Covaris, Inc.Download PDFPatent Trials and Appeals BoardFeb 9, 20212020002334 (P.T.A.B. Feb. 9, 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. 14/463,730 08/20/2014 James A. Laugharn JR. C1279.70030US01 8682 23628 7590 02/09/2021 WOLF GREENFIELD & SACKS, P.C. 600 ATLANTIC AVENUE BOSTON, MA 02210-2206 EXAMINER HIXSON, CHRISTOPHER ART UNIT PAPER NUMBER 1797 NOTIFICATION DATE DELIVERY MODE 02/09/2021 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): Patents_eOfficeAction@WolfGreenfield.com WGS_eOfficeAction@WolfGreenfield.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES A. LAUGHARN and XIAOYIN HE Appeal 2020-002334 Application 14/463,730 Technology Center 1700 Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and MICHAEL G. McMANUS, Administrative Patent Judges. HASTINGS, 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 1–13, 32, and 33. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Covaris, Inc.. Appeal Br. 2. Appeal 2020-002334 Application 14/463,730 2 CLAIMED SUBJECT MATTER The claims are directed to a method and system for acoustically treating material. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system for treating a material with acoustic energy, comprising: a coupling medium container that is closed and defines an internal volume, the coupling medium container having an outer surface arranged to rotate about an axis; an acoustic energy source arranged to emit acoustic energy from within the internal volume; a coupling medium located in the internal volume of the coupling medium container, the coupling medium being arranged to transmit acoustic energy from the acoustic energy source to a treatment area outside of the coupling medium container and near the outer surface; and a sample holder in contact with the outer surface of the coupling medium container, the sample holder including a tubular portion containing a sample including a liquid; wherein the coupling medium container outer surface is rotatable with movement of the sample holder relative to the treatment area, and the acoustic energy source is configured to transmit focused acoustic energy to the treatment area outside of the coupling medium container to form a focal zone of acoustic energy at the treatment area and to cause mixing of the liquid of the sample in the sample holder with the sample located at the treatment area. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Schmidt US 6,688,178 B1 Feb. 10, 2004 Laugharn, JR. US 2007/0053795 A1 Mar. 8, 2007 Appeal 2020-002334 Application 14/463,730 3 REJECTION Claims 1–13, 32, and 33 are rejected under 35 U.S.C. § 103 as unpatentable over Laugharn, JR. in view of Schmidt, and with respect to claim 9, alternatively further in view of admitted prior art (APA). Final Act. 4. OPINION The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). After review of the respective positions provided by Appellant and the Examiner, we conclude that the preponderance of the evidence supports Appellant’s position that the Examiner has not established a prima facie case of obviousness. Accordingly, we reverse the Examiner’s § 103 rejections of all the claims on appeal. Specifically, even assuming that Schmidt is properly characterized as analogous art with respect to the claimed invention, a preponderance of the evidence nonetheless supports Appellant’s position that the proposed modification of Laugharn to modify its treatment tank 106 to be a roller based on the teachings of Schmidt would be based on undue speculation and an improper hindsight reconstruction for the reasons discussed by Appellant in the Briefs (Appeal Br. 5−8; Reply Br. 3–5). A preponderance of the evidence supports Appellant’s position that there is no apparent reason one Appeal 2020-002334 Application 14/463,730 4 of ordinary skill in the art would have looked to Schmidt as the basis for modification of Laugharn’s apparatus. The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)). As pointed out by Appellant, Schmidt’s system is designed for imaging boards or logs for defects by passing the board or log through a pair of rollers and transmitting acoustic energy from one roller to another, whereas Laugharn’s system is configured for mixing or treating liquid samples in a micro-titer plate holder (e.g., Appeal Br. 5; Reply Br. 3). The Examiner has not adequately explained why one would have modified Laugharn’s system to use a roller system as in Schmidt, as, for example, the use of such a roller system would appear to eliminate the advantages of Laugharn’s desirable XYZ positioning system for its sample holding plate/tray (Appeal Br. 6, 7; Reply Br. 4). The Examiner has not adequately explained why the skilled artisan’s knowledge or inferences and creativity would have supported the obviousness determination based on the teachings of the applied references without undue speculation and/or an improper hindsight reconstruction of Laugharn’s system. Accordingly, we reverse the § 103 rejections of the claims which all rely upon an impermissible hindsight reconstruction of the micro-titer plate treatment system described in Laugharn based on Schmidt. CONCLUSION The Examiner’s rejection is REVERSED. Appeal 2020-002334 Application 14/463,730 5 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–13, 32, 33 103 Laugharn, JR., Schmidt 1–13, 32, 33 9 103 Laugharn, JR., Schmidt, APA 9 Overall Outcome 1–13, 32, 33 REVERSED Copy with citationCopy as parenthetical citation