Ex Parte Hanafusa

Patent Trial and Appeal Board

Sep 14, 2015

12529536 (P.T.A.B. Sep. 14, 2015)

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.
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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”).
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Application 12/529,536

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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).
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Application 12/529,536

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“[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
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Application 12/529,536

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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 . . . .

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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
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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.
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Application 12/529,536

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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
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