Ex Parte Mariella

Patent Trial and Appeal BoardAug 8, 2017

13105984 (P.T.A.B. Aug. 8, 2017)

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. 13/105,984 05/12/2011 Raymond P. Marietta JR. IL-12188 4371 24981 7590 08/10/2017 Lawrence Livermore National Security, LLC LAWRENCE LIVERMORE NATIONAL LABORATORY PO BOX 808, L-703 EXAMINER DINH, BACH T LIVERMORE, CA 94551-0808 ART UNIT PAPER NUMBER 1756 NOTIFICATION DATE DELIVERY MODE 08/10/2017 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): llnl-docket@llnl.gov PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAYMOND P. MARIELLA, JR. Appeal 2015-006128 Application 13/105,9841 Technology Center 1700 Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicant (hereinafter “Appellant”) appeals under 35 U.S.C. § 134(a) from the Primary Examiner’s final decision to reject claims 6 and 11.2 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The real parties in interest are identified as “Lawrence Livermore National Security, LLC and the United States of America, as represented by the United States Department of Energy (DOE)” (Appeal Brief filed December 30, 2014, hereinafter “Appeal Br.,” 2). 2 Appeal Br. 7—14; Reply Brief filed June 3, 2015, hereinafter “Reply Br.,” 2—7; Final Office Action entered December 22, 2014, hereinafter “Final Act.,” 2—7; Examiner’s Answer entered May 29, 2015, hereinafter “Ans.,” 2-10. Appeal 2015-006128 Application 13/105,984 A. BACKGROUND The subject matter on appeal relates to a staged isotachophoresis system in which a larger-diameter channel flows into a channel with a reduced diameter (Specification, hereinafter “Spec.,” 3, 25, 42; Figures 3 A—3E). Representative claim 6 is reproduced from the Claims Appendix on pages 15—16 of the Appeal Brief (bolded italics added; underlining omitted): 6. An isotachophoresis apparatus consisting of. an isotachophoresis housing consisting of an isotachophoresis flow channel having a large diameter section, said large diameter section providing a leading section with an entrance; and a small diameter section, said small diameter section providing a trailing section with an exit; a mixed sample in said isotachophoresis flow channel, said mixed sample including first particles and second particles; a negative electrode operably connected to said isotachophoresis housing, said negative electrode located at said entrance to said large diameter section; a positive electrode operably connected to said isotachophoresis housing, said positive electrode located at said exit of said small diameter section; a power source connected to said negative electrode and said positive electrode for applying said electric potential across said negative electrode and said positive electrode; a leading carrier fluid in said isotachophoresis flow channel in said isotachophoresis housing; a trailing carrier fluid in said flow isotachophoresis channel in said isotachophoresis housing; an electric potential applied across said negative electrode and said positive electrode; and a pump for moving said mixed sample including first particles and second particles, said leading carrier fluid, and said trailing carrier fluid in said isotachophoresis flow channel; thereby 2 Appeal 2015-006128 Application 13/105,984 separating said first particles in said mixed sample into first discrete packets using said leading carrier fluid, said trailing carrier fluid, said large diameter section channel in said isotachophoresis housing, and said small diameter section channel in said isotachophoresis housing; and separating said second particles in said mixed sample into second discrete packets using said leading carrier fluid, said trailing carrier fluid, said large diameter section, and said small diameter section in said isotachophoresis housing. Similarly, claim 11 is directed to an electrophoresis method “consisting of’ certain recited steps {id. at 16—17). B. REJECTION ON APPEAL On appeal, the Examiner maintains a rejection under pre-AIA 35 U.S.C. § 102(b) as anticipated by Mizuno et al. (hereinafter “Mizuno”), with further evidence provided by the definition of “pump” in www.thefreedictionary.com (Ans. 2—10; Final Act. 2—7). C. DISCUSSION The Examiner finds, inter alia, that elements 9, 12, and 18—20 as shown in Mizuno’s Figure 8 constitute a “pump” as required by claim 6 (Ans. 3) (relying on the www.freedictionary.com definition of “pump”). Because the Examiner’s interpretation of the term “pump” in claim 6 is unreasonably broad, we cannot sustain the anticipation rejection. In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). As Appellant notes (Appeal Br. 7—8), the transitional phrase “consisting of’ in the claim’s preamble excludes any element or step that is not recited in the body of the claim. Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331 (Fed. Cir. 2004) (“‘Consisting of’ is a term of patent 3 Appeal 2015-006128 Application 13/105,984 convention meaning that the claimed invention contains only what is expressly set forth in the claim.”). As the Appellant points out (Appeal Br. 9-10), Mizuno describes a passage detection means (i.e., an “A-D” voltage to digital converter 12 and a microcomputer 9 for detecting that the boundary of ion component zones passes through a stepped portion 7c) as part of the electrophoretic apparatus shown in Figure 8 (col. 11,11. 33—40; Fig. 8). The Examiner, however, does not direct us to any description in Mizuno indicating that the passage detection means, especially the A-D converter 12, is part of a “pump” as that term would have been understood by one skilled in the art. Indeed, Mizuno indicates otherwise by identifying element 20 as the pump (plunger pump)— i.e., an electrolyte injection means, although the pump is controlled by the microcomputer 9 (col. 11,11. 46—50). Nor does the Examiner direct us to any description in the current Specification to indicate that one skilled in the relevant art would have understood the term “pump” as recited in claim 6 would encompass within its scope a combination of elements including an A-D converter and/or a microcomputer. The rejection of claim 11 is similarly flawed. As the Appellant argues (Appeal Br. 12—13), Mizuno describes—in the context of Figure 8—an additional step in which microcomputer 9, in addition to controlling the passage detecting means, also controls valve 18 (col. 11,11. 41—45). The Examiner fails to direct us to any evidence that the Appellant intended any of the steps recited in claim 11 to encompass Mizuno’s controlling steps. For these reasons, we do not sustain the Examiner’s rejection. 4 Appeal 2015-006128 Application 13/105,984 D SUMMARY The Examiner’s rejection under 35 U.S.C. § 102(b) of claims 6 and 11 is reversed. REVERSED 5