Ex Parte Morrell et alDownload PDFPatent Trial and Appeal BoardDec 22, 201612710100 (P.T.A.B. Dec. 22, 2016) 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. 12/710,100 02/22/2010 Michael M. Morrell 1958541-00017 8030 (08US0072) 11746 7590 12/27/2016 K&L Gates LLP-Orange County 1 Park Plaza 12th Floor Irvine, CA 92614 EXAMINER PHAM, HOA Q ART UNIT PAPER NUMBER 2886 NOTIFICATION DATE DELIVERY MODE 12/27/2016 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): USpatentmail@klgates.com PatentDocket @ B eckman .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL M. MORRELL and NEIL R. VAN LIEU1 Appeal 2015-005686 Application 12/710,100 Technology Center 2800 Before LINDA M. GAUDETTE, N. WHITNEY WILSON, and JEFFREY W. ABRAHAM, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—3, 6—8, 10—13, 15—18, and 25—37. We have jurisdiction pursuant to 35 U.S.C. § 6(b). We affirm. BACKGROUND Appellants’ claimed invention relates generally to particle analyzers, and in particular to “flow cytometers wherein the optical system is stabilized to minimize changes in measurement performance over time.” Spec. 12. 1 According to the Appeal Brief, the real party in interest is Beckman Coulter, Inc. App. Br. 3. Appeal 2015-005686 Application 12/710,100 Independent claims 1 and 18 are illustrative, and are reproduced below: 1. A particle analyzer, comprising: optical waveguides configured to direct beams from a plurality of light sources to a sample flow measuring area wherein the plurality of light sources comprises a plurality of lasers that produce a plurality of: different wavelengths, different wavelength bands, different polarizations, different pulse widths of light, or a combination thereof; a beam shaping optical element interposed between the optical waveguides and the sample flow measuring area, wherein the optical waveguides, the plurality of light sources and the beam shaping optical element cooperate to produce simultaneously spatially separated measuring beam spots along a flow axis in the sample flow measuring area; a support configured to maintain each of the optical waveguides in a fixed relative position with respect to each other and maintain positioning of the measuring beam spots within the measuring area; and a detector configured to characterize individual particles by analyzing fluctuations in brightness in a combination of scattered and fluorescent light produced from sequential interactions of the individual particles with the measuring beam spots as the individual particles flow through the measuring area. 18. A system comprising: a fiber optic bundle configured to receive beams from a plurality of light sources and to produce simultaneously serial spatially separated beams in a measurement area wherein the plurality of light 2 Appeal 2015-005686 Application 12/710,100 sources comprises a plurality of lasers that produce a plurality of: different wavelengths, different wavelength bands, different polarizations, different pulse widths of light, or a combination thereof; a V-groove support system including an array of V-grooves, each of the V-grooves configured to individually support a corresponding fiber in the fiber optic bundle and to maintain a fixed relative spacing between the serially separated beams; a beam shaping optical system; and a particle detector configured to characterize a particle by analyzing fluctuations in brightness in a combination of scattered and fluorescent light produced from the particle in a flow stream based on interrogation from each of the beams, wherein the V-groove support system is configured to direct the serial spatially separated beams through the beam shaping optical system to produce substantially uniform spatial intensity profile beams onto the flow stream. App. Br. 18 and 21 (Claims Appendix). The Examiner maintains, and Appellants appeal, the following rejections: 1. Claims 1—3, 6—8, 10, 16, 17, 25, 26, and 31—37 as unpatentable under 35 U.S.C. § 103(a) over Molter2 in view of Fritz3 and Trotter;4 and 2 Molter et al., US 7,139,075 B2, issued Nov. 21, 2006. 3 Fritz, US 7,283,223 B2, issued Oct. 16, 2007. 4 Trotter et al., US 2011/0106044 Al, published May 5, 2011. 3 Appeal 2015-005686 Application 12/710,100 2. Claims 11—13, 15, 18, and 27—30 as unpatentable under 35 U.S.C. § 103(a) over Molter, Fritz, and Trotter, and further in view of Masashi5 and Noguchi.6 OPINION We sustain the above rejections based primarily on the Examiner’s findings of fact, conclusions of law, and rebuttals to Appellants’ arguments, as expressed in the Final Action and Answer. The following comments are added for emphasis. Rejection 1 With regard to rejection 1, Appellants argue that “[b]ecause[] all the claim limitations are not taught, Molter [sic] would be rendered inoperable, Molter [sic] teaches away, and there is no reason to combine the cited art, a prima facie case of obviousness has not been made.” App. Br. 15. We disagree. The Examiner finds that Molter teaches “a support configured to maintain each of the optical waveguides in a fixed relative position with respect to each other and maintain positioning of the measuring beam spots within the measuring area,” as required in independent claim 1 and dependent claims 2, 3, 6—8, 10, and 37. Final Act. 2—3; Ans. 2—3. In particular, the Examiner finds that the two sensor arrangements 5 and 5 ’ are “supports” that maintain waveguides 12 in a fixed relative position with respect to each other and maintain the position of the measuring beam spots within measuring area 1. Ans. 2 (citing Molter, Fig. 5). 5 Masashi et al., JP 2005221327 (A), published Aug. 18, 2005. 6 Noguchi et al., US 2008/0037831 Al, published Feb. 14, 2008. 4 Appeal 2015-005686 Application 12/710,100 Appellants argue that Molter fails to describe the claimed “support,” because it allows for “the flexible position of the sensor arrangements 5, 5’,” (App. Br. 12), and there is nothing in Molter “to suggest that if a portion of one sensor arrangement expands, contracts, or jiggles due to environmental factors, such as a simple change in room temperature, that the affixed optical waveguide, together with the other sensor arrangements and optical waveguides, would all expand, contract, or jiggle together” (Reply Br. 15). Appellants also argue that Molter teaches away from the use of fixed optical waveguides because it discloses the use of flexible positioning of sensor arrangements 5 and 5’. App. Br. 14. We are not persuaded by Appellants’ arguments. The “flexible positioning” language in Molter describes the configuration of sensor arrangements 5 and 5’ in Figure 1 of Molter, which shows 5 and 5’ positioned separate from one another, to allow for measurements of particle size and concentration at different points within a particle flow. Molter, 6:29—36, Fig. 1. Figure 5 of Molter, however, shows an alternative embodiment wherein sensor arrangements 5 and 5 ’ are depicted in a side-by- side configuration to allow for “joint detection of a corresponding plurality of particle size measuring ranges” in “a plurality of measuring volumes . . . connected in series within a particle flow.” Id. at 7:1—15; Fig. 5. Appellants do not address adequately the configuration shown in Molter Figure 5, which does appear to suggest that sensor arrangements 5 and 5 ’ would “expand, contract, or jiggle together” (Reply 15). The Examiner acknowledges that Molter does not disclose a plurality of light sources comprising a plurality of lasers that produce a plurality of “different wavelengths, different wavelength bands, different polarizations, 5 Appeal 2015-005686 Application 12/710,100 different pulse widths of light, or a combination thereof.” Final Act. 3. The Examiner, however, finds that Trotter discloses that a plurality of lasers having a plurality of different wavelengths can be used in flow cytometry, and that it would have been obvious to a person of ordinary skill in the art to use a plurality of different light sources as taught by Trotter to measure different characteristics of the particles. Ans. 5—6 (citing Trotter || 91, 93, 94, 138); Final Act. 4 (discussing the use of a plurality of different light sources in Trotter for “counting, examining, and sorting particles”); Trotter 191 (disclosing fluorescence from violet, blue, green, yellow, and red laser excited fluorochromes); 1138 (describing measurements of green fluorescence intensity and red fluorescence intensity). The Examiner also states that “using different wavelengths would prevent the interference noise within the optical system; thus, increase the signal to noise ratio.” Final Act. 4; Ans. 5—6. Appellants argue that Molter describes “a single light source system,” and therefore Molter would be inoperable for its intended purpose if it were to somehow be combined with Trotter.7 Appellants also argue that the Examiner fails to provide a sufficient rationale for combining the cited references because “interference noise” is not a term known to one of ordinary skill in the art. App. Br. 14—15. Appellants’ arguments are unavailing. In addition to the Examiner’s response to Appellants’ “single light source system” argument, provided at page 4 of the Answer, we note that Molter discloses the use of “at least one 7 Appellants assert that this argument pertains to claims 1—3, 6—8, 10, 16, 17, 25, 26, and 31—37. App. Br. 13. 6 Appeal 2015-005686 Application 12/710,100 irradiating device,” and, therefore, is not necessarily limited to a single light source system. E.g., Molter, Abstract, 1:8—14, 2:29-35. With regard to the Examiner’s rationale for combining Molter and Trotter, even if Appellants are correct regarding “interference noise,” the Examiner provided an additional reason to combine Molter and Trotter — namely the ability to measure different characteristics of the particles. Ans. 5—6. Appellants, in the Reply Brief, did not address this rationale provided by the Examiner. For all of the foregoing reasons, we are not persuaded that the Examiner committed reversible error in rejecting claims 1—3, 6—8, 10, 16, 17, 25, 26, and 31—37 as unpatentable under 35 U.S.C. § 103(a) over Molter in view of Fritz and Trotter. Rejection 2 Independent claim 18 requires “a V-groove support system including an array of V-grooves, each of the V-grooves configured to individually support a corresponding fiber in the fiber optic bundle and to maintain a fixed relative spacing between the serially separated beams.” App. Br. 21. The Examiner acknowledges that Molter does not expressly disclose V- grooves, but finds Masashi discloses V-grooves configured to support fibers. Final Act. 6. The Examiner finds that it would have been obvious to use Masashi’s V-grooves to “increase the stability of the fibers within the support system.” Id. Appellants argue that a person of ordinary skill in the art would not have been motivated to combine Masashi with the other prior art references because Masashi teaches away from using multiple light sources. App. Br. 16. The Examiner, however, only relied on Masashi for its disclosure of V- 7 Appeal 2015-005686 Application 12/710,100 grooves to support optical fibers. Even if Masashi is limited to a single light source, Appellants do not explain why it would not have been obvious to a person of ordinary skill in the art to use the V-groove arrangement disclosed in Masashi. As the Examiner finds, Masashi, which relates generally to a measuring instrument using a fiber optic bundle, is from the same field of endeavor as the other prior art references. Ans. 6. Accordingly, we find that Appellants fail to address adequately the Examiner’s rejection. We, therefore, affirm the rejection of claim 18. Because Appellants do not separately argue the patentability of any dependent claims, we also affirm the rejection of dependent claims 11—13, 15, and 27—30. CONCLUSION For the reasons set forth above, we affirm the Examiner’s rejection of claims 1—3, 6—8, 10-13, 15—18, and 25—37 under 35 U.S.C. § 103. 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). AFFIRMED 8 Copy with citationCopy as parenthetical citation