Ex Parte Harris et al

Patent Trial and Appeal Board

Sep 12, 2016

13267565 (P.T.A.B. Sep. 12, 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.
13/267,565 10/06/2011 Jason Harris IP-0510-US/YOD
(ILUM:0025
1098
83443 7590 09/13/2016
Illumina, Inc.
Fletcher Yoder, P.C.
P.O. Box 692289
Houston, TX 77269-2289
EXAMINER
BROWN, MINDY G
ART UNIT PAPER NUMBER
1636
MAIL DATE DELIVERY MODE
09/13/2016 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 JASON HARRIS and STEPHEN TANNER
____________

Appeal 2015-000645
Application 13/267,5651
Technology Center 1600
____________

Before ULRIKE W. JENKS, TAWEN CHANG, and RYAN H. FLAX,
Administrative Patent Judges.

FLAX, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to an article having a patterned layout of sites containing
chemical or biological molecules. Claims 1–9, 11–21, and 27–31 are on
appeal as rejected under 35 U.S.C. §§ 102(b) and 103(a). We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 The Real Party in Interest Illumina, Inc. App. Br. 2.
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Application 13/267,565

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STATEMENT OF THE CASE
The appealed claims can be found in the Claims Appendix of the
Appeal Brief. Claim 1 is the sole independent claim, is representative, and
reads as follows:
1. An article of manufacture, comprising:
(e) [sic] a substrate having a surface
(f) a plurality of sites comprising one or more chemical moieties
or biological molecules disposed at respective discrete locations
on the surface and are organized in at least one sample area, each
sample area comprising at least two neighboring domains
(g) a first domain of the at least two neighboring domains having
a first layout comprising sites in a regular pattern and
(h) a second domain of the at least two neighboring domains
having a second layout comprising sites in the regular pattern,
the regular pattern being oriented differently in the second layout
relative to the first layout.
App. Br. 24 (Claims App’x) (underlining and strikethrough original).
The following rejections are on appeal:
Claims 1–3, 5, 6, 11, 14, 16, 18, 19, and 27 rejected under 35 U.S.C.
§ 102(b) as anticipated by Fitzgerald.2 Final Action 2.
Claims 1–3, 5, 6, 9, 11–14, and 18–20 rejected under 35 U.S.C.
§ 103(a) over Zhang.3 Final Action 4.

2 U.S. Patent No. US 6,498,010 B1 (issued to Fitzgerald et al. on Dec. 24,
2002) (hereinafter “Fitzgerald”).
3 U.S. Patent Application Pub. No. US 2010/0041566 A1 (published Feb. 18,
2010) (hereinafter “Zhang”).
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Claims 4, 21, 27, and 28 rejected under 35 U.S.C. § 103(a) over
Zhang and Amorese.4 Final Action 6.
Claims 7, 8, 29, and 31 rejected under 35 U.S.C. § 103(a) over Zhang
and Burns.5 Final Action 7.
Claims 15, 16, and 17 rejected under 35 U.S.C. § 103(a) over Zhang
and Sauer.6 Final Action 8.

DISCUSSION
The Anticipation Rejection over Fitzgerald
Appellants contend “Fitzgerald fails to teach a regular pattern in [a]
second layout that is oriented differently relative to [a] first layout.” App.
Br. 6. Appellants’ argument is persuasive.
The Examiner’s rejection over Fitzgerald relies on Fig. 14B of the
reference and the Examiner’s determination that the reference’s two
identically-depicted, neighboring sample trays (55 in figure; interpreted by
the Examiner as the claimed domains) could be considered by the skilled
artisan to have different orientations of the same regular pattern because one
of them could be considered to be rotated 90 degrees relative to the other.
See Office Action dated June 28, 2013 at 4; Ans. 10. Neither the cited figure
itself nor the related description in the reference’s specification suggests this.

4 U.S. Patent Application Pub. No. US 2004/0126766 A1 (published Jul. 1,
2004) (hereinafter “Amorese”).
5 U.S. Patent Application Pub. No. US 2009/0270273 A1 (published Oct. 29,
2009) (hereinafter “Burns”).
6 Sascha Sauer et al., Miniaturization in Functional Genomics and
Proteomics, 6 NATURE REVIEWS | GENETICS 465–476 (2005) (hereinafter
“Sauer”).
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“Anticipation requires that all of the claim elements and their
limitations are shown in a single prior art reference.” In re Skvorecz, 580
F.3d 1262, 1266 (Fed. Cir. 2009). The reference does not disclose that the
orientations of what the Examiner identifies as neighboring site domains are
anything but the same. Fitzgerald col. 11, ll. 25–36 and Fig. 14B. It is an
unreasonable interpretation of the claim language that it might extend to
perceived changes in site pattern orientation based solely on changing the
perspective view of an imagined observer. Thus, the reference lacks
disclosure of all the claim elements and their limitations, and the
preponderance of the evidence does not support the Examiner’s
determination of anticipation. We reverse this rejection.

The Obviousness Rejections
We consider and address the four obviousness rejections together
because the same determinative facts and arguments apply to each. Each
obviousness rejection relies on the Examiner’s determination that Zhang
taught or suggested neighboring domains with regular patterns, where a
second domain has a pattern orientation different than the first. Final Action
5. The Examiner points to either Zhang’s cell adhesion sites (shown as 6 in
Fig. 1A) or Zhang’s cell adhesion proteins/peptides (shown in Figs. 5A-5C)
as patterned domains of sites. See Office Action dated Jan. 4, 2013 3–5;
Ans. 11–13. The Examiner contends the cell adhesion site array in Zhang
could be viewed as having a 90 degree orientation shift, as was similarly
contended with respect to Fitzgerald (supra) and, alternatively, that the
proteins/peptides are disclosed as having varied distributions from random to
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“more ordered” (at Zhang ¶ 58) and that these might be positioned in
neighboring domains.
The former contention is not persuasive for the reasons as discussed
supra regarding Fitzgerald –– a seemingly identical pattern does not change
its orientation when an observer rotates his or her head. The latter
contention is also not persuasive because, as Appellants argue, Zhang’s
proteins/peptides are not disclosed as being in a regular pattern and, even if
they were, they are not disclosed to be organized into neighboring domains
that have differently oriented regular patterns. App. Br. 13–20.
For these reasons, we find that the evidence of record does not support
the Examiner’s determinations of obviousness over the cited prior art
combination relying on Zhang. We reverse each obviousness rejection.

SUMMARY
The rejection of claims 1–3, 5, 6, 11, 14, 16, 18, 19, and 27 under
35 U.S.C. § 102(b) as anticipated by Fitzgerald is reversed.
The rejection of claims 1–3, 5, 6, 9, 11–14, and 18–20 under
35 U.S.C. § 103(a) over Zhang is reversed.
The rejection of claims 4, 21, 27, and 28 under 35 U.S.C. § 103(a)
over Zhang and Amorese is reversed.
The rejection of claims 7, 8, 29, and 31 under 35 U.S.C. § 103(a) over
Zhang and Burns is reversed.
The rejection of claims 15, 16, and 17 under 35 U.S.C. § 103(a) over
Zhang and Sauer is reversed.
REVERSED