Covaris, Inc.

Patent Trials and Appeals Board

Feb 9, 2021

2020002334 (P.T.A.B. Feb. 9, 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.
14/463,730 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