Waters Technologies Corporation

Patent Trials and Appeals Board

May 1, 2020

14359396 - (D) (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.
14/359,396 05/20/2014 Kurt D. Joudrey W-712-US2 (WAT-039US) 9554
14299 7590 05/01/2020
Schmeiser, Olsen & Watts LLP
33 Boston Post Road West
Suite 410
Marborough, MA 01752
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@iplawusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KURT D. JOUDREY and MARUTH SOK
Appeal 2019-004800
Application 14/359,396
Technology Center 1700
Before LINDA M. GAUDETTE, GRACE KARAFFA OBERMANN, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 10, 11, 13, 24, and 27. See Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).

1 This Decision refers to the Specification filed May 20, 2014 (“Spec.”),
Final Office Action dated June 25, 2018 (“Final Act.”), Appeal Brief dated
Nov. 30, 2018 (“Appeal Br.”), Corrected Appeal Brief dated Jan. 14, 2019
(“Corrected Appeal Br.”), and Examiner’s Answer dated Apr. 1, 2019
(“Ans.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Waters Technologies
Corporation. Appeal Br. 1.
Appeal 2019-004800
Application 14/359,396
2
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a liquid chromatography system including a
selector valve for switching between carbon dioxide-based supercritical fluid
chromatography and high- or ultra- performance liquid chromatography.
Spec. 1. Claim 10, reproduced below, is illustrative of the claimed subject
matter:
10. A chromatography system, comprising:
a solvent delivery system comprising:
a pumping system including an actuator with an inlet; and
a selector valve in fluidic communication with the inlet of
the actuator,
the selector valve being configured to switch between a
first position, in which the selector valve provides a fluidic
pathway between the inlet of the actuator and a source of fluid
maintained at a first pressure, and a second position, in which
the selector valve provides a fluidic pathway between the inlet of
the actuator and a source of pressurized fluid maintained at a
pressure greater than atmospheric pressure,
wherein the chromatography system is a CO2–based
chromatography system when the selector valve is in the second
position and is a liquid chromatography system when the selector
valve is in the first position
and the selector valve has a third position wherein
both the fluidic pathway between the inlet of the actuator
and the source of fluid maintained at the first pressure and
the fluidic pathway between the inlet of the actuator and
the source of pressurized fluid are blocked.
Corrected Appeal Br. (Claims Appendix) (emphases and paragraphing added
for readability). Independent claim 24 is similar to claim 10 in regard to
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Application 14/359,396
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reciting fluidic pathways between the inlet of the actuator and a source of
fluid or pressurized CO2. Id. Our decision focuses on the limitations
emphasized above.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Cortes
Kochersperger
US 5,139,681
US 5,656,034
Aug. 18, 1992
Aug. 12, 1997

REJECTIONS
1. Claims 10 and 11 are rejected under pre–AIA 35 U.S.C. § 103(a) as
being unpatentable over Cortes. Final Act. 2.
2. Claims 13, 24, and 27 are rejected under pre–AIA 35 U.S.C. § 103(a)
as being unpatentable over the combination of Cortes and
Kochersperger. Final Act. 4.

OPINION
Rejection 1
The Examiner finds that Cortes teaches a chromatography system
comprising pump 34 inherently having an actuator and an inlet with selector
valves 18, 20, 22, and 24 in fluidic communication with the inlet of the
actuator and the pump. Final Act. 2 (citing Cortes Figs. 2–5, 4:46–55, 5:20–
55). The Examiner further finds that Cortes teaches that the selector valve at
a first position provides a fluidic pathway between the analyzing system and
a source of fluid maintained at a first pressure. Final Act. 2–3 (citing Cortes
Fig. 3). The Examiner also finds that Cortes teaches a second position in
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Application 14/359,396
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which the selector valve provides a fluidic pathway between the inlet of the
actuator and a source of pressurized fluid maintained at a pressure greater
than the atmospheric pressure in a CO2–based chromatography system.
Final Act. 3 (citing Cortes Fig. 5, 4:46–55, 7:29–56, 3:53–68).
The Examiner acknowledges that Cortes does not teach that the first
position provides a fluidic pathway with the inlet of the actuator. Id. The
Examiner, however, finds that Cortes teaches (a) multiple selector valves
which are used to control fluid flow, inherently with a pump, from different
sources and that (b) the multiple selector valves may be combined into a
single valve and can be switched simultaneously. Id. (citing Cortes 4:56–70,
5:1–8, 5:20–42). The Examiner determines that positioning selector valves
in conjunction with pumps in order to control desired flow through a
chromatography system would have been obvious, in order to direct fluid in
the desired direction. Id.
Appellant argues that Cortes does not disclose a liquid
chromatography system with “a fluidic pathway between the inlet of the
actuator and a source of fluid maintained at a first pressure” as recited in
claim 10, because if Cortes were interpreted to have such a fluidic pathway,
it would be upstream of injector 14 and thus outside the chromatography
system. Appeal Br. 6–7. For the same reason, Appellant argues that Cortes
does not disclose a chromatography system with “a fluidic pathway between
the inlet of the actuator and a source of pressurized fluid maintained at a
pressure greater than atmospheric pressure” as recited in claim 10. Id.
Appellant’s argument persuasively identifies reversible error. Claim
10 requires that “the selector valve provides a fluidic pathway between the
inlet of the actuator and” a source of fluid maintained at a first pressure (in
the first position) and a source of pressurized fluid maintained at a pressure
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greater than atmospheric pressure (in the second position). Corrected Appeal
Br. (Claims Appendix). The Examiner’s finding that the actuator recited in
claim 10 corresponds to Cortes’s injector 14 or syringe pump 34 necessitates
that the sources of fluid for the respective injector and syringe pump are
outside Cortes’s system. In both cases, no part of Cortes’s multiple selector
valves is “between” the actuator of the injector or syringe pump and the
sources of fluid, and therefore, the selector valve does not provide a fluidic
pathway “between” the injector or syringe pump and the source of fluid.
The Examiner’s argument that “fluidic communication” must be interpreted
under the broadest reasonable interpretation (see Ans. 12) does not respond
to Appellant’s argument or remedy the error in the rejection, because
Appellant’s argument relates to the limitations “fluidic pathway between the
inlet of the actuator and a source” of fluid (maintained at a first pressure, or
at a pressure greater than atmospheric pressure).
Appellant also argues that the rejection should be reversed because the
Examiner does not provide a sufficient rationale for why a person of
ordinary skill would modify Cortes to create alternative fluidic pathways for
a chromatography system configured to alternate between liquid and
supercritical CO2 sources, in light of Cortes’s teaching of using analyte
output from liquid chromatography as an input to supercritical CO2
chromatography. Appeal Br. 11.
We agree with Appellant that the Examiner’s rationale for modifying
Cortes is conclusory, and insufficient to support a determination of
obviousness. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness”). The
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Application 14/359,396
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stated rationale of “direct[ing] fluid in the desired direction” through a
chromatography system (Ans. 3) does not explain why a person of ordinary
skill would combine Cortes’s multiple valves into a switchable selector
valve as recited in claim 10, in view of Cortes’s teaching of using liquid
chromatography and supercritical CO2 in tandem on the same analyte. Nor
does the Examiner’s rationale explain how the proposed modified fluidic
system of Cortes would “direct fluid in the desired direction.”
Accordingly, we reverse the rejection of claim 10. We reverse the
rejection of dependent claim 11 for the same reasons. Because we find
reversible error, we need not reach Appellant’s additional arguments for
reversal.
Rejection 2
With regard to the limitations of claim 24 relating to fluidic pathways
between the inlet of the actuator and a source of fluid or pressurized CO2,
that are similar to the corresponding limitations in claim 10, the Examiner’s
rejection is based on the same findings as to Cortes. Ans. 6–7. Further, the
Examiner acknowledges that Cortes does not teach a selector valve
comprising (a) a first position producing fluidic pathways between the first
port and the third port and between the pressurized CO2 source and the first
inlet of the first primary actuator and blocking the second port; (b) a second
position producing fluidic pathways between the second port and the third
port and between the solvent reservoir and the first inlet of the first primary
actuator and blocking the first port; (c) a third position wherein the fluidic
pathways between the first port and the third port, between the pressurized
CO2 source and the first inlet of the first primary actuator, between the
second port and the third port, and between the solvent reservoir and the first
inlet of the first primary actuator are blocked. Id. at 9. The Examiner
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determines, however, that rearranging Cortes’s ports, CO2 source, actuators,
and solvent reservoir would have been obvious in order to control desired
fluid flows through the system. Id.
Appellant’s arguments for reversal of Rejection 2, with regard to the
limitations that are similar to those of claim 10, are persuasive for the same
reasons discussed above. Further, the Examiner does not rely upon
Kochersperger for any disclosure that remedies the deficiencies in Rejection
1. Accordingly, we reverse the rejection of claim 24 and dependent claims
13 and 27 for the same reasons discussed above. Because we find reversible
error, we need not reach Appellant’s additional arguments for reversal.
CONCLUSION
The Examiner’s rejections are REVERSED.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
10, 11 103(a) Cortes 10, 11
13, 24, 27 103(a) Cortes, Kochersperger 13, 24, 27
Overall
Outcome:
10, 11, 13,
24, 27

REVERSED