Ex Parte Okubo et al

Patent Trial and Appeal Board

Aug 31, 2018

12748768 (P.T.A.B. Aug. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/748,768 03/29/2010
757 7590 08/31/2018
BGL
P.O. BOX 10395
CHICAGO, IL 60610
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Koichi Okubo
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.
11333/328 5903
EXAMINER
WHATLEY, BENJAMIN R
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
08/31/2018 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 KOICHI OKUBO, NORIYUKI NAKANISHI, MASAHIKO
OGURO, TOMOYUKI ASAHARA, and TAKA YUKI NAKAJIMA 1
Appeal2017---009189
Application 12/748,768
Technology Center 1700
Before BEYERL YA. FRANKLIN, JAMES C. HOUSEL, and BRIAND.
RANGE, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Sysmex Corporation. App.
Br. 2.
Appeal2017---009189
Application 12/748,768
Appellants request our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1, 4, 7-10 and 20-22. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
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 reagent preparing device capable of
supplying a reagent, which includes a first liquid and a second
liquid different from the first liquid, to a plurality of
measurement apparatuses for measuring a specimen using the
reagent, comprising:
a pressure generator with a pressure generation
mechanism which generates pressure to transfer liquid, and a
switch device which switches to whether or not to supply
current to a motor;
a plurality of reagent preparing apparatuses, each
respective reagent preparing apparatus is connected to the
pressure generator to execute a preparation operation of the
reagent using the pressure generated by the pressure generator,
wherein each respective reagent preparing apparatus
includes:
a first vessel which accommodates the first liquid,
which includes a first chamber and a first switch coupled
to the first chamber and positioned for detecting whether
or not a predetermined amount of the first liquid is
accommodated in the first chamber;
a second vessel which accommodates the second
liquid, which includes a second chamber and a second
switch coupled to the second chamber and positioned for
detecting whether or not a predetermined amount of the
second liquid is accommodated in the second chamber,
a stirring chamber, connected to the first vessel
and the second vessel through a flow path, configured to
prepare the reagent using the first liquid and the second
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Application 12/748,768
liquid, wherein the pressure generator is connected to the
first vessel, the second vessel and the stirring chamber;
a supply chamber, connected to the stirring
chamber, the supply chamber accommodates the reagent,
and a third switch coupled to the supply chamber and
positioned to detect whether or not a predetermined
amount of the reagent is accommodated in the
supply chamber; and
a processor programmed to control the
pressure generator to:
stop generation of the pressure by controlling
the switching operation of the switch device in
response to:
(i) a detection result that the first switch detects
the predetermined amount of the first liquid in the
first chamber for each and every one of the plurality
of reagent preparing apparatuses,
(ii) a detection result that the second switch
detects the predetermined amount of the second
liquid in the second chamber for each and every one
of the plurality of reagent preparing apparatuses, and
(iii) a detection result that the third switch
detects the predetermined amount of the
predetermined reagent in the supply chamber for
each and every one of the plurality of reagent
preparing apparatuses; and
continue generation of the pressure by
controlling the switching operation of the switch
device in response to at least one of:
(iv) a detection result that the first switch
detects the predetermined amount of the first liquid is
not in the first chamber for at least one of the
plurality of reagent preparing apparatuses,
(v) a detection result that the second switch
detects the predetermined amount of the second
liquid is not in the second chamber for at least one of
the plurality of reagent preparing apparatuses, and
(vi) a detection result that the third switch
detects the predetermined amount of the
predetermined reagent is not in the supply chamber
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Appeal2017---009189
Application 12/748,768
for at least one of the plurality of reagent preparing
apparatuses.
The Examiner relies on the following prior art references as evidence of
unpatentability:
Lipscomb
Sakairi
Tanaka
Nagai
us 2001/0047692
us 2001/0042413
us 2007/0212261
us 2010/0161243
Dec. 6, 2001
Nov. 22, 2001
Sept. 13, 2007
June 24, 2010
THE REJECTIONS
1. Claims 1, 7-9, and 20 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Nagai in view of Tanaka.
2. Claim 10 is rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over Nagai
in view of Tanaka and further in view of Lipscomb.
3. Claim 21 is rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over Nagai
in view of Tanaka and further in view of Sakairi.
ANALYSIS
Upon consideration of the evidence and each of the respective positions set
forth in the record, we find that the preponderance of evidence supports Appellants'
stated position in the record. Accordingly, we reverse each of the Examiner's
rejections on appeal for the reasons presented by Appellants in the record, and add
the following for emphasis.
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Appeal2017---009189
Application 12/748,768
Rejections 1-3
Appellants argue, inter alia, that the rejection lacks support of showing that
Nagai's pneumatic pump may be controlled to tum off pressure generation under the
condition that all of the first chamber, second chamber, and the supply chamber in
each and every one of the plurality of reagent preparing apparatuses has been
detected to have reached the predetermined amount of respective liquid; and
controlled to continue pressure generation under the condition that at least one of the
first chamber, second chamber, and the supply chamber in at least one of the
plurality of reagent preparing apparatuses has been detected to not reaching the
predetermined amount of respective liquid, as recited in Appellants' claim 1.
Appeal Br. 13-14.
Appellants point out that the Examiner, in the Final Office Action (mailed
June 2, 2016), relies upon Tanaka for teaching a plurality of reagent preparing
apparatuses connected to a plurality of measurement apparatuses in a processing
system. Final Act. 8. Tanaka, Figure 1 and ,r,r 2, 5, 7, 27, and 28. Appeal Br. 14.
Appellants argue that Tanaka nevertheless, still does not disclose an alleged
"processor" which is programmed under the two respective conditions to control
stop and continue pressure generation by controlling the switching operations of
the switch device in response to a detection result in the respective chambers.
Appeal Br. 15. Appellants submit that Tanaka therefore, does not overcome the
above deficiencies of Nagai.
In response, the Examiner states that the Examiner believes that Appellants
are misinterpreting the rejection, and points out that Nagai is not solely relied upon
for teaching the plurality of reagent preparing apparatuses. Ans. 12. The Examiner
states that Nagai discloses one reagent preparation apparatus with the control of
pressure generation in all of the claimed chambers by opening/closing valves
in response to sensed liquid levels. Ans. 12. The Examiner states that Nagai is
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Appeal2017---009189
Application 12/748,768
duplicated by itself (alone) or modified in combination with Tanaka to teach a
plurality of reagent preparing apparatuses, the combination of which results in a
plurality of reagent preparation apparatuses with multiple chambers and controlling
of the pressure generation in each and every chamber by controlling the
opening/closing of valves in response to the sensed liquid levels in each and all of
the chambers. Ans. 12.
In reply, Appellants state that Appellants' claim 1 requires that the processor
is programmed to control the pressure generator to stop pressure generation only
when meeting a condition that: all of the first chamber, second chamber, and the
supply chamber of all of the reagent preparing apparatuses has been detected to have
reached the predetermined amount of respective liquid level. Reply Br. 3. In other
words, the processor is programmed to control the pressure generator to continue to
generate pressure to a remaining chamber even if two out of the three chambers have
been detected to have reached the predetermined liquid level (let alone if only one
out of the three chambers has been detected to have reached the predetermined
liquid level). Reply Br. 3.
Appellants explain that Nagai discloses that the respective valves (VI, V2 in
tank 41, V3, V4 in tank 42) would be controlled by the CPU 47a to be closed
independently in order to stop the supply of the respective liquid (reagent or RO
water) in to the respective tanks 41 and 42, whenever the prescribed amount of the
respective liquid in has been detected. Nagai ,r,r [0055---0057], [0086-0087]. Reply
Br. 3. In effect, the valves Vl/V2 in tank 41 and the valves V3/V4 in tank 42 open
and close without any communication or coordination. Appellants submit that
therefore, Nagai at least does not disclose or suggest that there is any liquid level
determination whether both tank 41 and tank 42 have reached the respective
predetermined liquid level in order to altogether close the respective valves VI-V 4
in both tanks 41 and 42. Reply Br. 4.
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Appeal2017---009189
Application 12/748,768
Appellants furthermore argue that Nagai (see ,r,r [0063, 0078]) discloses that
valve V12 in tank 45 (alleged as "supply chamber") would be independently closed
to stop further inflow of the mixed liquid from the reagent preparation tank 43
whenever the prescribed amount of the mixed liquid has been detected, and the
entire reagent preparation process (see Figure 8 of Nagai) would altogether come to
an end (see step S16, if yes). Reply Br. 4. In effect, Appellants submit that Nagai
(see ,r,r [0063, 0078], Figure 8) discloses that the liquid level detection for tank 43
( alleged as "supply chamber") would be the only ultimately liquid level
determination to decide to continue to open or to close all the valves (VI-VI2) (i.e.,
to continue or to stop the pressure generation) in Nagai's reagent preparation device
(4).
As such, Appellants submit that the applied art does not suggest every
element recited in claim 1 (Tanaka does not cure the aforementioned deficiencies of
Nagai). Reply Br. 4--5.
We are persuaded by Appellants' arguments in the record. As argued by
Appellants, the findings made by the Examiner lack a finding of a teaching ( from
either Nagai or Tanaka) of a controller that controls Nagai's pneumatic pump such
that it is controlled to tum off pressure generation under the condition that all of the
first chamber, second chamber, and the supply chamber in each and every one of the
plurality of reagent preparing apparatuses has been detected to have reached the
predetermined amount of respective liquid; and controlled to continue pressure
generation under the condition that at least one of the first chamber, second
chamber, and the supply chamber in at least one of the plurality of reagent preparing
apparatuses has been detected to not reaching the predetermined amount of
respective liquid, as required by claim 1. See Answer generally. As the Examiner
states, the Examiner duplicates the configuration of Nagai in view of Nagai alone or
in view of Tanaka (Ans. 12), but this duplication does not arrive at every element
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Appeal2017---009189
Application 12/748,768
recited in claim 1 for the reasons provided by Appellants in the record ( summarized
supra). Nor has the Examiner demonstrated the device of Nagai or Nagai in view of
Tanaka includes a controller capable of operating in the manner as claimed.
In view of the above, we reverse Rejection 1. Because the Examiner does not
rely upon the additionally applied references of Rejections 2 and 3 to remedy the
stated deficiencies of Nagai in view of Tanaka, we also reverse Rejections 2 and 3
for the same reasons.
Each rejection is reversed.
DECISION
ORDER
REVERSED
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