Ex Parte Pang et al

Patent Trial and Appeal Board

Jun 7, 2016

12634349 (P.T.A.B. Jun. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/634,349 12/09/2009
22885 7590 06/09/2016
MCKEE, VOORHEES & SEASE, PLC
801 GRAND A VENUE
SUITE 3200
DES MOINES, IA 50309-2721
FIRST NAMED INVENTOR
Ho-ming Pang
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.
Pl0422USOO 7386
EXAMINER
PORTA, DAVID P
ART UNIT PAPER NUMBER
2884
NOTIFICATION DATE DELIVERY MODE
06/09/2016 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):
patatty@ipmvs.com
michelle. woods@ipmvs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HO-MING PANG and WEI WEI
Appeal2014-006486
Application 12/634,349
Technology Center 2800
Before KAREN M. HASTINGS, GEORGE C. BEST, and
MONTE T. SQUIRE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 4, 16, 21, 22, 24, and 26 of
Application 12/634,349 under 35 U.S.C. § 112, i-f 1 as failing to comply with
the written description requirement and under 35 U.S.C. § 103(a) as obvious.
Final Act. (January 3, 2014). Appellants 1 seek reversal of these rejections
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b ).
For the reasons set forth below, we REVERSE.
1 Advanced Analytical Technologies, Inc., is identified as the real party in
interest. Appeal Br. 1.
Appeal2014-006486
Application 12/634,349
BACKGROUND
The '349 Application is a continuation-in-part of Application
11/299,643 ("the parent Application"), which was filed on December 12,
2005. Spec. 1. The '349 Application describes capillary electrophoresis
(CE) fluorescence detection systems. Id.
Claim 1 is representative of the '349 Application's claims and is
reproduced below:
1. A fluorescence detection system, comprising:
a sample vessel comprised of capillaries;
an LED light source to emit light to excite a fluorescently
labeled sample contained in said capillaries, the system
configured to direct light on the sample vessel to
illuminate the sample;
a CCD fluorescence detector positioned to detect the
fluorescent emissions of the sample, said fluorescence
detector capable of producing an image, having sufficient
resolution to detect three distinct regions of the image,
including a wall of each capillary, an internal volume of
each capillary, and a space between the capillaries, each
region being defined by at least one pixel, and
a processor capable of
providing an integrated signal for selecting which pixels
to process for an integration of light intensity, with
pixels from the walls of the capillary and pixels
from the space between the capillaries specifically
excluded from the integrated signal; and
integrating of [sic] the light intensity of said pixels to
provide a fluorescent signal.
Appeal Br. 13 (Claims App.) (some paragraphing and indentation provided).
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Application 12/634,349
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 4, 16, 21, 22, 24, and 26 are rejected for failing to
comply with the written description requirement of 35 U.S.C.
§ 112, if 1. Final Act. 2.
2. Claims 1, 4, 16, 21, 22, 24, and 26 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Pang2 and
Yueng. 3 Final Act. 3.
DISCUSSION
Rejection 1. The Examiner rejected claims 1, 4, 16, 21, 22, 24, and
26 for failing to comply with the written description requirement. Final Act.
2. In particular, the Examiner found that "[t]he specification does not
describe a fluorescence detection system that is indifferent to the volume of
illumination." Id. For reasons that will be explained below, the question
before us is vvhether or not the specification of the parent application
contains written description support for claims that are indifferent to the
volume of sample illuminated by the fluorescence detection system.
Because we conclude that the '643 Application's Specification supports such
claims, we cannot sustain this rejection.
Appearance of a claim in the specification in ipsis verbis does not
guarantee that the written description requirement is satisfied, see, e.g., Enzo
Biochem., Inc. v. Gen-Probe Inc., 323 F.3d 956, 968 (Fed. Cir. 2002), nor
does a failure to meet that standard require a finding that a claim does not
2 US 2007/0131870 Al, published June 14, 2007.
3 US 6,788,414 Bl, issued, published September 7, 2004.
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Appeal2014-006486
Application 12/634,349
comply with the written description requirement, In re Edwards, 568 F.2d
1349, 1351-52 (Fed. Cir. 1978). All that is required is that the specification
demonstrate, with reasonable clarity, to a person of ordinary skill in the art
that the inventor was in possession of the invention. Carnegie Mellon Univ.
v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008).
In this case, the '643 (parent) Application's Specification and Figures
describe a system in which a particular volume of sample contained within
the capillary is illuminated by the fluorescence detection system. As the
'643 Application's Specification explains, the signal produced in a
fluorescence detection system is related to the volume of the sample that is
excited by the light source and the output power of the light source at the
excitation wavelength of the fluorophore. '643 Application Spec. 2. 4 Based
upon this disclosure, a person having ordinary skill in the art would have
known that Appellants possessed an invention which involved illumination
of some volume of the sample contained within the capillary.
Rejection 2. The Examiner rejected claims 1, 4, 16, 21, 22, 24, and
26 as unpatentable over the combination of Pang and Yeung. Final Act. 3.
Pang is the published version of the '643 Application.
Appellants argue that the Examiner's reliance upon Pang is erroneous
because the rejected claims are entitled to benefit of the '643 Application's
filing date. Appeal Br. 10-11. Thus, Pang - the published version of the
'643 Application's Specification- is not prior art that can be used to reject
the '349 Application's claims.
4 Because priority is established based upon the as-filed version of the parent
application, we cite that document and not the published version.
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Application 12/634,349
The Examiner responds that the rejected claims are not entitled to
benefit of the '643 Application's filing date because the specification of the
'643 Application does not describe a processor or its use. Final Act. 2-3.
Appellants reply that the '643 Application's Specification need not
expressly describe the structure of the processor to provide sufficient written
description support for the '349 Application's claims that recite a processor.
Reply Br. 2 (citing EnOcean GmbH v. Face Int'! Corp., 742 F.3d 955 (Fed.
Cir. 2014)).
The Federal Circuit has explained that the claims of an application
obtain the benefit of a parent application's filing date when they are
"supported by the written description in the parent in sufficient detail that
one skilled in the art can clearly conclude that the inventor invented the
claimed invention as of the filing date sought." Anascape, Ltd. v. Nintendo
of Am., Inc., 601 F.3d 1333, 1335 (Fed. Cir. 2010) (internal quotations
omitted).
We agree with Appellants that the '643 Application's Specification
adequately describes a fluorescence detection system that includes a
processor. In particular, the '643 Application's Specification describes the
process of using a fluorescence detection system: "Software algorithms
were used to extract and re-construct the signal output as
electropherograms." '643 Application Spec. 6. See also Appeal Br. 11.
Software algorithms are intended to be-and almost always are---carried out
by processors. Accordingly, the '643 Application's Specification
demonstrates to a person of ordinary skill in the art that Appellant possessed
a fluorescence detection system that includes a processor at least as of the
Specification's filing date.
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Appeal2014-006486
Application 12/634,349
The Examiner's argument to the contrary, which is focused on
whether or not the word "processor" appears in the '643 Application's
Specification, is an application of the ipsis verb is test. As discussed above,
this test is both over- and under-inclusive and, thus, is improper. See Enzo,
323 F.3d at 968; Edwards, 568 F.2d at 1351-52. In particular, it is well-
established that terms in a claim need not be expressly stated in an
application's specification to be adequately described. Edwards, 568 F.2d at
1351-52.
Because the '349 Application's claims are entitled to benefit of the
'643 Application's filing date, Pang is not prior art that can be used as part
of an obviousness rejection. Accordingly, we reverse the rejection of claims
1, 4, 16, 21, 22, 24, and 26 as unpatentable over the combination of Pang
and Yeung.
CONCLUSION
For the reasons set forth above, vve reverse the rejections of claims 1,
4, 16, 21, 22, 24, and 26.
REVERSED
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