Ex Parte Gau

Patent Trial and Appeal Board

Jul 29, 2016

12931048 (P.T.A.B. Jul. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/931,048 01122/2011
7590 08/01/2016
Travis Dodd
Law Offices of Travis Dodd, PC
2490 Heyneman Hollow
Fallbrook, CA 92028
FIRST NAMED INVENTOR
Jen-Jr Gau
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.
GF2301 5031
EXAMINER
ALEXANDER, LYLE
ART UNIT PAPER NUMBER
1797
MAILDATE DELIVERY MODE
08/01/2016 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
Ex parte JEN-JR GAU 1
Appeal2015-000291
Application 12/931,048
Technology Center 1700
Before KAREN M. HASTINGS, WESLEY B. DERRICK, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 1-3 and 6-22 in the above-identified application.
We have jurisdiction pursuant to 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellant, the real party in interest is GeneFluidics, Inc.
Appeal Br. 1.
Appeal2015-000291
Application 12/931,048
Appellant's invention relates to "liquid transport systems and more
particularly to systems for delivery of a liquid to a sensor." Spec. i-f 2.
Independent claim 1 is representative:
1. A device, comprising:
multiple components that are independent from one another
but are configured to be detachably coupled with one another so
as to form a cartridge;
one of the components is a clamp that includes a first portion
hinged to a second portion such that the clamp can occupy an
open position or can occupy a closed position with other
components between the first portion and the second portion
and with the clamp holding the other components together, the
other components being the components other than the clamp;
and
the cartridge having one or more reservoirs, one or more
functional chambers, and one or more channels configured to
transport a liquid stored in at least one of the one or more
reservoirs into the one or more functional chambers.
Appeal Br. 24. Independent claims 12, 15, and 19 contain similar
limitations. Id. at 25-28.
The Examiner maintains the following grounds of rejection:
I. Claims 1-3 and 6-22 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which the applicant regards as the invention. Final Action 2-
3.
II. Claims 1-3 and 6-22 under 35 U.S.C. § 102(a) or (e) as being
unpatentable over U.S. Patent No. US 7,641,856 B2 [hereinafter
Padmanabhan] (issued Jan. 5, 2010), including U.S. Patent No. US
4,683,159 [Bohrer] (issued Jul. 28, 1987), which is incorporated by
reference. Final Action 3---6.
2
Appeal2015-000291
Application 12/931,048
Accompanying the Reply Brief~ dated Sept. 22, 2014, Appellant
submitted a "Partial Withdrawal of Appeal under MPEP § 1215.03,"
purporting to withdraw the appeal of claims 2, 3, 8-11, 13, 14, 16-18, 21,
and 22. However, because Appellant has not canceled these claims in the
application, these claims are presumed to still be part of the appeal. See
37 § C.F.R. 41.3 l(c).
DISCUSSION
Rejection Under 35 USC§ 112, Second Paragraph
The Examiner finds that the limitation "the other components being
the components other than the clamp" in claims 1 and 12 "does not
specifically claim any structure and is not clear what structure is intended by
the 'other components."' Final Action 2. However, as Appellant correctly
notes, the term "other components" clearly refers to "the previously
introduced components that are not the clamp." Appeal Br. 12. This is a
structural limitation, and is sufficiently definite to apprise the public of the
scope of the invention.
The Examiner finds that the most-recently amended portions of claim
6 "do not provide any structural limitations and appear to be drawn to a
method of intended use of the apparatus which is of no patentable moment
with respect to the pending apparatus claims." Final Action 3. This refers
to the limitation "the clamp presses the other components together when the
clamp is in the closed position with the clamp holding the other components
together." Appeal Br. 13.
We agree with Appellant that this limitation "recites a physical state
of the cartridge by reciting the relationship between different structures in
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Appeal2015-000291
Application 12/931,048
the claim." Id. Therefore, we interpret claim 6 as a functional limitation
requiring a configuration such that the clamp presses the other components
together when it is in the closed position. In light of this interpretation, the
limitations of claim 6 are a functional part of the structure of the invention,
and not merely an intended use.
The Examiner finds that in independent claims 15 and 19, it is not
clear what structures the "re-use component" and "substitute component" are
intended to refer to. Final Action 3. However, we agree with Appellants
that claims 15 and 19 define the "re-use component" and the "substitute
component" in structural terms in relation to the other components. See
Appeal Br. 13-14. In light of this interpretation, we determine that the
Examiner erred in not considering the explicit structural definitions of those
terms in claims 15 and 19.
For the above reasons, the Examiner has not established that claims 1-
3 and 6-22 fail to particularly point out and distinctly claim the subject
matter which the applicant regards as the invention. Therefore, we
determine that the Examiner reversibly erred in rejecting claims 1-3 and 6-
22 under 35 U.S.C. § 112, second paragraph.
4
Appeal2015-000291
Application 12/931,048
Re} ection Under 3 5 US. C. § 112
Figure 1 of Padmanabhan is reproduced below:
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32
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Figure 1 describes a sample analyzer 10 and a cartridge 14 that fits in the
analyzer. See Padmanabhan 5: 13-16.
The Examiner finds that cartridge 14 and analyzer 10 of
Padmanabhan, together, read on the device of claim 1, with the analyzer 10
forming the clamp as specified in claim 1. See Final Action 4. According to
the Examiner, the various reservoirs found on cartridge 14 read on the "other
components." See id. According to the Examiner, these "other
components" are "independent from one another" as required by claim 1
because the reservoirs on cartridge 14 "are separate and independent from
each other." Answer 8. Moreover, according to the Examiner, the
components of cartridge 14 are independent "because the cartridge ( 14) has
the capability to be dismantled using a saw or laser." Answer 9-10.
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Appeal2015-000291
Application 12/931,048
Appellant argues that the reservoirs on cartridge 14 are not
"independent from one another" as required by independent claim 1. Appeal
Br. 15-17. To interpret the term independent, Appellant points to the
Specification, which states that "[a] cartridge includes multiple components
that are independent from one another in that they are not bonded to one
another or permanently immobilized relative to one another." Appeal
Br. 16 (quoting Spec. i-f 20.) Appellant also notes that claim 1 reads that the
components are "independent from one another but are configured to be
detachably coupled with one another." Id. at 15-16 (quoting claim 1).
Thus, according to Appellant, the language in claim 1 not only requires that
the components are "independent from one another," but also contains a
separate requirement that they are detachably coupled with one another. Id.
In light of the Specification and claims, we agree with Appellant that
the term independent refers to parts, such as detachably coupled parts, that
are not bonded or permanently immobilized relative to one another.
Therefore, the Examiner erred in determining that the reservoirs on cartridge
14 of Padmanabhan are independent from one another and detachably
coupled. Because independent claims 12, 15, and 19, and all dependent
claims, also contain the requirement that the multiple components are
"independent from one another" and "detachably coupled," see Appeal Br.
25-28, these claims are also not anticipated by Padmanabhan. Therefore,
we determine that the Examiner reversibly erred in rejecting claims 1-3 and
6-22 under 35 U.S.C. § 102.
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Appeal2015-000291
Application 12/931,048
DECISION
The Examiner's decision rejecting claims 1-3 and 6-22 is reversed.
REVERSED
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