Ex Parte SEGAWA et al

Patent Trials and Appeals Board

Apr 6, 2016

12037619 - (D) (P.T.A.B. Apr. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/037,619 02/26/2008
23628 7590 04/08/2016
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC A VENUE
BOSTON, MA 02210-2206
FIRST NAMED INVENTOR
YujiSEGAWA
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.
Sl459.72000USOO 4175
EXAMINER
HOBBS, MICHAEL L
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
04/08/2016 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):
Patents_eOfficeAction@WolfGreenfield.com
WGS_eOfficeAction@WolfGreenfield.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte YUJI SEGAWA, TASUKU YOTORIY AMA, AKIO YASUDA,
NORIYUKI KISHI!, MA YUMI SHIONO, TAKURO YAMAMOTO and
TOMOTERU ABE
Appeal2014-006786
Application 12/037,619
Technology Center 1700
Before PETER F. KRATZ, KAREN M. HASTINGS, and
N. WHITNEY WILSON, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1-11. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party of interest as "Sony Corporation." Appeal
Brief filed January 21, 2014 ("App. Br.) 3.
Appeal2014-006786
Application 12/037,619
Claims 1-11 are appealed. Claims 1 is the sole independent claim and
is illustrative of the claimed subject matter (emphasis added):
1. A nucleic acid amplifier for carrying out a nucleic acid
amplification reaction, the amplifier comprising:
a plurality of wells configured to carry out the nucleic acid
amplification reaction; a heating unit provided for every well;
an optical unit for irradiating excitation light of a specified
wavelength to each of said wells; and
a fluorescence detection unit provided for every well, each
fluorescence detection unit configured to provide a detection
result to the respective heating unit,
wherein the respective heating unit is configured to control the
temperature of the nucleic acid amplification reaction in one of
the plurality of wells based on at least the detection result from
the fluorescence detection unit.
App. Br. 16
The Examiner maintains, and the Appellants appeal, the following
rejections:
I. Claims 1--4, 6, and 8-11 are rejected under 35 U.S.C. § 102(b) as
anticipated by Joseph et al., (U.S. 2006/0073491 Al, pub. Apr. 6, 2006);
II. Claims 1--4, 6, and 8-11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Joseph in view of Kwasnoski et al., (U.S. Patent No.
6,423,948 Bl, issued July 23, 2002);
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Application 12/037,619
III. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combined prior art of Joseph and Bryant (U.S. Patent No. 6,504,226 Bl,
issued Jan. 7, 2003) or, alternatively, Joseph, Kwasnoski, and Bryant; and
IV. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
the combined prior art of Joseph and Heimberg et al., (U.S. 2006/0228268
Al, pub. Oct. 12, 2006) or, in the alternative, Joseph, Kwasnoski, and
Heimberg.
(Non-Final Rejection dated July 1, 2013 ("Non-Final Rej.") 4--14;
Examiner's Answer dated March 27, 2014 ("Ans.") 2-3.)
ISSUE
Did the Examiner reversibly err in finding that Joseph's device for
performing/monitoring chemical reactions is identically structured to the
"nucleic acid amplifier" as recited in claim 1 such that the device includes a
heating unit in a well configured to control reaction temperature based on a
detection result from a fluorescent detection unit in the well? We decide this
issue in the affirmative.
ANALYSIS
After review of the respective positions provided by Appellants and
the Examiner, we agree with Appellants that the Examiner has not met the
burden of establishing anticipation in this case for the reasons stated by
Appellants in their Briefs. Moreover, we agree with the Appellants that the
obviousness rejections are not well founded and that the Examiner has
committed reversible error. We add the following for emphasis.
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Appeal2014-006786
Application 12/037,619
The Examiner dismisses the claim limitation "configured to" as
language that does not add any structure to the "respective heating unit"
elements of claim 1 and that it is instead "an intended use of the claimed
device" (Non-Final Rej. 4 and 5; Ans. 4). We disagree.
Although it is well established that claims directed to an apparatus
must be distinguished from the prior art in terms of structure rather than
function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997),
in order to satisfy the functional limitations in an apparatus claim, however,
the prior art apparatus must be capable of performing the claimed function.
Id. at 1478. As such, to be capable of performing the functional limitations
in claim 1, the heating unit must possess the necessary structure, hardware or
software, to function as claimed. That is, the heating unit must be setup in
such a fashion that it can control the chemical reaction's temperature in a
well based upon a detection result from the respective well' s fluorescence
detection unit. The Examiner failed to indicate where in Joseph this
structural limitation of claim 1 is disclosed and instead states that it is drawn
to an intended use of the device (Ans. 5---6). A preponderance of the
evidence supports Appellants' position that Joseph discloses temperature
control based on a temperature sensor and does not suggest its device having
a heating unit and a fluorescent detection unit in each well configured to
control reaction temperature in accordance with claim 1 (App. Br. 8-9;
Reply Br. 7).
With respect to the obviousness rejections, we find these rejections do
not render claim 1 obvious in that they lack a rational underpinning for
combining the teachings of the cited prior art. The Examiner indeed de facto
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Application 12/037,619
admits that the heating and diode units in Joseph are not configured or
structured to function as recited in claim 1 (Non-Final Rej. 10). The
Examiner argues, nevertheless, that it would have been obvious for one
skilled in the art to modify Joseph "to employ a computer to control the
heater and analyze the optical signal from the wells" (Non-Final Rej. 10).
However, the Examiner does not rely upon any reasoning for this statement
as to why one of ordinary skill in the art would have been motivated to have
configured Joseph's chip device to function as claimed. KSR International
Co. v. Teleflex, Inc., 550 U.S. 398, 411 (2007) ("[A] patent composed of
several elements is not proved obvious merely by demonstrating that each of
its elements was, independently, known in the prior art."); "'Rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness."' Id. at 410
(quoting In re Kahn, 441F.3d977, 988 (CA Fed. 2006).
The Examiner's analysis with respect to the rejection over Joseph and
Kwasnoski appears to be based upon a finding that Joseph discloses its
device comprising diodes and heaters and that one can modify this device to
include Kwasnoski's controller, connected to both heating coils and an
optical assembly device, to control heating within each of Joseph's well
based on a signal sent from the optical assembly (Non-Final Rej. 10-11;
Ans. 7-8). Kwasnoski, however, does not teach or suggest using a
fluorescence detection result from the wells to control temperature as recited
in claim 1 (App. Br. 13; Reply Br. 9). As Appellants' point out:
The combination of Joseph and Kwasnoski would require
changing the principle of operation for both of these references,
making their combination insufficient to render independent
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Application 12/037,619
claim 1 obvious. Specifically, both Joseph and Kwasnoski
would have to be modified to use a fluorescence detection
results from the wells (which is not disclosed in either
reference) to control the temperature rather than using the heat
measured at the heating element distinct from the wells (which
is the temperature control method of both Joseph and
Kwasnoski).
(Reply Br. 9-10; see also App. Br. 12-13).
A preponderance of the evidence supports Appellants' arguments that
the nucleic acid amplifier requires structure that is not disclosed in Joseph so
as to perform the functions recited in claim 1 (App. Br. 14--15; Reply Br. 9-
11).
The Examiner does not rely upon the references additionally applied
for claims 5 and 7 (Rejections III and IV) to remedy these deficiencies.
As the Examiner has not established that Joseph's apparatus is
structurally identical to the claimed apparatus, and furthermore has not
established that it would have been obvious to modify Joseph based on
Kwasnoski so as to result in the claimed invention, we reverse Rejections I
to IV.
ORDER
REVERSED
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