Ex Parte Panzer et al

Patent Trial and Appeal Board

Apr 28, 2016

11247073 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111247,073 10/11/2005
7590 04/29/2016
Audrey A, Millemann
Weintraub Genshlea Chediak
11th Floor
400 Capitol Mall
Sacramento, CA 95814
FIRST NAMED INVENTOR
Armin Panzer
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.
48498-319638 7034
EXAMINER
GORDON, BRIAN R
ART UNIT PAPER NUMBER
1798
MAILDATE DELIVERY MODE
04/29/2016 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 TRIAL AND APPEAL BOARD
Ex parte ARMIN PANZER
and JOHANN L. CAMENISCH
Appeal2013-002107
Application 11/24 7 ,073
Technology Center 1700
Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
uECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 15-17, 20-28, 34--36, 46, 49-52, and 55 under 35 U.S.C. § 103(a). 1 We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 In the Examiner's Answer dated September 19, 2012 ("Ans."), the Examiner
withdrew the§ 103(a) rejection of claims 46 and 52 and entered a new ground of
rejection for claim 52 under§ 112, second paragraph. Ans. 6-7. Claim 46 does
not stand rejected under any grounds. Therefore, the appeal is dismissed as to
claim 46.
Appeal2013-002107
Application 11/24 7 ,073
The claimed subject matter on appeal is directed to a pipette tip.
Representative claim 15 is reproduced below from the Claims Appendix of the
Appeal Brief dated June 22, 2012 ("App. Br."). The limitation at issue is
italicized.
15. A pipette tip, comprising:
a first end intended for immersion in a medium to be pipetted;
a second end opposite in an axial direction;
a jacket having an inside circumference and a passage opening
enclosed by said jacket, wherein said passage opening extends along a
longitudinal axis between said first end of said pipette tip and said
second end of said pipette tip;
an axial stop comprising an axially stepped shoulder of said
inside circumference of said jacket, wherein said axially stepped
shoulder is comprised of a connection between a first cylindrical
inside circumference section of said inside circumference of said
jacket having a first diameter and a second cylindrical inside
circumference section of said inside circumference of said jacket
having a second diameter smaller than said first diameter; and
a working surface comprising a circumferential groove formed
into said jacket in an area of said first cylindrical inside
circumference section and at a location axially between said axial
stop and said second end of said pipette tip wherein said working
surface is adapted for a selective sealing abutment of a sealing
element thereto.
App. Br. 104 (emphasis added).
The claims on appeal stand rejected as follows:
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Application 11/247,073
(1) claims 15, 20-28, 34--36, 49-51, and 55 under 35 U.S.C. § 103(a) as
unpatentable over Petrek2 in view of Bevirt et al. 3 and further in view of Citrin4
and/ or Kalra et al.; 5
(2) claims 16 and 17 under 35 U.S.C. § 103(a) as unpatentable over
Petrek in view ofBevirt, Citrin, and Kalra and further in view of Torti et al.; 6 and
(3) claim 52 under 35 U.S.C. § 112, second paragraph, as indefinite for
failing to particularly point out and distinctly claim the subject matter which
Appellants regard as the invention.
B. DISCUSSION
1. Rejection (1)
a. Claims 15 and 49
Referring to Petrek Figures 2 and 4, the Examiner finds Petrek discloses a
pipette tip 40 that is equivalent to the claimed pipette tip with the exception of a
circumferential groove formed in the inner surface of the pipette tip jacket or wall.
Ans. 3. Petrek Figure 4 is reproduced below.
2 US 6,171,553 Bl, issued January 9, 2001 ("Petrek").
3 US 6,399,024 Bl, issued June 4, 2002 ("Bevirt").
4 US 4,187,724, issued February 12, 1980 ("Citrin").
5 US 6,495, 106 B 1, issued December 17, 2002 ("Kalra").
6 US 6, 123,905, issued September 26, 2000 ("Torti").
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Application 11/247,073
Petrek Fig. 4 is an enlarged fragmentary side view of an upper portion
of the pipette tip 40 and mounting shaft 32 combination of Petrek
Fig. 2 showing the fluid tight seal between the sealing region 46
and sealing zone 36, the mating relationship of the lateral support
region 48 and zone 38 and a preferred embodiment of the cooperative
means 52 including a shoulder on the pipette tip 40 for
limiting mounting shaft penetration into the tip. 7
Referring to Bevirt Figure 6D, reproduced below, the Examiner finds Bevirt
discloses a pipette tip 17 comprising a groove on its inner surface (i.e., below
proximal contact point 67) as recited in claim 15. Ans. 4; compare Appellants'
Fig. 2 (depicting annular groove 125).
Bevirt Fig. 6D is a cross-sectional view of
a nipple 60 and a pipette tip 17.
The Examiner concludes that it would have been obvious to one of ordinary
skill in the art "to modify the tip of Petrek to include a groove above the stepped
7 Petrek, col. 7, 11. 1-7.
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Application 11/24 7 ,073
shoulder as taught by Bevirt which may be manufactured to various dimensions in
order to allow for secure attachment to pipette shafts." Ans. 4.
The Appellants argue that the references of record, either alone or in
combination, fail to teach or suggest all of the limitations recited in claim 15. App.
Br. 26. More specifically, the Appellants argue that "[n]one of the prior art of
record discloses or indicates that the surface of a circumferential groove of an inner
surface of the pipette tip can be used as the working surf ace for sealing
engagement with the sealing element."8 App. Br. 32.
The Appellants argue that "the structure the Examiner is referring to as a
'groove' is neither structurally nor functionally identified anywhere within the
Bevirt et al. reference." App. Br. 28 (emphasis omitted). The Appellants,
nonetheless, recognize that the "groove" illustrated in Bevirt Figure 6D is used for
sealing pipette tip 17 to nipple 60. App. Br. 36.
The Appellants also argue that the Examiner's proposed combination of
Petrek and Bevirt:
is deficient in that ... there is not a reasonable expectation that the
sealing element [e.g., an 0-ring] would successfully clear the annular
extending radial protrusion of ... Petrek when the pipette tip is placed
on the pipette device or unit.
And, even if the sealing element somehow clears the protrusion
of ... Petrek, there is not a reasonable expectation that the radial
protrusion of ... Petrek would remain operative for its intended
purpose of sealing the pipette tip to the pipette device in a coupled
state nor is there a reasonable expectation that the sealing element
8 The Appellants argue that Kalra and Citrin show 0-rings positioned in grooves
on a pipette unit not a pipette tip as claimed. The Examiner, however, merely
relies on Kalra and Citrin to show that positioning an 0-ring in a groove was
known to provide a seal between a pipette tip and a pipette unit at the time of the
Appellants' invention. Ans. 4, 9.
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Application 11/24 7 ,073
would operate with the above noted unidentified structure of Bevirt et
al.
App. Br. 33-34 (emphasis omitted).
Significantly, claim 15 does not positively recite a sealing element or a
pipette device or unit. Compare Appellants' claims 46 and 52. Claim 15 merely
recites that the working surface, comprising a circumferential groove, "is adapted
for a selective sealing abutment of a sealing element thereto." App. Br. 104. The
Appellants have not directed us to any evidence establishing that the groove
disclosed in Bevirt is not "adapted for a selective sealing abutment of a sealing
element thereto" as recited in claim 15. Indeed, as pointed out by the Examiner:
[W]hether or not such clearing would be achieved would depend on a
number of variables including the dimensions of the tip and unclaimed
pipette unit and furthermore the composition of ... the elastic sealing
element. It would [be] possible for the sealing element to compress
and clear the protrusion and return or expand back outwards against
the tip wall and groove.
Ans. 10.
Thus, on this record, there is no reason to believe that modifying the pipette
tip of Petrek with the groove of Bevirt, as proposed by the Examiner, would affect
the ability of Petrek's protrusion 49 to function as intended.
Finally, the Appellants argue:
[A] person of ordinary skill in the art or an artisan having common
sense at the time of the invention would not have chosen ... Petrek as
a starting reference for further modification by the unidentified
structure of Bevirt et al. because the principle of operation of Petrek is
the source of the long-felt but unsolved problem and Bevirt et al has
no teaching or suggestion of the unidentified structure beyond what
appears to be nothing more than a recess that ensures that contact
point or protrusion 67 positioned above and outside of the recess
itself comes into sealing abutment with the pipetting unit or, more
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Application 11/24 7 ,073
specifically, the proximal taper 65 of the nipple 60 as illustrated in
Fig. 6D.
App. Br. 35-36 (original emphasis omitted; emphasis added).
The Appellants' argument is not persuasive of reversible error. There is no
dispute on this record that Petrek discloses a pipette tip comprising all of the
elements recited in claim 15 with the exception of a circumferential groove. The
Examiner relies on Bevirt to show that a radial protrusion (i.e., proximal contact
point 67)9 in combination with a circumferential groove was known, at the time of
the Appellants' invention, to be an alternative sealing arrangement for a pipette tip
and a pipette unit. 10 See Ans. 10.
In an attempt to rebut the prima facie case of obviousness, the Appellants
rely on a Declaration of Armin Panzer dated December 1, 2010 ("Panzer
Declaration"), to show (1) long-felt need and failure of others and (2) unexpected
results. App. Br. 36-38.
According to the Panzer Declaration:
[T]he claimed invention of the present application solves the problem
of leakage caused by micro fissures formed in conically expanded
pipette tips, the disadvantage that for the release of the pipette tip
correspondingly high forces have to be applied, and the insufficient
metering accuracy both in the liquid intake as well as in liquid
release. [l lJ
9 Bevirt's proximal contact point 67 corresponds to Petrek's radial bead or
protrusion 49 illustrated in Petrek Figure 3.
10 See In re Fout, 675 F.2d 297, 301 (CCPA 1982) ("Express suggestion to
substitute one equivalent for another need not be present to render such
substitution obvious.").
11 The last problem (i.e., "insufficient metering accuracy both in the liquid intake
as well as in liquid release") is said to be solved, at least in part, by:
an axial stop comprising an axially stepped shoulder of an inside
circumference of a jacket of the pipette tip, wherein the axially
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Application 11/24 7 ,073
Panzer Deel. 2, 11. 25-28.
"[O]bjective evidence of non-obviousness[, such as commercial success and
satisfaction of a long-felt need,] must be commensurate in scope with the claims
which the evidence is offered to support." In re Tiffin, 448 F.2d 791, 792 (CCPA
1971 ). In this case, the evidence of record establishes that the combination of the
circumferential groove and a sealing element achieves the advantages discussed in
the Panzer Declaration. See Panzer Deel. 3, 11. 2--4 ("engaging a sealing and
holding element in the circumferential groove ... maintain[ s] straight alignment
and a repeatable obtainable axial positioning via the fixed stop and the sealing
engagement with the groove" (emphasis added)); Panzer Deel. i-f 4 ("the cylindrical
inner surface allows a slow release from the coupling stud after disengagement of
the sealing element . ... , thereby [producing unexpected results in the form of]
preventing airflow up into the [pipette] tip" (emphasis added)).
As discussed above, claim 15 does not recite a sealing element. Therefore,
the Panzer Declaration is not probative of either (1) long-felt need and failure of
others or (2) unexpected results in the rejection of claim 15 on appeal.
For the reasons set forth above and the reasons set forth in the Examiner's
Answer, the§ 103(a) rejection of claim 15 is sustained.
stepped shoulder is comprised of a connection between a first
cylindrical inside circumference section of the inside circumference of
the jacket having a first diameter and a second cylindrical inside
circumference section of the inside circumference of said jacket
having a second diameter smaller than the first diameter."
Panzer Deel. 2, 11. 15-21. The Appellants have not directed us to any error in the
Examiner's finding that Petrek discloses such an axial stop. See, e.g., Ans. 12;
Petrek Figs. 4, 7.
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Application 11/24 7 ,073
Independent claim 49 also stands rejected under§ 103(a) based on Petrek in
view ofBevirt and further in view of Citrin and/or Kalra. Independent claim 49
recites, in relevant part, "'said pipette tip comprising: ... means for axially
squeezing and radially receiving an elastically shapeable sealing element into said
inside circumference of said jacket."' App. Br. 66, 108. The Appellants define the
"means for axially squeezing and radially receiving" as working surface 127 and
annular groove 25, 125. App. Br. 14, 66. Like claim 15, claim 49 does not
positively recite a sealing element. Therefore, the§ 103(a) rejection of claim 49 is
sustained for the same reasons we sustained the § 103(a) rejection of claim 15.
b. Claims 20-28 and 34--36
The Appellants argue that the claim limitations recited in claims 20-28 and
34--36 are not expressly disclosed in the prior art of record. App. Br. 38--46. The
Examiner recognizes as much. See Ans. 5 ("Petrek does not disclose the specific
dimensions of the device as claimed."). Nonetheless, the Examiner makes specific
findings of fact and conclusions of law as to the claim limitations at issue. See
Ans. 5, 11-12. The Appellants do not direct us to any error in those factual
findings or legal conclusions. Therefore, the§ 103(a) rejection of claims 20-28
and 34--36 is sustained.
c. Claims 50 and 51
The Appellants argue that the limitations recited in claims 50 and 51 are not
disclosed in the prior art of record. App. Br. 73-74.
The Examiner finds shoulder 53 disclosed in Petrek satisfies the limitations
recited in claim 50. Ans. 12. As for claim 51, the Examiner concludes:
[I]t would have been obvious to one [of] ordinary skill in the art ... to
include the groove above the step shoulder for that's the area in which
the mating/sealing of the tip and shaft occurs. As exemplified by the
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Application 11/24 7 ,073
prior art, the sealing arrangement is provided in the area where the
seal is desired.
Ans. 13; see also Ans. 4.
The Appellants do not direct us to any error in the Examiner's factual
findings or legal conclusions. Therefore, the§ 103(a) rejection of claims 50 and
51 is sustained.
d. Claim 55
The Appellants argue that "the Examiner glosses over the claimed
constriction zone." App. Br. 93 (emphasis omitted). In response, the Examiner
explains:
Claim 55 nearly mirrors claims 15 and 49, except claim 55
recites a step and broadly recited constriction zone describ[ing]
relatively how it is intended to function with and [sic, an] unclaimed
sealing element. The shoulder 53 is equivalent to the claimed step.
What appellant refers to as a constriction zone is the inner wall of the
pipette tip. Whether or not a wall functions to constrict a sealing
element depends on a number of factors including respective
dimensions of the tip and unclaimed sealing element/pipette unit and
the material of manufacture. However, the examiner asserts the wall
of the tip of the prior art is capable of function to squeeze/constrict
some sealing element[.]
Ans. 13.
The Appellants do not direct us to any error in the Examiner's position.
Therefore, the§ 103(a) rejection of claim 55 is sustained.
2. Rejection (2)
As to claim 16, the Appellants summarily argue that the prior art of record
"fail[ s] to teach or suggest all of the limitations of dependent claim 16 in
combination with independent claim 15." App. Br. 100-101 (emphasis omitted).
Likewise, as to claim 17, the Appellants summarily argue that the prior art of
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Application 11/24 7 ,073
record "fail[ s] to teach or suggest all of the limitations of dependent claim 17 in
combination with dependent claim 16 and independent claim 15." App. Br. 101.
Suffice it to say that the Examiner makes specific findings of fact and
conclusions of law as to the limitations recited in claims 16 and 17. See Ans. 5-6,
13-14. The Appellants do not direct us to any error in those factual findings or
legal conclusions. Therefore, the§ 103(a) rejection of claims 16 and 17 is
sustained.
3. Rejection (3)
Claim 52 recites, in relevant part:
A pipette device, comprising:
a pipette unit comprising an elastically shapeable sealing
element and a stepped shoulder;
means for axially squeezing said elastically shapeable sealing
element for causing a radial expansion of said elastically shapeable
sealing element ....
App. Br. 108---09 (emphasis added).
The Examiner concludes that claim 52 is indefinite for failing to recite an
essential element of the pipette unit, i.e., a pipette channel for fluid transport. Ans.
6. A claim which omits an essential element is not indefinite under 35
U.S.C. § 112, second paragraph, but rather is not supported by an enabling
disclosure under 35 U.S.C. § 112, first paragraph. In re Mayhew, 527 F.2d 1229,
1233 (CCP A 1976). For this reason, the rejection of claim 52 under 35 U.S.C.
§ 112, second paragraph, will not be sustained. 12
12 Upon return of the Application to the jurisdiction of the Examiner, the Examiner
should consider whether a rejection of claim 52 under 35 U.S.C. § 112, first
paragraph, based on the enablement requirement, is appropriate.
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Application 11/24 7 ,073
C. DECISION
The Examiner's decision to reject claims 15, 20-28, 34--36, 49-51, and 55
under 35 U.S.C. § 103(a) as unpatentable over Petrek in view ofBevirt and further
in view of Citrin and/or Kalra is affirmed.
The Examiner's decision to reject claims 16 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Petrek in view of Bevirt, Citrin, and Kalra and
further in view of Torti is affirmed.
The Examiner's decision to reject claim 52 under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly claim the
subject matter which Appellants regard as the invention, is 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)(l).
AFFIRMED-IN-PART
12