Ex Parte Pittaro

Board of Patent Appeals and Interferences

Feb 28, 2006

09906362 (B.P.A.I. Feb. 28, 2006)

The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte Richard J. Pittaro
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Appeal No. 2005-2057
Application No. 09/906,362
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ON BRIEF
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Before GROSS, BARRY, and BLANKENSHIP, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
A patent examiner rejected claims 1-28. The appellant appeals therefrom under
35 U.S.C. § 134(a). We affirm.
I. BACKGROUND
The invention at issue on appeal concerns "the analysis of signals involving the
optical detection of fluorescent-labeled molecules or scattering structures." (Spec. at 1.)
Determining the nucleotide sequences and expression levels of nucleic acids (i.e., DNA
and RNA) is critical to understanding the function and control of genes and their
relationship to diseases. Such a determination permits the early detection of infectious
organisms, genetic diseases, and cancer. (Id. at 1-2.)
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Application No. 09/906,362
Biological assays involving fluorescent molecules or scattering structures often
use optical detection and imaging. In particular, sensing may be accomplished by
means of an intensity-based scanning system or a "SPEX Flourolog." (Id. at 3.)
Unfortunately, explains the appellant, these sensing systems "are all relatively high
cost." (Id.)
Accordingly, the appellant's invention analyzes signals that exhibit time decay
such as a luminescent signals. More specifically, the invention employs "[r]elatively
inexpensive area sensor detectors" to detect signals. (Id. at 27.) The detected signals
are processed to determine the characteristics thereof. (Id.)
A further understanding of the invention can be achieved by reading the following
representative claim.
1. A method for analyzing a fluorescent signal, said method comprising:
(a) detecting said fluorescent signal using at least two
predetermined integration periods that are offset by ninety degrees with
respect to a fundamental excitation frequency, and
(b) determining the characteristics of said fluorescent signal by
processing said fluorescent signals detected during said at least two
integration periods.
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Application No. 09/906,362
Claims 1-28 stand rejected under 35 U.S.C. § 102(e) as anticipated by U.S.
Patent No. 6,317,207 ("French").
II. OPINION
"[T]o assure separate review by the Board of individual claims within each group
of claims subject to a common ground of rejection, an appellant's brief to the Board
must contain a clear statement for each rejection: (a) asserting that the patentability of
claims within the group of claims subject to this rejection do not stand or fall together,
and (b) identifying which individual claim or claims within the group are separately
patentable and the reasons why the examiner's rejection should not be sustained." In
re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d 1462, 1465 (Fed. Cir. 2002) (citing 37
C.F.R. §1.192(c)(7) (2001)). "Merely pointing out differences in what the claims cover is
not an argument as to why the claims are separately patentable." 37 C.F.R.
§ 1.192(c)(7) (2004). "If the brief fails to meet either requirement, the Board is free to
select a single claim from each group of claims subject to a common ground of rejection
as representative of all claims in that group and to decide the appeal of that rejection
based solely on the selected representative claim." McDaniel, 293 F.3d at 1383, 63
USPQ2d at 1465.
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Application No. 09/906,362
1"[T]he question whether a reference 'teaches away' from the invention is
inapplicable to an anticipation analysis." Celeritas Techs. Ltd. v. Rockwell International
Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522 (Fed. Cir. 1998).
Here, the appellant neither asserts that claims 1-28 do not stand or fall together
nor argues any of the claims separately. Although he reads the independent claims on
his specification, (Appeal Br. at 2-3), this is not an argument that the claims are
separately patentable. Therefore, claims 2-28 stand or fall with representative claim 1.
With this representation in mind, rather than reiterate the positions of the examiner or
the appellant in toto, we focus on the two points of contention therebetween.
A. TIMING OF INTEGRATION
The examiner finds, "French . . . . teach[es] that the '[s]uitable detectors' 'capable
of converting energy from detected light into signals that may be processed by the
apparatus, and by the processor in particular' comprise 'charge-coupled
devices (CCDs)' in an 'analog (e.g., current-integration)' mode." (Examiner's Answer at
9.) The appellant argues, "French appears to teach away from1 conducting the
integration prior to or during the detection. At column 18, lines 55-58, French states that
'detectors comprise any mechanism capable of converting energy from detected light
into signals that may be processed by the apparatus, and bv the processor in particular.'
(emphasis added)." (Appeal Br. at 5.) The examiner responds, "the features upon
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Application No. 09/906,362
which appellant relies (i.e., integration prior to or during the detection) are not recited in
the rejected claim(s)." (Examiner's Answer at 8.)
In addressing the point of contention, the Board conducts a two-step analysis.
First, we construe the representative claim at issue to determine its scope. Second, we
determine whether the construed claim is anticipated.
1. Claim Construction
"Analysis begins with a key legal question — what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). In answering the question "[t]he Patent and Trademark Office (PTO) must
consider all claim limitations when determining patentability of an invention over the
prior art." In re Lowry, 32 F.3d 1579, 1582, 32 USPQ2d 1031, 1034 (Fed. Cir. 1994)
(citing In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04 (Fed. Cir. 1983)).
Here, claim 1 recites in pertinent part the following limitations: "fluorescent
signals detected during said at least two integration periods." Accordingly, the
representative claim requires contemporaneous detection and integration.
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Application No. 09/906,362
2. Anticipation Determination
"Having construed the claim limitations at issue, we now compare the claims to
the prior art to determine if the prior art anticipates those claims." In re Cruciferous
Sprout Litig., 301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002).
"[A]nticipation is a question of fact." In re Hyatt, 211 F.3d 1367, 1371, 54 USPQ2d
1664, 1667 (Fed. Cir. 2000) (citing Bischoff v. Wethered, 76 U.S. (9 Wall.) 812, 814-15
(1869); In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir.
1997)). "A reference anticipates a claim if it discloses the claimed invention 'such that
a skilled artisan could take its teachings in combination with his own knowledge of the
particular art and be in possession of the invention '" In re Graves, 69 F.3d 1147, 1152,
36 USPQ2d 1697, 1701 (Fed. Cir. 1995) (quoting In re LeGrice, 301 F.2d 929, 936, 133
USPQ 365, 372 (CCPA 1962)).
Here, French "provides apparatus and methods for measuring a temporal
property of a luminescent sample." Col. 5, ll. 28-29. "Luminescence generally
refers to all emission of light, except incandescence, and may include photo-
luminescence. . . ." Col. 1, ll. 64-66. In turn, "photoluminescence . . . includes
fluorescence. . . ." Col. 2, l. 1.
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Application No. 09/906,362
The reference's measuring "include[s] (1) illuminating the sample with
intensity-modulated incident light, (2) detecting luminescence emitted from the sample
in response to the illumination, and (3) determining the temporal property using the
measured luminescence." Col. 5, ll. 30-34. Regarding the step of detecting, "detection
modes include (1) discrete (e.g., photon-counting) modes, (2) analog (e.g., current-
integration) modes, and/or (3) imaging modes. . . ." Col. 18, ll. 63-65. Because the
second mode of detection comprises integration of current, we find that French teaches
contemporaneous detection and integration.
B. CONTROL OF INTEGRATION
The appellant argues, "It is the processor of French that controls the integration
of the signals. In the presently claimed subject matter, however, the integration periods
are controlled by the detector." (Appeal Br. at 7.)
"[T]he Board must give claims their broadest reasonable construction. . . ."
Hyatt, 211 F.3d at 1372, 54 USPQ2d at 1668. In doing so, "limitations are not to be
read into the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184, 26
USPQ2d 1057, 1059 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989)).
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Application No. 09/906,362
Here, contrary to the premise of the appellant's aforementioned argument,
claim 1 does not specify that "the integration periods are controlled by the detector."
(Appeal Br. at 7.) Because it is based on limitations that are not claimed, we are
unpersuaded by the argument. Therefore, we affirm the anticipation rejection of claim 1
and of claims 2-28, which fall therewith.
III. CONCLUSION
In summary, the rejection of claims 1-28 under § 102(e) is affirmed.
"Any arguments or authorities not included in the brief will be refused
consideration by the Board of Patent Appeals and Interferences. . . ." 37 C.F.R.
§ 1.192(a). Accordingly, our affirmance is based only on the arguments made in the
briefs. Any arguments or authorities omitted therefrom are neither before us nor at
issue but are considered waived. Cf. In re Watts, 354 F.3d 1362, 1367, 69 USPQ2d
1453, 1457 (Fed. Cir. 2004) ("[I]t is important that the applicant challenging a decision
not be permitted to raise arguments on appeal that were not presented to the Board.")
No time for taking any action connected with this appeal may be extended under 37
C.F.R. § 1.136(a).
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Application No. 09/906,362
AFFIRMED
ANITA PELLMAN GROSS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LANCE LEONARD BARRY ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
HOWARD B. BLANKENSHIP )
Administrative Patent Judge )
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Application No. 09/906,362
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Intellectual Property Administration
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