Ex Parte Okada et al

Patent Trial and Appeal Board

Sep 27, 2017

13761180 (P.T.A.B. Sep. 27, 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.
13/761,180 02/07/2013 MASAYUKI OKADA 43879-US-372 4441
31561 7590
JCIPRNET
P.O. Box 600 Taipei Guting
Taipei City, 10099
TAIWAN
09/29/2017 EXAMINER
CAMPBELL, IRVING A
ART UNIT PAPER NUMBER
2855
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
USA@JCIPGROUP.COM
Belinda@JCIPGROUP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAYUKI OKADA and YASUNORI TERAI
Appeal 2017-000176
Application 13/761,1801
Technology Center 2800
Before TERRY J. OWENS, JEFFREY T. SMITH,
and DEBRA L. DENNETT, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1—3. We have jurisdiction under 35 U.S.C. § 6.
1 The real party in interest Shimadzu Corporation. (App. Br. 2).
Appeal 2017-000176
Application 13/761,180
Appellants’ invention is directed generally to a gas chromatograph
which is adapted to control a flow rate by using a flow rate control valve
disposed in a carrier gas flow path between the gas bomb and the sample
inlet port. (Spec. 19). Claim 1 illustrates the subject matter on appeal and
is reproduced below:
1. A gas chromatograph, wherein when a carrier gas filled
in a gas bomb is inlet into a sample inlet portion and an
analytical column, the gas chromatograph is adapted to control
a flow rate by using a flow rate control valve which is adapted
to be electromagnetically controlled and disposed in a carrier
gas flow path between the gas bomb and the sample inlet
portion, the gas chromatograph comprising:
a flow rate restricting valve having a valve mechanism
and adapted to mechanically restrict the flow rate with respect
to an excessive flow rate that is larger than a predetermined
flow rate of the carrier gas, wherein the flow rate restricting
valve is disposed between the flow rate control valve of the
carrier gas flow path and the gas bomb,
wherein the flow rate restricting valve is apart from the
flow rate control valve and disposed at an upstream side of the
sample inlet portion of the carrier gas flow path.
The Examiner rejects claims 1—3 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Haskell, US 5,524,473 issued June 11,
1996, (hereinafter “Haskell”) in view of Tanaka, US 2005/0160790 A1
published July 28, 2005, (hereinafter “Tanaka”) in view of Savin, SU
2
Appeal 2017-000176
Application 13/761,180
710029 A1 published January 15, 1980, provided by Applicant, (hereinafter
“Savin”)2. (Final Act. 3—6).
OPINION3
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM for the reasons presented by the Examiner and
add the following.
Appellants argue the combination of Haskell, Tanaka, and Savin fails
to disclose or suggest a flow rate restricting valve having a valve mechanism
adapted to mechanically restrict the flow rate with respect to an excessive
flow rate that is larger than a predetermined flow rate of the carrier gas and
wherein the flow rate restricting valve is disposed between the flow rate
control valve of the carrier gas flow path and the gas bomb as required by
claim 1. (App. Br. 4—8). Appellants argue Haskell is a completely
electrically controlled gas chromatograph system and thus it would not have
been obvious to replace one of the electrically-controlled valves with a
mechanically-controlled valve. {Id. at 6—7). Appellants argue a mechanical
valve and capillary tubing are not interchangeable elements due to their
different application fields. {Id. at 7). Appellants further argue the
Examiner’s rejection is premised on hindsight. {Id. at 7—8).
2 We refer to the English translation of SU 710029 A1 that has been entered
into the record.
3 Appellants did not present substantial arguments addressing the dependent
claims 2 and 3 and rely on the arguments presented for independent claim 1
for these claims. (App. Br. generally). Thus, we limit our discussion to
independent claim 1.
3
Appeal 2017-000176
Application 13/761,180
Appellants’ arguments are without persuasive merit. The Examiner
found Haskell describes a gas chromatograph system that differs from the
claimed invention by not disclosing a flow rate control valve that is
electromagnetically controlled and the flow rate restrictor that is a flow rate
restricting valve as required by claim 1. (Final Act. 3, 4). Haskell describes
capillary tubing (21) is flow restricted and adjustable valve (25) is adjusted
to achieve the desired pressure. (Col. 4 11. 27—51). The Examiner cited
Tanaka which describes a gas chromatograph comprising an electromagnetic
valve 37 to control the flow amount of the carrier gas, disposed between the
gas purifier 23 and the flow sensor 25. (Final Act. 4, Tanaka Tflf 39 and 70;
Fig. 12). The Examiner cited Savin which describes a mechanical valve 5 as
a flow restrictor. (Final Act. 4, Savin Fig. 1). A person of ordinary skill in
the art would have reasonably expected that devices known as mechanical
restrictors, i.e., capillary tubing and mechanical valve, which are utilized for
the same function could have been substituted for one another. Appellants
have not disputed that the capillary tubing described by Haskell and the
mechanical valve described by Savin (21) both function as mechanical flow
restrictors. A person of ordinary skill in the art would have also reasonably
expected electromagnetically controlled valves, which are recognized as
suitable for gas chromatograph systems, would produce the same effect as
Haskell’s adjustable valve (25), and both would result in achieving the
desired pressure. The Examiner correctly took into account the teachings of
Haskell, Tanaka, and Savin particularly for describing various devices
utilized as flow restrictors in making the determination of obviousness. See
KSR Inti v. Teleflex Inc., 550 US 417, 418 (2007):
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Appeal 2017-000176
Application 13/761,180
Often, it will be necessary for a court to look to interrelated
teachings of multiple patents; the effects of demands known to
the design community or present in the marketplace; and the
background knowledge possessed by a person having ordinary
skill in the art, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue.
A person of ordinary skill in the art would have had sufficient skill to
recognize the appropriate mechanical and electromagnetic flow restrictors
for utilization in gas chromatograph systems. Appellants have not directed
us to evidence that establishes gas chromatograph systems comprising
mechanical and electromagnetic flow restrictors produce unexpected results.
Accordingly, we affirm the Examiner’s prior art rejections of claims
1—3 under 35 U.S.C. § 103(a) for the reasons stated above and those
presented by the Examiner.
ORDER
The decision of the Examiner rejecting claims 1—3 is affirmed.
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
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