Ex Parte Scholl et alDownload PDFBoard of Patent Appeals and InterferencesNov 15, 201110210201 (B.P.A.I. Nov. 15, 2011) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JUERGEN SCHOLL, DIRK ROHDEMANN, and THOMAS VOMHOF ____________ Appeal 2011-001369 Application 10/210,201 Technology Center 1600 ____________ Before TONI R. SCHEINER, DONALD E. ADAMS, and FRANCISCO C. PRATS, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 1-11, 13-17, and 36-42. 1 We have jurisdiction under 35 U.S.C. § 6(b). 1 Notwithstanding the Examiner’s statement of the status of the claims (Ans. 2), Appellants’ status of claims statement failed to address the status of claims 40-42 (App. Br. 1). However, because Appellants address claims 40- 42 in the remainder of their Brief, we find Appellants’ error to be typographical in nature. Appeal 2011-001369 Application 10/210,201 2 STATEMENT OF THE CASE The claims are directed to a machine-implemented method for managing information describing a process flow. Claim 1 is representative and is reproduced in the “Appendix of Claims” (App. Br. 14-15). Claims 1-11, 13-17, and 36-42 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Engebrecht. 2 We reverse. ISSUE Does the preponderance of evidence on this record support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Unit 1.6 of Engebrecht provides instructions for performing four types of plasmid DNA minipreps. Engebrecht provides the following overview of the instructions: Minipreps of Plasmid DNA Although there are a large number of protocols for the isolation of small quantities of plasmid DNA from bacterial cells (minipreps), this unit presents four procedures based on their speed and success: the alkaline lysis prep, a modification of the alkaline lysis prep that is performed in 1.5-ml tubes or 96-well microtiter dishes, the boiling method, and a lithium-based procedure. A support protocol provides information on storing plasmid DNA. (Engebrecht 1.6.1: 1-7.) FF 2. Under each of Engebrecht’s four separately articulated sets of instructions Engebrecht provides: (1) an overview of the specific procedure, 2 Engebrecht et al., Minipreps of Plasmid DNA in Current Protocols in Molecular Biology, 1.6.1-1.6.10 (Ausubel et al., ed., 1991). Appeal 2011-001369 Application 10/210,201 3 (2) a list of materials for the specific procedure, and (3) a stepwise recitation of the specific method (Engebrecht 1.6.1-1.6.10). FF 3. Appellants define the term “process flow” as “a sequence of chemical, physical, or biological activities for the conversion, transport, or storage of material or energy” (Spec. 1: 8-10). FF 4. The Examiner finds that “[a] protocol for obtaining plasmid DNA” is encompassed by Appellants’ definition of the term “process flow” (Ans. 11). FF 5. The Examiner finds that Engebrecht’s collection of protocols for obtaining plasmid DNA is “a type of management of the protocols, i.e. process flows” (Ans. 11-12). FF 6. The Examiner finds that Engebrecht suggests a method that provides “a hierarchy that describes the activities in the process of isolating plasmid DNA, e.g., first getting bacterial cells with the plasmid DNA, breaking up the bacterial cells . . . separating proteins with DNA, etc.” (Ans. 5; see also Ans. 12). FF 7. The Examiner finds that Engebrecht’s “hierarchy is independent of any particular formula describing inputs [(i.e. the particular materials)] and outputs [(i.e. plasmid DNA)] of isolating DNA” (Ans. 5-6 and 13). ANALYSIS Based on the Examiner’s reading of Engebrecht, the Examiner concludes that, at the time of Appellants’ invention, it would have been prima facie obvious to a person of ordinary skill in this art to determine which of Engebrecht’s methods to use and then “store/record the association for future use so that the association, i.e., the activity description and the details of the chosen formula, would be readily withdrawn to use” (Ans. 7). We are not persuaded. Appeal 2011-001369 Application 10/210,201 4 Appellants’ claimed invention requires, inter alia, the receipt of an element hierarchy that describes activities for performing the process flow using different classes of process elements (see Claim 1 3 ). In addition, Appellants’ claims require the receipt of first and second formula descriptions that are independent of the element hierarchy (id.). As Appellants explain, Engebrecht’s overview of the instructions is not an element hierarchy as defined by the claimed invention, “[i]ndeed, except for the references to the four miniprep procedures . . . it is unclear what activities are described in this paragraph” (App. Br. 11-12; see also Reply Br. 2-4; Cf. FF 1). We agree. Contrary to the Examiner’s assertion, specific activities are listed under each of Engebrecht’s four separately articulated sets of instructions (see FF 2; Cf. FF 6). Accordingly, in contrast to the requirements of Appellants’ claimed invention, we find that the preponderance of the evidence on this record falls in favor of Appellants’ contention that in each of Engebrecht’s miniprep procedures the activities and materials are inseparably tied to a single specific miniprep procedure (see App. Br. 12). CONCLUSION OF LAW The preponderance of evidence on this record fails to support a conclusion of obviousness. The rejection of claims 1-11, 13-17, and 36-42 under 35 U.S.C. § 103(a) as unpatentable over Engebrecht is reversed. REVERSED cdc 3 Claims 2-11, 13-17, and 36-42 depend directly or indirectly from claim 1. Copy with citationCopy as parenthetical citation