Ex Parte Ritterbush et alDownload PDFPatent Trials and Appeals BoardMay 3, 201914341523 - (D) (P.T.A.B. May. 3, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/341,523 07/25/2014 27160 7590 05/07/2019 KATTEN MUCHIN ROSENMAN LLP (C/0 PATENT ADMINISTRATOR) 2900 K STREET NW, SUITE 200 WASHINGTON, DC 20007-5118 FIRST NAMED INVENTOR Stephen Ritterbush 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. 390708-00004 7014 EXAMINER KWAK,DEANP ART UNIT PAPER NUMBER 1798 NOTIFICATION DATE DELIVERY MODE 05/07/2019 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): W ashington.PatentAdministrator@Kattenlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN RITTERBUSH and TING PAU OEI Appeal 2018-004880 Application 14/341,523 Technology Center 1700 Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision to finally reject claims 1-4, 9, 22, and 24-28. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 XMD, LLC is the Applicant/ Appellant and is identified as the real party in interest. App. Br. 1. Appeal 2018-004880 Application 14/341,523 Appellant's invention is generally directed to a cartridge for extracting biological material from a biological sample. Claim 1 illustrates the invention: 1. A cartridge for extracting biological material from a biological sample, the cartridge comprising: a film pre-loaded on the cartridge, wherein the film comprises a substrate suitable for extracting biological material from the biological sample; an adjustable link for attaching the cartridge to a slide upon which the biological sample has been mounted, wherein the cartridge and slide form a single unit after attaching the cartridge to the slide; a pull tab which is attached to the film, wherein the pull tab enables the film to be removed from the cartridge. Appellant requests review of the Examiner's rejection of claims 1-4, 9, 22, and 24-28 under 35 U.S.C. § 102(a)(2) as anticipated by Aghassi (US 2002/0182115 Al, published December 5, 2002). Final Act. 2; App. Br. 3. OPINION After review of the respective positions provided by Appellant and the Examiner, we REVERSE the Examiner's prior art rejection of claims 1-4, 9, 22, and 24-28 under 35 U.S.C. § 102(a)(2) for the reasons presented by Appellant. We add the following for emphasis. Claim 1 is directed to a cartridge for extracting biological material from a biological sample comprising a film pre-loaded on the cartridge, 2 Appeal 2018-004880 Application 14/341,523 wherein the film comprises a substrate suitable for extracting biological material from a biological sample. 2 We refer to the Examiner's Final Office Action for a statement of the anticipation rejection of independent claim 1. Final Act. 2-4. Briefly, the Examiner finds that Aghassi describes a cartridge (cassette 1) comprising a film (12) pre-loaded on the cartridge. Final Act. 2; Aghassi Figure 3A. The Examiner finds that Aghassi's film 12 comprises a substrate suitable for extracting biological material from a biological sample because Aghassi describes a chemical to mean any substance added to the tissue sample to facilitate testing or examination of the tissue sample, including but not limited to a biological reagent, an antibody, a buffer, a label, a chromogen, a solvent, a resin and/or deionized water. Final Act. 2; Ans. 5; Aghassi ,-J,-J 13, 50-53. Therefore, the Examiner finds that Aghassi anticipates the claimed invention. Appellant argues that Aghassi is directed to delivering/applying chemicals to a tissue sample supplied by containers associated with film 12 as opposed to extracting biological material from the biological sample, as claimed. App. Br. 6-8; see Aghassi ,-J,-J 13, 15, 16, 50, 52. Thus, Appellant contends that the Examiner's assertion that Aghassi teaches a substrate suitable for extracting biological materials from a biological sample is factually incorrect. Id. at 7. We agree with Appellant that the Examiner committed reversible error in the determination of anticipation. In making this determination, the 2 We limit our discussion to independent claim 1. 3 Appeal 2018-004880 Application 14/341,523 Examiner finds that the claimed film does not patentably distinguish the claimed film from the structure of Aghassi's film 12. Final Act. 3; Ans. 5-6. Where there is reason to conclude that the structure of the prior art is inherently capable of performing the function, the burden shifts to the applicant to show that the function patentably distinguishes the claimed structure from the prior art structure. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212,215 (CCPA 1981). In this instance, however, the Examiner does not provide the necessary "capable of' analysis to establish that the structure of Aghassi's film 12 is suitable for extracting biological material from a biological sample. Aghassi discloses film 12 as a conveyor to carry containers containing biological material to a dispensing station. Aghassi ,-J,-J 50-51. At the dispensing station, the containers are punctured by a needle/conduit whereby the contents of the container are delivered to a tissue sample placed on a slide. Id. ,-i,-i 52-54. As Appellant argues (App. Br. 7) Aghassi provides no description of the film 12 as extracting, or capable of extracting, biological material from a tissue. Nor has the Examiner directed us to any portion of Aghassi that supports the Examiner's assertion that Aghassi describes film 12 as performing this function. Further, the Examiner provides no technical explanation why the structure of Aghassi' s film would inherently be suitable or capable of extracting biological material from a tissue sample. Therefore, we agree with Appellant that the Examiner has not adequately explained how Aghassi anticipates the subject matter of claim 1. Accordingly, we reverse the Examiner's prior art rejection of claims 1-4, 9, 22, and 24-28 under 35 U.S.C. § 102(a)(2) for the reasons presented by Appellant and given above. 4 Appeal 2018-004880 Application 14/341,523 ORDER The Examiner's prior art rejection of claims 1-4, 9, 22, and 24-28 under 35 U.S.C. § 102(a)(2) is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation