Waters Technologies Corporation

Patent Trials and Appeals Board

Jun 8, 2021

2020003717 (P.T.A.B. Jun. 8, 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.
14/632,049 02/26/2015 Joshua A. Burnett W-897-US2 (WAT-098) 4420
14299 7590 06/08/2021
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
06/08/2021 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 JOSHUA A. BURNETT, JAMES USOWICZ, MARC LEMELIN,
LUCAS O. TIZIANI, JOHN LAMOUREUX, and AARON LEBEAU1
____________

Appeal 2020-003717
Application 14/632,049
Technology Center 1700
____________

Before MICHELLE N. ANKENBRAND, CHRISTOPHER C. KENNEDY,
and JANE E. INGLESE, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 12–14 and 19. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
BACKGROUND
The subject matter on appeal relates to methods of collecting fractions
from a liquid chromatography system. E.g., Spec. ¶ 2; Claim 12. Claim 12

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
Waters Technologies Corporation. Appeal Br. 3.
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Application 14/632,049

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is reproduced below from pages 13–14 (Claims Appendix) of the Appeal
Brief:
12. A method of fraction collection for a liquid chromatography
system, the method comprising:
diverting a liquid chromatography system flow from a waste
channel to a collection tube at a start of a fraction collection
window, wherein the fraction collection window is defined as a
time when a chromatographic peak corresponding to a fraction
in the liquid chromatography system flow is first diverted from
flowing to the waste channel to flow to the collection tube until
a time when the diversion of the chromatographic peak in the
liquid chromatography system flow to the collection tube is
terminated, wherein a portion of the fraction is in the collection
tube at an end of the fraction collection window;
collecting the liquid chromatography system flow dispensed
from the collection tube during the fraction collection window in
a collection vessel;
diverting the liquid chromatography system flow to the waste
channel at the end of the fraction collection window;
coupling a source of wash solvent to the collection tube after the
end of the fraction collection window; and
actuating the source of wash solvent after the end of the fraction
collection window and the coupling of the source of wash solvent
to dispense at least the portion of the fraction in in the collection
tube at the end of the fraction collection window from the
collection tube into the collection vessel.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 102(a)(1) as follows:
1. Claims 12–14 and 19 as anticipated by Agilent I (Agilent 1260
Infinity Analytical- and Preparative-scale Fraction Collectors User Manual,
dated 2010).
Appeal 2020-003717
Application 14/632,049

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2. Claims 12–14 and 19 as anticipated by Agilent II (Agilent 1260
Infinity Analytical-scale Fraction Collector, dated 2010).
ANALYSIS
Claim 12 requires, inter alia, that a “source of wash solvent” is
coupled “to the collection tube after the end of the fraction collection
window,” and that the source of wash solvent is “actuat[ed] . . . to dispense
at least the portion of the fraction in the collection tube at the end of the
fraction collection window from the collection tube into the collection
vessel.” Appeal Br. 13–14. We refer to this as the “actuating” limitation.
We understand the “actuating” limitation to require that the wash solvent
enter the collection tube and dispense remaining collected fraction from the
collection tube into the collection vessel. Id.; Appeal Br. 8.
For reasons set forth below, and consistent with the Appellant’s
arguments (e.g., Appeal Br. 8 (arguing that “[n]one of the liquid during
[Agilent I’s] rinsing is dispensed into a collection vessel”)), the Examiner
has not established that either Agilent I (Rejection 1) or Agilent II (Rejection
2) teaches the “actuating” limitation.
Rejection 1. The Examiner cites, without meaningful explanation,
pages 50, 51, 59, 73, 74, and 78 of Agilent I in support of the Examiner’s
finding that Agilent I teaches the “actuating” limitation. Ans. 4. The
Examiner has not adequately explained how those pages teach the
“actuating” limitation. See id. We have reviewed the cited pages and do not
discern relevant disclosures. Consistent with the Appellant’s arguments, see
Appeal Br. 8, pages 68–69 of Agilent I indicate that the effluent of any
rinsing contemplated by Agilent I is diverted to waste rather than to the
collection vessel. See Agilent I at 68 (explaining that, during rinsing, “the
Appeal 2020-003717
Application 14/632,049

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diverter valve will switch to flush the needle in order to avoid carry over
from the previous fraction” (emphasis added)); see also Appeal Br. 8
(“[W]hen Agilent I uses a solvent to rinse the collection tube, the liquid
dispensed from the collection tube is passed to waste as part of a
conventional rinsing process. None of the liquid during the rinsing is
dispensed into a collection vessel.”).
Because the Examiner has not established that Agilent I teaches the
“actuating” limitation, we reverse the Examiner’s rejection of claim 12 as set
forth in Rejection 1. Because claims 13, 14, and 19 depend from claim 12,
and the Examiner’s discussion of those claims does not remedy the error
identified above, we likewise reverse the Examiner’s rejection of those
claims.
Rejection 2. The Examiner cites a paragraph of page 2 of Agilent II
with the header “various collection strategies” in support of the Examiner’s
finding that Agilent II teaches the “actuating” limitation. Ans. 6. As with
Rejection 1, however, the Examiner has not adequately explained how that
paragraph teaches the “actuating” limitation. The cited paragraph says
nothing about a wash solvent. See Agilent II at 2. Even if we were to
assume that the cited paragraph necessarily implies rinsing with a wash
solvent between sample injections, the Examiner provides no basis to
believe that the rinse effluent would proceed into the collection vessel rather
than into a waste vessel. See Ans. 6. Accordingly, we reverse the
Examiner’s rejection of claim 12 as set forth in Rejection 2. Because claims
13, 14, and 19 depend from claim 12, and the Examiner’s discussion of
those claims does not remedy the error identified above, we likewise reverse
the Examiner’s rejection of those claims.
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Application 14/632,049

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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. § Reference Affirmed Reversed
12–14, 19 102(a)(1) Agilent I 12–14, 19
12–14, 19 102(a)(1) Agilent II 12–14, 19
Overall
Outcome 12–14, 19
REVERSED