Ex Parte Ramler et al

Patent Trial and Appeal Board

Jan 30, 2019

12265727 (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/265,727 11/05/2008
34833 7590
FRANK ROSENBERG
5737 Kanan Road, No. 190
Agoura Hills, CA 91301
02/01/2019
FIRST NAMED INVENTOR
Jeffrey J. Ramler
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.
07053 2722
EXAMINER
ANDERSON, DENISE R
ART UNIT PAPER NUMBER
1779
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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):
USPTO@DOCKETTRAK.COM
correspondence@frpatents.com
FRANKROSENBERG@att.NET
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY J. RAMLER, ANNA LEE TONKOVICH, RACHID
TAHA, KAI JAROSCH, ROBERT J. LUZENSKI, JEFFERY D. SLANE,
THOMAS HICKEY, SEAN FITZGERALD, HARLEY D. FREEMAN, and
FREDERICK A. ZENZ 1
Appeal2018-003309
Application 12/265,727
Technology Center 1700
Before BEYERL YA. FRANKLIN, DEBRA L. DENNETT, and LILAN
REN, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Velocys Inc. Appeal Br. 2.
Appeal2018-003309
Application 12/265,727
Appellants request our review under 35 U.S.C. § I34(a) of the Examiner's
decision rejecting claims 1-7, 9, 11, and 18-28. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth
below (with text in bold for emphasis):
1. A method of increasing packing density of particulates loaded
into a plurality of microchannels in microchannel apparatus,
compnsmg:
providing a microchannel apparatus comprising a plurality of
microchannels that comprise particulates;
positioning a ultrasound-producing head at one end of the
plurality of microchannels and placing the head in sonic contact with
the plurality of microchannels; and,
applying ultrasonic energy to the plurality of microchannels from
the ultrasound-producing head.
Appeal Br. (Claims Appx. i).
THE REJECTIONS
1. Claims 1, 2, 5, 6, 18, 19, 21, and 22 are rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Boughtflower, The Production of Packed
Capillaries Using a Novel Pressurised Ultrasound Device, Chromatographia,
Volume 41, No. 7/8, pp. 398--402, October 1995.
2. Claims 1, 2, 6, 7, 11, 20, 21, 23, 25, and 27 are rejected under pre-AIA 35
U.S.C. § I03(a) as being unpatentable over Hobbs (US 2003/0150806 Al, published
Aug. 14, 2003), in view of Boughtflower.
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Application 12/265,727
3. Claim 3 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Hobbs, in view ofBoughtflower, as applied to claim 1 above, and
further in view of Arnold (US 6,444, 150, issued Sept. 3, 2002 ).
4. Claim 4 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Hobbs in view of Boughtflower, further in view of Arnold (US
6,444,150 Bl, issued Sept. 3, 2002), as applied to claim 3 above, and further in view
of Taylor, Lysing Bacterial Spores by Sonication through a Flexible Inteiface in a
Microfluidic System, Anal. Chem. 73 pp. 492--496 (2001 ).
5. Claims 5, 18, and 19 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Hobbs in view ofBoughtflower, as applied to claim 1
above, and further in view of Sparey-Taylor (US 2004/0066703 Al, published Apr.
8, 2004).
6. Claim 9 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Hobbs, in view ofBoughtflower, as applied to claim 1 above, and
further in view ofMonzyk (US 6,503,298 Bl, issued Jan. 7, 2003).
7. Claim 22 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Hobbs, in view ofBoughtflower, as applied to claim 1 above, and
further in view of Wang (US 2002/0114762 Al, published Aug. 22, 2002).
8. Claims 22 and 24 are rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Hobbs in view of Boughtflower, as applied to claim 1 above, and
further in view of Kravitz (US 6,746,496 Bl, issued June 8, 2004).
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Appeal2018-003309
Application 12/265,727
9. Claim 26 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Hobbs, in view of Boughtflower as applied to claim 1 above, and
further in view of Guillemin (US 3,248,856, issued May 3, 1966).
10. Claim 28 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Hobbs in view of Boughtflower as applied to claim 1 above, and
in further view of Yasuda (US 6,244,738 Bl, issued June 12, 2001).
ANALYSIS
Upon consideration of the evidence and each of the respective positions set
forth in the record, we find that the preponderance of evidence supports Appellant's
position in the record, and we thus reverse each rejection essentially for the reasons
set forth therein, and add the following for emphasis.
Critical to our analysis in this appeal is claim interpretation of the term "sonic
contact" found in the phrase "placing the head in sonic contact with the plurality of
microchannels". The term "sonic contact" is clearly defined on page 6 of the
Specification, as follows: "sonic contact means that the sonicating head is either in
direct contact or the head contacts the apparatus through a solid medium (preferably
having a thickness of 0.5 cm or less, more preferably 2 mm or less) that
transmits sound." For "sonic contact" to be present, the ultrasonic head must either
therefore (a) directly contacts the plurality of microchannels, or (b) contact the
plurality of microchannels through a solid medium.
The ultrasonic head of Boughtflower is labeled "1" in Figure 1, reproduced
below:
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Appeal2018-003309
Application 12/265,727
Figure I
I
1 ,, 11 I 5
6 - I _ _. -- -..
3
Schematic view of ultrasound slurry chamber.
1 ::: Ultrasound probe. 2 = Slurry chamber. 3 = Solvent inlet (from
Packing pump), 4:::: Capillary, 5 = Steel support ring. 6. 7 = High
pressure seals.
Appellant submits that since ultrasonic Boughtflower' s head 1 does not
contact capillary tube 4, there is no direct contact, and Boughtflower does not
suggest direct contact between an ultrasonic head and a microchannel. Appeal Br. 6.
We agree. Appellant states that since there is no direct contact, this leaves only the
question whether Boughtflower suggests that the ultrasonic head contacts the
apparatus through a solid medium that transmits sound. Id.
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Appeal2018-003309
Application 12/265,727
It is the Examiner's position that the sonic head 1 of Boughtflower contacts
the apparatus through high pressure seals 7, and housing of chamber 2, that
transmits sound. Ans. 4.
Appellant argues that the aforementioned pathway does not establish "sonic
contact" within the meaning of this claim term in view of the Specification.
Appellants also refer to the Declarations of record in this regard. Appeal Br. 6-7.
For example, Appellant refers to the explanation by Dr. Schubert in the Declaration
filed on June 15, 2017, on pages 2-3, stating that one skilled in the art, having read
the present Specification, would understand the term "sonic contact" requires a solid
medium that transmits sound that would affect particle packing2; not merely a solid
that might (theoretically) transmit a very small amount of sound. Appeal Br. 7. This
situation is analogous to a "conductor" in an electrical device: for example,
no electrical engineer would consider rubber to be a conductor, although it will
transmit some small amount of electricity. Id. We are persuaded by such argument.
The Examiner's response (made throughout the response beginning on page 23 of
the Answer) relies upon the notion that Appellant is relying upon a new definition of
"sonic contact" in making the arguments and therefore found unpersuasive, but, as
Appellant states on page 2 of the Reply Brief, this is not correct.
In view of the above, we thus reverse Rejection 1. We also reverse the other
rejections for the same reasons.
DECISION
Each rejection is reversed.
2 This is discussed, for example, on pages 1-3 of the Specification.
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Application 12/265,727
ORDER
REVERSED
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