Anke Pierik et al.Download PDFPatent Trials and Appeals BoardJul 23, 201914786254 - (D) (P.T.A.B. Jul. 23, 2019) 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. 14/786,254 10/22/2015 ANKE PIERIK 2012P01986WOUS 2930 24737 7590 07/23/2019 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus Avenue Suite 340 Valhalla, NY 10595 EXAMINER WHITE, DENNIS MICHAEL ART UNIT PAPER NUMBER 1798 NOTIFICATION DATE DELIVERY MODE 07/23/2019 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): katelyn.mulroy@philips.com marianne.fox@philips.com patti.demichele@Philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANKE PIERIK, REINHOLD WIMBURGER-FRIEDL, JOHANNES THEODORUS WILHELMUS MARIA VAN EEMEREN, IRENE JOHANNA MONIA DOBBELAER-BOSBOOM, MARTINUS JOHANNES VAN ZELST, and BERNADET DAGMAR MARIELLE MEIJERING ____________ Appeal 2018-008296 Application 14/786,254 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, MONTÉ T. SQUIRE, and JANE E. INGLESE, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON APPEAL The Applicant1 (“Appellant”) appeals under 35 U.S.C. § 134(a) from the Primary Examiner’s final decision to reject claims 1 and 3–15.2 Claim 16 is also pending but has been withdrawn from further consideration 1 The Applicant is “KONINKLIJKE PHILIPS N.V.” (Application Data Sheet filed October 22, 2015), which is also identified as the real party in interest (Appeal Brief filed May 23, 2018 (“Appeal Br.”), 3). 2 Appeal Br. 7–13; Reply Brief filed August 14, 2018 (“Reply Br.”), 2–11; Final Office Action entered December 28, 2017 (“Final Act.”), 2–7; Examiner’s Answer entered June 22, 2018 (“Ans.”), 3–4. Appeal 2018-008296 Application 14/786,254 2 pursuant to a restriction requirement (Final Act. 2).3 We have jurisdiction under 35 U.S.C. § 6(b). We reverse. I. BACKGROUND The subject matter on appeal relates to a fluidic system for processing a sample fluid, e.g., a biological sample that is subjected to an assay (Specification filed October 22, 2015 (“Spec.”), 1, ll. 3–4). Figure 5 (annotated) is illustrative of the invention and is reproduced from the Drawings filed October 22, 2015, as follows: Figure 5, reproduced above, depicts a schematic top view of a fluidic system 200 comprising bead chambers 211–216 provided with lyophilized beads LB in a carousel 200 and a reaction chamber 230 in a cartridge 220, wherein a separate seal (not shown) that has to be broken to establish physical 3 In the Appeal Brief, the Appellant argues that claim 16 should be rejoined with the elected claims (Appeal Br. 8). That argument, however, does not relate to an appealable issue and is, therefore, outside our jurisdiction. See 37 C.F.R. §§ 1.142–1.144. Appeal 2018-008296 Application 14/786,254 3 contact between the fluid in the cartridge and the beads LB may be present (Spec. 7, ll. 31–32; 12, l. 29–13, l. 10). Representative claim 1 is reproduced from the Claims Appendix to the Appeal Brief, as follows: 1. A fluidic system for processing a sample fluid, comprising: a cartridge including at least one reaction chamber for processing the sample fluid; at least one bead chamber comprising a solid reagent selectively added to the sample fluid; wherein the at least one bead chamber comprises at least one flexible wall, wherein said flexible wall bulges outward, increasing the volume of the bead chamber such that the sample fluid is drawn in when a reduced pressure is applied to an outside of the flexible wall; and wherein the at least one bead chamber is separated by a destructible seal from the at least one reaction chamber. (Appeal Br. 14 (Claims App.) (emphasis added)). Claims 3 and 4, which are the only other independent claims on appeal, also recite similar subject matter including the same “destructible seal” limitation highlighted above in claim 1 (id.). II. REJECTIONS ON APPEAL The claims on appeal stand rejected as follows: A. Claims 1, 3, 6, and 11–15 under AIA 35 U.S.C. § 102(a)(1) as anticipated by Clemmens et al.4 (“Clemmens”); B. Claim 5 under 35 U.S.C. § 103 as unpatentable over Clemmens in view of Battrell et al.5 (“Battrell”); and C. Claims 4 and 7–10 under 35 U.S.C. § 103 as unpatentable over 4 US 2007/0183935 A1, published August 9, 2007. 5 US 2012/0177543 A1, published July 12, 2012. Appeal 2018-008296 Application 14/786,254 4 Clemmens in view of Andrevski et al.6 (“Andrevski”). (Ans. 3–4; Final Act. 2–7). III. DISCUSSION The Examiner finds that Clemmens describes every limitation recited in claim 1, including the “destructible seal” limitation (Final Act. 3). The Examiner states that “‘destructible seal’ is read on the seal capable of being disrupted such as opening the seal to pass beads from one chamber to another” (id. (referring to Clemmens, Figs. 1A and 1B)). According to the Examiner, “the claim is sufficiently broad to read on the diaphragm seal that is capable of being permanently destroyed as well as temporary disruptions in the seal” (Ans. 3). The Appellant contends that Clemmens does not describe or suggest the disputed “destructible seal” limitations because “‘disrupted’ is not analogous to ‘destructible,’ as recited in claim 1” (Appeal Br. 8–9). According to the Appellant, Clemmens discloses a diaphragm that moves up and down based on suction pressure and “is never actually destroyed and is not destructible” (id. at 10 (italics omitted)). We agree with the Appellant. Although the Specification uses the term “disrupted” to describe what occurs to a seal that separates the bead chamber from the reaction chamber, it does so in the context of describing a “destructible seal” that is “disrupted, for example mechanically, by heat, and/or by radiation” (Spec. 6, ll. 15–18). In this regard, the Specification states that the “separate seal . . . has to be broken to establish physical contact between the fluid of the cartridge and the bead LB” (id. at 13, ll. 6 US 5,882,903, issued March 16, 1999. Appeal 2018-008296 Application 14/786,254 5 5–8). See also id. at 14, ll. 21–24 (“After rotation of the carousel in the desired position the seal can be broken, for instance by a beam of (e.g. laser-) radiation that melts or ruptures the film in the position that allows fluid contact with the cartridge.”). Thus, reading “destructible seal” in light of the Specification, we conclude that the term requires the seal to be capable of destruction—e.g., breaking, melting, or rupturing—such that physical contact between the beads and the fluid occurs. Having construed the disputed claim limitation, we find that Clemmens does not describe a seal that is “destructible.” Specifically, Clemmens’s Figures 1A and 1B (annotated) are reproduced as follows: Figures 1A and 1B, reproduced above, are described as showing the operation of a paired bellows pump mixer, wherein: in Step 1, a fluid sample enters through an intake channel from the left when suction pressure is applied by opening diaphragm 103 of valve 1 and lifting diaphragm 104 in bellows chamber at 2 with second bellows pump at 3 in the closed position; and, in Step 2, valve 1 is closed and suction pressure in bellows pump at 3 Appeal 2018-008296 Application 14/786,254 6 pulls down the diaphragm 104 in bellows pump at 2, thereby pulling the fluid from chamber 2 to chamber 3 (Clemmens ¶¶ 45, 77–79). Although the claims on appeal are directed to an apparatus and not to a method, the Examiner does not direct us to sufficient evidence that Clemmens’s bellows pump mixer is configured to have a seal that is capable of being destroyed—i.e., “destructible” such as by being capable of breaking, melting, or rupturing. In Clemmens, the diaphragms are described as capable of being lifted or being placed in a closed position, but the reference provides no indication of any configuration or mechanism that would permit the seal to be capable of being destroyed—i.e., “destructible” as required by the claims. For these reasons, we cannot sustain the Examiner’s anticipation rejection. Because Battrell and Andrevski have not been applied to bridge the gap between the claims and Clemmens in terms of the “destructible seal” limitation, we also do not sustain the obviousness rejections. IV. SUMMARY Rejections A–C are not sustained. Therefore, the Examiner’s final decision to reject claims 1 and 3–15 is reversed. REVERSED Copy with citationCopy as parenthetical citation