Waters Technologies CorporationDownload PDFPatent Trials and Appeals BoardJun 8, 20212020003717 (P.T.A.B. Jun. 8, 2021) Copy Citation 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. Appeal 2020-003717 Application 14/632,049 2 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 3 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 4 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. Appeal 2020-003717 Application 14/632,049 5 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 Copy with citationCopy as parenthetical citation