Ex Parte Wu et al

Patent Trial and Appeal Board

Jan 26, 2017

13926101 (P.T.A.B. Jan. 26, 2017)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/926, 101 06/25/2013
8156 7590 01/30/2017
JOHN P. O'BANION
O'BANION & RITCHEY LLP
400 CAPITOL MALL SUITE 1550
SACRAMENTO, CA 95814
FIRST NAMED INVENTOR
Ming Chang Wu
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.
BK-2004-E93-3-R 5751
EXAMINER
LEGASSE JR, FRANCIS M
ART UNIT PAPER NUMBER
2878
NOTIFICATION DATE DELIVERY MODE
01/30/2017 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):
docketing@intellectual.com
jpo@intellectual.com
sek@intellectual.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MING CHANG WU, PEI-YU CHIOU, and
AARON T. OHTA
Appeal2016-000348
Application 13/926, 101
Technology Center 2800
Before JAMES C. HOUSEL, JENNIFER R. GUPTA, and LILAN REN,
Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 5, 9--27, 29-52, 54---61, and 63-72. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 In this Decision, we refer to the Non-Final Office Action mailed October 2,
2014 ("Non-Final Act."), the Appeal Brief filed March 17, 2015 ("App.
Br."), the Examiner's Answer mailed August 4, 2015 ("Ans."), and the
Reply Brief filed October 5, 2015 ("Reply Br.").
2 Appellants identify the real party in interest as Regents of the University of
California and Berkeley Lights, Inc. App. Br. 1.
Appeal2016-000348
Application 13/926, 101
Claim 5, reproduced below, is illustrative of the claims on appeal.
5. A process of manipulating cells or particles by light
induced dielectrophoresis in an apparatus comprising a first
layer, a second layer, a light source, and a microvision-based
pattern recognition subsystem, said process comprising:
applying a biasing voltage between said first layer and
said second layer at least one of which comprises a
photoconductive material configured for conversion of received
light to a local electric field in a vicinity of said received light,
wherein said cells or particles are disposed in a volume between
said first layer and said second layer; and
controlling with said microvision-based pattern
recognition subsystem, in response to registering positions of
said particles or cells as determined from microscopic imaging,
a pattern of light projected from said light source onto said
photoconductive material to create a corresponding pattern of
virtual electrodes at said surface of said photoconductive
material, each said virtual electrode attracting or repelling ones
of said cells or particles in said volume by dielectrophoresis.
DISCUSSION
The application on appeal is a division of U.S. Patent Application
Serial No. 13/287,093, which was filed on November 1, 2011, and issued as
U.S. Patent No. RE 44,711 on January 21, 2014, which is a reissue of U.S.
Patent Application Serial No. 11/105,304 (hereinafter "the
'304 application"), which was filed April 12, 2005, and issued as U.S. Patent
No. 7,612,355 B2 (hereinafter "the '355 patent") on November 3, 2009.
During prosecution of the '304 application, the Examiner issued
Restriction Requirement. The restriction set forth two groups of claims as
follows:
I: Claims 7-37, drawn to apparatus for manipulating cells or particles
by light induced dielectrophoresis, classified in class 204, subclass 643; and
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Application 13/926, 101
II: Claims 40-43 and 48-52, drawn to a method of manipulating
particle or cellular objects retained within a liquid, classified in class 435,
subclass 173 .1.
The Restriction Requirement determined Inventions I and II (hereafter
referred to as "Groups I and II") to be related, but patentably distinct.
In response to the Restriction Requirement, Applicants elected to
prosecute Group I, apparatus claims 7-37. Applicants' response did not
dispute the propriety of the Examiner's restriction requirement, and canceled
the non-elected claims.
On November 3, 2009, the '304 application issued as the '355 patent,
containing four apparatus claims. A divisional application presenting the
non-elected claims was never filed during the pendency of the
'304 application.
On November 1, 2011, Applicants filed Reissue Application Serial
No. 13/287,093. The Examiner issued a two-way restriction between claims
directed to an apparatus (Group I, claims 1-25, 67-82, and 88-94), and
claims directed to a process (Group II, claims 26-66, 83-87, 95-104, and
105-111).
In response to the restriction, Applicants elected the apparatus claims
(Group I), and canceled the non-elected claims.
On June 25, 2013, Applicants filed the instant reissue application,
which is a division of Reissue Application Serial No. 13/287,093. All
original patent claims were canceled and reissue claims 5, 9-27, 29---61, and
63-72, directed to a process are pending.
Claims 5, 9-27, 29-52, 54---61, and 63-72 stand rejected as being
based upon a defective reissue declaration under 35 U.S.C. § 251.
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Application 13/926, 101
Appellants argue the claims as a group. See generally App. Br. 3-9.
We select claim 5 as representative of the rejected claims, and the remaining
claims on appeal will stand or fall with claim 5.
The requirements for reissuance of a patent are set forth in
35 U.S.C. § 251. The first paragraph of Section 251 reads as follows:
Whenever any patent is, through error, deemed wholly or partly
inoperative or invalid, by reason of a defective specification or
drawing, or by reason of the patentee claiming more or less
than he had a right to claim in the patent, the Director shall, on
the surrender of such patent and the payment of the fee required
by law, reissue the patent for the invention disclosed in the
original patent, and in accordance with a new and amended
application, for the unexpired part of the term of the original
patent. No new matter shall be introduced into the application
for reissue. [Emphasis added].
The Federal Circuit has explained that section 251 "is remedial in
nature, based on fundamental principles of equity and fairness, and should
be construed liberally." In re Weiler, 790 F.2d 1576, 1579 (Fed. Cir. 1986).
Nevertheless, the court has also made it clear that "not every event or
circumstance that might be labeled 'error' is correctable by reissue." Id.
Appellants argue that the Examiner erred in determining that the
"process claims, regardless of their subject matter, are precluded from
reissue due to the Restriction and subsequent Election in the Original
Application." App. Br. 6. Specifically, Appellants contend that our
reviewing court's decision in In re Doyle, 293 F.3d 1355 (Fed. Cir. 2002),
not In re Orita, 550 F.2d 1277 (CCPA 1977), is instructive in deciding
whether Appellants' failure to present the process claims on appeal is an
error correctable by reissue. Id. at 7; see also Reply Br. 2-3.
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Application 13/926, 101
Doyle involved a matter of first impression: "whether failure to
present a so-called linking claim, a claim broad enough to read on---or
link-two or more groups of claims subject to a restriction requirement, is
an error correctable by resissue." Doyle, 293 F.3d at 1358. The Federal
Circuit answered this question in the affirmative. Id. at 1360. In reaching its
conclusion, the court found that the "Orita doctrine"3 did not apply to the
facts involved in Doyle for two reasons: (1) the new claims were neither
identical nor substantially similar to the nonelected claims, and (2) the new
claims could have prosecuted with the elected group without running afoul
of the restriction requirement. Id.
We agree with the Examiner that the facts and circumstances in the
present reissue application are distinguishable from those of Doyle, which
carved out a narrow exception to the Orita doctrine. As the Examiner points
out, the claims on appeal in the present case are distinguishable from the
claims at issue in Doyle because they are not directed to genus claims that
are broad enough to read on or link both the elected and non-elected claims.
The fact that the claims presented in Doyle were linking claims was at the
heart of the matter decided in Doyle. Doyle, 293 F.3d at 1358; see also
Landmark Screens LLC v. Morgan, Lewis, & Bockius, LLP, 676 F.3d 1354,
1364 (Fed. Cir. 2012) (explaining that Doyle is properly invoked "[w]hen
the reissue claims are broader than the issued claims" (emphasis added)).
Thus, despite Appellants' contentions, we do not consider this difference to
be "immaterial." See Reply Br. 2.
3 The "Orita doctrine" precludes applicants from obtaining substantially
identical claims to those of non-elected groups identified in an examiner's
restriction requirement when such claims could not have been prosecuted in
the application from which they were restricted. Doyle, 293 F.3d at 1359.
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Application 13/926, 101
As discussed above, in the present case Appellants acquiesced to the
restriction requirement in the '304 application, electing apparatus claims
(Group I), and cancelling the non-elected claims (Group II, method claims),
and then, in this reissue, introduced new process claims 5, 9-27, 29-52, 54--
61, and 63-72. Unlike the new claims in Doyle, the process claims on
appeal are not so broad that they would read on or link the claims of
Groups I and II in the restriction requirement made in the '304 application.
Rather, Appellants' new process claims are narrower than the original non-
elected group of method claims, which are not limited to being performed in
an apparatus comprising "a microvision-based pattern recognition
subsystem" configured to control light projected from a light source "in
response to registering positions of said particles or cells as determined from
microscopic imaging."
Even if the claims are not viewed as narrower than the original non-
elected group of method claims, as the Examiner point outs, the process
claims on appeal are patentably distinct from the apparatus claims elected
during prosecution of the '304 application. Non-Final Act. 4; Ans. 6-7. As
a result, if presented to the Examiner during the prosecution of the
'304 application, the new process claims would have been restricted into
either original Group II or a group other than the elected Group I.
Consequently, Appellants could not have prosecuted the process claims on
appeal with the issued claims.
Moreover, as well-stated by the Examiner in the Answer (Ans. 8),
Appellants lost their ability for rejoinder by voluntarily cancelling the
withdrawn claims before rejoinder occurred. Id. (citing Manuel of Patenting
Examining Procedure§ 821.04(b) ("MPEP")).
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Application 13/926, 101
The facts in the instant appeal track more closely to Orita than to
Doyle. Orita, 550 F.2d at 1278-1279. Although the appealed reissue claims
are not identical to the canceled, non-elected claims of the original patent
application, they are narrower than, and encompass the subject matter of,
each of the canceled, non-elected claims. Appellants, here, acquiesced to the
restriction requirement in the '304 application by cancelling the non-elected
claims (method claims), and are now trying to obtain claims of the same
type as the canceled claims via reissue. Orita, 550 F.2d at 1280; see also
In re Smyser, 135 F.2d 747, 749-50 (CCPA 1943), and Jn re Cornell,
150 F.2d 702, 704 (CCPA 1945). Under the rationale set forth in Smyser
and Cornell (cases upon which Orita rests), however, Appellants are not
entitled to obtain method claims per se, regardless of scope, because they
conceded by their acquiescence in the restriction requirement that they were
not entitled to claim method claims in their original application. Smyser,
135 F.2d at 751; see also Cornell, 150 F.2d at 704.
Finally, as pointed out by the court in Orita:
. . . granting by reissue claims substantially identical to those
non-elected in application I would be ignoring the proper
restriction requirement set forth in that application in which
appellants acquiesced. Indeed, appellants' misapplication of
section 251 would, if permitted, circumvent the copendency
requirement of section 120, incorporated by reference in section
121 (see note 2 supra). Should appellants prevail, the
copendency requirement would be meaningless, for should an
applicant fail to file a divisional application while maintaining
copendency as required by section 120, he could simply revert to
section 251 in order to cure his mistake. Section 251 is not a
pancea designed to cure every mistake which might be
committed by an applicant or his attorney ... [Footnote omitted].
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Application 13/926, 101
Orita, 550 F.2d at 1280-1281. The same concerns of Orita are equally
applicable here.
In sum, a preponderance of the evidence supports the Examiner's
conclusion that Appellants' asserted error is not an error correctable by
reissue. Non-Final Act. 5; see also Reply Br. 4 (where Appellants state that
their mistake was "failure to add- in the Response of February 26, 2009-
method claims having each and every limitation of apparatus claims 12 and
24."). Accordingly, we sustain the Examiner's rejection of claims 5, 9--27,
29--52, 54---61, and 63-72.
DECISION
For the above reasons, the Examiner's rejection of claims 5, 9-27, 29-
52, 54---61, and 63-72 is 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
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