Ex Parte Benevides et al

Patent Trial and Appeal BoardJan 28, 2014

11573314 (P.T.A.B. Jan. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/573,314 01/10/2008 Christopher C. Benevides W-405-02 9446 43840 7590 01/29/2014 Waters Technologies Corporation 34 MAPLE STREET - LG MILFORD, MA 01757 EXAMINER ZALASKY, KATHERINE M ART UNIT PAPER NUMBER 1777 MAIL DATE DELIVERY MODE 01/29/2014 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 AND TRIAL APPEAL BOARD ____________ Ex parte CHRISTOPHER C. BENEVIDES, JONATHAN L. BELANGER, MARIANNA KELE, THOMAS H. WALTER, and RAYMON P. FISK ____________ Appeal 2012-011559 Application 11/573,314 Technology Center 1700 ____________ Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and MICHAEL P. COLAIANNI, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-011559 Application 11/573,314 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1-31, 33-37, 39, and 40. We have jurisdiction under 35 U.S.C. § 6. According to the Specification, p. 1, the present invention is directed to devices, methods and apparatus for performing chromatography separations for analytical purposes. Claim 1 is representative of the appealed subject matter and is reproduced below: 1. A device for performing one or more separations comprising: a.) a cylindrical body having a cylindrical axis and a pair of end walls each perpendicular to said cylindrical axis, said cylindrical body having a side wall concentric with said cylindrical axis and being of a uniform distance from the cylindrical axis from one wall of the pair of end walls to the other end wall of the pair of end walls, said end walls and said side wall comprising surfaces of an integral body, one of said end walls configured to receive in sealing engagement a first conduit and the other of said end walls configured to engage a column or a second conduit, said cylindrical body having an opening extending between said end walls parallel to said cylindrical axis and a counterbore at each of said end walls that is concentric with said opening; and b.) a solid phase separation media assembly disposed in said opening and counterbores to remove particulates and undesired components of a fluid flowing through said cylindrical body, wherein an entirety of said side wall of said cylindrical body is configured to fit in a body fitting to be attached to an analytical column or is part of an assembly for communicating with a column. Appellants, App. Br. 9, request review of the following rejections from the Examiner’s final Office action: I. Claims 1-22, 24-31, 37, 39, and 40 rejected under 35 U.S.C. § 103(a) as unpatentable over Wermuth (US 4,710,289 patented December 1, 1987). Appeal 2012-011559 Application 11/573,314 3 II. Claims 23 and 33-36 are rejected under 35 U.S.C. § 103(a) as unpatentable over Wermuth, Brownlee (US 4,313,828 patented February 2, 1982), and Higgins (US 4,451,364 patented May 29, 1984), or Schick (US 5,472,598 patented December 5, 1995). OPINION1 After review of the positions of the Appellants and the Examiner, we sustain each of the appealed rejections. We add the following. The dispositive issue for these rejections is did the Examiner err in determining that Wermuth describes a chromatography device comprising an integral body having an end wall configured to receive in sealing engagement a first conduit and the other end wall configured to engage a column or a second conduit as required by the subject matter of independent claims 1 and 39? Appellants’ principal argument is that there is no teaching or suggestion in Wermuth of the sealing ring (5) being an end wall comprising a surface of an integral body that is configured to receive in sealing engagement a first conduit, and that the end wall is not part of an integral body. (App. Br. 8). Appellants further argue that the Examiner refers to an end wall being in sealing engagement with a conduit, and then further refers to a seal as being a conduit, which is contradictory. (Id.). Appellants’ argument is not persuasive. We agree with the Examiner’s well-reasoned rationale. (Final Rej. 2-7; Ans. 3-6) 1 Appellants rely on the same arguments in addressing rejections I-II. (See App. Br. 11-12.) Appellants have not presented arguments addressing all of the rejected claims. We select claim 1 as representative of the rejected claims. Appeal 2012-011559 Application 11/573,314 4 The Examiner asserts that claim 1 requires the end wall of the cylindrical body be configured to receive in sealing engagement a first conduit, which is what the Wermuth reference teaches. The Examiner found the end wall of the column ring (2) in Wermuth is configured to receive a conduit in sealing engagement via the internal shoulder (2) which supports a seal (3) and sealing ring (5). (Final Rej. 3; Ex. Ans. 10). Wermuth teaches the sealing ring (5) is disposed in the circular space for effecting a seal between the pre-column and the chromatography column (Col. 3, lines 41- 45). The Examiner further clarifies that in Figure 2, the outer “side” wall and top and bottom surface of element 2, the cylindrical body, are indeed depicted as end and side walls that are integral with one another, hence the column ring is an integral body, as claimed. Ans. 10. Appellants have not directed us to evidence that establishes the phrase “sealing engagement” excludes a sealing ring as disclosed by Wermuth. Appellants have not disputed that Wermuth’s integral body (column ring (2)) which includes the sealing ring (5) positioned in an opening at one end wall is not configured to receive in sealing engagement a first conduit, as claimed. For the foregoing reasons and those presented by the Examiner, we sustain all of the Examiner’s rejections. ORDER The decision of the Examiner to reject claims 1-31, 33-37, 39, and 40 is affirmed. Appeal 2012-011559 Application 11/573,314 5 TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED sld