Ex Parte Wakamiya et al

Patent Trial and Appeal Board

Aug 31, 2016

13053921 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/053,921 03/22/2011
23373 7590 09/02/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Yuji WAKAMIYA
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.
Ql21679 9131
EXAMINER
WRIGHT, PATRICIA KATHRYN
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUJI WAKAMIYA and KAZUTOSHI TOKUNAGA1
Appeal2015-003642
Application 13/053,921
Technology Center 1700
Before BRADLEY R. GARRIS, WESLEY B. DERRICK, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 1-16 as unpatentable over
Kojima (US 2010/0001854 Al, published Jan. 7, 2010). We have
jurisdiction under 35 U.S.C. § 6.
We REVERSE.
As background, Appellants' Specification discloses that the potential
for a write error is higher in an analyzer of the type taught by Kojima where
1 Sysmex Corporation is identified as the real party in interest. App. Br. 2.
Appeal2015-003642
Application 13/053,921
the reagent remaining amount is written on the RFID tag of the reagent
container each time the reagent is dispensed (Spec. 1 ). The Specification
further discloses that such more frequent write errors are avoided in the
inventive analyzer because the reagent remaining amount is written only
when the repeated aspiration of reagent is completed (id. at 1-3).
Appellants claim a specimen analyzer for measuring a plurality of
samples comprising: a reagent container holder which holds a reagent
container comprising a storage medium (e.g., RFID tag) configured to store
a remaining amount of a reagent contained in the reagent container; and a
controller which is programmed to: cause a reagent dispenser to
continuously carry out repeated aspiration of the reagent from the reagent
container and dispensing the aspirated reagent to a reaction chamber so that
repetitious measurements with respect to the plurality of samples are
executed, and write the remaining amount of the reagent stored in a memory
to the storage medium of the reagent container, by using an antenna,
only when the repeated aspiration for executing the repetitious
measurements corresponding to the plurality of samples is
completed, wherein the controller is further programmed to
postpone writing the remaining amount of the reagent to the
storage medium until the repeated aspiration for executing the
repetitious measurements corresponding to the plurality of
samples is completed
(sole independent claim 1 ).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A specimen analyzer for measuring a plurality of samples, the
specimen analyzer comprising:
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Application 13/053,921
a reagent container holder which holds a reagent container comprising
a storage medium configured to store a remaining amount of a reagent
contained in the reagent container;
a reagent dispenser which aspires the reagent from the reagent
container and dispenses the aspired reagent to a reaction container for
preparing a specimen from a sample and the reagent;
a measurement section which measures the specimen prepared from
the sample and the reagent;
a memory which stores the remaining amount of the reagent contained
in the reagent container;
an antenna which wirelessly communicates with the storage medium
using radio wave; and
a controller which is programmed to:
cause the reagent dispenser to continuously carry out repeated
aspiration of the reagent from the reagent container and dispensing the
aspirated reagent to the reaction container so that repetitious measurements
with respect to the plurality of samples are executed,
update the remaining amount of the reagent stored in the
memory every time the reagent dispenser aspirates the reagent from the
reagent container, and
write the remaining amount of the reagent stored in the memory
to the storage medium, by using the antenna, only when the repeated
aspiration for executing the repetitious measurements corresponding to the
plurality of samples is completed,
wherein the controller is further programmed to postpone writing the
remaining amount of the reagent to the storage medium until the repeated
aspiration for executing the repetitious measurements corresponding to the
plurality of samples is completed.
In the § 103 rejection of claim 1, the Examiner finds that Kojima
discloses a specimen analyzer comprising a reagent container comprising a
storage medium (i.e., RFID tag) for storing a remaining reagent amount and
a controller which is programmed to effect aspiration of reagent from the
container and to write a remaining reagent amount to the storage medium for
each such aspiration (Ans. 3--4) but fails to disclose the claim 1 feature
wherein the writing function occurs only upon completion of the repeated
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Appeal2015-003642
Application 13/053,921
aspiration for executing repetitious measurements corresponding to a
plurality of samples (id. at 4--5). Regarding this deficiency, the Examiner
concludes:
However, it would have been obvious to one of ordinary
skill in the art at the time of the claimed invention to write the
remaining amount of the reagent into the storage medium of
Kojima only after repeated aspiration for executing the
repetitious measurements are complete and postpone writing,
the remaining amount of the reagent to the storage medium
until the repeated aspiration for executing the repetitious
measurements corresponding to the plurality of samples is
completed since reducing the number of times information is
written to the storage medium on the reagent container will
reduce the energy cost necessary to perform such writing and
conserve storage space on the storage medium.
Id. at 5 (underlining added).2
Appellants argue that the proposed modification of Kojima would not
have been motivated by a desire to reduce energy cost as urged by the
Examiner because the energy necessary for writing to Kojima's RFID tag "is
hardly noticeable or measurable due to its neglig[ible] electrical
requirements" (Reply Br. 3). As for the Examiner's motivation of
conserving storage space on the storage medium (i.e., RFID tag), Appellants
2 The Examiner's above underlined motivation for modifying Kojima
replaces the motivation of decreasing the risk of writing inaccuracies that
was previously expressed in the Final Action (Final Action 7, 11 ).
Apparently, the Examiner dropped the previous motivation in response to
Appellants' compelling argument that such motivation was based on
impermissible hindsight (App. Br. 8). Likewise, the Examiner appears to
have dropped the previously advanced§ 102 rejection of claims 1-16 (Final
Action 6-7) in response to Appellants' well taken argument that claim 1 is
not anticipated by Kojima (App. Br. 6-7).
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Application 13/053,921
logically argue that the storage space would be no different whether the
remaining reagent amount is written only after all measurements are
completed as claimed or after each individual measurement as in Kojima (id.
at 3--4).
Appellants' arguments have persuasive merit particularly in light of
the Examiner's failure to provide any evidence that reducing energy cost and
conserving storage space when writing to Kojima's RFID tag would have
meaningful significance to one with ordinary skill in this art. Therefore, we
do not sustain the§ 103 rejection of claims 1-16 over Kojima.
The decision of the Examiner is reversed.
REVERSED
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