Ex Parte Drechsler et al

Patent Trial and Appeal Board

Dec 16, 2016

13325631 (P.T.A.B. Dec. 16, 2016)

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.
13/325,631 12/14/2011 Andreas Drechsler 27014 US-pd 2985
23690 7590 12/20/2016
ROCHE DIAGNOSTICS OPERATIONS INC.
9115 Hague Road
Indianapolis, IN 46250-0457
EXAMINER
XU, XIAOYUN
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
12/20/2016 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):
jackie.pike@roche.com
pair_roche@firsttofile.com
meg.ward@roche.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte ANDREAS DRECHSLER and RIJK EDWIN OOSTERBROEK
Appeal 2015-003368
Application 13/325,631
Technology Center 1700
Before TERRY J. OWENS, BEVERLY A. FRANKLIN and AVELYN M.
ROSS, Administrative Patent Judges.
FRANKLIN Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1—8. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
Appeal 2015-003368
Application 13/325,631
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below (with text in bold for emphasis):
1. A cuvette for photometric measurement of liquids
comprising:
a body having outer walls and an inner space for receiving
liquids, said body comprising
an upper part comprising an upper open top portion and an
inner surface having in a plane A-A a first annular or substantially
rectangular cross-section with four upper inner edges, the upper
inner edges extending from the plan A-A to the upper open top
portion,
a lower measurement chamber with an inner volume less than
about 50 pL comprising a lower closed bottom portion, a lower front
wall, a lower back wall, two lower side walls, said lower walls
forming four lower inner edges and a lower open top portion with a
second substantially rectangular cross-section in a plane B-B
smaller than the first annular or substantially rectangular cross-section
in the plane A-A, wherein at least the lower front wall and the lower
back wall have portions which are substantially planar and
substantially parallel to each other, and
an abrupt transition zone between the upper part and the
lower measurement chamber, extending between the plane A-A
and the plane B-B and comprising four transition inner edges
connecting the four lower inner edges to the upper part, wherein
the plane A-A and the plane B-B are substantially perpendicular
to the longitudinal axis of the cuvette, wherein the plane A-A is
different from the plane B-B, and wherein
at least in the plane B-B the lower inner edges are sharp or
comprise fillets having a first radius,
in the phase A-A the first annular cross-section has a second
radius or the upper inner edges comprise fillets having a second
radius, the second radius being larger than the first radius,
the transition inner edges comprise fillets having a
gradually increasing radius passing from the sharp edges or the
first radius of the lower inner edges in the plane B-B to the second
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Appeal 2015-003368
Application 13/325,631
radius of the first annular cross-section or of the upper inner
edges in the plane A-A.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Koch
Murakami
Havard
US 5,571,479 Nov. 5, 1996
US 2008/0141784 A1 Jun. 19, 2008
US 2010/0238436 A1 Sep. 23, 2010
THE REJECTIONS
1. Claims 1—7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Murakami in view of Havard.
2. Claim 8 is rejected under U.S.C. § 103(a) as being unpatentable over
Murakami in view of Havard and further in view of Koch.
ANALYSIS
We reverse each rejection for substantially the reasons presented by
Appellants in the record, and add the following for emphasis.
Rejections 1 and 2
It is the Examiner’s position that Murakami teaches the claimed
elements as discussed on pages 2—3 of the Final Office Action. The
Examiner states that Murakami does not specifically disclose that the
transition inner edges comprise fillets having a gradually increasing radius
passing from the sharp edges or the first radius of the lower inner edges in
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Appeal 2015-003368
Application 13/325,631
the plane B-B to the second radius of the first annular cross-section or of the
upper inner edges in the plane A-A. Final Act. 3. The Examiner states that
such a transition “seems natural” because plane B-B has a smaller radius,
and plane A-A has larger radius, the transition from plane B-B to plane A-A
by gradually increasing the radius is an obvious alternative choice to
suddenly increasing the radius. Id. The Examiner further relies upon
Havard for teaching transition inner edges comprising fillets having a
gradually increasing radius passing from the sharp edges or the first radius
of the lower inner edges in the plane B-B to the second radius of the first
annular cross-section or of the upper inner edges in the plane A-A, and
refers to Figure IB and paragraph [0024] of Havard. Id. The Examiner
concludes that it would have been obvious to have provided transition inner
edges comprising fillets having a gradually increasing radius passing from
the sharp edges or the first radius of the lower inner edges in the plane B-B
to the second radius of the first annular cross-section or of the upper inner
edges in the plane A-A, in order to make the transition as smooth as
possible, because gradually increasing the radius in the transition is
an obvious alternative choice to suddenly increasing the radius, and obvious
to try. Id.
Appellants argue, inter alia, that Murakami fails to disclose that the
transition inner edges comprise fillets having a gradually increasing radius
passing from the sharp edges or the first radius of the lower inner edges in
the plane B-B to the second radius of the first annular cross-section or of the
upper inner edges in the plane A-A. Appeal Br. 9-10. Appellants argue that
Havard also fails to remedy the deficiencies of Murakami. Appellants
submit that Havard’s cuvette does not have an abrupt transition between the
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Appeal 2015-003368
Application 13/325,631
upper body and the lower body as recited in claim 1 but, instead, has a
gradual tapering transition as can be seen in Havard’s Figure 1C. Appeal Br.
10. Appellants refer to their Figure 4. Appeal Br. 10—16. Appellants’
Figure 4 is shown below.
26
48
R2
vV
A-
8-
Ri'
38
• /■■ ■■
■ ...... .
34
A
3
,3?
40
31
X 4
Figure 4 shows the effect of the geometry of the cuvette of Figure 1
on the liquid meniscus.
Appellants explain that the abrupt transition (as shown in Figure 4)
between the upper part and the lower measurement chamber can result in
advantages over the prior art. Appeal Br. 10-11. Appellants point out that
the more abrupt the transition is, i.e., the stronger the change in radius and
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Appeal 2015-003368
Application 13/325,631
the shorter the distance in which the radius changes, the stronger the
surface energy is, i.e., the energy barrier at the edges in the plane B-B,
preventing the liquid to rise above the plane B-B so that as much as the
liquid as possible is available for measurement (see, e.g., Spec. para. [0038])
and line 38 in Figure 4). Appeal Br. 10-11. Appellants state that, in other
words, the distance between the plane A-A and B-B is short compared to the
distance between the plane A-A and the upper open top portion and
compared to the distance between plane B-B and the lower closed bottom
portion and will result in substantially flat meniscus (see, e.g., Figure 4 and
paras. [0038], [0079] and [0093] of the Specification). Appeal Br. 11.
Appellants further explain how the applied art does not suggest the claimed
configuration for the reasons set forth on pages 9—15 of the Appeal Brief.
In reply, the Examiner states that Murakami teaches abrupt transition
between upper and lower body. Ans. 6. The Examiner also states that
Murakami teaches various designs including gradual increasing radius in
inner edges. Id. The Examiner states that the gradual increase radius is
apparent when Murakami is taken as a whole and in view of Havard. Ans.
6—7. The Examiner also states that “fillets having a gradually increasing
radius between upper body and lower body” is one of the finite number of
identified predictable solutions to the transition from plane B-B to plane A-
A. The Examiner states that Murakami has the first solution
(abrupt transition), and that Harvard has the second solution (gradual
transition), and that both solutions have predictable results. The Examiner
concludes that the solution of Harvard is obvious to try. Ans. 8.
However, the Examiner overlooks an important point made by
Appellants on pages 8 and 11 of the Appeal Brief. Therein, Appellants point
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Appeal 2015-003368
Application 13/325,631
out that Havard’s gradual transition passes from a box-shaped lower body to
a conical upper body (see para. [0024]). Appeal Br. 11. This differs from
the claim language requiring that the gradual transition passes from the sharp
edges or the first radius of the lower inner edges in the plane B-B to the
second radius of the first annular cross-section or of the upper inner edges
in the plane A-A, wherein both the A-A plane and the B-B plane have
substantially rectangular cross-sections. While we appreciate that the
Examiner relies upon Murakami’s Figure 11 (Ans. 6—8) for supposedly
teaching abrupt transition inner edges that comprise fillets having a
gradually increasing radius passing from the sharp edges or the first radius
of the lower inner edges in the plane B-B to the second radius of the first
annular cross-section or of the upper inner edges in the plane A-A
(Appellants dispute this finding (Appeal Br. 9-10)), we are in agreement
with Appellants’ interpretation of Murakami in this regard. Figure 11 of
Murakami shows distinct regions, but lacks indication of fillets as
interpreted by the Examiner. Figure 11 of Murakami is reproduced below.
FIG. 11
Aw
S!Ss . >
‘A’."' :i 1
4 :> j ‘VF >• i
....
fvt
k-
F.-.
A; >S!3a
7
Appeal 2015-003368
Application 13/325,631
The Examiner has not adequately explain how Figure 11 supports the
Examiner’s stated interpretation. Ans. 6—8. In the findings made on pages
2—A of the Final Office Action, there is no mentioned of Murakami’s Figure
11.
Additionally, as stated by Appellants on page 11 of the Appeal Brief,
the Examiner’s rationale lacks an apparent reason for making the proposed
modification of Murakami. In other words, the idea that the claimed
transition “seems natural” or is an obvious alternative choice to suddenly
increasing the transition (as stated by the Examiner, discussed, supra) is not
sufficiently buttressed by evidence or reasoning. See In re Vaidyanathan,
381 Fed.Appx. 985, 994 (Fed. Cir. 2010) (non-precedential) (“KSR did not
free the PTO’s examination process from explaining its reasoning. In
making an obviousness rejection, the examiner should not rely on
conclusory statements that a particular feature of the invention would have
been obvious or was well known. Instead, the examiner should elaborate,
discussing the evidence or reasoning that leads the examiner to such a
conclusion.”).
Furthermore, as argued by Appellants, the proposed modification
inadequately addresses an element of claim 1 (that being that the gradual
transition passes from the sharp edges or the first radius of the lower inner
edges in the plane B-B to the second radius of the first annular cross-section
or of the upper inner edges in the plane A-A, wherein both the A-A plane
and the B-B plane have substantially rectangular cross-sections) for the
reasons stated by Appellants in the record. The teachings relied upon in
Havard is not within the context of substantially rectangular cross-sections.
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Appeal 2015-003368
Application 13/325,631
“[T]he prior art reference (or references when combined) must teach or
suggest all the claim limitations.” In re Royka, 490 F.2d 981, 985 (C.C.P.A.
1970).
In view of the above, we are persuaded by Appellants’ arguments, and
we reverse Rejection 1. The Examiner does not rely upon Koch (applied in
Rejection 2) to cure the stated deficiencies of the combination applied in
Rejection 1, and we therefore reverse Rejection 2 also.
DECISION
Each rejection is REVERSED.
ORDER
REVERSED
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