IDEX Health & Science LLC

Patent Trials and Appeals Board

Nov 25, 2020

2020000048 (P.T.A.B. Nov. 25, 2020)

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.
14/716,658 05/19/2015 Craig Graham UPC400/4-041US 7504
20350 7590 11/25/2020
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
OLAMIT, JUSTIN N
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
11/25/2020 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CRAIG GRAHAM
____________

Appeal 2020-000048
Application 14/716,658
Technology Center 2800
____________

Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from a Final
Office Action, dated January 18, 2019, rejecting claims 58–67, 72, 74, and
76–82. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as IDEX Health
& Sciences LLC. Appeal Br. 1.
Appeal 2020-000048
Application 14/716,658

2
The invention relates “to frits for use in ion chromatography, liquid
chromatography and other analytical systems, including in particular high
pressure and ultra-high pressure liquid chromatography systems, as well as
methods for making and using such [frits].” Spec. ¶ 6. Claim 65 illustrates
the claimed subject matter and is reproduced below (formatting added):
65. An analytical instrument system comprising:
at least one frit further comprising a central porous region
having a uniform first thickness in a direction of fluid flow
through the frit, the central porous region having a first
diameter and being surrounded by an outer solid region having
a second thickness in the direction and a second outer diameter
and a second inner diameter, wherein the central porous region
further comprises an intermixed region surrounding the central
porous region and adjacent to the outer solid region, the
intermixed region having a first inner diameter corresponding
to the first diameter and a first outer diameter corresponding to
the second inner diameter;
wherein the outer solid region comprises a polymer that
has melted and solidified thereby forming the intermixed region
comprising solid portions and porous portions,
wherein the central porous region has unifom1 porosity
along the uniform first thickness and over the first diameter,
and
wherein a difference between the first outer diameter and
the first inner diameter is less than the first diameter.
Independent claim 58 recites a frit for use in a liquid chromatography
system. Independent claim 77 recites a frit comprising additional features.
Appellant (see generally Appeal Br.) requests review of the following
rejections maintained by the Examiner:
Appeal 2020-000048
Application 14/716,658

3
I. Claims 58–67, 72, 74, and 76–82 rejected under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement.

II. Claims 65–67 and 76 rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Yin (US 2013/0001145 Al, published January 3, 2013).

OPINION
Rejection under 35 U.S.C. § 112(a)
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s rejection of claims 58–67, 72, 74,
and 76–82 under 35 U.S.C. § 112 (a) for the reasons presented by the
Examiner and add the following.
The Examiner finds that the original disclosure does not describe the
uniformity of any of the porous regions of the frit recited in claims 58, 65,
72, and 77. Final Act. 2–3.
Our reviewing court stated in In re Kaslow, 707 F.2d 1366, 1375 (Fed.
Cir. 1983):
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language.

See also Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010). “This inquiry . . . is a question of fact. . . . [T]he level of detail
required [in the Specification as originally filed] to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology.”
Appeal 2020-000048
Application 14/716,658

4
Id. Whether the written description requirement is complied with is a
question of fact, judged from the perspective of one of ordinary skill in the
art as of the relevant filing date. See Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1563–64 (Fed. Cir. 1991).
The claimed subject matter need not be described in haec verba in the
Specification in order for that Specification to satisfy the description
requirement. In re Smith, 481 F.2d 910, 914 (CCPA 1973). That is, it is
enough that one of ordinary skill in the art would recognize that the inventor
invented what is claimed without a claim using the same words as the
Specification. Union Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d 989,
997 (Fed. Cir. 2000). However, in order for a disclosure to be inherent, the
missing descriptive matter must necessarily be present in the parent
application’s Specification such that one skilled in the art would recognize
such a disclosure. Tronzo v. Biomet, Inc., 156 F.3d 1154, 1159 (Fed. Cir.
1998).
Appellant argues that the claimed uniform porosity is clearly
disclosed in Application Figure 11 through the uniform stippling shown in
the center porous region 710. Appeal Br. 9. Appellant further contends that
the drawings comply with the USPTO’s regulations for drawings that
require that “the various parts of a cross section ... should accurately and
graphically indicate the nature of the material(s) that is being illustrated in
the cross section.” Appeal Br. 10 (citing 37 C.F.R. § 1.84(h)(3)). Appellant
also asserts that paragraph 75 of the Specification discloses how to make
frits having a central region with uniform porosity. Appeal Br. 9.
According to Appellant, a person skilled in the art would understand that the
disclosed manufacturing method would produce frits having uniform
Appeal 2020-000048
Application 14/716,658

5
porosity, by virtue of using the apparatus described in the cited portion of
the Specification and shown in Figure 14. Id. at 10.
Appellant’s arguments do not identify reversible error in the
Examiner’s determination essentially for the reasons the Examiner presents.
Ans. 5–6.
Appellant points to the USPTO’s regulations for drawings to assert
that Figure 11 “accurately and graphically indicate[s] the nature of the
material(s) [] illustrated in the cross section.” Appeal Br. 9–10. However,
as the Examiner explains, while the Specification may indicate that the
stippling in Figure 11 designates region 710 as porous,2 Appellant does not
direct us to any portion of the Specification that describes the stippling of
region 710 as representing a material having uniform porosity. Spec. ¶ 72;
Ans. 5.
Appellant’s reliance on the disclosure in paragraph 75 of the
Specification is also insufficient to support a disclosure of uniform porosity
for the claimed identified regions. This particular disclosure does not
discuss uniform porosity or what steps of the process would lead to such
uniform porosity in a material. As stated above, it is the specification itself
that must demonstrate possession. And while the description requirement
does not demand any particular form of disclosure, Carnegie Mellon Univ. v.
Hoffmann–La Roche Inc., 541 F.3d 1115, 1122 (Fed.Cir.2008), nor demand
that the specification recite the claimed invention in haec verba, a
description that merely renders the invention obvious does not satisfy the
requirement, Lockwood v. Am. Airlines, 107 F.3d 1565, 1571–72

2 We note that Appellant has provided no evidence that the disputed
stippling is a standard practice designation for porous materials in Figures.
Appeal 2020-000048
Application 14/716,658

6
(Fed.Cir.1997). Nor does Appellant direct us to any other objective
evidence in support of the stated assertion that a person skilled in the art
would understand that the disclosed manufacturing method would produce
frits having uniform porosity. Appellant, at most, has provided mere
attorney arguments and such arguments of counsel cannot take the place of
evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re
Payne, 606 F.2d 303, 315 (CCPA 1979).
Therefore, on this record, the Specification, as originally filed, does
not show that Appellant was in possession of the scope of the subject matter
described in claims 58–67, 72, 74, and 76–82.
Accordingly, we affirm the Examiner’s rejection of claims 58–67, 72,
74, and 76–82 under 35 U.S.C. § 112(a) for the reasons the Examiner
presents and the reasons we provide above.

Rejection under 35 U.S.C. § 102(a)(1)
Appellant presents arguments focusing only on independent claim 65.
See generally Appeal Br. Accordingly, we select claim 65 as representative
of the claimed subject matter and decide all issues for this rejection based on
the arguments for patentability of claim 65.
After review of the respective positions that Appellant presents in the
Appeal and Reply Briefs and the Examiner presents in the Final Office
Action and the Answer, we REVERSE the Examiner’s prior art rejection of
claims 65–67 and 76 under 35 U.S.C. § 102(a)(1) for essentially the reasons
Appellant presents. We add the following.
Independent claim 65 recites an analytical instrument system
comprising at least one frit having a central porous region comprising an
Appeal 2020-000048
Application 14/716,658

7
intermixed region comprising solid portions and porous portions of a
polymer.
We refer to the Examiner’s Final Office Action for a complete
statement of the rejection of claim 65. Final Act. 7–9. Briefly, the
Examiner finds that Yin’s embodiment illustrated in Figures 3A and 3B
discloses the claimed frit having a central porous region comprising an
intermixed region comprising solid portions and porous portions of a
polymer. Final Act. 9 (showing annotated Yin’s Figure 3A). Referring to
Yin’s Figure 3B, the Examiner explains that the arrangement of lattice 140
in connection with the bottom part of the substrate having thickness 328
forms an intermixed region because the arrangement results in some sections
having blind holes 130 that do not go all the way through the frit (solid
portions) and holes 130 that do go all the way through the frit (porous
portions). Ans. 4. Thus, the Examiner finds that Yin discloses an analytical
instrument system comprising a frit that anticipates the claimed invention.
Appellant argues that Yin fails to disclose all the claimed features
because Yin teaches a micro-machined frit. Appeal Br. 5. According to
Appellant, Yin’s frit does not have an intermixed region because the alleged
intermixed regions are separate stacked layers and, thus, not intermixed. Id.
Appellant further asserts that Yin does not disclose an outer solid region
where solid and porous portions of the intermixed region are created by
melting and solidifying a polymeric material as claimed because Yin
discloses a micro-machined frit. Id. Thus, Appellant contends that Yin
teaches away from the claimed invention. Id.
Appeal 2020-000048
Application 14/716,658

8
We agree with Appellant that there is reversible error in the
Examiner’s finding of anticipation.
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). See also In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (explaining that the scope of the
claims in patent applications is not determined solely on the basis of the
claim language, but upon giving claims their broadest reasonable
construction in light of the specification as it would be interpreted by one of
ordinary skill in the art); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed.
Cir. 2005) (“[T]he specification ‘is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term.’” (citation omitted)). In general,
the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.

In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Thus, the terms in the appealed claims must be given their broadest
reasonable interpretation including the ordinary meaning unless another
meaning is intended by Appellant as established in the written description of
their Specification. See, e.g., In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir.
1989).
Appeal 2020-000048
Application 14/716,658

9
When the Specification does not contain an express definition, a
reasonable, supported interpretation of the appealed claims that differs from
that urged by applicants can be used to determine the patentability of the
claims. Morris, 127 F.3d at 1055–56 (“Absent an express definition in their
specification, the fact that appellants can point to definitions or usages that
conform to their interpretation does not make the PTO’s definition
unreasonable when the PTO can point to other sources that support its
interpretation.”). Indeed, “[i]t is the applicants’ burden to precisely define
the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 [statute omitted].”
Morris, 127 F.3d at 1055–56.
Here, we agree with Appellant that the Examiner’s interpretation of
the claim language “intermixed region” as encompassing the structure of
Yin’s embodiment depicted in Figures 3A and 3B is unreasonable.
The Specification describes “[t]he exterior area 712 of the central
porous region 710 [as] an intermixed area of solid and porous [polymeric
material], since there is generally not a definite border between the solid
outer region 720 and the central porous region 710.” Spec. ¶ 72. The
Specification further describes that the solid and porous portions are formed
by using heat and pressure to melt and solidify the outer portion of the frit
without melting and solidifying the central porous region. Id. ¶ 75. The
Specification, thus, conveys that intermixed area 712 is an area of indefinite
border, i.e., a transitional area, between solid outer region 720 produced by
melting and solidifying and central porous region 710 that remains cool and
unmelted. In other words, the interaction between unheated press head 811
and the heated base 820 shown in Figure 14 defines a zone in the frit where
the starting polymeric material experiences heating on its outer boundary
Appeal 2020-000048
Application 14/716,658

10
adjacent solid outer region 720 and cooling on its inner boundary adjacent
central porous region 710 that eventually forms intermixed region 712
having an indefinite border. Thus, the recited intermixed region is an
indefinite border structure transitioning from solid to porous. The
combination of structural and process limitations in claim 65 require this
transitional intermixed structure.
Yin’s Figure 3B embodiment, which the Examiner relies upon, shows
a frit micro-machined from a single substrate having a cross-section where
the material is the same throughout the entire surface. Yin ¶ 44. That is,
there is no region in the material that includes an intermixture of transitional
solid and porous structure with indefinite border. See Appeal Br. 7. Thus,
the structure of Yin’s Figure 3B embodiment is different from the structure
recited in claim 65. The Examiner does not direct us to any portion of Yin
that describes Yin’s Figure 3B embodiment as comprising an intermixture of
solid and porous components as recited in claim 65. Therefore, the
Examiner has not established a prima facie case of anticipation. See
generally Schreiber, 128 F.3d at 1477.
Accordingly, we REVERSE the Examiner's prior art rejection of
claims 65–67 and 76 under 35 U.S.C. § 102(a)(1) for the reasons the
Appellant presents and we give above.

DECISION SUMMARY
Because the affirmed rejection reaches all the claims, our decision is
an affirmance.

Appeal 2020-000048
Application 14/716,658

11
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
58–67, 72,
74, 76–82
112(a) Written
Description
58–67, 72,
74, 76–82

65–67, 76 102(a)(1) Yin 65–67, 76
Overall
Outcome
58–67, 72,
74, 76–82

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