Ex Parte 7138061 et alDownload PDFPatent Trial and Appeal BoardNov 30, 201295000497 (P.T.A.B. Nov. 30, 2012) Copy Citation 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. 95/000,497 08/21/2009 7138061 12100.1003 7795 25099 7590 11/30/2012 DAVID M QUINLAN, PC 32 NASSAU STREET SUITE 300 PRINCETON, NJ 08542 EXAMINER STEIN, STEPHEN J ART UNIT PAPER NUMBER 3991 MAIL DATE DELIVERY MODE 11/30/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Biotage AB Requester v. Scientific Plastic Products, Inc. Patent Owner and Appellant ____________ Appeal 2012-007322 Reexamination Control 95/000,497 Patent 7,138,061 B2 Technology Center 3900 ____________ Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and RAE LYNN P. GUEST, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-007322 Reexamination Control 95/000,497 Patent 7,138,061 B2 2 Patent Owner Scientific Plastic Products, Inc. (“Patent Owner”) appeals under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to reject claims 1-11, and 21.1 Third-Party Requester Biotage AB (hereinafter “Requester”) urges that the Examiner’s decision must be affirmed.2 We have jurisdiction under 35 U.S.C. §§ 134(b) and 315(a). We affirm the Examiner’s decision to reject claims 1-11 and 21. STATEMENT OF THE CASE United States Patent 7,138,061 B2 (hereinafter the “‘061 Patent”), which is the subject of the current inter partes reexamination, issued to Samuel A. Ellis and Jeffrey L. Harlan on November 21, 2006 from Application 10/842,288, filed May 10, 2004. The ‘061 Patent is related to United States Patent 7,381,327 B2, which issued June 3, 2008 from Application 11/125,017, which application claims to be a continuation-in- part of the ‘061 Patent and which is the subject of reexamination control 95/000,495 (Appeal No. 2012-007321). The ‘061 Patent is also related to United States Patent 7,410,571 B2, which issued August 12, 2008 from Application 11/476,292, which application claims to be a divisional of the ‘061 Patent and which is the subject of reexamination control 95/000,496 (Appeal No. 2012-012468). 1 See Patent Owner’s Appeal Brief 1 (filed September 16, 2011) (hereinafter “PO App. Br.”); Examiner’s Answer (mailed November 18, 2011) (hereinafter “Ans.”); Right of Appeal Notice (mailed May 5, 2011) (hereinafter “RAN.”). 2 See Requester’s Respondent Brief (filed October 14, 2011) (hereinafter “Req. Resp. Br.”). Appeal 2012-007322 Reexamination Control 95/000,497 Patent 7,138,061 B2 3 We are also informed that the ‘061 Patent, the ‘571 Patent, and the ‘327 Patent are the subject of litigation styled Scientific Plastics Products, Inc. v. Biotage AB et al., Case No. 3:09-cv-00677 (S.D. Cal.), which has been stayed. (PO App. Br. 1.) We heard oral arguments from Patent Owner and Requester in these appeals on August 15, 2012, a transcript of which was entered into the record on October 11, 2012.3 The ‘061 Patent relates to low pressure liquid chromatography. (Col. 1, ll. 5-7.) Claim 1, which is illustrative of the appealed subject matter, reads as follows (emphasis added): 1. A method for a user to perform low pressure liquid chromatography, comprising: placing at least one of a material to be analyzed or a chromatographic packing material in a tubular polymer container having an outlet port located at a downstream end of the container and configured for use with chromatographic equipment, the container having container threads formed on an upstream end of the container; threadingly engaging threads on a polymer cap with the container threads, the cap having an inlet port on an upstream end of the cap; and sealing the cap to the container by tightening the threads and engaging a seal between the cap and the container, the seal providing a fluid tight seal below about 100 psi suitable for LPLC use, wherein the sealing step comprises abutting first and second oppositely inclined surfaces on the cap with first and second oppositely inclined surfaces on opposing sides of a lip of the container, the abutting surfaces being generally aligned. 3 Pursuant to 37 C.F.R. § 41.73 (e)(1), the arguments considered in rendering this decision are those which were relied upon in the briefs. Appeal 2012-007322 Reexamination Control 95/000,497 Patent 7,138,061 B2 4 (PO App. Br. 30, Claims App’x.) Patent Owner contests only the rejections of claims 1-11 and 21 in this appeal. (PO App. Br. 1.) Thus, Patent Owner contests the Examiner’s decision to reject the claims as follows: I. Claims 1-11 and 21 under 35 U.S.C. § 103(a) as obvious over Yamada (U.S. Patent No. 5,693,223, issued December 2, 1997) and King (WO 02/42171 A1, published May 30, 2002); II. Claims 3,4, 8-11, and 21 under 35 U.S.C. § 103(a) as obvious over Yamada, King, and Hargro (U.S. Patent No. 6,139,733, issued October 31, 2000); III. Claims 4-7 under 35 U.S.C. § 103(a) as obvious over Yamada, King, and Pettersson (U.S. Patent No. 6,280,616 B1, issued August 28, 2001); IV. Claim 6 under 35 U.S.C. § 103(a) as obvious over Yamada, King, Pettersson, and Colvin, Jr. (U.S. Patent No. 4,894,152, issued January 16, 1990); V. Claims 1-11 and 21 under 35 U.S.C. § 103(a) as obvious over Yamada and Strassheimer (U.S. Patent No. 5,100,013, issued March 31, 1992); VI. Claims 1-4, 8-11, and 21 under 35 U.S.C. § 103(a) as obvious over Yamada, Golias (U.S. Patent No. 4,341,635, issued July 27, 1982), and King; and VII. Claims 1-4, 8-11, and 21 under 35 U.S.C. § 103(a) as obvious over Yamada, Golias, and Strassheimer. Appeal 2012-007322 Reexamination Control 95/000,497 Patent 7,138,061 B2 5 Patent Owner does not contest the following rejections: VIII. Claims 12-20 and 22 under 35 U.S.C. § 103(a) as obvious over Yamada; IX. Claims 12-15, 19, 20, and 22 under 35 U.S.C. § 103(a) as obvious over Yamada, Golias, and Hargro; X. Claims 12-20 and 22 under 35 U.S.C. § 103(a) as obvious over Yamada and Golias; XI. Claims 12-15, 19, 20, and 22 under 35 U.S.C. § 103(a) as obvious over Yamada, Golias, and King; XII. Claims 15-18 under 35 U.S.C. § 103(a) as obvious over Yamada, Golias, and Pettersson; XIII. Claim 17 under 35 U.S.C. § 103(a) as obvious over Yamada, Golias, Pettersson, and Colvin, Jr.; XIV. Claims 12-20, and 22 under 35 U.S.C. § 103(a) as obvious over Yamada, Golias, and Strassheimer; and XV. Claims 12, 14, 15, and 22 under 35 U.S.C. § 103(a) as obvious over Golias and Innovative Tools for Molecular and Cell Biology, MoBiTec GmbH, Gottingen, Germany, 1999 (hereinafter, “Mobitec”). Patent Owner additionally relies on the following as evidence: Declaration of Samuel A. Ellis executed March 14, 2011 (PO App. Br., Ex. L) Declaration of Suhas Kulkarni executed March 15, 2011 (PO App. Br., Ex. L) Appeal 2012-007322 Reexamination Control 95/000,497 Patent 7,138,061 B2 6 First Declaration of Jacob Berger executed January 25, 2010 (PO App. Br., Ex. K) Second Declaration of Jacob Berger executed March 15, 2011 (PO App. Br., Ex. L) Requester additionally relies on the following as evidence: First Declaration of Juha Esala executed February 24, 2010 (See PO App. Br., Ex. K) Second Declaration of Juha Esala executed April 15, 2011 (See PO App. Br., Ex. M) First Declaration of William H. Pearson executed February 25, 2010 (See PO App. Br., Ex. K) Second Declaration of William H. Pearson executed April 14, 2011 (See PO App. Br., Ex. M) ISSUES Although the claims on appeal are subject to many grounds of rejection, we confine our discussion to Rejections I and V, the rejections of claims 1-11 and 21 over Yamada and King, and Yamada and Strassheimer, as those rejections are dispositive of the claims on appeal. Therefore, we do not reach other rejections on appeal. Moreover, Patent Owner does not present separate arguments with respect to the dependent claims argued on appeal. Accordingly, we confine our discussion to independent claim 1, with claims 2-11 and 21 standing or falling with claim 1. Appeal 2012-007322 Reexamination Control 95/000,497 Patent 7,138,061 B2 7 Rejections I & V The Examiner found that Yamada discloses the method as claimed except that Yamada fails to disclose the inclined abutting surfaces of the cap and the lip of the container as claimed. (RAN 6-7.) The Examiner found that King discloses sealing surfaces that have oppositely inclined surfaces with respect to the cap and rim of the container disclosed therein. (RAN 7.) The Examiner stated that King is analogous art because it solves a known problem as identified in the ‘061 Patent, that of achieving a fluid tight seal at elevated pressures between a removable threaded plastic cap and tubular container. (RAN 7.) The Examiner concluded that it would have been obvious to incorporate the sealing configuration of King into Yamada “to solve the known problem of achieving a resealable chromatography cartridge allowing the user access to the inside of the cartridge prior to being sealed while functioning at LPLC pressures.” (RAN 7-8.) The Examiner set forth a similar rationale for the rejection of Yamada in view of Strassheimer. (RAN 12-13.) Patent Owner contends that King and Strassheimer are not analogous art. (PO App. Br. 4.) Specifically, Patent Owner argues that the Examiner improperly defined the purpose of the invention in the ‘061 Patent and as a result improperly found that King and Strassheimer were reasonably pertinent to the problem with which the inventors were involved, and thus were analogous art. (PO App. Br. 4-5.) Patent Owner further contends that the Examiner did not provide sufficient reasoning to combine Yamada with King or Strassheimer, based on erroneously identifying that LPLC cartridge Appeal 2012-007322 Reexamination Control 95/000,497 Patent 7,138,061 B2 8 leakage was a problem at the time the ‘061 Patent was filed. (PO App. Br. 5.) Accordingly, the dispositive issues on appeal are: 1. Did the Examiner err in finding that King and Strassheimer are analogous art? 2. Did the Examiner err in concluding that it would have been obvious to combine Yamada with King or Strassheimer to arrive at the sealing arrangement recited in the method of claim 1? FINDINGS OF FACT (“FF”) 1. In the Background of the Invention, the ‘061 Patent discloses “for low pressure liquid chromatography (LPLC) or flash chromatography the fluid may be passed through a sorbent at a pressure of 20-100 psi. This operating pressure is sufficiently high that these cartridges, which have relative large diameter bodies leak at the seams. Threaded connections are thus not used to form the body when the body is made of polymers. Thus, these cartridges are traditionally made of plastic and have sonically welded ends. But even that welded construction will leak if there are defects in the welds.” (Col. 1, ll. 13-22.) 2. Yamada discloses a plastic column and column device for low pressure-high speed liquid chromatography including a head portion that is detachably fitted to an open end portion of a column body. (Col. 1, ll. 10-15, col. 2, ll. 29-41, col. 5, ll. 20- Appeal 2012-007322 Reexamination Control 95/000,497 Patent 7,138,061 B2 9 30.) The inserting portion of the head is provided with a threaded portion. (Col. 2, ll. 58-67.) 3. Yamada discloses an O-ring that is provided in an annular groove of the head portion to ensure liquid tightness. (Col. 9, ll. 40-42; Fig. 4.) 4. King discloses improved seals for containers to provide gas- tight and liquid-tight seals, such as in carbonated beverage containers. (Page 1, ll. 4-6.) 5. King discloses that existing containers used an elastomeric liner, which when pressed against the lip of the bottle neck provided a tight seal as a result of the compression between the soft, deformable liner and the lip of the container. (Page 1, ll. 16-20.) 6. King discloses that liners can become brittle or damaged as a result of overtightening when excessive pressure is applied to the liner. (Page 1, ll. 21-23.) 7. King discloses a threaded cap having flexible sealing fins 10, 11, which ensure a tight seal when abutted against stop surfaces 12 and 13. (Page 8, l. 21- page 9, l. 10, Figs. 2-3.) 8. Strassheimer discloses a threaded plastic bottle that assures proper sealing in threaded plastic bottles, especially for carbonated beverage containers. (Col. 1, ll. 8-15.) 9. Strassheimer discloses that in the prior art: “A resilient ring or gasket is frequently placed between the rim of the container and Appeal 2012-007322 Reexamination Control 95/000,497 Patent 7,138,061 B2 10 the engaging surface of the cap in order to effect a pressure tight seal. However, with frequent use the gasket often deteriorates or is inadvertently discarded.” (Col. 1, ll. 16-20.) 10. Strassheimer discloses a taper on the lip region of the neck end of a plastic container that corresponds to a taper on the bottle cap. (Col. 1, l. 40 – col. 2, l. 4.) PRINCIPLES OF LAW Analogous Art Two criteria are relevant in determining whether prior art is analogous: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). Whether a reference in the prior art is “analogous” is a fact question. In re Clay, 966 F.2d at 658. Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010). “The Supreme Court’s decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398[] (2007), directs us to construe the scope of analogous art broadly, stating that ‘familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.’” Id. at 1238 (quoting KSR at 402) (emphasis added)(parallel citations omitted). Obviousness Section 103 “forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such Appeal 2012-007322 Reexamination Control 95/000,497 Patent 7,138,061 B2 11 that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR at 399. In KSR, the Supreme Court explained, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability.” KSR at 417. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. ANALYSIS Issue 1- Analogous Art We are not persuaded by Patent Owner’s arguments that King and Strassheimer are non-analogous art. Specifically, we do not agree with Patent Owner’s contentions that the purposes disclosed in the ‘061 Patent are so distinct from the purposes disclosed in King and Strassheimer that one of ordinary skill in the art would not have considered such references in improving the LPLC cartridges disclosed in Yamada. (PO App. Br. 10-18.) As instructed by our reviewing court, the scope of the analogous art inquiry is broad and based in fact. Wyers, 616 F.3d at 1237. Here, Patent Owner identifies one of the purposes of the ‘061 Patent as forming an LPLC cartridge that “would allow a user to easily vary and access the cartridge’s contents without destroying its ability to be sealed and function under LPLC pressures.” (PO App. Br. 11.) Appeal 2012-007322 Reexamination Control 95/000,497 Patent 7,138,061 B2 12 Patent Owner objects to the Examiner’s and Requester’s characterization of the ‘061 Patent disclosure in the Background of the Invention regarding threaded connections as identifying a purpose or a problem to be solved in the ‘061 Patent. (PO App. Br. 12-13.) Specifically, Patent Owner contends that the remarks “simply explain why the industry used sonic welding, which the inventors in fact identify as a problem.” (PO App. Br. 12.) We do not agree with Patent Owner. The ‘061 Patent identifies that maintaining operating pressure is a consideration for LPLC cartridges. (FF 1.) In this regard, the ‘061 Patent states in the Background of the Invention that existing cartridges leak at the seams, and immediately following this sentence further states: “Threaded connections are thus not used to form the body when the body is made of polymers.” (FF 1, emphasis added.) As a result, we are not persuaded by Patent Owner’s arguments that the only leakage issues identified in the ‘061 Patent relate to defects in welded cartridges. (PO App. Br. 13.) Rather, from this passage, we are of the opinion that one of ordinary skill in the art would take away that threaded connections would be prone to leaking where the threads interact between the polymer cap and polymer body in LPLC cartridges. This understanding is relevant to a purpose of the invention in the ‘061 Patent identified by Patent Owner of allowing a user to easily vary and access the cartridge’s contents without destroying its ability to be sealed and function under LPLC pressures. (App. Br. 11.) While Patent Owner contends that Yamada does not identify any leakage problems in the disclosed LPLC cartridge containing a threaded polymer cap and threaded polymer container (PO App. Br. 14, 16 citing First Appeal 2012-007322 Reexamination Control 95/000,497 Patent 7,138,061 B2 13 Berger Decl. paras. 19, 22, and 25), Yamada nevertheless discloses an LPLC cartridge, and is thus analogous art in that is in the same field of endeavor as Patent Owner. (FF 2.) King and Strassheimer both disclose that in containers using a threaded polymer cap, rings, gaskets, and liners are used to ensure a pressure tight seal, but that such liners often deteriorate, or are damaged due to frequent use or overtightening. (FF 5, 9.) Such issues are relevant to the Patent Owner’s identified purpose as discussed above as they relate to providing a resealable cartridge that achieves a fluid tight seal at elevated pressure. Therefore, it was reasonable for the Examiner to find that one of ordinary skill in the art would have found the disclosures of King and Strassheimer relevant in constructing a plastic container that achieves a fluid tight seal at elevated pressure, while preserving access to the container in order to easily vary its contents (‘327 Patent, col. 1, ll. 47-51). Patent Owner relies on two non-precedential Board decisions to support their argument that King and Strassheimer are non-analogous art. (PO App. Br. 9-10, citing Ex Parte Ellis, 2011 WL 1197570 at *3 (BPAI 2011) and Ex Parte Devlin, 2011 WL 1303792 at *5-6 (BPAI 2011).) As discussed above, the analogous art inquiry is fact-based. The facts as explained above are sufficiently different from those in Ellis and Devlin to warrant a different result in this appeal. Issue 2 We are not persuaded by Patent Owner’s arguments that the Examiner failed to provide adequate reasoning for combining Yamada with King or Appeal 2012-007322 Reexamination Control 95/000,497 Patent 7,138,061 B2 14 Strassheimer. Initially, we do not agree with Patent Owner that the ‘061 Patent does not identify a known problem with threaded connections in LPLC cartridges as discussed above. (PO App. Br. 21-22.) Indeed, Yamada’s disclosure of an O-ring in the head portion of a plastic LPLC cartridge to ensure liquid tightness (FF 3) supports the Examiner’s position in this regard. Specifically, by providing for the presence of an O-ring, Yamada implicitly acknowledges that there is a potential leakage issue between the cap and column body of the plastic cartridge. Thus, although Patent Owner argues that Yamada does not explicitly disclose any leakage problems and relies on declaration testimony to argue that there was no known perceived problem with LPLC cartridges with threaded connections (PO App. Br. 23-24, 28, citing First Pearson Declaration, para. 9), the disclosure of the ‘061 Patent in the Background Section and the presence of the O-ring in Yamada render Patent Owner’s arguments unpersuasive. Accordingly, the Examiner’s position that there was a known leakage problem in threaded plastic cartridges used for LPLC is supported by the evidence of record. We are also not persuaded by Patent Owner’s argument that the Examiner failed to provide sufficient evidence for combining Yamada with King or Strassheimer. The Examiner’s rationale is supported by the evidence of record. The known problem of leakage in threaded connections of plastic LPLC cartridges under pressure identified in the ‘061 Patent, provides a reason for one of ordinary skill in the art to have turned to King or Strassheimer to improve the sealing arrangement set forth in Yamada. Appeal 2012-007322 Reexamination Control 95/000,497 Patent 7,138,061 B2 15 In addition, Yamada discloses an O-ring in the head portion of a plastic LPLC cartridge to ensure liquid tightness. (FF 3.) King and Strassheimer disclose rings, gaskets, and liners that are used in threaded connections of plastic bottles under pressure that are susceptible to damage or deterioration. Such rings, gaskets, and liners are similar to the O-ring disclosed in Yamada in that each serves to ensure a good seal in a pressurized setting in plastic bottles, and would be subjected to similar concerns through prolonged use. As a result, Patent Owner’s contentions that there is a lack of any market pressure or design need to make the combinations set forth by the Examiner and the Examiner failed to consider that there are an “untold number of ways that were available to create a resealable cap/container configuration” (PO App. Br. 22, 29), are unpersuasive. Last, we are not persuaded that the ‘061 Patent’s disclosure that threaded connections are not used to form the body of an LPLC cartridge teaches away from the prior art combinations applied by the Examiner. (App. Br. 28-29.) Yamada itself provides evidence that threaded connections were indeed used to form the LPLC cartridges. (FF 2.) Thus, rather than teach away from the combination, the ‘061 Patent would have led one of ordinary skill in the art to improve the threaded connections disclosed in Yamada. Therefore, it was reasonable for the Examiner to conclude that one of ordinary skill in the art would have applied the sealing systems disclosed in King or Strassheimer to the LPLC cartridge disclosed in Yamada to Appeal 2012-007322 Reexamination Control 95/000,497 Patent 7,138,061 B2 16 construct a plastic container that achieves a fluid tight seal at elevated pressure, while preserving access to the container contents. (RAN 7, 13.) CONCLUSION On this record: the Examiner did not err in finding that King and Strassheimer are analogous art; and the Examiner did not err in concluding that it would have been obvious to combine Yamada with King or Strassheimer to arrive at the sealing arrangement recited in the method of claim 1. DECISION The Examiner’s decision to reject claims 1-11 and 21 is affirmed. In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the appeal may file a request for rehearing of the decision within one month of the date of: . . . [t]he original decision of the Board under § 41.77(a).” A request for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under 37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (d) of this section, and for submitting comments under paragraph (c) of this section may not be extended. Appeal 2012-007322 Reexamination Control 95/000,497 Patent 7,138,061 B2 17 An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C. §§ 141-144 and 315 and 37 C.F.R. § 1.983 for an inter partes reexamination proceeding “commenced” on or after November 2, 2002 may not be taken “until all parties' rights to request rehearing have been exhausted, at which time the decision of the Board is final and appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See also MPEP § 2682 (8th ed., Rev. 7, July 2008). AFFIRMED ack PATENT OWNER: DAVID M QUINLAN, PC 32 NASSAU STREET SUITE 300 PRINCETON, NJ 08542 THIRD-PARTY REQUESTER: FOLEY AND LARDNER, LLP 3000 K STREET NW SUITE 600 WASHINGTON, DC 20007 Copy with citationCopy as parenthetical citation