Sylvain Cormier

Patent Trials and Appeals Board

Jun 2, 2021

2020003710 (P.T.A.B. Jun. 2, 2021)

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.
13/519,798 06/28/2012 Sylvain Cormier W-680-US2 (WAT-017US) 1683
14299 7590 06/02/2021
Schmeiser, Olsen & Watts LLP
33 Boston Post Road West
Suite 410
Marborough, MA 01752
EXAMINER
PEO, KARA M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
06/02/2021 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):
docketing@iplawusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SYLVAIN CORMIER
Appeal 2020-003710
Application 13/519,798
Technology Center 1700
Before CATHERINE Q. TIMM, N. WHITNEY WILSON, and
JENNIFER R. GUPTA, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4, 6, 7, 11, 12, and 33–36. See Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Waters Technologies Corporation.
Appeal Br. 1.
Appeal 2020-003710
Application 13/519,798
2
CLAIMED SUBJECT MATTER
The claims are directed to an online sample manager of a liquid
chromatography system. See, e.g., claims 1 and 36.
In a liquid chromatography application, a sample manager contains a
sample to be analyzed by a liquid chromatography column and pumps to
deliver solvents that are mixed with the sample. Spec. 1:11–16.
Sampling at various times or at different points along a production
line of, for instance, a drug manufacturing apparatus is often used to ensure
that a manufacturing batch is being created to specification. Spec. 1:17–23.
“Typically, however, the manner of acquiring samples for analysis is
manually intensive; an individual takes a sample manually from a process
line, carries the sample into the liquid chromatography system, and loads it
for injection and analysis.” Spec. 1:24–26.
Appellant’s online sample manager allows for automatic sampling
directly from a process source. Spec. 4:2–13. According to the Specification,
“[a]s used herein, ‘online’ means that the sample manager is connected
directly to a process (or production) line to acquire samples automatically
from the process line in approximately real time without manual
intervention, then dilute, load, and inject the acquired process samples for
subsequent chromatographic analysis.” Spec. 4:4–8.
Appellant’s claims are limited to a specific arrangement of a fluidic
tee, pumps, valves, and sample loop within Appellant’s online sample
manager. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An online sample manager of a liquid chromatography
system, comprising:
Appeal 2020-003710
Application 13/519,798
3
a fluidic tee having a first inlet port, a second inlet port,
and an outlet port;
a diluent pump in fluidic communication with a diluent
source and the first inlet port of the fluidic tee;
a process-selection valve having an intake port in fluidic
communication with a process line to receive a process sample
therefrom and having an outlet port;
a process sample pump in fluidic communication with
the outlet port of the process-selection valve and the second
inlet port of the fluidic tee, the process sample pump configured
to move an acquired process sample into the second inlet port
of the fluidic tee while the diluent pump is moving the diluent
into the first inlet port of the fluidic tee such that the process
sample and the diluent are in the fluidic tee at a same time and
merge to produce a diluted process sample that flows out from
the outlet port of the fluidic tee;
an injection valve having a first injection valve port in
fluidic communication with the outlet port of the fluidic tee to
receive the diluted process sample therefrom, a second injection
valve port in fluidic communication with a solvent delivery
system to receive a solvent composition stream therefrom, a
third injection valve port and a fourth injection valve port; and
a sample loop configured to store the diluted process
sample and having one end directly coupled to the third
injection valve port and an opposite end directly coupled to the
fourth injection valve port.
Appeal Br. 12 (Claims Appendix).
Appeal 2020-003710
Application 13/519,798
4
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Friswell US 4,094,196 June 13, 1978
Wheat US 6,790,361 B2 Sept. 14, 2004
Petro US 2006/0054543 A1 Mar. 16, 2006

REJECTIONS
Claim 34 is rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112,
second paragraph, as being indefinite. Final Act. 2.
Claim 34 is rejected under 35 U.S.C. § 112(d) or 35 U.S.C. § 112,
fourth paragraph, as being of improper dependent form. Final Act. 3.
Claims 1, 4, 11, 12, and 33–36 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wheat in view of Petro. Final Act. 3.
Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wheat and Petro and further in view of Friswell. Final
Act. 13.
OPINION
The Obviousness Rejections
The Examiner rejects claims 1, 4, 11, 12, and 33–36 as obvious over
Wheat in view of Petro and adds Friswell to reject claims 6 and 7.
All of the rejected claims require an online sample manager of a liquid
chromatography system that includes a fluidic tee, a process-selection valve,
and an injection valve. See, e.g., claims 1 and 36. The claims further require
the tee and valves include various inlet and outlet ports that are in fluidic
communication with each other and with pumps in specified ways and such
that a sample loop is created. For instance, the two inlet ports of the fluidic
Appeal 2020-003710
Application 13/519,798
5
tee are in fluidic communication with a diluent pump and a process sample
pump, respectively, while the outlet of the fluidic tee is in fluid
communication with an injection valve. The process-selection valve is in
fluidic communication with a process line, i.e., a manufacturing process line
or production line from which the sample is taken (e.g., a drug
manufacturing process, beaker reaction, exit line (cleaning validation),
reaction chamber, fermentation reaction, etc.) and the process-section valve
outlet is fluidic communication with the process sample pump. Spec. 1:17–
23; 4:2–13; 5:5–15. Two valve ports of the injection valve are directly
coupled together to form a sample loop configured to store the diluted
process sample. Spec. 8:21–24.
The Examiner finds that Wheat’s fitting 24, shown in Figure 2, is the
required fluidic tee, Petro’s injection valve 112 is the required process-
selection valve, and Petro’s splitter 308 is the required injection valve. Final
Act. 3–6. According to the Examiner, “[i]t would have been obvious to one
of ordinary skill in the art at the time of the invention to have incorporated
the process-selection and injection valve system, as taught by Petro, into the
chromatography system of Wheat in order to sample discrete samples from
multiple sources.” Final Act. 6. The Examiner also finds that Petro teaches a
sample loop including heated line 314, detector 126, waste 120, and splitter
308. Final Act. 5; see also Ans. 24 (annotated Figure 3).
We agree with Appellant that the Examiner’s reasoning falls short of
establishing a suggestion within the prior art for combining Wheat’s fluidic
tee and Petro’s valves 112 and 308 in a manner that would arrive at the
online sample manager of Appellant’s claims. Appeal Br. 6–7. We further
agree with Appellant that Petro’s post-column loop including heated line
Appeal 2020-003710
Application 13/519,798
6
314, detector 126, waste 120, and splitter 308 are not a “sample loop” as that
terminology is understood in the art and used by Appellant. Appeal Br. 7–8.
First, it is unclear from the rejection how the ordinary artisan would
have arrived at the combination of the fluidic tee and process-section valve
required by Appellant’s claims based on only knowledge within the art. In
Figure 2, Wheat suggests a fluidic tee (fitting 24) that is in fluidic
communication with diluent pump (gradient pump 21) and an injector 23
that receives a sample-containing mobile phase. Wheat col. 8, ll. 3–67. The
fluidic tee (fitting 24) combines the diluent and dissolved sample and passes
it to column 25. Id. Petro uses injection valve 112 to accomplish similar
sample and diluent mixing functions. Petro ¶ 60; Figs. 1, 3. Petro’s injection
valve 112 includes an injection port that receives samples from a sample
source, such as an online sampling system in a polymerization process line
(Fig. 1 at 114; Fig. 2A at 212), inlet ports that receive solvents (Fig. 2A at
204 and 206), and a sample loop (Fig. 2A at 202) that can inject discrete
sample volumes into the mobile phase of solvents into the column (Fig. 3 at
106). At best, the ordinary artisan would have used Petro’s injection valve
112 in place of Wheat’s fluidic tee (fitting 24). The Examiner offers no
adequate reasoning as to why the ordinary artisan would have included both
the fluidic tee of Wheat and the injection valve 112 of Petro in a sample
manager.
Second, the Examiner finds that Petro’s valve 308, shown in Figure 3,
is an injection valve, but valve 308 is not the injection valve required by the
claims. The claims require an injection valve having an injection valve port
in fluidic communication with the outlet port of the fluidic tee to receive the
diluted process sample therefrom and with injection valve ports directly
coupled together to form a sample loop, which stores the diluted process
Appeal 2020-003710
Application 13/519,798
7
sample. Petro’s valve 308 resides after the column, not before, and does not
have valve ports connected to a sample loop. See Fig. 3. Nor has the
Examiner provided any persuasive technical reasoning supporting a finding
of a suggestion for arranging the fluidic tee of Wheat and valve 308 of Petro
in the arrangement required by the claims.
Lastly, we agree with Appellant that “sample loop” has an established
meaning in the prior art as evidenced by the quote from chromatograph-
online.org and the Examiner’s broad interpretation of “sample loop” as
encompassing the post-column recycling loop taught by Petro is
unreasonable. Appeal Br. 7–8; Reply Br. 5. Petro supports Appellant’s
interpretation of “sample loop.” See Petro ¶¶ 67–68 (describing a
passageway that holds a discrete volume of a sample for injection into a
mobile phase and through the chromatography column). And the Examiner
offers no persuasive evidence in response. Ans. 22.
The Examiner’s application of Friswell does not cure the deficiencies
of Wheat and Petro. Thus, we do not sustain the obviousness rejection of any
claim.

The Rejections under 35 U.S.C. § 112
The Examiner rejects claim 34 as indefinite under the second and
fourth paragraphs of 35 U.S.C. § 112. Final Act. 2–3.
Claim 34 depends from claim 33. Claim 33 requires the injection
valve have a fifth injection valve port and requires the fifth injection valve
port be “in fluidic communication with a chromatographic column.” Claim
34 further recites that the online sample manager of claim 33 further
comprises the chromatographic column.
Appeal 2020-003710
Application 13/519,798
8
The Examiner determines that the scope of claim 34 is unclear
because claim 33 already requires a chromatographic column and, thus, it is
unclear what claim 34 additionally requires. Final Act. 2.
Appellant contends that claim 34 is clear because claim 33 recites
only that the fifth injection valve is in fluidic communication with a
chromatographic column and does not affirmatively require the online
sample manager include the chromatographic column, while claim 34
expressly requires chromatographic column be in the online sample
manager. Appeal Br. 3.
The problem is that Appellant’s argument is based on semantics that
are irrelevant to the scope of the claim from an infringement standpoint.
Whether the chromatographic column is defined as within the online sample
manager or outside of it, the column must be present in order to meet the
requirements of claim 33. If the fifth valve is not in fluidic communication
with a chromatographic column, there is no infringement. This is so even if
one draws the boundary of the online sample manager before the
chromatographic column or after it. Redrawing the boundary to include the
chromatographic column by expressly requiring the chromatographic
column to be in the online sample manager makes no difference to the scope
of the claims in a patentability sense. Thus, we agree with the Examiner that
claim 34 is unclear and improperly dependent as it is not clear what claim 34
adds to claim 33 in a patentability sense.
We sustain the Examiner’s rejections of claim 34 under 35 U.S.C.
§ 112, second and fourth paragraphs for indefiniteness and improper
dependency.
Appeal 2020-003710
Application 13/519,798
9
CONCLUSION
The Examiner’s decision to reject claim 34 under 35 U.S.C. § 112 is
affirmed, but the Examiner’s decision to reject claims 1, 4, 6, 7, 11, 12, and
33–36 under 35 U.S.C. § 103(a) is reversed. Because one claim remains
rejected, we affirm in part.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
34 112, second
paragraph
Indefiniteness 34
34 112, fourth
paragraph
Improper
dependency
34
1, 4, 11, 12,
33–36
103(a) Wheat, Petro 1, 4, 11, 12,
33–36
6, 7 103(a) Wheat, Petro,
Friswell
6, 7
Overall
Outcome
34 1, 4, 6, 7,
11, 12, 33,
35, 36

RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART