Ex Parte HanafusaDownload PDFPatent Trial and Appeal BoardSep 14, 201512529536 (P.T.A.B. Sep. 14, 2015) 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. 12/529,536 09/01/2009 Nobuhiro Hanafusa NOG-0333 4219 74384 7590 09/14/2015 Cheng Law Group, PLLC 1133 13th St. N.W. Suite C2 Washington, DC 20005 EXAMINER HENKEL, DANIELLE B ART UNIT PAPER NUMBER 1799 MAIL DATE DELIVERY MODE 09/14/2015 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 NOBUHIRO HANAFUSA1 ____________ Appeal 2014-001230 Application 12/529,536 Technology Center 1700 ____________ Before CHUNG K. PAK, TERRY J. OWENS, and WESLEY B. DERRICK, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner’s maintained final rejection of claims 1–25. We have jurisdiction pursuant to 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellant, the Real Party in Interest is Shimadzu Corporation. App. Br. 2. Appeal 2014-001230 Application 12/529,536 2 CLAIMED SUBJECT MATTER Appellant’s claimed invention is directed to a reaction container plate in which the introduction of foreign matter into the plate is prevented. Spec. Abstract. Claim 1 is illustrative: 1. A reaction container plate comprising: a sealed reaction container; a reaction container channel connected to the reaction container; a sealed container provided separately from the reaction container; a sealed container channel connected to the sealed container; a syringe for sending a liquid; a switching valve for connecting the syringe to the reaction container channel or the sealed container channel; and a sealed container air vent channel of which one end is connected to the sealed container, wherein the switching valve is configured such that the syringe can be in direct communication selectively with one of the reaction channel and the sealed container channel at a time. App. Br. 14 (Claim Appendix) (emphasis added). REJECTIONS The Examiner maintains the following grounds of rejection: Claims 1–4, 6–14, and 16–25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McNeely (US 2008/0069729 A1, published March 20, 2008) in view of Bergh et al. (US 2002/0045265 A1, published April 18, 2002) (“Bergh”). Appeal 2014-001230 Application 12/529,536 3 Claims 5 and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over McNeely in view of Bergh in view of Besemer et al. (US 6,391,623 B1, issued May 21, 2002) (“Besemer”). DISCUSSION Having reviewed the Examiner’s decision in light of arguments advanced by the Appellant in the Appeal Brief and Reply Brief,2 we are persuaded that the Examiner has failed to establish a prima facie case of unpatentability for obviousness under 35 U.S.C. § 103(a) and will, therefore, not sustain the appealed rejections. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden . . . of presenting a prima facie case of unpatentability.”). We decide the appeal as to all claims on the basis of claim 1, the sole independent claim. We begin our analysis by construing the claims in light of the Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (During prosecution of patent applications, “the PTO must give claims their broadest reasonable construction consistent with the specification . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.”). Claim 1 requires the reaction container plate to comprise a switching valve that is “configured such that the syringe can be in direct communication selectively with one of the reaction channel and the sealed container channel at a time.” Claim 1. The Specification discloses that 2 Rather than reiterate all arguments of the Appellant and the Examiner, we refer to the Office Action (mailed January 3, 2013), the Appeal Brief (filed June 3, 2013), the Answer (mailed September 6, 2013), and the Reply Brief (filed November 6, 2013). Appeal 2014-001230 Application 12/529,536 4 “[b]y rotating the switching valve 47, the syringe channel 33c is connected to any one of the channels 15a [reaction container channel], 17a [sample container channel], 19a [reagent container channel], and 21a [reagent container channel].” Spec. ¶ 60, Fig. 7 (emphasis added). Thus, the Specification discloses that the switching valve operates to place the syringe in direct communication with each of these specified channels alone during a period of time. Accordingly, adopting the broadest reasonable interpretation consistent with the Specification, we construe claim 1 to require the switching valve can be operated to place the syringe in direct communication with the reaction channel alone and to place the syringe in direct communication with the sealed container channel alone as desired. McNeely discloses a sample testing platform for screening a liquid sample against a panel of different chemical or biological indicators. McNeely, Abstract. The Examiner relies on the disclosed sample testing platform (see, e.g., McNeely, Figs. 18–19) as corresponding to the instantly claimed reaction container plate (Claim 1). The Examiner finds McNeely’s sample testing platform comprises reaction chambers 443, 466, 484 (corresponding to the recited reaction container); liquid channels connected to the reaction chambers 444, 467, 487 (corresponding to the recited reaction container channel); dead volume wells provided separately from the reaction chambers 442, 464, 483 (corresponding to the recited sealed container); channels with valves 447, 465, 488 connected to the dead volume wells (corresponding to the recited sealed container channel); a syringe for introducing a liquid into the platform; and an air vent connected to the dead volume wells through an air duct 441, 463, 482 (corresponding to the recited sealed container air vent channel). Office Act. 3 (citing McNeely ¶¶ 52, and Appeal 2014-001230 Application 12/529,536 5 57–59, and Figs. 13, and 18–20). The Examiner also finds that McNeely discloses valves 447, 465, 488 that control whether liquid enters the reaction chambers or the dead volume wells. Id. (citing McNeely ¶¶ 52, and 57–59). Bergh discloses parallel, multi-channel chemical processing systems. Bergh ¶ 8. The Examiner finds de facto that Bergh’s multiple reactors 600 and related flow paths correspond to the reaction container, sealed container, reaction channel, and sealed container channel of the claims. Ans. 3 (citing Bergh ¶¶ 62–64 and Fig. 2A). The Examiner relies on Bergh’s disclosure for its teaching of a switching valve. Id. The Examiner finds that Bergh discloses a selection valve 543 in a common liquid channel upstream of multiple reactors 600 (corresponding to the reaction container and sealed container) and that the selection valve 543 provides for selection of one of four flow paths (corresponding to the recited reaction channel and sealed container channel) for direct communication between an external source (corresponding to the recited syringe) and one of the flow paths at a time. Id. at 3–4 (citing ¶¶ 62–64 and Fig. 2A). The Examiner finds that “modifying [McNeely] to include the switching valve as taught by [Bergh], would yield a device in which a switching valve would be present on the liquid channel to select which of the multiple reaction chambers fluid would enter without destroying the serial arrangement of [McNeely].” Ans. 3–4. The Examiner concludes that: [a]t the time of the invention it would have been obvious to modify the valves of the device of [McNeely] with the selective valves (switching valves) as taught by [Bergh] because they allow for selective supply of various treatment sources and provide for automated and/or manual selection of the particularly desired restrictor (channel) for that particular reaction . . . . Appeal 2014-001230 Application 12/529,536 6 Office Act. 4 (citing Bergh ¶¶ 63 and 167). We do not find the Examiner’s proffered basis for the rejection well- founded because we find an insufficient basis to modify the cited prior art and because, if modified as proposed, the relied on combination does not provide the claimed invention. The Examiner has not adequately articulated or explained a reason why one of ordinary skill in the art would have modified McNeely’s device to incorporate the switching valve of Bergh. The portions of McNeely cited by the Examiner disclose a sample testing platform for screening a single liquid sample against multiple chemical or biological indicators. Id. at 3–4 (citing ¶¶ 52, and 57–59, and Figs. 13 and 18–20). The Examiner has not explained why one of ordinary skill in the art reasonably would have expected a selection valve as disclosed in Bergh to be useful in McNeely’s device (Abstract) in which a single sample is channeled to numerous reaction chambers in order to test the single sample against each of multiple indicators. In other words, the Examiner has not articulated a reason why one of ordinary skill in the art would have found it useful to utilize a valve to selectively channel a single sample into different reaction chambers in an apparatus that is designed to introduce a single sample into each of numerous reaction chambers in order to test the sample against different indicators in each of the reaction chambers. Thus, consistent with Appellant’s arguments (App. Br. 8–9), we determine that the Examiner reversibly erred in determining that one of ordinary skill in the art would have had an apparent reason to modify the disclosure of McNeely in the manner proposed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (Establishing a prima facie case of Appeal 2014-001230 Application 12/529,536 7 obviousness of an invention comprising a combination of know elements requires an “apparent reason to combine the known elements in the fashion claimed.”) Moreover, we find the relied on combination does not provide the claimed invention despite the Examiner’s statements to the contrary (Ans. 2– 4) because, even if the sample testing platform of McNeely was modified as proposed by the Examiner to incorporate a selection valve as disclosed in Bergh, such a device would not have a switching valve that is “configured such that the syringe can be in direct communication selectively with one of the reaction channel and the sealed container channel at a time.” Claim 1 (emphasis added). We find the Examiner errs in interpreting claim 1 to merely require that one of the reaction channel and sealed container can be placed in direct communication with the syringe. Ans. 3. Based on this improper interpretation, the Examiner relies on Figure 18 of McNeely and finds that valve 447 can be closed blocking access to dead volume wells 442 thereby allowing the syringe to be in direct communication with the reaction chamber 443, which the Examiner asserts corresponds to the recited reaction channel, without any fluid flow into the channel leading to the dead volume chambers, which the Examiner asserts corresponds to the recited sealed container channel. Id. The Examiner does not articulate any basis for the dead volume chambers, corresponding to the recited sealed container channel, being in direct communication with the syringe. Id. Thus, the Examiner has not set forth a basis for the device being configured for “direct communication selectively with one of the reaction channel and the sealed container channel at a time” as properly construed. Appeal 2014-001230 Application 12/529,536 8 On this basis, we find Appellant’s arguments grounded on the Examiner improperly interpreting the claim are well-founded. App. Br. 6–7. Accordingly, we do not sustain the rejection of claims 1–4, 6–14, and 16–25 under 35 U.S.C. § 103(a) as being unpatentable over McNeely and Bergh. Claims 5 and 15 In rebutting this rejection, Appellant relies on the above contentions that the Examiner errs in rejecting the base claim, independent claim 1, from which these claims depend, and argues that Besemer fails to remedy the deficiencies of McNeely and Bergh. App. Br. 9. Because we are persuaded of reversible error in the Examiner’s rejection of claim 1 as indicated above, we do not sustain the rejection of dependent claims 5 and 15 under 35 U.S.C. § 103(a). CONCLUSION The Examiner’s decision to reject claims 1–25 under 35 U.S.C. § 103(a) is REVERSED. REVERSED bar Copy with citationCopy as parenthetical citation