Ex Parte Stein et al

Patent Trial and Appeal Board

Dec 17, 2013

10813587 (P.T.A.B. Dec. 17, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
10/813,587 03/31/2004 David Stein 2006P26235 US 4314
28524 7590 12/17/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
TURK, NEIL N
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
12/17/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID STEIN, MARCEL J. GOETZ, JR., and SANCHOY DAS
__________

Appeal 2012-006907
Application 10/813,587
Technology Center 1700
____________

Before CHARLES F. WARREN, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134 the Examiner’s rejections of
claims 1-20. We have jurisdiction over the appeal pursuant to 35 U.S.C. §
6(b).
We REVERSE.

Claim 1 is illustrative of the claimed subject matter:
1. An immunoassay analyzer, comprising:
means for loading one or more samples into one or more test vessels;
means for identifying tests to be performed on each of said one or
more samples, each of said tests to be performed in a test vessel;
a plurality of resources, each of said plurality of resources for
performing a specified function on a test vessel, each of said tests identified
by said means for identifying requiring one or more of said plurality of
resources;
means for moving a plurality of test vessels to and from one or more
resources of said plurality of resources; and
a computer controller which
(i) tracks a location of each test vessel;
(ii) controls movement of said test vessels by said means for moving,
and
(iii) determines a path for each test vessel between each resource
based on the test identified for said test vessel by said means for identifying,
and the tests identified and location for all other test vessels of said plurality
of test vessels, and each path requiring one or more of said plurality of
resources and movement between said plurality of resources by said means
for moving.

Independent claim 13 is drawn to a corresponding automated method
for performing immunoassays. (Claims Appd’x.)
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The rejections on appeal are:
(a) Claims 1-20 under 35 U.S.C. § 112, second paragraph1;
(b) Claims 1, 2, 6, 7, 9, 13, 14, and 18 under 35 U.S.C. § 102 as
anticipated by Hanawa2;
(c) Claims 3-5, 8, 11, 12, 15-17, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Hanawa in view of Fritchie3;
(d) Claims 10 and 19 under 35 U.S.C. § 103(a) as unpatentable over
Hanawa in view of Mimura.4

The Examiner added further details to the § 112, second paragraph
rejections already of record and also added the § 103 rejections listed as (c)
and (d) to address some of the dependent claims as new grounds of rejection
in the Answer. Appellants responded to these new grounds in the response
filed Jan. 12, 2011; herein referred to as “Reply Br.”

1 While the Examiner separates various concerns regarding the language of
the claims in four separate rejections (Ans. 3-5), all of the claims are rejected
under 35 U.S.C. § 112, second paragraph.
2 Hanawa et al., US 5,972,295, issued Oct. 26, 1999.
3 Fritchie et al., US 6,022,746, issued Feb. 8, 2000.
4 Mimura et al., US 5,902,549, issued May 11, 1999,
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ANALYSIS
The § 112 Second Paragraph Rejections
“The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification. If
the claims read in light of the specification reasonably apprise those skilled
in the art of the scope of the invention, § 112 demands no more.” Miles
Labs., Inc. v. Shandon, Inc., 997 F.2d 870, 875 (Fed. Cir. 1993) (citation
omitted).
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 that the language of the claims is indefinite in this
case for the reasons stated by Appellants in their Briefs. We add the
following for emphasis.
The Examiner maintains that the Specification does not provide
support for the “means for” clauses of claim 1, and 3-5 (Ans. 3), in part
because the Specification does not use the “means for” language (id. at 13
(“Examiner notes that as the original claims of the Application contain the
“means for” language, Applicant may amend the Specification in such a
manner to include the “means for” phrase’)).
As Appellants state, there is no statutory or regulatory requirement
that the Specification use the term “means for”, rather, the requirement is
that the corresponding structure of a “means plus function” claim limitation
must be disclosed in the Specification in a way that one of ordinary skill in
the art would understand what structure will perform the function recited in
the claim (Reply Br. 2). The Examiner has not explained why one of
ordinary skill in the art would have readily understood the corresponding
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structure for each “means for” clause as detailed in the Specification (see
Ans. 3 (“The specification does not . . . provide for any specific structure
that corresponds to any of the . . . ‘means for’ phrases, as well as the other
‘means for’ recitations throughout dependent claims 3-5.”); Reply Br. 1-2;
cf. App. Br. 7-9). The Specification describes and provides flow charts
detailing the algorithms that are used for the computer controller of the
invention (e.g., Fig. 4 to Fig. 9).
The Examiner also held that the phrases “optimized launch of test
sequence” in dependent claim 2 and “launch of test sequence” in dependent
claim 14 (Ans. 4, 5) were indefinite. We, however, agree with Appellants’
position that one of ordinary skill in the art would understand the meaning of
either phrase when viewed in light of the Specification (App. Br. 10; Spec.
4:1-13). While these phrases may render the scope of claims 2 and 14
broad, claims are not indefinite on the basis of its breadth alone. See In re
Gardner, 427 F.2d 786, 788 (CCPA 1970) (“Breadth is not indefiniteness.”).
The Examiner’s position that the phrase “said using a computer
controller to determine step” in the last clause of claim 13 is indefinite is not
persuasive (Ans. 5). While the structure of the phrase may be somewhat
awkward, it is clear that the phrase is referring to the penultimate step of
claim 13, as explained by Appellants. (App. Br. 11, 12.)
The Examiner also for the first time in the Answer rejected claims 1-
20 under § 112, second paragraph because the “functions of the computer
controller with respect to the test vessels are indefinitely recited” in each
independent claim, because the test vessels are not “positive elements” of
the claim (Ans. 4). This issue underlies the prior art rejections made by the
Examiner and has been addressed by Appellants therein. Appellants’
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arguments that the “invention as a whole clearly requires each test to be
performed in a test vessel” and it is “improper to dissect this requirement out
of the claims” (App. Br. 13) are supported by the plain language of the
claims. Notably, independent claim 1 requires a “means for moving a
plurality of test vessels,” and claim 13 likewise recites that the computer
controller controls movement “of a plurality of test vessels.” Each
independent claim also requires that a computer controller “tracks a location
of each test vessel,” “controls movement of said test vessels” and
“determines a path for each test vessel,” and the Specification details how
these functions are to be performed. Accordingly, we interpret each claim as
requiring a plurality of test vessels in accordance with the language of
claims 1 and 13 (id.).
Accordingly, we reverse the Examiner’s rejection of all of the claims
under 35 U.S.C. § 112, second paragraph.

The § 102 and § 103 Rejections
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 for independent claims 1 and 13 based on
Hanawa for the reasons stated by Appellants in their Briefs. The Examiner
does not rely upon Fritchie and Mimura as applied in the § 103 rejections to
cure the deficiencies of the § 102 rejection. We add the following for
emphasis.
The Examiner dismisses the functional claim limitations regarding the
“test vessels” and the movement thereof as language that does not add any
structure to the elements of claim 1 or claim 13 (e.g., Ans. 18 (“the test
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vessels have not been positively established as elements of the device [or
method]”)). The Examiner appears to interpret these limitations as
encompassing computers that could be programmed to perform the recited
functions. (Id. (“Hanawa discloses a computer controller and thereby such
controller is capable of the recited functionalities”)). This, however, is error.
Claim 1 recites “means for moving a plurality of test vessels”; claim
13 recites “using a computer controller to control movement of a plurality of
test vessels.” The plain language of each claim requires a plurality of test
vessels.
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 as disclosed 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 controller must possess the necessary
structure, hardware or software, for example, the programming, to function
as claimed.
The Examiner’s analysis appears to be based upon a finding that
Hanawa’s controller would have been capable of performing the claimed
functions upon further modification, such as the installation of software
(Ans. 17, 18). While it might be possible to install software and/or hardware
that would allow Hanawa’s controller to perform the functions of controlling
movement, tracking location and determining the path for each of a plurality
of test vessels as required in claim 1 and 13, the “capable of” test requires
that the prior art structure be capable of performing the function without
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further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d
1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp.
v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008)). When the
functional language is associated with programming or some other structure
required to perform the function, that programming or structure must be
present in order to meet the claim limitation. Id. While in some
circumstances generic structural disclosures may be sufficient to meet the
requirements of a “controller,” see Ergo Licensing, LLC v. CareFusion 303,
Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) (citing Telcordia Techs., Inc. v.
Cisco Sys., Inc., 612 F.3d 1365, 1376–77 (Fed. Cir. 2010)), that is not the
case here.
A preponderance of the evidence supports Appellants’ arguments that
their invention requires a plurality of test vessels and likewise that their
controller requires structure that is not identically disclosed in Hanawa to
perform the functions recited in claim 1 and 13 (App. Br. 12-14; Reply Br.
4).
As the Examiner has not established that Hanawa’s apparatus and
method is identical to the claimed apparatus and method, we reverse the
Examiner’s § 102(b) rejection.
The Examiner does not rely upon Fritchie and Mimura as applied in
the § 103 rejections to cure these deficiencies. Accordingly, we reverse the
§ 103 rejections.

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DECISION
The Examiner’s decision is reversed.

ORDER
REVERSED

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