Ex Parte Stephens et al

Patent Trial and Appeal Board

Apr 25, 2016

11639586 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/639,586 12/15/2006
95723 7590 04/25/2016
Muirhead and Satumelli, LLC and
Ventana Medical Systems, Inc.
200 Friberg Parkway
Suite 1001
Westborough, MA 01581
FIRST NAMED INVENTOR
Randy Stephens
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.
VMS-003US 5645
EXAMINER
WRIGHT, PATRICIA KATHRYN
ART UNIT PAPER NUMBER
1798
MAILDATE DELIVERY MODE
04/25/2016 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 RANDY STEPHENS and BRIAN H. KRAM
Appeal2014-008960
Application 11/639,586
Technology Center 1700
Before CHUNG K. PAK, MICHELLE N. ANKENBRAND, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal 1 under 35 U.S.C. § 134 from the Examiner's
decision2 rejecting claims 2, 16, 18, 19, 22, 28, 31, 32, and 34--36. Although
the action appealed from was a non-final rejection, we have jurisdiction
pursuant to 35 U.S.C. §§ 6 and 134 since the claims have been twice
presented and rejected. See Ex parte Lemoine, 46 USPQ2d 1420, 1423
(BPAI 1994). We affirm.
1 Appellants identify the real party in interest as Ventana Medical Systems,
Inc. Appeal Brief filed May 15, 2014 ("App. Br."), 1.
2 Non-Final Office Action mailed December 13, 2013 ("Non-Final Act.").
Appeal2014-008960
Application 11/639,586
The claims are directed to a method of coordinating tissue sample
information in a laboratory staining process. Claim 2, reproduced below, is
illustrative of the claims on appeal.
2. A method of coordinating tissue sample information in a
laboratory staining process comprising:
reading cassette data identifying a tissue cassette comprising a
tissue sample to be tested, said reading being performed using a
LIS-networked machine-vision system that reads machine-
readable information including the cassette data from a data
element associated with the tissue cassette and encoded with the
machine-readable information;
transferring, over a network using the LIS-networked machine-
vision system, the machine-readable information associated with
said tissue sample to an LIS;
accessing, using a computer, a database of the LIS and the
cassette data, test instructions for said tissue sample, wherein the
cassette data is correlated with the tissue sample and tests to be
performed to the tissue sample, the test instructions determining
a number of tissue sections to be cut from the tissue sample and
protocols to be performed on respective tissue sections;
instructing, using a computer, a label printer to print a required
number of slide labels encoding machine readable test protocol
identifiers for the protocols to be performed on the respective
tissue sections, wherein the machine readable test protocol
identifiers directly identify the protocols independently of any
information identifying the respective tissue sections;
printing, using the label printer, said slide labels;
attaching each of said slide labels to one of a plurality of slides;
placing at least one of the tissue sections on each of said plurality
of slides; and
staining the at least one tissue section on each of the plurality of
slides in accordance with at least one of the protocols uniquely
identified by one of the machine readable test protocol identifiers
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Appeal2014-008960
Application 11/639,586
encoded on one of the slide labels attached to said each slide;
wherein said staining said each slide includes reading from the
one slide label the one machine readable test protocol identifier
uniquely corresponding to the at least one protocol from the one
slide label and then using the one machine readable test protocol
identifier to look up one or more steps in a protocol table,
wherein said one or more steps are peiformed in said staining
for the at least one protocol.
App. Br. Al (Claims Appendix) (emphasis added).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 2, 18, 19, and 22 under 35 U.S.C. § 102(b) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable
over Torre-Bueno et al. (US 2003/0120633 Al, published June 26,
2003); and
2. Claims 16, 28, 31, 32, and 34--36 under 35 U.S.C. § 103(a) as
unpatentable over Torre-Bueno in view of Showalter et al.
(US 2005/0159982 Al, published July 21, 2005).
Examiner's Answer mailed June 4, 2014 ("Ans."), 3, 7.
Claims 2, 18, 19, and 22
Appellants argue for patentability of claims 2, 18, 19, and 22, subject
to the first ground of rejection, as a group. See App. Br. 2-7. We choose
independent claim 2 as representative of this group, and claims 18, 19, and
22 stand or fall with claim 2.
Appellants argue the rejection should be reversed because the
Examiner erred in finding Torre-Bueno discloses or suggests printing slide
labels encoding machine readable test protocol identifiers for protocols to be
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Appeal2014-008960
Application 11/639,586
performed on respective tissue sections where "the machine readable test
protocol identifiers directly identify the protocols independently of any
information identifying the respective tissue sections," as in claim 2. Reply
Brief filed August 4, 2014 ("Reply Br."), 4--5.
The term "test protocol identifier" is defined in the Specification as
"the unique number used to associate a protocol with its individual steps or
the recipe for the protocol." Spec. 11: 10-11. The Specification explains
that the test protocol identifier typically is encoded in a machine-readable
identifier such as a barcode label, so that when an automated staining system
reads the slide label, it uses the protocol identifier to look up in a protocol
table the steps for performing the staining operation. Id. at 11:15-18.
The Examiner finds Torre-Bueno teaches printing labels with unique
identifiers on a slide (Torre-Bueno i-fi-f 12, 23). Ans. 10-11. The Examiner
finds that Torre-Bueno teaches that the labels "may be designed to hold
information used in a laboratory equipped with scanners or other devices for
inputting data into the system" and the information "may be patient
information and/or information concerning the tests to be run" (Torre-
Bueno i127). Non-Final Act. 4--5. Torre-Bueno discloses that the unique
identifier may be in the form of a barcode (Torre-Bueno i-f 22), and the
scanners may be barcode readers or a similar device that can "input" data
directly or indirectly into a computer or computer system (Torre-
Bueno i-f 10). Thus, a preponderance of the evidence supports the
Examiner's finding that Torre-Bueno teaches or would have suggested
printing slide labels with machine readable test protocol identifiers
(barcodes) that directly identify the protocols independently of any
information identifying the respective tissue sections.
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Appeal2014-008960
Application 11/639,586
Appellants argue that the Examiner erred in finding Torre-Bueno
discloses or suggests "reading and using the machine readable protocol
identifiers encoded on the slide labels in staining the tissue sections of the
slides." Reply Br. 7-8.
Torre-Bueno teaches samples are cut for placement on slides, labeled
with barcodes (machine readable identifiers), and then loaded on an
autostainer that "reads" the barcodes and "checks" a central database to see
what stains need to be applied to the slide (i.e., steps to be performed in
staining the slide). Torre-Bueno i-fi-137-38. Torre-Bueno teaches that the
sample can include tissue and the label can hold information concerning the
tests to be run on the slide (protocols). Torre-Bueno i-fi-127, 33. Based on
this disclosure, we are not convinced the Examiner reversibly erred in
finding Torre-Bueno teaches or would have suggested reading and using the
one machine readable test protocol identifier to stain the tissue section on the
slide.
Appellants contend that Torre-Bueno teaches using a machine
readable sample identifier, not a machine readable test protocol identifier, to
access the central database which contains information regarding how the
stainer should process the slides. See Reply Br. 8. As discussed above,
Torre-Bueno teaches slide labels with unique identifiers (machine readable
identifiers in the form of a barcode) that may hold information concerning
the tests to be run on the slide. Torre-Bueno i-fi-122, 27. Torre-Bueno further
teaches that the autostainer reads the labeled slides and checks the central
database to see what stains need to be applied to each slide. Id. i138. Thus,
the Examiner's finding that Torre-Bueno teaches or would have suggested
using a machine readable test protocol identifier to access a central database
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Appeal2014-008960
Application 11/639,586
that contains information regarding how the stainer should process the slides
(see Non-Final Act. 5---6) is supported by Torre-Bueno's disclosure.
Appellants argue that the Examiner erred in rejecting claims 2, 18, 19,
and 22 under 35 U.S.C. § 102(b) because paragraph 12 of Torre-Bueno
"teaches away" from a slide label including a machine readable protocol
identifier, as recited in claim 2. Reply Br. 10. This argument is not
persuasive. Although teaching away is relevant to an obviousness analysis,
"whether a reference 'teaches away' from [an] invention is inapplicable to
an anticipation analysis." Clearvalue, Inc. v. Pearl River Polymers, Inc.,
668 F.3d 1340, 1344 (Fed. Cir. 2012) (quoting Celeritas Techs., Ltd. v.
Rockwell Int'! Corp., 150 F. 3d 1354, 1361 (Fed. Cir. 1998)). Moreover, as
discussed above, the preponderance of the evidence supports the Examiner's
finding that Torre-Bueno teaches or would have suggested printing slide
labels with machine readable test protocol identifiers (barcodes) that directly
identify the protocols independently of any information identifying the
respective tissue sections. See Torre-Bueno i-fi-f 12, 23, 27.
In sum, Appellants have not presented any arguments which persuade
us of error in the Examiner's finding that Torre-Bueno teaches or suggests
all the limitations of independent claim 2. Accordingly, we sustain the
Examiner's anticipation and obviousness rejection of claims 2, 18, 19, and
22 over Torre-Bueno.
Claims 16, 28, 31, 32, 34, and 35
Claims 16, 28, 31, 32, 34, and 35 depend directly (claims 16, 28, and
3 5) or indirectly (claims 31, 3 2, and 34) from independent claim 2.
Appellants argue that Showalter does not overcome the deficiencies of
Torre-Bueno in the rejection of claim 2. See App. Br. 7-8; see also Reply
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Application 11/639,586
Br. 10. This argument is not persuasive of error in the Examiner's rejection
because, for the reasons discussed above, we are not persuaded of any
deficiencies in Torre-Bueno's disclosure. Accordingly, we sustain the
obviousness rejection of claims 16, 28, 31, 32, 34, and 35.
Regarding claim 36, 3 Appellants argue that Torre-Bueno does not
disclose or suggest having a slide label with two different identifiers and
associated different uses-(1) a machine readable test protocol identifier for
protocols to be performed on the tissue sample, and (2) a case number for
tracking the tissue sample in the laboratory. Reply Br. 11; see also
Spec. 15: 16-17 (explaining that the case number is identifying information
associated with the tissue sample). We are not persuaded by this argument.
As the Examiner properly finds, Torre-Bueno teaches using machine
readable slide labels designed to hold patient information and/or information
concerning tests to be run (Torre-Bueno i-fi-f 12, 27) (emphasis added). See
Non-Final Act. 4--5. Accordingly, we sustain the rejection of claim 36.
DECISION
The rejections are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
3 Claim 36 depends from claim 35, which depends from independent
claim 2. The Examiner relies solely on Torre-Bueno for teaching the
limitations of claim 36. Thus, the Examiner's rejection of claims 2, 18, 19,
and 22 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative
under 35 U.S.C. § 103(a) as unpatentable over Torre-Bueno (Rejection 1)
should have included claim 36 as well.
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