Ex Parte Williams et al

Patent Trial and Appeal Board

Sep 6, 2016

13332495 (P.T.A.B. Sep. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/332,495 12/21/2011 Chrysanthi Williams
13871 7590 09/08/2016
McCarter & English LLP I Waters
265 Franklin Street
Boston, MA 02110
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.
E-08-006-US 1022
EXAMINER
EDWARDS, LYDIA E
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
09/08/2016 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):
Elaine_Akaka@waters.com
docket@mccarter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRYSANTHI WILLIAMS,
TROY D. NICKEL, BROCK N. JACOBITES,
HARRY MALKASIAN, and AARON M. OWENS
Appeal2015-002882
Application 13/332,495
Technology Center 1700
Before JAMES C. HOUSEL, GEORGE C. BEST, and JEFFREY R. SNAY,
Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-38 of Application 13/332,495
under 35 U.S.C. § 102(b) as anticipated or under 35 U.S.C. § 103(a) as
obvious. Final Act. (February 27, 2014). Appellants 1 seek reversal of the
1 TA Instruments-Waters L.L.C. is identified as the real party in interest.
Notice of Change in the Real Party in Interest (July 28, 2015).
Appeal2015-002882
Application 13/332,495
rejection of claims 1-3 and 5-38 pursuant to 35 U.S.C. § 134(a).2 We have
jurisdiction. 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.
BACKGROUND
The '495 Application describes an apparatus for mechanically
stimulating one or more individual biologic samples. Spec. ,-i 21. The
apparatus is configured so that the stimulation applied to each biologic
sample can be varied-e.g., in duration, intensity, or nature. Id. ,-i,-i 21-24.
Claim 1 is representative of the '495 Application's claims and is
reproduced below with the limitations that play a significant role in our
analysis italicized:
1. A system for applying mechanical stimulation to a
biologic sample, the system comprising:
a first biologic sample chamber having a biologic sample holder
therein;
a support structure for holding the first biologic sample
chamber;
a first actuator that can supply a mechanical load to a biologic
sample held by the biologic sample holder, the actuator
configured to move into a first position proximate to the
chamber in which the actuator can transmit the load to the
biologic sample via a first transmission path that includes the
biologic sample holder;
a controller configured to automatically move the first actuator
into the first position; and
a second actuator which is substantially different from the first
actuator, the second actuator being automatically movable into
2 Appellants have cancelled claim 4. Amendment After Final 2 (April 25,
2014).
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Application 13/332,495
the.first position when the.first actuator is not in the.first
position so that the second actuator can transmit a load to the
first biologic sample holder via the first transmission path.
Br. 8 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, 7, 9-15, 18-20, 25, 28, 29, 32, and 35-38 are rejected
under 35 U.S.C. § 102(b) as anticipated by Vilendrer. 3 Final
Act. 3; Answer 2.4
2. Claims 3, 5, 6, 16, 17, 21-24, 27, 30, 31, and 34 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of
Vilendrer and Schulz. 5 Final Act. 11.
3. Claims 8, 26, and 33 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Vilendrer and Sittampalam. 6
Final Act. 16.
DISCUSSION
Rejection 1. Appellants argue for reversal of the Examiner's
rejection on the basis of limitations found in independent claims 1, 18, 28,
and 36. Br. 5-6. Dependent claims are alleged to be patentable for the same
3 US 2005/0153436 Al, published July 14, 2005.
4 The Examiner's Answer sets forth a revised version of this ground of
rejection that reflects Appellants' amendment of claim 1 and cancellation of
claim 4.
5 US 2007/0169572 Al, published July 26, 2007.
6 WO 2011/143294 A2, published November 17, 2011.
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Application 13/332,495
reasons for which the claims from which they depend are patentable. Id. at
6. Thus, we limit our discussion to the independent claims.
Claim 1 is directed to, in relevant part, an apparatus comprising a first
actuator and a second actuator wherein "the [first] actuator [is] configured to
move into a first position proximate to the chamber in which the [first]
actuator can transmit the load to the biologic sample via a first transmission
path that includes the biologic sample holder" and "the second actuator [is]
automatically movable into the first position when the first actuator is not in
the first position so that the second actuator can transmit a load to the first
biologic sample holder via the first transmission path."7 Claims 18, 28, and
36 contain substantively similar limitations.
The Examiner rejected claims 1, and 18, 28, and 36 as anticipated by
Vilendrer. Answer 2-10.8 For the reasons set forth below, we reverse.
7 In two instances, we have inserted the word "first" into the quoted claim
language to indicate our understanding of the claim. If prosecution of the
'495 Application continues, Appellants should consider amending the claim
for the sake of additional clarity as to which actuator is referenced.
Furthermore, we note that Figure 4 of Appellants' Specification
appears to be a sectional view of lock/unlocked gear 283 and the drive shaft
260 in the horizontal plane. Lines 4--4 in Figure 3, however, indicate that
Fig. 4 will be a sectional view in the vertical plane. If prosecution of this
application continues, this apparent contradiction should be corrected.
8 The Examiner's rejection of claim 1 is internally inconsistent. In
particular, the Examiner found that Vilendrer describes the system
comprising "a first actuator ( [206] which is driven by linear motor [204],
see paragraph 49 and FIG. 5)." Answer 3. Later, however, the Examiner
finds that Vilendrer describes "a second actuator (torsion motor [206])
which is substantially different from the first actuator (linear motor [204 ]). "
Id. at 3. Torsion motor 206 cannot be both the first and second actuators,
particularly with regard to independent claims 1, 28 and 36 which require
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Application 13/332,495
The Examiner must establish a prima facie case of anticipation under
§ 102 by showing, as a matter of fact, that all elements arranged as specified
in a claims are disclosed within the four comers of a reference, either
expressly or inherently, in a manner enabling one skilled in the art to
practice an embodiment of the claimed invention without undue
experimentation. ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d
1340, 1344 (Fed. Cir. 2012); Sanofi-Synthelabo v. Apotex Inc., 550 F.3d
1075, 1083 (Fed. Cir. 2008).
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),
to satisfy the functional limitations in an apparatus claim, the prior art
apparatus must be capable of performing the claimed function. Id. at 1478.
In this case, we determine that the Examiner erred by finding that
Vilendrer describes an apparatus in which the first and second actuators can
each be moved into a first position proximate to the biologic sample
chamber. Vilendrer provides no indication that either linear motor 204 or
torsion motor 206 can be moved from the position depicted in Vilendrer' s
Figure 5. Vilendrer, therefore, is not capable of performing the functions
recited in the '495 Application's independent claims.
Rejection 2. The Examiner rejected claims 3, 5, 6, 16, 17, 21-24, 27,
30, 31, and 34 as unpatentable over the combination of Vilendrer and
that the second actuator is "substantially different from the first actuator."
For the purpose of this opinion, we understand the Examiner to have found
that Vilendrer's linear motor 204 corresponds to the claimed first actuator
and torsion motor 206 corresponds to the claimed second actuator.
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Application 13/332,495
Schulz. Answer 11-16. In so doing, the Examiner did not find that Schulz
remedies the defects in Vilendrer' s disclosure with respect to independent
claims 1, 18, 28, and 36. We, therefore, reverse this rejection for the reasons
set forth above.
Rejection 3. The Examiner rejected claims 8, 26, and 33 as
unpatentable over Vilendrer and Sittampalam. Answer 16-1 7. In so doing,
the Examiner did not find that Sittampalam remedies the defects in
Vilendrer's disclosure with respect to independent claims 1, 18, and 28. We,
therefore, reverse this rejection for the reasons discussed in connection with
Rejection 1.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1-3
and 5-38 of the '495 Application.
REVERSED
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