Ex Parte Kittlaus et al

Patent Trials and Appeals BoardMar 12, 2019

13754655 - (D) (P.T.A.B. Mar. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/754,655 01/30/2013 20551 7590 03/14/2019 THORPE NORTH & WESTERN, LLP. P.O. Box 1219 SANDY, UT 84091-1219 FIRST NAMED INVENTOR Stefan Kittlaus 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 02207-32175.PCT.US 1010 EXAMINER ZALASKY, KATHERINE M ART UNIT PAPER NUMBER 1777 NOTIFICATION DATE DELIVERY MODE 03/14/2019 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): patentdocket@tnw.com warren.archibald@tnw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEFAN KITTLAUS and JORG RADTKE 1 Appeal2018-002366 Application 13/754,655 Technology Center 1700 Before BRADLEY R. GARRIS, DONNA M. PRAISS, and N. WHITNEY WILSON, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134, Appellant appeals from the Examiner's rejection under 35 U.S.C. Â§ 103(a) of claims 1-3, 5-8, 14, and 15 asunpatentable over Wang ("Novel, fully automatic hydrophilic interaction/reversed-phase column-switching high-performance liquid chromatographic system for the complementary analysis of polar and apolar compounds in complex samples, "Journal of Chromatography A, 1204 1 Appellant is the Applicant, Joint Analytical Systems GmbH, which is identified as the real party in interest (App. Br. 2). Appeal2018-002366 Application 13/754,655 (2008) 28-34) in view of Wilson ("2D LC separation and determination of bradykinin in rat muscle tissue dialysate with on-line SPE-HILIC-SPE-RP- MS," Chromatographia 2007, 66, Oct. (No. 7/8) 469--474), Bouvier (US 2001/0035372 Al, pub. Nov. 1, 2001), and Fisher (US 2002/0121468 Al, pub. Sept. 5, 2002). We have jurisdiction under 35 U.S.C. Â§ 6. We REVERSE. Appellant claims a method for analysis of pesticides in samples comprising the steps of: applying a sample containing interfering matrix to an HILIC chromatography column 14; accumulating a major portion of pesticides in the sample in an SPE accumulation assembly 22 and leading a portion of the sample flowing through the SPE accumulation assembly directly to a mass spectrometer 32; flowing the major portion of pesticides accumulated in the SPE accumulation assembly in an opposite direction from the assembly through a second chromatography column 28; and detecting sample portions separated in the second chromatography column (sole independent claim 1, Figs. 1-2). A copy of representative claim 1, taken from the Claims Appendix of the Appeal Brief, appears below. 1. A method for sample preparation and the analysis of pesticides in samples, comprising the steps of: 2 Appeal2018-002366 Application 13/754,655 application of a sample of interfering matrix containing raw extracts resolved in a first solvent to a Hydrophilic Liquid Interaction Chromatography (HILIC) chromatography column with said first solvent; accumulating at least a major portion of pesticides comprised in said sample in a Solid Phase Extraction (SPE) accumulation assembly in a first switching position and leading a portion of said sample which flows in said first switching position through said SPE accumulation assembly during a selected accumulation period directly to a mass spectrometer: flowing said major portion of pesticides accumulated in said SPE accumulation assembly in the opposite direction from said SPE accumulation assembly through a second chromatography column with a second solvent, the second solvent having a larger polarity and/or a higher water content than the first solvent by switching a valve assembly after said selected accumulation period from said first switching position to a second switching position; and detecting sample portions separated in said second chromatography column. The Examiner finds that Wang discloses a method of analyzing polar and apolar compounds in a sample via a transfer column but does not disclose the claim 1 features of analyzing a sample containing pesticides or using an SPE accumulation assembly as the transfer column (Final Action 2--4). However, the Examiner concludes that it would been obvious to modify Wang to analyze a pesticide-containing sample and to use an SPE 3 Appeal2018-002366 Application 13/754,655 accumulation assembly as the transfer column in view of Bouvier and Wilson (id. at 3--4). In addition, the Examiner finds that Wang as so-modified does not include the claim 1 feature of leading a portion of the sample flowing through the SPE accumulation assembly directly to a mass spectrometer (id. at 4). With respect to this deficiency, the Examiner finds that Fisher teaches splitting a small amount of eluent from a chromatography column to a mass spectrometer to achieve the advantages of consuming only a portion of the sample, allowing for accurate and reliable sample placement, and allowing for increased control over sample characterization (id. at 5 ( citing, e.g., Fisher ,r 6)). The Examiner concludes that, in order to provide Wang with the advantages taught by Fisher, it would have been obvious "to split a small portion of the sample eluting from the transfer column [i.e., the SPE accumulation assembly] of modified Wang and directly flow the portion to a mass spectrometer, as suggested by Fisher" (id.). Appellant challenges the Examiner's proposed combination of Wang and Fisher. Appellant explains that Wang's polar and apolar sample components of interest are retained in the HILIC column and transfer column respectively (App. Br. 10-11 (citing Wang's Fig. 1 disclosure)) and, accordingly, that the stream leaving the transfer column is only solvent and "is sent to waste ... [ s ]ince there are no compounds of interest" (id. at 11 ). Appellant argues that, "since there are no sample components of interest in the solvent flowing from the Wang et al. transfer column, there would be no reason to sample this solvent [i.e., by leading the solvent directly to a mass spectrometer]" (id. at 23). 4 Appeal2018-002366 Application 13/754,655 In response, the Examiner does not dispute with any reasonable specificity Appellant's explanation that the stream leaving Wang's transfer column is sent to waste because the stream is only solvent containing no compounds of interest. Rather, the Examiner states that, "[ w ]hether or not a target compound is actually in the stream, ... the advantage provided by Fisher[' s stream splitting] ... is applicable to any of the streams which may be exiting the transfer column" (Ans. 14). The Examiner's statement is conclusory and inconsistent with the teachings of Fisher. Fisher expressly teaches, "a portion of the sample stream is sent to a mass detector to detect the presence of a sample" (Fisher ,r 6 (emphasis added)). Moreover, Fisher attributes the advantages of splitting the sample stream to "the time a sample component is detected at the destructive detector (MS [ mass spectrometer] in a mass system)" (id. ( emphasis added)). The Examiner articulates no reasoning with rational underpinning to support the conclusion that an artisan would have combined Wang and Fisher as proposed even though the stream leaving Wang's transfer column contains only solvent with no sample components of interest. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections 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") quoted with approval inKSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). For these reasons, we do not sustain the Examiner'sÂ§ 103 rejection of the claims on appeal. 5 Appeal2018-002366 Application 13/754,655 The decision of the Examiner is reversed. REVERSED 6