Ex Parte De La Torre-Bueno

Patent Trial and Appeal Board

Aug 17, 2016

11642253 (P.T.A.B. Aug. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/642,253 12/19/2006
22878 7590 08/19/2016
Agilent Technologies, Inc. in care of:
CPA Global
P. 0. Box 52050
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Jose De La Torre-Bueno
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.
0913 8. 0086-02000 2957
EXAMINER
DEJONG, ERIC S
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
08/19/2016 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):
IPOPS.LEGAL@agilent.com
Agilentdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSE DE LA TORRE-BUENO
Appeal2013-010630
Application 11/642,253
Technology Center 1600
Before DEMETRA MILLS, KIMBERLY McGRAW, and TA WEN CHANG,
Administrative Patent Judges.
McGRAW, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner's
rejection of claims 15-29, 31-35, and 37-39. App. Br. 1. Claims 1-14, 30, and 36
have been cancelled. Sept. 7, 2011 Amendment; App. Br. 23, 26, 27 (Claims
App'x). We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
Appeal2013-010630
Application 11/646,253
STATEMENT OF THE CASE
The present invention relates to methods for imaging biological samples and
storing and sending those images.
Claims 15 and 39 are the only independent claims on appeal. Claim 15 is
representative and is reproduced below.
15. A method for configuring a device controlling at least one
instrument in a laboratory comprising:
configuring said device to store at least one item of device
information, wherein the at least one item of device information is
input to or generated by the device;
configuring said device to store at least one item of central
information wherein at least one copy of the at least one item of
central information is stored in at least one other device,
wherein at least one of the items of central information and
device information are used by said device in connection with
processing performed by said at least one instrument;
configuring said device to identify a carrier in said laboratory;
receiving; by a label associated with said carrier; a signal from a
label scanner;
and
transmitting, by said label in response to said signal from said
label scanner, an electromagnetic response signal including a unique
identifier for uniquely identifying said carrier in said laboratory.
App. Br. 23 (Claims App'x).
REJECTION ON APPEAL
Claims 15-29, 31-35, and 37-39 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kallioniemi et al., (US Pub. No. 2003/0215936 Al, pub.
Nov. 20, 2003 "Kallioniemi") in view of Gulati (US 6,525,835 Bl, issued Feb. 25,
2003). Ans. 4--7; Non-Final Act. 3-5.
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Application 11/646,253
ANALYSIS
Independent claims 15 and 3 9 include the limitation that an electromagnetic
response signal include a unique identifier for uniquely identifying a carrier in a
laboratory. App. Br. 23, 27-28 (Claims App'x).
Kallioniemi is directed to methods and systems for performing a high-
throughput, large-scale molecular profiling of tissue specimens. Kallioniemi,
Abstract. The Examiner finds Kallioniemi teaches nearly all of the limitations of
claim 15 except "Kallioniemi et al. does not teach an identifier representing a
sequence of letters, number, symbols or combinations thereof generated by a
unique identifier algorithm or sequential assignment as instantly claimed." Ans. 6.
Rather, Kallioniemi teaches the barcode (computer readable identifier) that is
assigned to a specimen block in a holder is also assigned to the multiple slides that
contain sections of the specimen block in the holder. See Kallioniemi i-f 173
(stating the "block is sectioned, each of the sections is mounted on a rigid support
(such as a glass slide) that is labeled with a bar code which corresponds to the bar
code on holder 120 from which the block came").
The Examiner turns to Gulati for teaching the unique identifier, stating
Gulati teaches "a system for creating a label design for parcel shipping and
conformance labeling comprising a 2 dimensional barcode in accordance with a
specification of label design and a specification of a target printer type." Ans. 6.
The Examiner also finds Gulati teaches the art recognized a need "for a system that
automatically determines a sufficiently unique single parcel identifier from
identifiers of various elements of a parcel." Id. 6-7 (citing Gulati 2: 18-30). The
Examiner concludes that it would have been obvious to use the shipping parcel
label generation methods and systems of Gulati in place of the barcode system of
Kallioniemi because (1) "Gulati teaches that the disclosed labeling system allows
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Appeal2013-010630
Application 11/646,253
designing a label so as to include individual identifiers" and (2) "[Gulati's label
generation methods and systems] would yield a predictable improvement to
encoding label designs that addresses an art recognized need." Ans. 7.
Appellant contends that the computer readable identifiers of Kallioniemi do not
uniquely identify a carrier in a laboratory, as the bar code that is applied to the
specimen block is also assigned to multiple slides containing sections of the specimen
block. App. Br. 12-13. Therefore, the bar code identifier of Kallioneimi does not
uniquely identify a carrier in a laboratory. Id. at 13. Appellant also asserts that Gulati
teaches parcel label generation methods "but is silent on using labels to uniquely
identify carriers within a laboratory." Id. Appellant asserts that the Examiner has not
articulated a sufficient reason to incorporate the unique labels of Gulati into the
system of Kallioniemi. Id.
We agree with Appellant that neither Kallioniemi nor Gulati individually
teach a unique identifier for uniquely identifying a carrier in a laboratory. We also
agree that the Examiner has not articulated a reason why one skilled in the art
would modify the methods of Kallioniemi to include a label that transmits a unique
identifier for uniquely identifying the carrier in a laboratory. The Examiner's
findings regarding a need in the art relate to labels used for parcel shipping, not
carriers in a laboratory. The Examiner has not explained why the finding that
"Gulati teaches that the disclosed labeling system allows designing a label so as to
include individual identifiers" provides a reason to modify the system of
Kallioniemi. Similarly, the Examiner's finding that Gulati's label generation
methods and systems "would yield a predictable improvement to encoding label
designs that addresses an art recognized need" simply states a conclusion without
providing the necessary "articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." KSR Int 'l Co. v. Teleflex Inc., 550
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Application 11/646,253
U.S. 398, 418 (2007); see also Ex parte De La Torre-Bueno, Appeal No. 2012-
000577 (PTAB Aug. 29, 2013).
Accordingly, we are constrained to reverse the Examiner's obviousness
rejection of independent claims 15 and 39 and their respective dependent claims
over Kallioniemi and Gulati.
DECISION
We REVERSE the decision of the Examiner to reject claims 15-29, 31-35,
and 37-39 under 35 U.S.C. § 103(a) over Kallioniemi and Gulati.
REVERSED
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