Ex Parte Kopacka et al

Patent Trial and Appeal Board

Aug 30, 2017

14053938 (P.T.A.B. Aug. 30, 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.
14/053,938 10/15/2013 Wesley Kopacka PHSQ008 7680
39731 7590 09/01/2017
Moser Taboada / Art Jackson
1030 BROAD STREET, SUITE 203
SHREWSBURY, NJ 07702
EXAMINER
WHATLEY, BENJAMIN R
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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):
docketing@mtiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WESLEY KOPACKA, WLODEK MANDECKI, and
RICHARD MORRIS
Appeal 2016-007756
Application 14/053,938
Technology Center 1700
Before LINDA M. GAUDETTE, AVELYN M. ROSS, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3—18, 22, and 23. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 In our Decision we refer to the Specification as amended (“Spec.”)
originally filed October 15, 2013, the Final Office Action (“Final Act.”)
mailed September 18, 2015, the Appeal Brief (Appeal Br.) filed February
17, 2016, the Examiner’s Answer (“Ans.”) mailed June 16, 2016, and the
Reply Brief (“Reply Br.”) filed August 16, 2016.
2 Appellant is the Applicant, PharmaSeq, Inc., which according to the
Appeal Br. is also the real party in interest. Appeal Br. 3.
Appeal 2016-007756
Application 14/053,938
STATEMENT OF CASE
The subject matter on appeal relates to an analyzer for use with “small
objects (‘tabs’, e.g., beads, chips, and the like) that have an analytical
surface adapted to yield a light responsive analytical signal. . . [and] [t]he
tabs have an associated identifier (ID). . . where the association is such that
if a focused light beam triggers the identifier, it will also provide for the light
responsive analytical signal.” Spec. 14. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. An analyzer for use with tabs placed in a vessel
comprising:
a stochastic sampling device adapted to receive the vessel;
a light beam source, the light configured to enter the vessel
and selectively illuminate tabs;
an analytical signal receiver configured to receive a signal
indicative of an analytical process occurring on the surface of a
said tab as that tab is selectively illuminated;
a tab ID receiver configured to collect ID data from the
tabs in coordination with their selective illumination, wherein the
tabs are light-triggered or are bar-coded; and
a controller for associating identified tab IDs with
analytical signals, wherein associating is dependent on reading
analytical signal and ID in appropriate concurrence dependent on
the selective light beam illumination of tabs.
Appeal Br. 24 (Claim App’x).
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Application 14/053,938
REJECTIONS
The Examiner maintains the following rejections3:
A. The Examiner rejects claims 1, 3—18, 22, and 23 under 35
U.S.C. § 112 as indefinite for failing to point out and
distinctly claim the subject matter which the inventor
regards as the invention. Final Act. 5; Ans. 5.
B. Claims 1, 3—13, 16, 17, 22, and 23 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Mandecki4 in
view of Gratton.5 Final Act. 7.
C. Claims 14, 15, and 18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Mandecki/Gratton in view
of Braeckmans.6 Id. at 15.
Appellant requests our reversal of Rejections A-C. See generally
Appeal Br.
3 The Examiner withdraws the rejection of claims 1, 3—18, 22, and 23 under
35 U.S.C. § 112 12 as indefinite due to the term “stochastic sampling
device” (claims 1 and 22) and the term “the vessel” (claim 23), and the
rejection of claims 4, 12, and 13 under 35 U.S.C. § 112, fourth paragraph, as
being of improper dependent form. Ans. 13.
4 Wlodek Mandecki, US 2002/0006673 Al, published January 17, 2002
(“Mandecki”).
5 Gratton et al., US 2006/0256338 Al, published November 16, 2006
(“Gratton”).
6 Braeckmans et al., Encoding Microcarriers: Present and Future
Technologies, 1 Nature Reviews Drug Discovery 447 (June 2002)
(“Braeckmans”).
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Appeal 2016-007756
Application 14/053,938
OPINION
Rejection A —Indefiniteness (claims 1, 3—18, 22 and 23)
Claims 3—6, and 22:
The Examiner rejects claims 3, 5, 6, and 22 (and claim 4 by virtue of
its dependency from claim 3) as indefinite because each includes limitations
relating to rotating or translating the vessel. Final Act. 5. According to the
Examiner, “it is unclear how the device would perform these operations
since no structure ... to perform the rotating and translating operations is
provided.” Id.
Appellant argues that the Examiner’s rejection amounts to a “per se
assertion that there cannot be functional claiming.” Appeal Br. 9.
We are not persuaded by the Examiner’s rejection that the terms
“rotating and translating the vessel” or “rotate the vessel” are indefinite
because “it is unclear how the device would perform these operations since
no structure is to perform the rotating or translating operations is provided.”
Final Act. 5; Ans. 14. Section 112 12 requires that “claims are . . . to be
cast in clear—as opposed to ambiguous, vague, and indefinite—terms. It is
the claims that notify the public of what is within the protections of the
patent, and what is not.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir.
2014). During prosecution, a claim is examined for compliance with
35 U.S.C. § 112 12 by determining whether the claim meets threshold
requirements of clarity and precision. In re Skvorecz, 580 F.3d 1262, 1268
(Fed. Cir. 2009) (quoting the Manual of Patent Examining Procedure
(“MPEP”) § 2173.02). In determining whether a particular claim is definite,
the claim’s language must be analyzed in light of the content of the
particular application, the prior art’s teaching, and the interpretation that
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Application 14/053,938
would be given to the claim’s language by a person of ordinary skill in the
art at the time the invention was made. Id.
The Examiner does not identify a dispute over the clarity of the claims
as understood by the skilled artisan. Rather, the Examiner’s concern that the
claims fail to identify a structure to accomplish the “rotation or the]
translation]” (Final Act. 5) goes to the breadth of the claims rather than the
ambiguity, vagueness, or indefmiteness of the claim language. Accordingly,
we do not sustain the Examiner’s rejection of claims 3—6 and 22 under §
112 as indefinite due to the limitations relating to rotating or translating the
vessel.
Claims E 3—18, and 23:
The Examiner rejects claim 1 (and claims 3—18 and 23 by virtue of
their dependency from claim 1) as indefinite for reciting an “‘appropriate’
concurrence.” Final Act. 5. The Examiner explains that the term
“appropriate” is relative. Id.
Appellant urges that terms of degree are not necessarily indefinite
where the Specification provides support. Appeal Br. 10. Appellant
contends that the Specification provides “[t]he ID signal and the analytical
signal may not be exactly coextensive, but one of skill can deduce with
ordinary experimentation and standardization of equipment which such
signals are meaningfully concurrent.” Id. According to Appellant, “one of
skill will recognize when he is designating a meaningful concurrence and
when he or she is not. If not meaningful, validation assays prove to be not
meaningful; if meaningful, the assays prove out as meaningful.” Id.
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Appellant does not identify a reversible error by the Examiner in
rejecting claim 1 as indefinite. Section 112 places the burden of precise claim
drafting on the applicant. See In re Morris, 127 F.3d 1048, 1056—57 (Fed. Cir.
1997). When a word of degree is used, we must determine whether the
specification provides some standard for measuring that degree. See Seattle
Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir.
1984); see also Datamize, LLC v Plumtree Software, Inc., 417 F.3d 1342, 1350
(Fed. Cir. 2005) (requiring an “objective anchor”) (abrogated on other grounds
by Nautilus, Inc. v. BiosigInstruments, Inc., 134 S. Ct. 2120 (2014)). While
terms of degree are not inherently indefinite, our reviewing court recognizes
that claims having terms of degree will fail for indefmiteness unless they
“provide objective boundaries for those of skill in the art” when read in light
of the specification and the prosecution history. Liberty Ammunition, Inc. v.
United States, 835 F.3d 1388, 1396 (Fed. Cir. 2016) (quoting Interval
Licensing LLC v. AOL, Inc., 766 F.3d at 1370-71 (Fed. Cir. 2014)).
After reviewing Appellant’s claim in light of the Specification, we
determine that neither the portion of the Specification identified by
Appellant (Appeal Br. 10) as descriptive of how an “alignment can be
standardized for new configurations without undue experimentation,” nor
any other disclosure therein, provides adequate guidance to determine what
is encompassed by the term “appropriate concurrence.” Thus, the claim fails
to provide “objective boundaries for those of skill in the art” and we affirm
the Examiner’s rejection of claims 1, 3—18, and 23 as indefinite under 35
U.S.C. § 112 because of the term “appropriate concurrence” (claim 1).
Liberty Ammunition, 835 F.3d at 1396.
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Rejections B and C — Obviousness (claims 1, 3—18, 22, and 23)
The Examiner rejects claims 1, 3—13, 16, 17, 22, and 23 as obvious
over Mandecki and Gratton (Rejection B) and claims 14, 15, and 18 as
obvious over Mandecki, Gratton, and Braeckmans (Rejection C). Final Act.
7 and 15. Because our basis for reversing the rejection of claim 1—i.e., the
lack of reason to combine Mandecki and Gratton—applies to independent
claim 22, as well as the dependent claims (Rejections B and C), we focus
our discussion below on claim 1.
Claim 1:
The Examiner finds that Mandecki teaches an analyzer similar to that
recited in claim 1 except that “Mandecki does not specifically teach a
stochastic sampling device configured to receive the vessel where the
stochastic sampling device translates the vessels back and forth and rotates
the vessels.” Final Act. 8—9. The Examiner explains however that “some
type of holder would need to be present in order to hold the vessel because
Mandecki teaches [a] rack for holding vessels and further teaches the
[vesselsj/tubes used during analysis.” Id. at 9. The Examiner further finds
that Gratton teaches an analogous analyzer having a stochastic sampling
device that receives a vessel and translates back and forth and rotates the
vessels. Id. The Examiner reasons that one skilled in the art would have had
reason to modify the Mandecki apparatus to include a device for mixing the
vessels as taught by Gratton because Gratton explains rotating and
translating the vessel has numerous advantages. Id. at 9—10 (listing the
advantages).
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Application 14/053,938
We have considered the respective positions articulated by the
Examiner and Appellant, and find Appellant’s arguments persuasive of
reversible error.
“[D] tiring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000); see also In re Am. Acad. ofSci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in patent
applications is not determined solely on the basis of the claim language, but
upon giving claims their broadest reasonable construction in light of the
specification as it would be interpreted by one of ordinary skill in the art).
In addition, claims are construed with an eye toward giving effect to all
terms in the claim. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358,
1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in
claims superfluous); see also Merck & Co. v. Teva Pharms. USA, Inc., 395
F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning
to all the terms of the claim is preferred over one that does not do so.”
(internal citations omitted)).
Here, the Examiner does not give proper effect to the term “stochastic
sampling device” as that term is used in claim 1. Rather, the Examiner’s
interpretation of “stochastic sampling device,” as “any device which can
receive a vessel” effectively renders the word “stochastic sampling”
superfluous. Ans. 13. Thus, we disagree with the Examiner’s overly broad
interpretation.
According to Appellant, “‘[s]tochastic’ denotes ‘of or relating to a
process involving a randomly determined sequence of observations each of
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Application 14/053,938
which is considered as a sample of one element from a probability
distribution.’” Appeal Br. 7 (quotingDictionary.com). Appellant submits
that “flow cytometry methods are not stochastic because there is order ... in
that all tabs necessarily go by the read point, and only go by once.” Id.
Appellant’s definition of stochastic sampling device is consistent with
the Specification which describes “stochastic sampling” as having “no
deliberate ordering — not even so much as assuring that a random
progression of tabs will linearly flow into a region for ID and signal reading.
(In this latter case, the tabs are ordered in that each goes through the
detection zone individually and sequentially.)” Spec. 148. The
Specification explains that a stochastic sampling method possesses
advantages over flow-based systems as “flow-based systems ... are
expensive due to challenges of accurately controlling a flowing liquid, and
they are often bulky.” Id. 1135. Thus, we determine a “stochastic sampling
device” to be a device involving a randomly determined sequence of
observations or sampling—i.e., no deliberate ordering—and one that
excludes even a random but linear flow of samples through a detection zone.
Appellant argues that Mandecki teaches away from the claimed
analyzer because “it discusses the need to strictly isolate MTPs for unique
query response readings.” Appeal Br. 13. According to Appellant,
Mandecki employs shielding to prevent a signal from reaching multiple
transponders and multiple responses from the MTPs in the vessel. Id.
In light of the claim construction above, we are persuaded by
Appellant’s argument.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
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Application 14/053,938
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). However, when the
prior art teaches away from a combination, that combination is more likely
to be nonobvious. See id. To teach away, a reference must discourage one
of ordinary skill in the art from following the path set out in the reference, or
lead that person in a direction divergent from the path taken by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, Mandecki, the
primary reference, teaches a flow cytometer (see, e.g., Mandecki || 18, 30)
and explains that
[i]t is important to note that when encoding or reading data on a
transponder, other transponders must be shielded by a metal
barrier, or other means to prevent the electromagnetic radiation
from reaching transponders other than the specific target. [Id.
121 (emphasis added)].
[transponders 12 are fed into the metal funnel 26, and pass from
the funnel 26 into the quartz tube 20, where the fluorescence is
read by the fluorometer 24 and the transponder 12 is decoded by
the scanner 27, and then exit through a metal tube 28 and are
conducted to a collection vessel (not shown). The metal funnel
26 and metal tube 28 are made of metal shield transponders 12
outside of the read window 22 by shielding from the
electromagnetic signal from the scanner 27. This shielding
prevents the scanner signal from reaching more than one
transponder 12, causing multiple transponders 12 to be decoded.
[Id. 137 (emphasis added)].
Thus, Mandecki requires a flow cytometry sampling device—a device
specifically excluded from the claimed stochastic sampling device—and
stresses the criticality of using a linear flow through the detection area so
that multiple transponders are not decoded at one time.
The Examiner’s response is based on a misunderstanding that
Appellant is contending “Mandecki teaches away from the use of
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Application 14/053,938
microtransponders (MTPs)” (Ans. 15 (emphasis omitted)), rather than that
Mandecki teaches away from randomized flow because it requires flow
cytometry (see Appeal Br. 7). And, in direct conflict with the Specification,
the Examiner urges that “just because flow cytometry provides a structured
presentation of particles past a light source[,] does not preclude the order of
the analyzed samples from being randomized.” Id. at 15—16. Therefore, on
this record, we do not sustain the Examiner’s rejections based on 35 U.S.C.
§ 103(a).
CONCLUSION
The Examiner did not err in rejecting claim 1 (and claims 3—18 and
23, depending therefrom) under 35 U.S.C. § 112 as indefinite for failing to
point out and distinctly claim the subject matter which the inventor regards
as the invention because of the term “appropriate concurrence” (claim 1).
The Examiner did reversibly err in rejecting claims 3—6 and 22 under
35 U.S.C. § 112 as indefinite for failing to point out and distinctly claim the
subject matter which the inventor regards as the invention due to the
limitations relating to rotating or translating the vessel.
The Examiner did reversibly err in rejecting claims 1, 3—13, 16, 17,
22, and 23 under 35 U.S.C. § 103(a) as unpatentable over Mandecki in view
of Gratton.
The Examiner did reversibly err in rejecting claims 14, 15, and 18
under 35 U.S.C. § 103(a) as unpatentable over Mandecki/Gratton in view of
Braeckmans.
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Application 14/053,938
DECISION
For the above reasons, the Examiner’s decision to reject claims 1, 3—
18, and 23 is affirmed and the Examiner’s decision to reject claim 22 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART
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