Ex Parte Feingold et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201710539192 (P.T.A.B. Feb. 28, 2017) Copy Citation 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. 10/539,192 06/16/2005 Gordon Feingold 09138.0074-00000 2551 7590 Agilent Technologies, Inc. in care of: CPA Global P. O. Box 52050 Minneapolis, MN 55402 EXAMINER GORDON, BRIAN R ART UNIT PAPER NUMBER 1798 NOTIFICATION DATE DELIVERY MODE 03/02/2017 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 GORDON FEINGOLD and MARC KEY1 Appeal 2015-002312 Application 10/539,192 Technology Center 1700 Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and JULIA HEANEY, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision2 finally rejecting claims 358-365, 367-370, 372-378, and 380-384, which are all of the claims pending in the above-identified application. An oral hearing was held on February 13, 2017.3 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify the real party in interest as DAKO Denmark A/S. Appeal Brief filed September 9, 2014 (“App. Br.”) at 3. 2 Final Action entered March 6, 2014 (“Final Act.”) at 5-10 and the Examiner’s Answer entered November 5, 2014 (“Ans.”) at 2-8. 3 A transcript of the oral hearing will be entered into the electronic record in due course. Appeal 2015-002312 Application 10/539,192 STATEMENT OF THE CASE The subject matter on appeal is directed to a method of automated processing of samples in a staining apparatus. Spec. 3,11. 17-31. Figure 6, which illustrates a staining apparatus (stainer), is reproduced bellow: Fig. 6 Figure 6 shows staining apparatus 201 comprising rectangular frame 204 surrounding first station 202 having reagent container compartments or racks 111 that contain reagent containers 203, and second station 205 having separate racks 206, with each rack containing a number of slides 207 (carriers having samples) mounted side-by-side in the rack. Id. at 31,11. 15-21. Reagent container compartments or racks 111 and racks 206 are also provided in one or more drawers 110. Id. at 8,11. 26-31. Robotic arm 120, which is part of robotic motion system 172, is arranged above frame 204 and moves probe 210 or syringe 124 in X and Y directions of staining apparatus 201. Id. at 31,11. 15-23. “The robot arm may therefore position the probe 210 above all reagent containers 203 as well as above all the slides 207, and may further operate the probe 210 [or syringe 124] in the Z direction to remove portions of a reagent contained in any of the containers 203 and to transfer the portion of reagent and apply it to any of the slides 207 in order 2 Appeal 2015-002312 Application 10/539,192 to provide a selected staining or treatment of the sample on each slide 207.” Id. at 31,11. 23-27. Figure 7, which illustrates an automated staining apparatus, is reproduced below: tai fk?- 7 Figure 7 shows staining apparatus (stainer) 101, electronic connection 176, Stainer network 183 (not shown), computer 181 configured as a manager or server, or otherwise programmed for use with staining apparatus 101, and printer 200. Id at 15,1. 30-16,1. 20 and 25,1. 24-26,1. 24. Details of the appealed subject matter are recited in illustrative claims 358 and 372,4 which are reproduced below from the Claims Appendix of the Appeal Brief (with disputed limitations in italicized form): 358. A method for performing operations on a stainer in a stainer network comprising: providing a robotic arm coupled to the stainer, the robotic arm having a reagent dispenser; establishing a network connection between a computer and a stainer in the stainer network; sending requests from the computer to the stainer over the network connection; 4 For purposes of this appeal, we limit our discussion to the broadest claims on appeal, namely claims 358 and 372. 3 Appeal 2015-002312 Application 10/539,192 inserting a first sample into the Stainer; processing a first sample with the Stainer using the requests received from the computer, wherein said processing comprises dispensing reagents to the sample with the reagent dispenser of the robotic arm; and inserting a second sample into the Stainer and at least one reagent into the Stainer during the processing of the first sample without interrupting the dispensing of reagents onto the first sample with the reagent dispenser of the robotic arm. 372. A method for performing operations on a Stainer in a stainer network comprising: providing a robotic arm coupled to the stainer, the robotic arm having a reagent dispenser; establishing a network connection between a computer and a stainer in the stainer network; sending requests from the computer to the stainer over the network connection; sending requests from the laboratory information system to a server including a centralized database, wherein the centralized database contains status information chosen from slides on the stainer, amounts of consumables on the stainer or treatment protocols performed on the stainer; inserting a first sample into the stainer; processing a first sample with the stainer using the requests received from the computer, wherein said processing comprises dispensing reagents to the sample with the reagent dispenser of the robotic arm; and inserting a second sample into the stainer and at least one reagent into the stainer during the processing of the first sample without interrupting the dispensing of reagents onto the first sample with the reagent dispenser of the robotic arm. App. Br. 29 and 32, Claims Appendix. 4 Appeal 2015-002312 Application 10/539,192 The Examiner maintains, and Appellants seek review of, the following grounds of rejection: 1. Claims 358-360, 369, 372, 381, and 383 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of Kalra (US 6,495,106 B1 issued to Kalra et al. on December 17, 2002); and 2. Claims 361-365, 367, 368, 370, 373-378, 380, 382, and 384 under 35 U.S.C. §103(a) as unpatentable over the combined disclosures of Kalra and Lemme (US 2002/0110494 Al published in the name of Lemme et al. on August 15, 2002). Final Act. 5-10; Ans. 2-8; and App. Br. 10. DISCUSSION Upon consideration of the evidence on this appeal record in light of the respective positions advanced by the Examiner and Appellants, we determine that a preponderance of the evidence does not support the Examiner’s determination that the applied prior art would have rendered the subject matter recited in claims 358-365, 367-370, 372-378, and 380-384 obvious to one of ordinary skill in the art within the meaning of 35 U.S.C. § 103(a). Accordingly, we reverse the Examiner’s § 103(a) rejections of the above claims for the reasons set forth at pages 16-18 of the Appeal Brief. We add the following primarily for emphasis and completeness. The dispositive question raised in this case is: does the Examiner identify any basis in the applied prior art, namely Kalra, which would have taught or suggested a step of “inserting a second sample into the stainer and at least one reagent into the stainer during the processing of the first sample without interrupting the dispensing of reagents onto the first sample with the reagent 5 Appeal 2015-002312 Application 10/539,192 dispenser of the robotic arm” as recited in claims 358 and 372?5 On this record, we answer this question in the negative. As is apparent from the record, the Examiner acknowledges that Kalra does not disclose “inserting second sample and at least one reagent during the processing of another sample.” Ans. 3. The Examiner, however, concludes (Ans. 4-5) that: [I]t would have been obvious, within the common sense and routine skill of one of ordinary skill in the art to recognize that individual slide trays including samples maybe readily removed and loaded in the device during the processing of a slide on a different individual slide tray as well as the one could also remove and/or insert a reagent vial 110 from/into the reagent vial holder 120 during the processing of a slide as so desired. Furthermore, one could merely add additional sample substances on a slide and reagent liquids within the vials without actually removing any structure in order maintain the supply of consumables employed with the device. [(Emphasis added.)] In an obviousness analysis under 35 U.S.C. § 103(a), “common sense” or the knowledge of the skilled artisan play a role in bridging gaps in prior art’s explicit teachings. KSRInt'l. Co. v. Teleflex Inc., 550 U.S. 398, 420—21 (2007) (“Common sense teaches ... that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”). However, as our reviewing court stated, any obviousness rejection grounded in “common sense” must contain explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness. See Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (citation omitted) (explaining 5The Examiner does not refer to any teaching in Lemme to account for such deficiency in Kalra. Ans. 4-13. 6 Appeal 2015-002312 Application 10/539,192 that obviousness findings “grounded in ‘common sense’ must contain explicit and clear reasoning providing some rational underpinning why common sense compels a finding of obviousness.”). “[T]he mere recitation of the words ‘common sense’ without any [evidentiary] support adds nothing to the obviousness equation.” Mintzv. Dietz & Watson, 679 F.3d 1372, 1377 (Fed. Cir. 2012); Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (“In recognizing the role of common knowledge and common sense, we have emphasized the importance of a factual foundation to support a party’s claim about what one of ordinary skill in the relevant art would have known.”); Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1362 (Fed. Cir. 2016) (“[References to ‘common sense’ . . . cannot be used as a wholesale substitute for reasoned analysis and evidentiary support....”) Although the Examiner asserts that one of ordinary skill in the art could insert another sample and another reagent during the processing of a sample based on Kalra’s disclosure of removable trays 190 that have slides with samples and a reagent vial holder 120 that is designed to hold up to 40 reagent vials, the Examiner does not provide any apparent reason, suggestion, or motivation based on some rational underpinning from Kalra for inserting a second sample and at least one reagent into the Stainer “during the processing of the first sample without interrupting the dispensing of reagents onto the first sample with the reagent dispenser of the robotic arm” as recited in claims 358 and 372. Ans. 4-5. Rather, Kalra, by teaching the employment of a mechanism designed to prevent movement of the slide trays during operation of the moving robot arm, indicates that the insertion of all of the samples is accomplished in the beginning or the end of the operation, rather than during the operation, i.e., during the processing of some of 7 Appeal 2015-002312 Application 10/539,192 the samples. Kalra, col. 15,11. 32-47; see also App. Br. 16. In particular, Kalra teaches (col. 15,11. 32^17) that: A detailed view is shown in FIG. 14. When there is no tray on the tray support, the sliding rod 195 is at the left-most position, so that switch 193 is ‘off and the light 191 is likewise off. When a tray 190 is fully inserted into tray support 206 and at the right position, the right side wall of the tray 190 pushes sliding rod 195 to the right, pressing the micro lever switch to its ‘on’ position, then activating the light 191. The light 191 then indicates that the tray 190 is now in the correct position and ready for staining. Another function for sliding rods 195 is to ’soft lock' the trays 190 and prevent them from moving when the apparatus 10 is in operation. In using such a sensing mechanism, care should be taken to prevent contamination from spilled liquids or particulates which could obscure the light path from light 191, thereby falsely indicating the presence of a loaded rack. See also App. Br. 16 (emphasis added). The Examiner does not refer to any teaching in Kalra, which would indicate or suggest otherwise or identify any reasonable basis to show why the common sense and/or the knowledge of one skilled in art would dictate one of ordinary skill in the art to act contrary to the teaching in Kalra. Ans. 4-13. Thus, on this record, the Examiner fails to carry the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. ”). ORDER In view of the foregoing, the decision of the Examiner to reject claims 358— 365, 367-370, 372-378, and 380-384 under 35 U.S.C. § 103(a) is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). 8 Appeal 2015-002312 Application 10/539,192 REVERSED 9 Copy with citationCopy as parenthetical citation