Ex Parte 6,654,505 B2 et al

Patent Trial and Appeal Board

Sep 20, 2013

95001292 (P.T.A.B. Sep. 20, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,292 12/31/2009 6,654,505 B2 048522-0004 9037
22922 7590 09/20/2013
REINHART BOERNER VAN DEUREN S.C.
ATTN: AMANDA RUTTER, PARALEGAL
1000 NORTH WATER STREET
SUITE 2100
MILWAUKEE, WI 53202
EXAMINER
PONNALURI, PADMASHRI
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
09/20/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Illumina, Inc.
(Patent Owner and Appellant)

v.

Life Technologies Corporation
(Requester and Cross-Appellant)
____________

Appeal 2012-007309
Application 95/001,292
US Patent 6,654,505
Technology Center 3900
____________

Before RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON REHEARING
Illumina, Inc. (“Illumina”) requests rehearing under 37 C.F.R. § 41.79
in the above-identified inter partes reexamination of US 6,654,505 (“the
’505 patent”) with respect to the conclusion of the Patent Trial and Appeal
Appeal 2012-007309
Application 95/001,292
US Patent 6,654,505

2
Board (“Board”) that claims 2-6 are obvious under 35 U.S.C. § 103 in view
of Brenner and Sizto (Req. Reh’g 1). Illumina is the Patent Owner. Life
Technologies Corporation (“Life”) is the Third Party Requester.
In the Decision on Appeal mailed November 29, 2012 (“Decision”),
the Board affirmed the rejection of claims 2-6 as obvious in view of Brenner
and Sizto (Decision 36). Illumina argues, as follows, that the Board erred in
reaching this decision.

Cells versus microparticle
According to Illumina, the Examiner combined the Brenner and Sizto
publications on the misapprehension that the biological cells subject to
imaging in the Sizto reference constitute “microparticles.” Illumina argues
that, since the Board rejected the Examiner’s conclusion that biological cells
are equivalent to microparticles, the rejection should be reversed (Req.
Reh’g 1-2).
We already considered this argument and found it unpersuasive. As
stated in the Decision: “The Examiner explicitly relied upon Sizto for its
imaging processing techniques, not for its disclosure of microparticles . . . .”
(Decision 36.) Illumina did not provide evidence that the Examiner erred in
finding that Sizto’s method would work with microparticles as described in
Brenner (RAN 43-44). Thus, Illumina has failed to identify the points
misapprehended or overlooked by the Board in the Decision.

Appeal 2012-007309
Application 95/001,292
US Patent 6,654,505

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Claims 2 and 5
Claim 2 is directed to the process of claim 1, where “said processing
further includes determining the approximate center of each microparticle,
based on a recorded optical characteristic of said microparticle.” Claim 5 is
drawn to a similar step. Illumina contends that “there is no indication that
Sizto determines that the pixels being analyzed are actually located at the
center point of the cell itself, as opposed to the center of an arbitrary pixel
map.” (Req. Reh’g 2.) Illumina did not point to where in their Briefs this
argument had been made before. Under 37 C.F.R. § 41.79(b)(1):
(1) The request for rehearing must state with particularity
the points believed to have been misapprehended or overlooked
in rendering the Board’s opinion reflecting its decision.
Arguments not raised in the briefs before the Board and
evidence not previously relied upon in the briefs are not
permitted in the request for rehearing except as permitted by
paragraphs (b)(2) and (b)(3) of this section.
Paragraph (b)(2) relates to new arguments based on a recent relevant
decision of the Board or the U.S. Court of Appeals for the Federal Circuit.
Paragraph (b)(3) relates to arguments responding to a new ground of
rejection. Neither of these exceptions is argued by Illumina.
In their Appeal Brief on page 23, Illumina argued that Sizto does not
disclose a “sequence of processing steps” as recited in claim 1. Illumina did
not separately argue claims 2 and 5 as they are now in this Request for
Rehearing. Illumina also did not separately address claims 2 and 5 in their
Amendment and Response to the Examiner’s First Office Action (see page
26 of Illumina’s Response dated May 21, 2010) or their subsequent response
dated October 20, 2010 (see page 21). Thus, Illumina’s arguments about
claims 2 and 5 appear to be new arguments “not previously relied upon in
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US Patent 6,654,505

4
the briefs.” 37 C.F.R. § 41.79(b)(1). The request for rehearing with respect
to claims 2 and 5 is therefore improper under the rule.
Nonetheless, Life addressed this new argument in their Comments on
the Request for Rehearing (dated January 31, 2013). Life points out that
“Sizto’s detection algorithm evaluates every pixel against its neighboring
pixels within a 5 x 5 pixel array to determine whether the reference pixel is
the brightest pixel in the local neighborhood, and, if so, the coordinates of
that pixel are noted down as corresponding to an approximate center of a
microparticle” and cites support in Sizto for this statement (Comments, p. 5).
Indeed, as Life argues, the Sizto’s purpose is to identify cells in a field, the
same purpose as the ’505 patent. The algorithms utilized by Sizto achieves
this purpose as indicated in the passages cited by Life in their Comments and
by the Examiner on pages 43-44 of the Right of Appeal Notice (“RAN”).
Thus, we fail to see a defect in the Examiner’s rejection based on Sizto as set
forth in the RAN.

Claim 4
Claim 4 depends on claim 1 and recites that “the number of pixels
assigned to a given microparticle is . . . based on” any one of three recited
criteria, including microparticle size and uniformity of microparticle shape.
Illumina asserts that pixel assignment described in Sizto “is not analogous to
the pixel assignment of the ’505 patent at col. 9, ll. 6-31, which discloses
assignment of pixels within the margin of a bead in order to eliminate
spurious signal from adjacent microparticles, rather than including those
very pixels as contemplated by Sizto.” (Req. Reh’g 2-3.)
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Illumina does not identify a point “misapprehended or overlooked in
rendering the Board’s opinion reflecting its decision,” but rather appears to
be relying on new arguments that were not made in the brief, which is an
improper basis for a request for rehearing under 37 C.F.R. § 41.79(b)(1). In
particular, we fail to see where in the briefs claim 4 was separately argued
by Illumina or where such argument about the bead margin was previously
made. Moreover, as pointed out by Life, Illumina’s argument that all the
assigned pixels be within the margin of a bead does not correspond to a
limitation in claim 4 and is an attempt to improperly import limitations from
the ’505 patent’s written description into claim 4 (Comments, p. 6) (Playtex
Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901, 908 (Fed. Cir. 2005).
For the above reasons, the Request for Rehearing is:

DENIED

peb
Appeal 2012-007309
Application 95/001,292
US Patent 6,654,505

6
Third Party Requester:
ALAN HAMMOND
LIFE TECHNOLOGIES CORPORATION
ATTN: IP DEPARTMENT
5791 Van Alley Way
Carlsbad, CA 92008

Patent Owner:
REINHART BOERNER VAN DEUREN S.C.
ATTN: LINDA KASULKE, DOCKET COORDINATOR
1000 North Water Street, Suite 2100
Milwaukee, WI 53202