Ex Parte Ririe

Board of Patent Appeals and Interferences

Apr 26, 2012

10478453 (B.P.A.I. Apr. 26, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/478,453 11/21/2003 Kirk Ririe 2185-0006US00 5084
28078 7590 04/26/2012
MAGINOT, MOORE & BECK, LLP
CHASE TOWER
111 MONUMENT CIRCLE
SUITE 3250
INDIANAPOLIS, IN 46204
EXAMINER
BEISNER, WILLIAM H
ART UNIT PAPER NUMBER
1775
MAIL DATE DELIVERY MODE
04/26/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KIRK RIRIE
____________

Appeal 2011-002107
Application 10/478,453
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 2, 5, 8, 9, 11, 12, 46-49, 53-55, 57, 58, and 60. We have jurisdiction
under 35 U.S.C. § 6.
Appellant’s invention is directed to a thermal cycling device and
method that facilitates rapid, uniform temperature cycling of samples within
a reaction vessel. App. Br. 8. Claim 2 is illustrative of the subject matter on
appeal and is reproduced below:
Appeal 2011-002107
Application 10/478,453

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2. A temperature cycling apparatus for repeatedly heating
and cooling a reaction mixture, the system comprising:

a first heater movable between a first orientation in which
the first heater is in an open position that permits the reaction
mixture to be in contact with the first heater and the first heater
affects the temperature of the reaction mixture and a second
orientation in which the first heater is in a closed position,
thereby forcing the reaction mixture away from the first heater
and the first heater does not substantially affect the temperature
of the reaction mixture, and a first prime mover for moving the
first heater between the first heater's first and second
orientations,

a second heater adjacent the first heater, the second
heater movable between a first orientation in which the second
heater is in an open position that permits the reaction mixture to
be in contact with the second heater and the second heater
affects the temperature the reaction mixture and a second
orientation in which the second heater is in a closed position,
thereby forcing the reaction mixture away from the second
heater and the second heater does not substantially affect the
temperature of the reaction mixture, and a second prime mover
for moving the second heater between the second heater's first
and second orientations,

the second heater being in the second orientation when
the first heater is in the first orientation, and the second heater
being in the first orientation when the first heater is in the
second orientation during temperature cycling; wherein the first
prime mover includes a first stepper motor coupled to the first
heater to move the first heater between the first heater's first and
second orientations, and the second prime mover includes a
second stepper motor coupled to the second heater to move the
second heater between the second heater's first and second
orientations.

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Application 10/478,453

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The Examiner relied on the following references in rejecting the
appealed subject matter:
Albright et al. US 4,038,030 July 26, 1977
Duff US 4,054,416 October 18, 1977
Dekmezian et al. US 5,039,614 August 13, 1991
Kellogg et al. US 6,706,519 B1 March 16, 2004
Chen ‘617 US 6,780,617 B2 August 24, 2004
Chen ‘862 US 6,964,862 B2 November 15, 2005
Devaney EP 0 402 995 A2 December 19, 1990

Rasmussen et al., "Quantitative PCR by Continuous Fluorescence
Monitoring of a Double Strand DNA Specific Binding Dye"
Biochemica, No.2, pp. 8-11 (1998).

The Examiner maintained the following rejections (see generally
Answer) from the final office action:
1. Claim 53 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chen ‘862 and either Albright or Devaney.

2. Claims 8, 9, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chen ‘862 and Albright or Devaney and further in
view of Kellogg.

3. Claims 2, 46-49, 54, 57, 58, and 60 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over either Chen ‘862 or Chen ‘617, each in
view of Albright.

4. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over either Chen ‘862 or Chen ‘617, each in view of Albright
and further in view of either Duff or Dekmezian.

5. Claim 55 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over either Chen ‘862 or Chen ‘617, each in view of Albright
and further in view of Rasmussen.

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We interpret Appellant’s general intent is to request review of all the
rejections based on the primary references to Chen ‘892 and Chen ‘617,
hereinafter referred to as the Chen references. (App. Br. 14). Accordingly,
we address all rejections together in our discussion below.

OPINION

Appellant does not dispute that the claimed subject matter of the Chen
references in view of the prior art of record would have rendered obvious the
claimed subject matter of the instant application.1 See Appeal Brief,
generally. Nor does Appellant argue that the claimed subject matter of the
instant application would not have rendered obvious the claimed subject
matter of the Chen references.
In rebuttal to the appealed rejections, Appellant only contests the
effectiveness of the declaration under 37 C.F.R. § 1.131 filed April 16, 2008
for antedating the Chen references. App. Br.14. More specifically, since the
§ 1.131 declaration cannot antedate a U.S. patent claiming the “same
patentable invention” as the instant application2, Appellant argues that the
Examiner cannot use the claims of the Chen references together with the
cited prior art to show that the claimed subject matter of the instant

1 Appellant does not present substantive technical arguments addressing the
Examiner's reasons for combining the teachings of the cited prior art with
the subject matter of the claims of the Chen references. That is, Appellant
has not addressed why it would have been unobvious to a person of ordinary
skill in the art to combine the teachings of the cited references which the
subject matter of the claims of the Chen references.
2 See In re Clark, 457 F.2d 1004, 1007 (CCPA 1972); In re Hidy, 303 F.2d
954, 957 (CCPA 1962); and In re Teague, 254 F.2d 145, 148 (CCPA 1958).
Appeal 2011-002107
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application and the claimed subject matter of the Chen references are the
same patentable invention. App. Br. 22-23.
Therefore, the dispositive issue for this appeal is: Did the Examiner
err in determining the declaration under 37 C.F.R. § 1.131 filed April 16,
2008 is ineffective to antedate the Chen references?
After thorough review of the respective positions provided by
Appellant and the Examiner, we answer this question in the negative and
AFFIRM for the reasons presented by the Examiner and add the following
for emphasis.
With respect to the use of declarations to show prior invention for the
purpose of antedating references, the text of 37 C.F.R. § 1.131(a) provides
that:
Prior invention may not be established under
this section if either:

(1) The rejection is based upon a U.S. patent
or U.S. patent application publication of a pending
or patented application to another or others which
claims the same patentable invention as defined in
§ 41.203(a) of this title, in which case an applicant
may suggest an interference pursuant to §
41.202(a) of this title…(emphasis added).

The term “same patentable invention” (that is, interfering subject matter) is
defined at § 41.203(a) in the following manner:
An interference exists if the subject matter of a
claim of one party would, if prior art, have
anticipated or rendered obvious the subject matter
of a claim of the opposing party and vice versa.

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We are unpersuaded by Appellant’s arguments and agree with the
Examiner’s reasoning. Ans. 15-16; MPEP, § 2301.03. Moreover,
Appellant’s argument that the Examiner cannot use additional prior art to
show that the claimed subject matter of the Chen references and the claimed
subject matter of the instant application are the same patentable invention is
contrary to the intent of the U.S. Patent and Trademark Office (USPTO) as
expressed in the notice of rulemaking proposing 37 C.F.R. § 41.203(a).3
Rules of Practice Before the Board of Patent Appeals and Interferences, 68
Fed. Reg. 66648 (November 26, 2003). In this notice, the USPTO expressly
stated:
Proposed § 41.203(a) would state the
standard for declaring a patent interference. The
Director uses a two-way unpatentability test to
determine whether claimed inventions interfere…

The case law provides that there is no
interference-in-fact when there is patentable
distinctness between the claims of the parties (e.g.,
Case v. CPC Int’l, Inc., 730 F.2d 745, 221 USPQ
196 (Fed. Cir.1984); Aelony v. Arni, 547 F.2d 566,
192 USPQ 486 (CCPA 1977); Nitz v. Ehrenreich,
537 F.2d 539, 190 USPQ 413 (CCPA 1976)).
Consequently, to declare an interference, the
Director requires patentable indistinctness between
the claimed subject matter of the parties. Eli Lilly
& Co. v. Bd. Of Regents of Univ. of Washington,
334 F.3d 1264, 67 USPQ2d 1161 (Fed. Cir. 2003).
In practice this means that a claim of A and a

3 We note that 37 C.F.R. § 41.203(a) was adopted without change in the
notice of final rulemaking published August 12, 2004 with an effective date
of September 13, 2004. See Rules of Practice Before the Board of Patent
Appeals and Interferences, 69 Fed. Reg. 49960 (August 12, 2004).
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Application 10/478,453

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claim of B interfere if the subject matter of A’s
claim would, if treated as prior art, have
anticipated or rendered obvious (alone or in
combination with prior art) the subject matter of
B’s claim, and vice versa (emphasis added).

68 FR 66646, 66664-5. Thus, Section 41.203(a), like former Section
1.601(n), “incorporates the standards for both anticipation under § 102 and
obviousness under § 103 in determining the existence of an interference."
Medichem, S.A. v. Rolabo, S.L, 353 F.3d 928, 934 (Fed. Cir. 2003).
Consequently, Appellant has shown no reversible error in the Examiner’s
reliance on prior art in addition to the claims of the Chen references to show
that the claimed subject matter of the instant application and the claimed
subject matter of the Chen references are the same patentable invention as
defined in 37 C.F.R. § 41.203(a). Thus, we find no reversible error in the
Examiner’s determination that the declaration under 37 C.F.R. § 1.131 filed
April 16, 2008 is ineffective to antedate the Chen references.
Accordingly, we affirm the rejections of claims 2, 5, 8, 9, 11, 12, 46-
49, 53-55, 57, 58, and 60 based on the Chen references.

ORDER
The rejection of claim 53 under 35 U.S.C. § 103(a) as being
unpatentable over Chen ‘862 and either Albright or Devaney is affirmed.
The rejection of claims 8, 9, 11, and 12 under 35 U.S.C. § 103(a) as
being unpatentable over Chen ‘862 and Albright or Devaney and further in
view of Kellogg is affirmed.
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The rejection of claims 2, 46-49, 54, 57, 58, and 60 under 35 U.S.C.
§ 103(a) as being unpatentable over Chen ‘862 or Chen ‘617, each in view
of Albright is affirmed.
The rejection of claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Chen ‘862 or Chen ‘617, each in view of Albright and
further in view of either Duff or Dekmezian is affirmed.
The rejection of claim 55 under 35 U.S.C. § 103(a) as being
unpatentable over Chen ‘862 or Chen ‘617, each in view of Albright and
further in view of Rasmussen is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED

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