Ex Parte Huang et al

Patent Trial and Appeal Board

Feb 21, 2017

14026900 (P.T.A.B. Feb. 21, 2017)

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.
14/026,900 09/13/2013 Biying Huang 2010467-0051 PRK-003C1 9286
24280 7590 02/23/2017
CHOATE, HALL & STEWART LLP
TWO INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
BROOKS, DAVID T
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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):
patentdocket @ choate. com
jnease@choate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BIYING HUANG, SCOTT GREGORY FLICKER,
WILLIAM B. BALLARD, ROBIN YOUNG SMITH,
SEAN GERARD GREENHOW, and
SHADRACK CGAR FRAZIER
Appeal 2016-005188
Application 14/026,9001
Technology Center 2100
Before LARRY J. HUME, JAMES W. DEJMEK, and JOYCE CRAIG,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 15—26. Appellants have canceled claims 1—14. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is PerkinElmer
Informatics, Inc. App. Br. 2.
Appeal 2016-005188
Application 14/026,900
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed "invention[s] relate[] to systems,
methods, and apparatus for facilitating chemical analyses. More
specifically, described herein are exemplary systems, methods, and
apparatus for determining methodologies, and the parameters thereof, to
separate substances." Spec. 12.
Exemplary Claim
Claim 15, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitations):
15. An apparatus for electronically identifying a
separation method for separating one or more chemical
compounds in a sample, the apparatus comprising:
a processor; and
a memory having a set of instructions stored thereon,
wherein the instructions, when executed by the processor, cause
the processor to:
(i) receive a user query comprising one or more
criteria comprising at least one of a chemical structure, a
chemical sub-structure, a separation method property,
and a separation run property;
(ii) access a relational database, wherein the
relational database comprises:
substance data corresponding to a plurality of
substances, wherein each substance of the
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Aug. 31, 2015); Reply Brief ("Reply Br.," filed Apr. 15, 2016); Examiner's
Answer ("Ans.," mailed Feb. 16, 2016); Final Office Action ("Final Act.,"
mailed Jan. 28, 2015); and the original Specification ("Spec.," filed
Sept. 13,2013).
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Application 14/026,900
plurality of substances comprises a respective
set of chemical substance properties, and each
substance of the plurality of substances
identifies one or more of a molecule, a biologic,
an enzyme, and a protein; and
experimental run data from a plurality of
completed separation experiments, wherein the
experimental run data comprises a set of
separation method properties and a set of
separation run properties, wherein each
separation method property of the set of
separation method properties and each
separation run property of the set of separation
run properties is linked in the relational
database to at least one respective chemical
structure object of a plurality of chemical
structure objects, wherein each chemical
structure object of the plurality of chemical
structure objects corresponds to one or more
compounds separated in a respective
separation experiment of the plurality of
completed separation experiments, and wherein
each chemical structure object of the plurality
of chemical structure objects is linked in the
relational database to a respective set of
chemical structure properties associated with a
particular substance of the plurality of
substances',
(iii) identify, within the relational database, responsive
to the user query, query results, wherein the query results
comprises at least one of:
(a) one or more separation method properties
corresponding to the one or more criteria, and
(b) one or more separation run properties
corresponding to the one or more criteria; and
(iv) cause the presentation of the query results.
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Appeal 2016-005188
Application 14/026,900
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Smith et al. ("Smith") US 2004/0003000 A1 Jan. 1, 2004
Dorsett, JR. ("Dorsett") US 2006/0277201 Al Dec. 7, 2006
Rejection on Appeal
Claims 15—26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dorsett and Smith. Final Act. 7.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 12—18), we decide the
appeal of the obviousness rejection of claims 15—26 on the basis of
representative claim 15.3
ISSUE
Appellants argue (App. Br. 12—18; Reply Br. 5—17) the Examiner's
rejection of claim 15 under 35 U.S.C. § 103(a) as being obvious over the
combination of Dorsett and Smith is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a]n apparatus for electronically identifying a separation
method for separating one or more chemical compounds in a sample," which
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv)
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Application 14/026,900
includes a processor executing a set of instructions stored in a memory
which cause the processor to, inter alia:
access a relational database, wherein the relational database
comprises . . . experimental run data from a plurality of
completed separation experiments, wherein the experimental
run data comprises a set of separation method properties and a
set of separation run properties, wherein each separation
method property of the set of separation method properties and
each separation run property of the set of separation run
properties is linked in the relational database to at least one
respective chemical structure object of a plurality of chemical
structure objects, wherein each chemical structure object of the
plurality of chemical structure objects corresponds to one or
more compounds separated in a respective separation
experiment of the plurality of completed separation
experiments, and wherein each chemical structure object of the
plurality of chemical structure objects is linked in the relational
database to a respective set of chemical structure properties
associated with a particular substance of the plurality of
substances,
as recited in claim 15?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 15—26,
and we incorporate herein and adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in
response to Appellants' arguments. We incorporate such findings, reasons,
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and rebuttals herein by reference unless otherwise noted. However, we
highlight and address specific findings and arguments regarding claim 15 for
emphasis as follows.
Appellants contend "[independent claims 15 and 21 relate to
identifying separation methods. Those of ordinary skill in the art would
appreciate that separations of components is a complicated process." App.
Br. 12. "Performing separations is a complicated process that requires
consideration of numerous factors and variables; this process requires
significantly more than organizing data from an experiment, which is what is
disclosed in the prior art." App. Br. 13. "Dorsett only refers to experimental
data generally — and the experiments Dorsett provides relate to
'combinatorial chemistry' — not 'separating one or more chemical
compounds' as recited in independent claims 15 and 21." Id. "Dorsett fails
to teach or suggest any experiments that include separating chemical
compounds." App. Br. 14.
Appellants further argue, "[o]ne of ordinary skill in the art would
appreciate that different considerations and techniques are applicable to
identifying separation methods as opposed to processing data from
combinatorial experiments." App. Br. 15. Appellants also contend
"identifying the separation method/run properties as recited in claims 15
and 21 requires steps beyond organizing the representation of the chemical
experiments." Id. "Smith is also completely silent regarding any methods
for 'separating one or more chemical compounds in a sample' as recited in
independent claims 15 and 21." App. Br. 16.
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At the outset, we conclude the contested functional limitations are
statements of intended use that do not further limit the structure of the
claimed apparatus. Our reviewing court guides that the patentability of an
apparatus claim "depends on the claimed structure, not on the use or purpose
of that structure." Catalina Marketing Int'l. Inc. v. Coolsavings.com, Inc.,
289 F.3d 801, 809 (Fed. Cir. 2002); see also Superior Industries, Inc. v.
Masaba, Inc., 553 Fed.Appx. 986, 991 (Fed. Cir. 2014) (Rader, J.,
concurring) which guides:
"[A] system claim generally covers what the system is, not what
the system does. Hewlett-Packard Co. v. Bausch & Lomb Inc.,
909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer,
91 U.S. 150, 157 [] (1875) ('The inventor of a machine is
entitled to the benefit of all the uses to which it can be put, no
matter whether he had conceived the idea of the use or not.').
Thus, it is usually improper to construe non-functional claim
terms in system claims in a way that makes infringement or
validity turn on their function. Paragon Solutions, LLC v.
Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009)."[4]
This reasoning is applicable to each of Appellants' apparatus
claims 15—20 on appeal.4 5
In light of our reviewing court's various holdings cited above, we
agree with the Examiner (Ans. 2), i.e., "[i]n response to Appellant's
argument that separation methods and identification and retrieval of data
4 Superior Industries is a recent non-precedential opinion of the Court of
Appeals for the Federal Circuit. However, we consider the concurring
opinion by former Chief Judge Rader as guiding because it cites precedential
authority in support.
5 "Independent claim 21 is a method claim reciting similar elements to those
recited in independent claim 15." App. Br. 12. Appellants do not separately
argue method claim 21. See Claim Grouping, supra.
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related to such methods or experiments is some special field of use, a
recitation of the intended use of the claimed invention must result in a
structural difference between the claimed invention and the prior art in order
to patentably distinguish the claimed invention from the prior art. If the
prior art structure is capable of performing the intended use, then it meets
the claim." Ans. 2—3.
We find claim 15 only structurally recites (1) a processor, and
(2) memory containing instructions stored therein which, when executed,
cause the processor to carry out various recited functions. In terms of the
field of use, we note claim 15 merely recites "[a]n apparatus for
electronically identifying a separation method for separating one or more
chemical compounds in a sample," and does not positively recite carrying
out any actual chemical separation steps or methods, but instead only
identifying a separation method based upon information stored in a
database.6
"Here, Appellants'] claims recite broadly storing and retrieving data
about separation method experiments. Appellants'] disclosure simply
recites that the 'methodologies used to analyze and separate mixtures of
chemical compounds generally involve various machine settings, detector
settings, and materials suitable to perform the separation.'" Ans. 3 (citing
Spec. 13).
6 "In various embodiments, the present invention relates to systems,
methods, and apparatus for facilitating chemical analyses. More
specifically, described herein are exemplary systems, methods, and
apparatus for determining methodologies, and the parameters thereof, to
separate substances." Spec. 12 (emphasis added).
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The Examiner further finds, and we agree:
[T]he invention is simply directed to storing and retrieving data
in the field of analytical chemistry, and particularly separation
chemistry. However, such is simply an intended field of use.
Here the prior art structures, as cited and well known in the art,
are capable of storing, searching, and retrieving data. To the
extent that Appellant is arguing the specific types of data that
are stored and retrieved differ from traditional database data,
Examiner disagrees. Paragraph [0012] of Appellant's
specification explains that "separation method properties"
include simply text-based, numeric, or alphanumeric data
relating to a method such as a method name, an instrument
name, etc. Similarly, the "separation run properties" include
again simply text-based, numeric, or alphanumeric data relating
to a run date, a process date, a scientist name, etc. for a specific
completed experiment. Thus, the data to be stored, queried, and
retrieved in the database is traditional text and other well-
known data types, and the Appellant simply intends that the
invention is directed to storing and retrieving data in the field of
analytical chemistry, and particularly separation chemistry.
Again, here the prior art structures, as cited and well known in
the art, are capable of storing, searching, and retrieving data of
this form and nothing in Appellant's disclosure indicates how
such a recitation of the intended use in the field of analytical
separation chemistry of the claimed invention must result in a
structural difference between the claimed invention and the
prior art. Thus Appellant's arguments are not persuasive.
Ans. 3^4 (emphasis added).7
7 We find Appellants' arguments distinguishing the type of data stored in the
database over the cited prior art are not persuasive. Reply Br. 7—8, 12—13.
The informational content of non-functional descriptive material is not
entitled to weight in the patentability analysis. See Ex parte Nehls, 88
USPQ2d 1883, 1887—90 (BPAI2008) (precedential); Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005) (informative) (Fed. Cir. Appeal No. 2006-1003,
affid. Rule 36 (June 12, 2006)); Ex parte Mathias, 191 Fed. Appx. 959 (Fed.
Cir. 2006); In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994) (holding
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The Examiner makes further findings regarding the teachings and
suggestions of the Dorsett reference, which we adopt as our own, and
incorporate herein by reference (Ans. 4—5),* * 8 and also makes findings that the
cited Smith reference "also is explicitly described as being used with
chemical separation methods and experiments" (Ans. 6), and "as in Dorsett,
Smith is directly applicable to 'chromatograph' methods which as explained
... is a chemical separation method. Thus Smith also is explicitly described
and capable of use in the field of analytical chemistry to include separation
methods at least as chromatography experiments." Id.
In the Reply Brief, in addition to arguing the type of non-functional
data stored in the database distinguishes over the cited prior art,9 Appellants
reiterate "the disclosures of Dorsett and Smith relate to combinatorial
chemistry and synthesis — not separation methods — and do not render the
claimed subject matter obvious[.]" Reply Br. 3. Appellants further argue
Dorsett and Smith are not relevant to separations, allegedly because:
One of skill in the art would appreciate that performing
separations is a complicated process that requires consideration
of numerous factors and variables. Determining an appropriate
separation methodology requires selection of a particular
separation method and optimization of separation run properties
(e.g. method name, temperature, column properties, instrument
names, see, e.g., paragraphs [0012] and [0049] in the instant
specification). This defines an enormous parameter space.
Moreover, the particular method and separation run properties
informational content of non-functional descriptive material is not entitled to
patentable weight).
8 For example, the Examiner finds "[t]hus Dorsett's teachings explicitly
include experimental data in the same intended field of use as Appellant's
claimed invention." Ans. 5.
9 See n.7, supra.
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that will prove successful depend on the properties of the
chemical compound to be separated out, as well as the other
components of the sample in which it is present (e.g. compound
weight, melting point, number of H donors, pKa, see, e.g.,
paragraph [0052] in the instant specification).
Reply Br. 5.
Appellants additionally contend, "[t]his capability is achieved by
virtue of a relational database that establishes links between separation
method properties, separation run properties, chemical structure objects, and
properties that govern how the separation takes place. The database does not
merely contain data about previous separation runs, but accounts for the
links between properties of the underlying chemicals, the experiments
conducted, and their outcomes that are critical to identifying separation
methods." Reply Br. 7.
We do not agree with Appellants' renewed arguments in the Reply
Brief for the reasons articulated by the Examiner in the Answer, which we
adopt herein. We also are not persuaded the Examiner erred because
Appellants' arguments are not commensurate with the scope of the claim,
particularly with respect to the claimed storage of a certain type of non­
functional data in the database as well as the argument that claim 15 requires
the actual carrying out of chemical separation processes, instead of just
storing information related to such separation processes.
Broadly stated, "the invention is simply directed to storing and
retrieving data in the field of analytical chemistry, and particularly
separation chemistry . . . [h]ere the prior art structures, as cited and well
known in the art, are capable of storing, searching, and retrieving data."
Ans. 3; see also Catalina Marketing, 289 F.3d at 809.
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Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's reliance on the combined teachings
and suggestions of the cited prior art combination to teach or suggest the
disputed limitations of claim 15, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection of independent claim 15, and grouped
claims 16—26 which fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 3—17) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
raised in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to the obviousness rejection of
claims 15—26 under 35 U.S.C. § 103(a) over the cited prior art combination
of record, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 15—26.
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). See 37
C.F.R. §41.50(f).
AFFIRMED
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