Ex Parte Colella et alDownload PDFPatent Trial and Appeal BoardAug 31, 201813959007 (P.T.A.B. Aug. 31, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/959,007 08/05/2013 58249 7590 09/05/2018 COOLEYLLP ATTN: IP Docketing Department 1299 Pennsylvania Avenue, NW Suite 700 Washington, DC 20004 FIRST NAMED INVENTOR Gregory M. Colella 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 ATTORNEY DOCKET NO. CONFIRMATION NO. ACRI-037/03US 321253-2190 8363 EXAMINER KWAK,DEANP ART UNIT PAPER NUMBER 1798 NOTIFICATION DATE DELIVERY MODE 09/05/2018 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): zIPPatentDocketingMailbox US @cooley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GREGORY M. COLELLA, HENRY D. HUANG, ANTHONY F. KUKLO, DIMITRI SHISHKIN, MARIA FIGUEROA, and JAMES A. MAWHIRT Appeal2017-006393 Application 13/959,007 Technology Center 1700 Before MARK NAGUMO, JULIA HEANEY, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1, 3, 5-13, 15-19, 58---66, and 74--81. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 In explaining our Decision, we refer to the Specification filed August 5, 2013 ("Spec."); Final Office Action dated March 17, 2016 ("Final Act."); Advisory Action dated July 26, 2016 ("Adv. Act."); Appeal Brief filed November 15, 2016 ("Appeal Br."); Examiner's Answer dated January 13, 2017 ("Ans."); and Reply Brief filed March 10, 2017 ("Reply Br."). 2 Appellant is Applicant International Technidyne Corporation, which, according to the Appeal Brief, is also identified as the real party in interest. Appeal Br. 3; see also Reply Br. 2 (stating that International Technidyne Corporation is "a wholly owned subsidiary of Accriva Diagnostics" and Appeal2017-006393 Application 13/959,007 The Claimed Invention Appellant's disclosure relates to a cuvette-based apparatus for blood coagulation measurement and testing having automatic volumetric blood sample filling capability. Spec. ,r,r 2, 34, Fig. 2A; Abstract. Claim 1 is illustrative of the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (Appeal Br. 15) (key disputed claim language italicized and bolded): 1. An apparatus comprising: a cuvette defining: a sample channel fluidically coupled to a sample deposit area at a blood sample receptor-inlet, at least a portion of the sample channel having a hydrophilic surface such that blood is automatically drawn from the sample-receptor inlet; a vent opening fluidically coupled to the sample channel, the vent opening configured to vent air from the sample channel as the sample channel fills with blood, a predetermined sample volume defined by a volume of the sample channel between the sample-receptor inlet and the vent opening; a waste channel fluidically coupled to the sample channel between the blood sample receptor-inlet and the vent opening, a flow restriction at an intersection of the waste channel and the sample channel impeding blood from flowing into the waste channel until the sample channel is filled to the vent opening such that the sample channel automatically fills with the predetermined sample volume. "Accriva Diagnostics is ... a wholly owned subsidiary Instrumentation Laboratory, which is a wholly owned subsidiary of Werfen"). 2 Appeal2017-006393 Application 13/959,007 The References The Examiner relies on the following prior art references as evidence in rejecting the claims on appeal: Huang et al., US 2002/0123134Al Sept. 5, 2002 (hereinafter "Huang") Glezer et al., US 7,497,997 B2 Mar. 3, 2009 (hereinafter "Glezer") The Rejections On appeal, the Examiner maintains (Ans. 2) the following rejections3: 1. Claims 1, 3, 5-7, 11-13, 15-17, 58, 63---66, 74, 75, and 81 rejected under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Glezer ("Rejection 1 "). Ans. 2. 2. Claims 8-10 rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Glezer in view of Huang ("Rejection 2"). Ans. 6. 3. Claims 59, 61, 62, 76, 77, and 80 rejected underpre-AIA 35 U.S.C. § 103(a) as being unpatentable over Glezer ("Rejection 3"). Ans. 7. OPINION Reiection 1 Having considered the respective positions advanced by the Examiner and Appellant in light of this appeal record, we reverse the Examiner's 3 The Examiner's rejections of claims 18, 19, 60, 65, 78, and 79, which were previously included in the Final Office Action (see Final Act. 5-7, 10-11) are withdrawn at page 11 of the Answer. 3 Appeal2017-006393 Application 13/959,007 Rejection 1 for principally the same reasons provided by Appellant in the Appeal Brief and Reply Brief. We add the following. The Examiner determines that Glezer discloses an apparatus satisfying all of the elements of claim 1 and thus, concludes that the reference anticipates the claim. Ans. 2--4. Regarding the "flow restriction" recitation of claim 1, the Examiner relies on distribution point 976 of Glezer' s Figure 9 for disclosing this claim element. Ans. 3 Regarding the "predetermined sample volume defined by a volume of the sample channel between the sample-receptor inlet and the vent opening" recitation, the Examiner finds that it is a process or intended use limitation that does not further delineate the claimed structure from that of the prior art. Id. at 3. Appellant argues that the Examiner's rejection of claim 1 should be reversed because Glezer does not disclose the "flow restriction at an intersection of the waste channel" and "the sample channel impeding blood from flowing into the waste channel until the sample channel is filled to the vent opening such that the sample channel automatically fills with the predetermined sample volume" recitations of the claim. Appeal Br. 7-8; see also Reply Br. 2-3. In particular, Appellant contends that the Examiner has not identified sufficient evidence or provided an adequate technical explanation that Glezer's assay cartridge device is capable of causing a sample channel to fill with a predetermined sample volume and that distribution point 976 of Glezer is capable of impeding blood from flowing into a waste channel until a sample channel is filled, as required by the claims. Appeal Br. 7. Appellant also contends that the Examiner has not adequately explained or 4 Appeal2017-006393 Application 13/959,007 identified sufficient evidence in the record that Glezer discloses structure that defines "a predetermined sample volume," as recited in the claim. Id. The weight of the evidence supports Appellant's argument. To serve as an anticipatory reference, "the reference must disclose each and every element of the claimed invention." In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). None of the portions of Glezer upon which the Examiner relies (see Ans. 2-3, 11-12) teach "a predetermined sample volume defined by a volume of the sample channel between the sample-receptor inlet and the vent opening" and structure capable of impeding blood from flowing into a waste channel until a sample channel is filled or causing the sample channel to automatically fill with a predetermined sample volume in the manner claimed. As Appellant also correctly points out (Appeal Br. 7-8; Reply Br. 3), although Glezer discusses the use of pumps and valves for providing fluids to the cartridge and/ or maintaining fluids, and moving fluids within the cartridge generally (Glezer, col. 15, 1. 67, col. 65, 1. 29-col. 66, 1. 7), there is no teaching of a structure defining a predetermined sample volume or that the system of pumps and valves described would actually be capable of impeding blood from flowing into a waste channel until a sample channel is filled or causing the sample channel to automatically fill with a predetermined sample, as claimed. As Appellant also points out (Appeal Br. 7-8), although Glezer discusses that the distribution point 97 6 may be adapted to distribute a fluid to two or more locations/ compartments in a cartridge in general, the reference does not teach and the Examiner does not adequately explain how 5 Appeal2017-006393 Application 13/959,007 element 976 would be capable of performing the specific function of "impeding blood from flowing into the waste channel until the sample channel is filled to the vent opening such that the sample channel automatically fills with the predetermined sample volume," as claimed. The Examiner's comments at pages 3 and 11 of the Answer regarding the recitations being intended use limitations are conclusory, general statements of law without analysis demonstrating how they apply to the teachings of Glezer. Without more, they are insufficient to sustain the Examiner's rejection. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (holding "rejections ... cannot be sustained by mere conclusory statements"). We, therefore, cannot sustain the Examiner's rejection of claim 1 and determination that Glezer anticipates the claim. Because the remaining claims subject to this rejection each depend from claim 1, we also cannot sustain the Examiner's rejection of these claims. Accordingly, we reverse the Examiner's rejection of claims 1, 3, 5-7, 11-13, 15-17, 58, 63-66, 74, 75, and 81 under pre-AIA 35 U.S.C. § 102(b) as being anticipated by Glezer. Rei ections 2 and 3 The foregoing deficiencies-and the absence of evidence that the missing elements would have been suggested to the person having ordinary skill in the art-in the Examiner's analysis and conclusion regarding the Glezer reference are not remedied by the Examiner's findings regarding the additional reference or combination of references cited in support of the second ground of rejection and the Examiner's findings regarding the Glezer reference cited in support of the third ground of rejection. 6 Appeal2017-006393 Application 13/959,007 Accordingly, we also reverse the Examiner's Rejections 2 and 3, stated above. DECISION/ORDER The Examiner's rejections of claims 1, 3, 5-13, 15-19, 58-66, and 7 4--81 are reversed. It is ordered that the Examiner's decision is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation