Ex Parte Parker et al

Board of Patent Appeals and Interferences

Jun 4, 2009

10285604 (B.P.A.I. Jun. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RUSSELL A. PARKER and DOUGLAS A. AMORESE
__________

Appeal 2008-005771
Application 10/285,604
Technology Center 1600
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Decided:1 June 4, 2009
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Before LORA M. GREEN, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-19 and 41-43. We have jurisdiction
under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-005771
Application 10/285,604

STATEMENT OF THE CASE
The claims are directed to a method of reading an array. Claims 1, 2,
and 41 are representative of the claims on appeal, and read as follows:
1. A method of reading an array of moieties on at least a portion of a
surface of a transparent slide which is opposite a first portion on an opposite
side, the method comprising:
(a) exposing the array to a sample by placing the slide in a vapor tight
barrier;
(b) transferring the slide to an open environment for washing and
drying of the array;
(c) mounting the slide on a slide holder and retaining the array in an
enclosed and protected internal environment substantially isolated from an
external environment without the array contacting the holder; and
(d) inserting the holder into an array holder and reading the array.

2. A method of reading an array of moieties on at least a portion of a rear
surface of a transparent slide which is opposite a first portion on the front
surface, the method comprising:
(a) exposing the array to a sample by placing the slide in a vapor tight
barrier;
(b) transferring the slide to an open environment for washing and
drying of the array;
(c) mounting the slide on a slide holder and retaining the array in an
enclosed and protected internal environment substantially isolated from an
external environment in which the previously exposed array faces, and is
spaced apart from, a backer member of the holder without the array
contacting the holder; and
(d) inserting the holder into an array holder and reading the array.

41. A method comprising reading an array through a front side and
reading an identification code from the front side of the slide, wherein the
array is positioned on a rear side of the slide and the array is in an enclosed
and protected internal environment substantially isolated from an external
environment.

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The Examiner relies on the following evidence:
Bao US 6,251,601 B1 Jun. 26, 2001
Schembri US 6,864,097 B1 Mar. 8, 2005

The following grounds of rejection are before us for review:
I. Claims 1-19 and 41-43 stand rejected under 35 U.S.C. § 112, first
paragraph, for containing new matter;
II Claims 1-19 and 41-43 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Schembri;
III. Claims 1-8 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Bao;
IV Claims 1-19 and 41-43 stand rejected under 35 U.S.C. § 102(f) over
Schembri; and
V Claims 1-19 and 41-43 stand rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1-3 of Shembri.
We affirm rejections II, IV, and V, and reverse rejections I and III.

ISSUE (New Matter)
The Examiner finds that claims fail to comply with the written
description requirement on the grounds that they contain new matter.
Appellants contend that the Specification supports the claims on
Appeal.
Thus, the issue on appeal is: Have Appellants demonstrated that the
Examiner erred in finding that the claims on appeal contain new matter?

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FINDINGS OF FACT
FF1 The Specification teaches “a method of processing and reading an
array of moieties on at least a portion of a surface of a transparent slide
which is opposite a first portion on an opposite surface, which array has
been previously exposed to a sample” that “allows the transfer of the non-
enclosed array between multiple processing containers and includes
mounting the slide on a slide holder and retaining the slide thereon in an
enclosed and protected environment without the array contacting the
holder.” (Spec. 6.)
FF2 The Specification teaches that the “slide need not form an air or
watertight seal against the holder but needs to limit the exchange of gases
and protect against mechanical harm such that the array and dyes bound
there to are not adversely affected over time.” (Id.)
FF3 The Specification defines “enclose” or to be “enclosed” as
the prevention or restriction of external or environmental gases,
components or contaminants from contacting the surface of any
array. This may be accomplished, for instance, by enclosing
the array in a chamber that comprises one or more sides. In
certain instances the array may be hermetically sealed so that
gases may not contact the array surface. The term should be
interpreted to be broad based to include any number of
chambers, chamber shapes or sizes that may have one or more
walls that prevent or strongly restrict the diffusion of gases into
the array chamber or prevents the array from contacting
undesirable gases, components or contaminants that may be
present in the surrounding environment.

(Id. at 12.)
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FF4 The Examiner rejects claims 1-19 and 41-43 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
(Ans. 3).
FF5 The Examiner finds that claims 1, 2, and 41 have been amended “to
recite ‘enclosed and protected internal environment substantially isolated
from an external environment,’ and newly added claim with the recitation of
‘sealing the array in the enclosed and protected internal environment’ is not
supported by the specification and raises the issue of new matter.” (Id.)
FF6 In the context of the anticipation rejection, the Examiner interprets
“the recitation of ‘array in an enclosed and protected internal environment
substantially isolated from an external environment,’” as encompassing “any
type of holder that has one or more walls.” (Id. at 12.)

PRINCIPLES OF LAW
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.

In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). However, the claims
are not to be confined to the embodiments found in the Specification, and it
is improper to import limitations from the Specification into the claims. In
re Trans Texas Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007).
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The disclosure as originally filed need not provide “in haec verba
support for the claimed subject matter at issue,” rather, the disclosure should
convey to one skilled in the art that the inventor was had possession of the
invention at the time of filing. Purdue Pharma L.P. v. Faulding
Pharmaceutical Co., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citations
omitted).

ANALYSIS
Appellants argue that the Specification defines “to enclose” or
“enclosed,” and also teaches that the “array may also be hermetically sealed
so that gases may not contact the array surface.” (App. Br. 11 (citing Spec.
12 and 14).) Appellants argue further that the Specification “discloses
specific structures in which the holder encloses all sides of the array and
substantially isolates the internal environment of the array from an external
environment.” (App. Br. 11 (citing Spec. Figs. 4-9 and pp. 13-16).) Thus,
Appellants contend that “the [S]pecification and drawings explicitly teaches
(i) mounting the array in an enclosed and protected environment
substantially isolated from an external environment, and (ii) sealing an array
in the enclosed and protected internal environment.” (App. Br. 11.)
Claim 12 requires the step of “mounting the slide on a slide holder and
retaining the array in an enclosed and protected internal environment
substantially isolated from an external environment without the array
contacting the holder” (emphasis added). The Specification discloses that
the chamber may be enclosed on one or more sides, such as to prevent or

2 Independent claims 2 and 41 require similar limitations.
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restrict external or environmental gases, components or contaminants from
contacting the surface of any array, and we agree with Appellants that the
Specification provides support for the language at issue. But, given the
Specification’s definition of enclose, we also agree with the Examiner’s
interpretation of the language that reads the claims as simply requiring a
container having one or more walls, and thus “protecting” the array.
We note that Figures 4-9 show an embodiment of the invention
wherein the holder encloses all sides of the array: Given the above definition
of “enclosed” however, and given that the Figures are drawn to only one
embodiment of the claimed invention, we decline to import the embodiment
wherein the holder encloses all sides of the array into the claims. If
Appellants wish to be limited to a holder that encloses all sides of the array,
they can explicitly limit the claims to that embodiment. See In re Zletz, 893
F.2d 319, 322 (Fed. Cir. 1989) (“An essential purpose of patent examination
is to fashion claims that are precise, clear, correct, and unambiguous. Only
in this way can uncertainties of claim scope be removed, as much as
possible, during the administrative process.”).

CONCLUSION(S) OF LAW
Appellants have demonstrated that the Examiner erred in finding that
the claims on appeal contain new matter.
We thus reverse the rejection of claims 1-19 and 41-43 under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.

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ISSUE (Schembri)
The Examiner finds that Schembri anticipates the claims on appeal.
Appellants contend that Schembri fails to teach a method “in which a
slide is mounted in a holder such that an array on the slide is retained in an
enclosed and protected internal environment substantially isolated from an
external environment.”
Thus, the issue on appeal is: Have Appellants demonstrated that the
Examiner erred in finding that Schembri teaches a method “in which a slide
is mounted in a holder such that an array on the slide is retained in an
enclosed and protected internal environment substantially isolated from an
external environment”?

FINDINGS OF FACT
FF7 The Examiner rejects claims 1-19 and 41-43 under 35 U.S.C. § 102(e)
as being anticipated by Schembri (Ans. 4). As Appellants do not argue the
claims separately, we focus our analysis on claim 1, and claims 2-19 and 41-
43 stand or fall with that claim. 37 C.F.R. § 41.37(c)(1)(vii).
FF8 The Examiner finds that Schembri teaches the method of claim 1
(Ans. 4-5).
FF9 The Examiner notes that Schembri teaches a slide with moieties on at
least a portion of the rear surface, and mounting the slide on a slide holder
(Id. at 5).
FF10 The Examiner finds that the slide holder of Schembri reads on an
enclosed and protected internal environment substantially isolated from an
external environment (id.).
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FF11 The Examiner also rejects the claims under 35 U.S.C. §102(f), finding
that Appellants did not invent the claimed subject matter (id. at 8).
FF12 The Examiner finds that Schembri “discloses a method of reading an
array of moieties that is commensurate in scope with the instant pending
claims.” (Id.)
FF13 The Examiner notes that a “declaration was signed by Carol Schembri
and Kimberly Tam on 09/27/2000 as original and sole owner of the
invention application 09/671[9]66, now US Patent 6864097,” and that there
“is no evidence in either the patent or the instant pending application that the
invention was commonly owned at the time of applicants invention.” (Id. at
9.)
FF14 The Examiner also rejects claims 1-19 and 41-43 under the judicially
created doctrine of obviousness-type double patenting as being unpatentable
over claims 1-3 of Schembri (id. at 10).
FF15 Schembri teaches a method of reading an array, which includes
“mounting the slide on a slide holder and retaining the slide thereon in a
mounted position in which the holder does not contact the previously
exposed array.” (Schembri, abstract.)
FF16 Figure 4 of Schembri is reproduced below.

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Figure 4 shows a front view of the holder of Schembri (id. at col. 5, l. 22).
FF17 As is seen in the figure:
Holder 10 has a body which is generally rectangular in shape
and includes two opposed side portions 14 with a channel 18
positioned therebetween, and extending in a direction between
ends 12a, 12b of the body. Channel 18 has a bottom surface 32
which acts as a backer member, and has a closed leading end 26
and an open trailing end 26b.

(Id. at col. 7, ll. 61-67.)
FF18 Figure 6 of Schrembi is reproduced below.

Figure 6 is a front view of the holder of Schembri showing a slide in
mounted position (id. at col. 5, ll. 24-26).
FF19 As shown Figure 6, slide 110 with array 112 is slid into the holder
until leading edge 113a abuts leading edge 26 of the channel 18 (id. at col. 8,
ll. 33-60).
FF20 Schembri teaches that the holder “may . . . be dimensioned such that
moieties on the rear side of the mounted slide are spaced from the backer
member by between 0.1 mm to 10 mm.” (Id. at col. 4, ll. 34-37.) According
to Schembri, the holder may be used with an array located on the forward
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facing surface of the slide, but that the surface protection benefit is lost in
that configuration (id. at col. 4, ll. 55-58).
FF21 Thus, Schembri teaches a slide holder for an array on a slide, wherein
the array is protected on walls on 5 sides, but has an open trailing end.

PRINCIPLES OF LAW
To anticipate, every element and limitation of the claimed invention
must be found in a single prior art reference, arranged as in the claim.
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001).

ANALYSIS
As to the rejection over Schembri under § 102(e), Appellants argue
that Schembri does not teach a method “in which a slide is mounted in a
holder such that an array on the slide is retained in an enclosed and protected
internal environment substantially isolated from an external environment.”
(App. Br. 12.) Specifically, pointing to Figure 4 of Schembri and Figure 4
of the instant disclosure, Appellants argue that Schembri cannot anticipate
instant claim 1 as the trailing edge 26b of Schembri is open, thus allowing
air to enter and contaminate the slide, whereas as shown in instant Figure 4,
the trailing edge is closed, thus preventing air from entering.
Appellants’ arguments are not convincing. As noted above, we
interpret the limitation of an “enclosed and protected internal environment
substantially isolated from an external environment” as requiring a container
having one or more walls, and thus protecting the array. Schembri teaches a
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holder that has five closed sides and one open side, and thus the holder of
Schembri meets that limitation. In addition, the claim only requires that the
internal environment be “substantially isolated” from an external
environment, and thus does not require that the array be hermetically sealed
while in the holder.
As to the rejection over Schembri under § 102(f), Appellants argue
that “Schembri discloses only a holder that has an open end and thus fails to
disclose a holder that provides an enclosed internal environment that is
protected from the external environment.” (App. Br. 16.) Thus, Appellants
assert, “Schembri did not provide a complete concention of the claimed
subject matter.” Appellants’ arguments, however, are not convincing as
Schembri anticipates the claimed subject matter for the reasons set forth
above.
As to the obviousness double-patenting rejection, Appellants do not
argue the merits, but note that they will submit a terminal disclaimer when
the claims are in condition for allowance (id. at 16). This rejection is thus
summarily affirmed.

CONCLUSIONS OF LAW
Appellants have not demonstrated that the Examiner erred in finding
that Shembri teaches a method “in which a slide is mounted in a holder such
that an array on the slide is retained in an enclosed and protected internal
environment substantially isolated from an external environment.”
We thus affirm:
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The rejection of claims 1-19 and 41-43 under 35 U.S.C. § 102(e) as
being anticipated by Schembri;
The rejection of claims under 35 U.S.C. §102(f) on the grounds that
Appellants did not invent the claimed subject matter as evidenced by
Shembri: and
The rejection of claims 1-19 and 41-43 under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1-3 of Schembri.

ISSUE (Bao)
The Examiner finds that claims 1-8 are anticipated by Bao.
Appellants contend that Bao teaches the use of chip holder that is a
slide, which is then placed into the reader without first being placed into a
separate holder.
Thus, the issue on appeal is: Have Appellants demonstrated that the
Examiner erred in finding that Bao teaches mounting the slide on a slide
holder and inserting the holder into an array holder and reading the array as
required by independent claims 1 and 2?

FINDINGS OF FACT
FF22 The Examiner rejects claims 1-8 under 35 U.S.C. § 102(b) as being
anticipated by Bao (Ans. 7).
FF23 The Examiner finds that Bao anticipates the method of claims 1 and 2
(id. at 7-8).
FF24 Specifically, the Examiner finds:
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With regard to claims 1-2 and 7-8, Bao et al. teach a
method of reading an array by exposing a chip to a sample and
placing a cover slip over the chip (exposing the array to a
sample by placing the slide in a vapor tight barrier), and
incubating the chip in an oven at a preselected temperature (see
column 14, lines 5-40). Bao et al. teach after hybridization, the
chip is washed and dried at room temperature, followed by
detecting the chip placed on a holder by image capturing and
analysis (see column 15, lines 1-26). Bao et al. teach using a
breadboard imaging apparatus to capture images of the
hybridized array through the array window (see column 27,
lines 18-24) (see figure 1d, and 1e).

(Id. at 7-8.)
FF25 Bao is teaches a method for the simultaneous detection of gene
expression and chromosomal abnormality in a tissue sample (Bao, col. 3, ll.
30-32) using a microarray (id. at col. 4, ll. 2-5).
FF26 Figures 1d and 1e of Bao are reproduced below:

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The Figures show the microarray and chip holder of Bao (id. at col. 14, ll.
42-62).
FF27 The microarray of Bao is manufactured, and then glued into the cavity
37 of the chip holder, which can then be shrink wrapped and placed into a
kit (id. at col. 14, l. 63-col. 15, l. 3). In carrying out the method, the user
applies hybridization solution to the surface of the microarray, the chip is
washed, a label is added, a cover slip is added over the array, and the array is
imaged (id. at col. 15, ll. 3-8).
FF28 Thus, in the method of Bao, the exposing and transferring steps are
performed while the array is in the holder (see also id. at col. 26, l. 66-col.
27, l. 17).

ANALYSIS
Appellants argue that “Bao discloses only placing the array on a slide
36, not placing the array or the slide in a holder separate from the slide 36.”
(App. Br. 14.) According to Appellants, Figures 1c and 1d illustrate that the
chip holder is a slide, which is then placed into the reader without first being
placed into a separate holder (id.).
We conclude that Appellants have the better position. While Bao
teaches that the array is placed into a holder, as taught by Bao, the array is
exposed to a sample and washed and dried while glued into the chip holder,
and the array is thus not mounted into a second slide holder before being
read.

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CONCLUSIONS OF LAW
We find that Appellants have demonstrated that the Examiner erred in
finding that Bao teaches mounting the slide on a slide holder and inserting
the holder into an array holder and reading the array as required by
independent claims 1 and 2.
We therefore reverse the rejection of claims 1-8 under 35 U.S.C. §
102(b) as being anticipated by Bao.

SUMMARY
We therefore affirm the rejection of:
Claims 1-19 and 41-43 under 35 U.S.C. § 102(e) as being anticipated
by Schembri;
Claims 1-19 and 41-43 under 35 U.S.C. § 102(f) over Schembri; and
Claims 1-19 and 41-43 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1-3 of
Shembri:
But reverse the rejection of
Claims 1-19 and 41-43 under 35 U.S.C. § 112, first paragraph, for
containing new matter; and
Claims 1-8 under 35 U.S.C. § 102(b) as being anticipated by Bao.

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

Ssc:

AGILENT TECHNOLOGIES, INC.
LEGAL DEPARTMENT, DL429
INTELLECTUAL PROPERTY ADMINISTRATION
P.O. BOX 7599
LOVELAND, CO 80537-0599
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