Ex Parte Troup et al

Board of Patent Appeals and Interferences

Jul 14, 2011

10355571 (B.P.A.I. Jul. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHARLES D. TROUP and
HERBERT F. CATTELL
__________

Appeal 2011-000405
Application 10/355,571
Technology Center 1600
__________

Before TONI R. SCHEINER, ERIC GRIMES, and FRANCISCO C.
PRATS, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
and apparatus for processing biopolymer arrays. The Examiner has rejected
the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
STATEMENT OF THE CASE
The Specification discloses that biopolymer arrays are read with “an
array reader which may be expensive and which may take some time to read
Appeal 2011-000405
Application 10/355,571

2
each array. On the other hand, many users will not need to occupy such a
reader full-time.” (Spec. 2.) The Specification discloses that “to reduce per
user costs[,] many different users may send their arrays for reading to a same
array reader. The read results for the … different arrays can be sent to a
common computer to which each user may visit and retrieve the results for
their array.” (Id.)
Claims 1-25 are on appeal. Claim 1 is representative and reads as
follows:
1. A method of processing biopolymer arrays, comprising:
(a) reading a different array identifier for each biopolymer array from
a tag associated with that array;
(b) reading at least some of the biopolymer arrays and saving results
from each read biopolymer array in a memory linked with the read identifier
for that array;
(c) receiving different communication addresses and a selection of an
array identifier for each communication address;
(d) for at least some of the read biopolymer arrays of step (b),
matching the saved results for each array with one of the different
communication addresses using the identifier, and transmitting the saved
results for those arrays to the matched different communication addresses.

The Examiner has rejected claims 1-25 under 35 U.S.C. § 103(a) as
being obvious in view of Schembri1 and Nova.2 The Examiner finds that
“Schembri teaches reading a biopolymer array and saving [the] results … in
a memory linked with the read array identifier” (Answer 5). The Examiner
finds that Schembri’s method meets most of the limitations of the claims, but
Schembri does not “teach the use of a plurality of arrays and, therefore, does

1 Schembri, GB 2,319,838, Mar. 6, 1998
2 Nova et al., US 6,136,274, Oct. 24, 2000
Appeal 2011-000405
Application 10/355,571

3
not expressly teach receiving different communication addresses nor
matching saved results [to] one of a plurality of different communication
addresses” (id. at 6). “Nova et al. is relied upon for the teaching of matching
the saved information stored on a particular matrix-with-memory to a unique
communication address in a computer system associated with that particular
matrix-with-memory” (id. at 9).
The Examiner concludes that
it would have been obvious … to improve upon [Schembri’s]
tagged biopolymer arrays … by incorporating them into the
drug discovery protocols and drug discovery units for the
matrices-with-memory, as taught by Nova et al, thereby
improving upon the arrays and screening techniques set forth by
Schembri in order to perform high-throughput screening with
seamless remote informatics management as set forth by Nova.
(Id. at 10-11.)
Appellants contend that the references do not disclose or suggest the
steps of receiving different communication addresses and associated array
identifiers, matching saved results to one of the different communication
addresses, and transmitting the results of reading particular arrays to the
matched, different communication addresses (Appeal Br. 14).
We agree with Appellants that the Examiner has not adequately
explained how the cited references would have made obvious the disputed
claim limitations. The Examiner has acknowledged that Schembri does not
teach receiving different communication addresses or matching saved results
to one of them (Answer 6), but finds that Nova would have suggested these
limitations (id. at 7-9).
The Examiner states that “Nova et al. is relied upon for the teaching of
matching the saved information stored on a particular matrix-with-memory
Appeal 2011-000405
Application 10/355,571

4
to a unique communication address in a computer system associated with
that particular matrix-with-memory” (id. at 9). The Examiner has not,
however, adequately explained how that disclosure – storing the information
relating to different matrices in different parts of a computer storage
device – meets the limitations of claim 1 requiring “receiving different
communication addresses and a selection of an array identifier for each
communication address” (claim 1(c), emphasis added) and “transmitting the
saved results for those arrays to the matched different communication
addresses” (claim 1(d), emphasis added).
The Specification describes arrays being read at a “reader station”
(Spec. 11: 22-23) and communicated to different “user stations” (id. at
12: 27-32). The Specification states that the communication address for a
particular user station is transmitted along with an identifier for a particular
array (id. at 14: 19-31) and the results for the appropriate array(s) are
transmitted to the communication address (id. at 15: 21-27).
The Specification states that “a ‘communication address’ may be any
way of identifying a station (such as any of stations 220) to which read
results or status messages for a particular array should be transmitted over
communication channel 180. For example, a communication address may
be an electronic mail (‘e-mail’) address, Internet Protocol (‘IP’) address,
telephone number, and the like” (id. at 15: 3-7).
While limitations are not read into the claims from the Specification,
the claims must be interpreted in light of the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997) (“[T]he PTO applies to the verbiage of
the proposed claims the broadest reasonable meaning of the words in their
Appeal 2011-000405
Application 10/355,571

5
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant’s specification.” (emphasis added)).
Here, when the claims are read in light of the Specification, the claim
term “different communication addresses” cannot be interpreted to simply
require writing results for different read arrays to different parts of a
computer storage device. Rather, the claim term requires receiving and
transmitting results to different addresses in a network such as a telephone
system or a computer network (e.g., an email address or IP address).
The Examiner has not established that this aspect of claim 1 would
have been obvious based on Schembri and Nova. Thus, the Examiner has
not adequately explained how the cited references would have made obvious
the method defined by claim 1. The rejection of independent claim 1 and
dependent claims 2-20 and 22-25 is reversed.
Claim 21, the only other independent claim on appeal, like claim 1,
requires the steps that are discussed above relating to different
communication addresses. The rejection of claim 21 is reversed for the
reasons discussed above.
SUMMARY
We reverse the rejection of claims 1-25 under 35 U.S.C. § 103(a).

REVERSED

lp