Ex Parte LE VOT et al

Patent Trial and Appeal Board

Dec 19, 2016

12437992 (P.T.A.B. Dec. 19, 2016)

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.
12/437,992 05/08/2009 Sophie LE VOT 033339/372334 8628
826 7590 12/21/2016
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
BUTLER, MICHAEL E
ART UNIT PAPER NUMBER
3653
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SOPHIE LE VOT, JEAN BERTHIER, and
FLORENCE RIVERA
Appeal 2015-002383
Application 12/437,992
Technology Center 3600
Before: LYNNE H. BROWNE, THOMAS F. SMEGAL, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal 2015-002383
Application 12/437,992
CLAIMED SUBJECT MATTER
The claims are directed to a method of, and device for, sorting
particles or particle clusters in a fluid flowing in a channel. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of size sorting submillimetric particles or
submillimetric particle clusters entrained in a fluid flowing in an
axial direction of a main channel, the particles being of density
different from the density of the fluid, the method being
characterized in that it implements:
in a first region of the main channel, focusing particle by
means of at least one focusing device,
said at least one focusing device presenting at least
one lateral channel for fluid injection that opens in a wall
of the main channel,
such that the focused particles or particle clusters
are distributed on flow lines having a position along said
wall that depends on their sizes,
and downstream from said region, in a second region of
the main channel, collecting said focused particles or particle
clusters
in at least one sorting and take-off device in
communication with the main channel via an opening that
is provided in said wall,
said opening having a dimension that is configured
to allow selection of particles or particle clusters as a
function of their line of flow,
so that the collected particles or particle clusters are
selected by the sorting and take-off device as a function of the
size of said particles or particle clusters,
and in that said at least one sorting and take-off device is
a recirculation chamber in communication with the main channel
and presenting at least one recirculation zone for concentrating
the collected particles.
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Application 12/437,992
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wada US 6,506,609 B1 Jan. 14, 2003
Chou US 2004/0072278 A1 Apr. 15,2004
Hattori US 2006/0035386 A1 Feb. 16, 2006
Desmet US 2007/0039463 A1 Feb. 22, 2007
REJECTIONS
Claim 18 is rejected under 35 U.S.C. §112 second paragraph as being
indefinite.
Claims 1, 6—9, and 13—18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Desmet and Chou.
Claims 1, 6, 10-12, and 15—18 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Desmet and Hattori.
Claims 2—5 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Desmet, Chou, and Wada.
OPINION
35 U.S.C. §112
Appellant does not contest the rejection of claim 18 under 35 U.S.C.
§112, second paragraph. See generally, Appeal Br. Accordingly, we
summarily sustain this rejection.
35 U.S.C. § 103(a) over Desmet and Chou
The Examiner finds that the claimed “at least one focusing device”
with the “at least one lateral channel for fluid injection” that “distribute^
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Appeal 2015-002383
Application 12/437,992
particles] on flow lines” is obvious in view of the combination of Desmet
and Chou. Final Act. 2—5. In so finding, the Examiner argues that “[t]he
claim reads on fluid injected into the lateral channel from the opening in
lateral channel that opens in the main channel.” Answer 5. Appellants
disagree, arguing that the claim requires fluid injection into the main
channel. See Appeal Br. 9, Reply Br. 6—13.
The Examiner’s reading of the independent claims does not consider
each claim as a whole, but rather focuses too narrowly on discreet elements
of the claim. For example, the relevant portion of claim 1 states:
in a first region of the main channel, focusing particle[s]
by means of at least one focusing device,
said at least one focusing device presenting at least
one lateral channel for fluid injection that opens in a wall
of the main channel,
such that the focused particles or particle clusters
are distributed on flow lines having a position along said
wall that depends on their sizes[.]
From the plain language of the claim it can be seen that the focusing
device not only includes a lateral channel opening in a wall of the main
channel, but also requires focusing particles or particle clusters “along said
wall [of the main channel].” This requires the claimed focusing to occur
within the main channel, otherwise the term “such that” has no meaning.
The Examiner has not shown how injecting fluid into a lateral channel
results in (i.e. is such that) “the focused particles or particle clusters are
distributed on flow lines having a position along said wall [of the main
channel] that depends on their sizes” as required by claim 1.
The Examiner in the Answer also asserts that Chou Figure 12 injects
fluid into the main channel from a lateral channel, but at the same time relies
on additional embodiments (e.g. Figure 86) of Chou for the distribution
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Application 12/437,992
aspects of the claim that require the focusing to be done by removing
particles from the main channel (i.e. injecting fluid into the lateral channel).
Answer 7—9. Because the Examiner continues to maintain the position that
fluid injection into the lateral channel is enough to meet the claim
limitations, the full claim limitation is not addressed in the rejection.
For these reasons, we cannot sustain the Examiner’s decision rejecting
claim 1, or claims 6—9, and 13—17 which depend therefrom, over Desmet
and Chou. Similarly, we cannot sustain the Examiner’s decision rejecting
dependent claims 2—5 over Desmet, Chou, and Wada, as Wada does not
overcome the deficiencies discuss above. For these same reasons, we cannot
sustain the Examiner’s decision rejecting independent claim 18, which
includes limitations similar to those in claim 1 discussed supra, over
Desmet and Chou.
35 U.S.C. § 103(a) over Desmet and Hattori
Claims 1, 6, 10-12, and 15—18 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Desmet and Hattori.
As discussed above, the Examiner has not shown that Desmet teaches
or suggests, these limitations of claim 1:
in a first region of the main channel, focusing particle [s]
by means of at least one focusing device,
said at least one focusing device presenting at least
one lateral channel for fluid injection that opens in a wall
of the main channel,
such that the focused particles or particle clusters
are distributed on flow lines having a position along said
wall that depends on their sizes[.]
With Hattori, the Examiner takes a position similar to that discussed
above with respect to Chou. The Examiner asserts that Hattori Figure 7
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Application 12/437,992
injects fluid into the main channel from a lateral channel (Answer 17, Final
Act. 8), but the fluid injection is unrelated to focusing or distribution of the
particles (Reply Br. 16, Hattori ||114—117). The Examiner relies on
additional embodiments (e.g. Figures 3 & 5) of Hattori for the distribution
aspects of the claim that require the focusing to be done by removing
particles from the main channel (by slots or pegs that deflect particles into
the lateral channel). Answer 17—20, Final act. 8. Because the Examiner
continues to maintain the position that fluid injection into the lateral channel
is enough to meet the claim limitations, the full claim limitation is not
addressed in the rejection.
For these reasons, we cannot sustain the Examiner’s decision rejecting
claim 1, or claims 6, 10-12, and 15—17 which depend therefrom, over
Desmet and Hattori. For these same reasons, we cannot sustain the
Examiner’s decision rejecting independent claim 18, which includes
limitations similar to those discussed supra regarding claim 1, over Desmet
and Hattori.
DECISION
The Examiner’s 35 U.S.C. § 112 second paragraph rejection of claim
18 is affirmed.
The Examiner’s 35 U.S.C. § 103(a) rejections of claims 1—18 are
reversed.
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)(l)(iv).
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Application 12/437,992
AFFIRMED-IN-PART
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