow rate of the solution being pumped.
This is evidenced by, for instance, Jameson. Jameson col. 2, l. 43–col. 3, l.
DECISION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
2–5, 8, 9, 11 § 103(a)
Gerhardt,
Richardson,
Jameson,
Weissgerber
2–5, 8, 9,
11

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