WATERS TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

Feb 4, 2022

2021000835 (P.T.A.B. Feb. 4, 2022)

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. 14/896,135 12/04/2015 Mathew H. Delano W-839-US2 (WAT-201US) 8059 14299 7590 02/04/2022 Schmeiser, Olsen & Watts LLP 33 Boston Post Road West Suite 410 Marborough, MA 01752 EXAMINER OLIVERA, ANGEL J ART UNIT PAPER NUMBER 1773 NOTIFICATION DATE DELIVERY MODE 02/04/2022 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 MATHEW H. DELANO, JONATHAN BELANGER, and RAYMOND P. FISK Appeal 2021-000835 Application 14/896,135 Technology Center 1700 Before GEORGE C. BEST, DEBRA L. DENNETT, and MERRELL C. CASHION, JR., Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1, 4, 5, 7, 8, 10, 12, 14-17, 22, and 28-33 of Application 14/896,135, which constitute all the claims pending in this application See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we REVERSE. 1 In our Decision, we refer to the Specification (“Spec.”) of Application 14/896,135 filed Dec. 4, 2015 (“the ’135 App.”); the Final Office Action dated Jan. 9, 2020 (“Final Act.”); the Appeal Brief filed June 8, 2020 (“Appeal Br.”); the Examiner’s Answer dated Sept. 18, 2020 (“Ans.”); and the Reply Brief filed Nov. 16, 2020 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Waters Technologies Corp. as the real party in interest. Appeal Br. 1. Appeal 2021-000835 Application 14/896,135 2 BACKGROUND The subject matter of the invention relates to filter assemblies for use with chromatographic columns. Spec. 1. Applicant contends that conventional sintered filters sealed within a housing can be damaged by use of an interference fit between the filter and a receiving bore, resulting in regions of the filter having undesirable flow characteristics. Id. 2. Claim 1, reproduced below from the Appeal Brief’s Claims Appendix, illustrates the claimed subject matter: 1. A filter comprising: a porous element including an outer surface having a side wall, a compression element having an inner surface surrounding the outer surface of the porous element and having an outer surface, the inner surface configured to receive the porous element in a slip-fit relationship, thereby forming an assembly, and a housing having an opening formed therein, the opening configured to receive and retain the assembly in a press-fit relationship, wherein when the opening receives the assembly in the press-fit relationship, a first force applied to the outer surface of the compression element is converted into a second force between the inner surface of the compression element and the outer surface of the porous element, so that the second force is sufficient to retain the porous element within the compression element. REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Name Reference Date Brownlee US 4,313,828 Feb. 2, 1982 Allington et al. (“Allington”) US 4,759,843 July 26, 1988 Dewaele et al. (“Dewaele”) US 2008/0029449 A1 Feb. 7, 2008 Appeal 2021-000835 Application 14/896,135 3 Name Reference Date Doehren et al. (“Doehren”) US 2011/0094953 A1 Apr. 28, 2011 REJECTIONS The Examiner maintains the following rejections under 35 U.S.C. § 103: 1. Claims 1, 5, 8, 12, and 14-17 as obvious over Doehren, or alternatively over Doehren in view of Brownlee. Final Act. 6-15. 2. Claim 4 as obvious over Doehren or Doehren in view of Brownlee, further in view of Dewaele. Id. at 15-16. 3. Claims 7 and 10 as obvious over Doehren or Doehren in view of Brownlee, further in view of Allington. Id. at 16-19. 4. Claims 22, 28-31, and 33 as obvious over Doehren in view of Brownlee. Id. at 19-29. 5. Claim 32 as obvious over Doehren in view of Brownlee, further in view of Dewaele. Id. at 29-30. DISCUSSION During examination, the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The Examiner must provide an adequate reason for a person of ordinary skill in the art at the time the invention to have modified the reference or combination of references to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.”). In the absence of such an explanation, the rejection must be reversed. In re Kahn, 441 F.3d at 988; Appeal 2021-000835 Application 14/896,135 4 In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred when the specific understanding or principal within the knowledge of one of ordinary skill in the art leading to the modification of the prior art in order to arrive at appellant's claimed invention has not been explained). For the purpose of this appeal, we need consider only claims 1 and 22, the independent claims. Claim 1 recites, inter alia: a housing having an opening formed therein, the opening configured to receive and retain the assembly in a press-fit relationship, wherein when the opening receives the assembly in the press-fit relationship, a first force applied to the outer surface of the compression element is converted into a second force between the inner surface of the compression element and the outer surface of the porous element, so that the second force is sufficient to retain the porous element within the compression element. App. A to Appeal Br., A. Claim 22, a method claim, similarly recites: providing a housing having an opening formed therein, the opening configured to receive and retain the assembly in a press-fit relationship; inserting the assembly into the opening such that the assembly is retained therein and such that when the opening receives the assembly in the press-fit relationship, a first force applied to the outer surface of the compression element is converted to a second force between the inner surface of the compression element and the outer surface of the porous element, so that the force is sufficient to retain the porous element within the compression element. Id. at D. The issue raised by Appellant and on which we decide this appeal is whether Doehren, alone or in combination with Brownlee, discloses the press-fit relationship as claimed. See Appeal Br. 10, 11, 19-21. We focus on claim 1, as our determination with respect to this claim applies equally to the other pending claims. Appeal 2021-000835 Application 14/896,135 5 Regarding claim 1, the Examiner acknowledges that Doehren is silent regarding “a first force applied to the outer surface of the compression element is converted into a second force between the inner surface of the compression element and the outer surface of the porous element, so that the second force is sufficient to retain the porous element within the compression element.” Final Act. 8-9. However, the Examiner finds that the only difference between claim 1 and Doehren’s disclosure is “a recitation of relative dimensions of the inner circumference of the opening [in the housing] and the outer circumference of the assembly.” Id. at 9. The Examiner finds that “[a] slight relative difference in the dimensions will change the relationship of the compression element and porous elements into a slip-fit, fixed fit, or press-fit,” and such a change would not cause the claimed device to perform differently from the prior art device. Id. (referencing MPEP § 2144.04.IV.A.¶ 2). The Examiner finds that Doehren is fully capable of applying a first force to the outer surface of the compression element which is converted into a second force between the inner surface of the compression element and the outer surface of the porous element. Id. at 10 (referencing MPEP § 2114.II). We agree with Appellant’s argument that MPEP §§ 2144.04.IV.A.¶ 2 and 2114.II do not support obviousness in this case. See Appeal Br. 18-20. MPEP § 2144.04.IV.A.¶ 2 discusses Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984) as holding that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.” In Gardner the Federal Circuit upheld the trial court’s determination that the dimensional limitations (e.g., “spaced therefrom as closely as is Appeal 2021-000835 Application 14/896,135 6 mechanically practicable,”) were “limitation[s] without a function,” and “the dimensional limitations did not specify a device which performed and operated any differently from the prior art.” Gardner, 725 F.2d at 1340, 1346, 1349. The facts in the instant case are distinguishable. As elaborated infra, a difference in the relative dimensions of the claimed housing and compression element would result in a difference in performance from that of Doehren. Claim 1 requires the housing to apply force on the outer surface of the compression element such that the compression element applies at least some of that force to the porous element, holding it in place. App. A to Appeal Br., A. However, although Doehren discloses that frit retainer 232 (housing identified by the Examiner) receives fit assembly 814 (compression element and porous element identified by the Examiner), Doehren does not teach or suggest that the frit retainer exerts any radial force on the compression element that reduces the diameter of its inner circumferential surface. See Doehren Fig. 11. An annotated version of Doehren’s Figure 11 is reproduced below: Appeal 2021-000835 Application 14/896,135 7 Doehren Figure 11 is a cross-sectional view along the longitudinal axis of an end section of a chromatography column after the column has been assembled. Doehren ¶¶ 12, 21-22, 39. End fitting including end portion 228 and frit retainer 232 are securely engaged to tube 110 by mating threads of end portion 28 with thread of tube 110 at threaded area 222 of a desired axial length. Id. ¶ 39. End portion 228 is then moved or translated in the axial direction toward tube 110 (downward from the perspective of Figure 11). Id. The axial movement of end portion 228 relative to tube 110 causes end portion 228 to bear against frit retainer 232, and, in turn, frit retainer 232 to bear against fit assembly 814, with fit assembly 814 consequently axially compressed between fit retainer 232 and annular protrusion 712. Id. Thus, Doehren teaches fit assembly 814 (the porous element combined with the compression element, per the Examiner) is held in place by axial force exerted by end portion 228 on frit retainer 232 and tube 110. Doehren fails to disclose application of radial force by frit retainer 232 on fit assembly 814. Doehren, therefore, is not capable of meeting the claim limitation of a housing applies a first force to the outer surface of the compression element, which is converted into a second force between the inner surface of the compression element and the outer surface of the porous element. See Final Act. 10 (referencing MPEP § 2114.II). In the alternative to obviousness of claim 1 over Doehren alone, the Examiner finds that Brownlee teaches the press-fit relationship of claim 1. Id. at 11-12; Ans. 20-21. The Examiner relies on Brownlee Figure 3 and a portion of the specification. Id. Appeal 2021-000835 Application 14/896,135 8 An annotated version of Brownlee Figure is reproduced below: Brownlee Figure 3 is a cross-sectional view of one end of the column coupler disclosed in the reference. Brownlee col. 4, ll. 27-35. Figure 3 shows elongate cylindrical tube 33 closed with end plug 34, in which is mounted filter 40. Id. col. 5, ll. 29-37. End plug 34 includes laterally extending portion 42 that overlaps the end of the column tube to form a gasket or seal. Id. col. 5, ll. 37-40. The plug portion of end plug 34 is about the same diameter as the inner diameter of tube 33 and extends internally therein in a close-fitting relationship. Id. col. 5, ll. 40-42. The plug portion may be provided with a radially extending circumferential projection or rim 44 which interfits within a mating groove 46 in column 33, permitting engagement by the projection when end plug 34 is fully inserted, and biasing end plug 34 to remain in position during disassembly notwithstanding the close fitting relationship between seal plug 34 and the end fitting, since the captured projection in the groove of the tube requires more force to unmake than Appeal 2021-000835 Application 14/896,135 9 the close sliding fit created between the seal and the end fitting. Id. col. 5, ll. 42- 53. The end fitting is provided at its inner extreme with recess 48 which is the same dimension as column tube 33 and seal portion 42 of end plug 34, and provides a chamber for receiving the end of the cartridge and seal. Id. col. 5, ll. 60- 64. The assembled cartridge is captured within the chamber end fitting in a very dose fitting relationship, contact being established between the outer, or endwise facing flat of seal plug 34 and chamber floor 48a as well as between seal plug 34 and the side wall of recess 48. Id. col. 5, l. 66-col. 6, l. 3. In this way the laterally- extending seal portions of seal plug 34 form a gasket like structure totally bounded at the outer extreme by the lower and/or floor of the chamber and at its lateral sides by the side walls thereof. Id. col. 6, ll. 3-7. The Examiner finds that the “very close fitting” relationship between the assembled cartridge and the chamber end reads on the claimed press-fit relationship. Final Act. 12. Appellant argues that Brownlee does not disclose a housing that press fits against a compression member to convert a force onto a porous element. Appeal Br. 21. Appellant has the better position. The “very close fitting” relationship that the Examiner identifies in Brownlee is between the end of seal plug 34 and chamber floor 48a and between the edge of seal plug 34 (laterally extending portion 42) and the side wall of recess 48. See Brownlee col. 5, l. 66-col. 6, l. 3. This portion of seal plug 34 cannot apply any force to filter 40 of Brownlee because filter 40 is located at a distance from laterally extending portion 42, as is shown in Figure 3. See id. Fig. 3. We express no opinion as to whether seal plug 34’s radially extending circumferential projection or rim 44 that interfits with Appeal 2021-000835 Application 14/896,135 10 column 33’s mating groove 46 is a press-fit relationship that would transmit force to filter 40. Because the Examiner reversibly errs in finding that Doehren or Brownlee teach the press-fit relationship as claimed, we do not sustain the rejection of claim 1 over Doehren or over Doehren in view of Brownlee. For this same reason, we do not sustain the rejection of independent claim 22 or of any of the dependent claims. CONCLUSION The Examiner’s rejections are not sustained. More specifically, DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5, 8, 12, 14-17 103 Doehren, Brownlee 1, 5, 8, 12, 14-17 4 103 Doehren, Brownlee, Dewaele 4 7, 10 103 Doehren, Brownlee, Allington 7, 10 22, 28-31, 33 103 Doehren, Brownlee 22, 28-31, 33 32 103 Doehren, Brownlee, Dewaele 32 Overall Outcome 1, 4, 5, 7, 8, 10, 12, 14-17, 22, 28-33 REVERSED