Ex Parte Nagai et alDownload PDFPatent Trial and Appeal BoardFeb 18, 201610352485 (P.T.A.B. Feb. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 10/352,485 757 7590 BGL P.O. BOX 10395 CHICAGO, IL 60610 01127/2003 02/18/2016 FIRST NAMED INVENTOR Takaaki Nagai 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 11333/13 5362 EXAMINER FRITCHMAN, REBECCA M ART UNIT PAPER NUMBER 1797 MAILDATE DELIVERY MODE 02/18/2016 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 TAKAAKI NAGAI, KAZUHIRO YAMADA, and HIROAKI TOBIMATSU Appeal2013---008426 Application 10/352,485 Technology Center 1700 Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and ELIZABETH M. ROESEL, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 1-5, 7-19, and 26-32. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). Appeal 2013-008426 Application 10/352,485 STATEMENT OF THE CASE Claim 1 is illustrative of Appellants' subject matter on appeal and is set forth below (with text in bold for emphasis): 1. A flow cytometer comprising: a flow cell comprising an outlet, wherein the flow cell is configured to: receive a cells-containing liquid and form a flow of the cells- containing liquid; surround the cells-containing liquid with a sheath liquid to form a sample liquid; and discharge the sample liquid at the outlet; a light source that irradiates light onto the flow of the cells-containing liquid formed by the flow cell; a photo-detector that detects optical information from cells in the flow of the cells- containing liquid and converts the optical information into an electric signal; a temperature sensor configured to detect a temperature of the sample liquid, wherein the temperature sensor is arranged at the outlet of the flow cell such that the temperature sensor is configured to detect the temperature of the sample liquid after the flow of the cells-containing liquid is irradiated by the light source; and a signal processing section that comprises a processor that executes instructions encoded on a computer readable medium that classifies cells and measures the classified cells on the basis of an output of the photo- detector and an output of the temperature sensor. 2 Appeal 2013-008426 Application 10/352,485 The Examiner relies on the following prior art references as evidence of unpatentability: Kubota et al. (hereafter "Kubota") Thomas Meyler et al. (hereafter "Meyler") us 679,575 US 6,444,474 Bl US 6,764,215 B2 THE REJECTIONS Oct. 21, 1997 Sept. 3, 2002 Jul. 20, 2004 1. Claims 1, 12, 17,and32arerejectedunder35U.S.C. §103(a)as being obvious over Kubota in view of Thomas. 2. Claims 2-5, 7-11, 13-16, 18-19, and 26-32 are rejected under 35 U.S.C. §103(a) as being obvious over Kubota in view of Thomas, and in further view of Meyler. ANALYSIS We can focus on the aspect of the claims pertaining to a temperature sensor arranged at the outlet that detects the temperature of the sample liquid after the flow of the cells-containing liquid is irradiated by the light source. Each of independent claims 1, 12, 26, and 32 similarly recites this claim feature. It is the Examiner's position that Thomas teaches this aspect of the claimed invention because Figure ID of Thomas depicts temperature sensor 3 Appeal 2013-008426 Application 10/352,485 32 located near outlet 51 and because both the temperature sensor and outlet are present after the cells-containing liquid begin being irradiated through flow path 53. Ans. 5, 9, 10. Appellants argue, inter alia, that in fact Figure ID of Thomas shows that the temperature sensor is at a location in which irradiation occurs so therefore it follows that the temperature being detected is not after the sample liquid is irradiated, as claimed by Appellants, but while it is being irradiated. Appeal Br. 7-9. Reply Br. 2. We agree for the reasons provided in the record by Appellants, and note that upon reading the Examiner's response to this point made (Ans. 9-11 ), it appears the Examiner's position is not consistent with the requirements of the claims. A fair reading of the claims requires that the location of the temperature sensor is such that it detects the temperature of the sample liquid after it has been irradiated 1, and not while it is being irradiated. The Examiner does not dispute Appellants' • ' • ' 1 ' r-y-'11 , ' ' • ' 1 ' • • 1 • 1 ' 1 posrnon 1nac l nomas 1emperamre sensor is ac a 10cauon m wmcn me sample liquid is being irradiated. Ans. 9-11. In view of the above, we reverse Rejection 1. Because the Examiner does not rely upon Meyler to cure the stated deficiencies of the combination of Kubota in view of Thomas, we also reverse Rejection 2. 1 This aspect of the claimed subject matter is shown in Appellants' Figure 8, for example, wherein the sample liquid passing through orifice section 13 is irradiated with a beam L. The temperature of the sample liquid having passed through the orifice section 13 is then measured by temperature sensor 8. Spec. p. 16, 11. 11-23 and p. 17, 11. 1--4. 4 Appeal 2013-008426 Application 10/352,485 DECISION Each rejection is reversed. lp ORDER REVERSED 5 Copy with citationCopy as parenthetical citation