Ex Parte ZHU et al

Patent Trial and Appeal Board

Aug 13, 2018

14866691 (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/866,691 09/25/2015
53897 7590 08/14/2018
DUANE MORRIS LLP - San Diego
750 B Street
Suite 2900
SAN DIEGO, CA 92101-4681
FIRST NAMED INVENTOR
Guofeng ZHU
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.
G3465-00003 7610
EXAMINER
BOWERS, NATHAN ANDREW
ART UNIT PAPER NUMBER
1799
MAIL DATE DELIVERY MODE
08/14/2018 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 GUOFENG ZHU, BAIZI MO, HONGBO ZHANG,
JIAN HOU, WEIGUO ZHAO, LIJUN BI, JIAOYU DENG,
SHENGCE TAO, HAIYING HANG, JIA WEI LI, and
XIAO YANG
Appeal2017-009549
Application 14/866,691
Technology Center 1700
Before LINDA M. GAUDETTE, DONNA M. PRAISS, and
JEFFREY R. SNAY, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-16. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 This decision makes reference to the Specification filed September 25,
2015 ("Spec."), the Final Office Action dated November 8, 2016 ("Final
Act."), the Appeal Brief filed February 17, 2017, as corrected March 16,
2017 ("Appeal Br."), the Examiner's Answer dated May 4, 2017 ("Ans."),
and the Reply Brief filed June 30, 2017 ("Reply Br.").
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Application 14/866,691
The subject matter of this appeal relates to an apparatus for dispersing
microbes in a liquid suspension sample. Spec. ,r 2. According to the
Specification, microorganisms often cluster during the processing of
biological samples and need to be dispersed before sample preparation and
analysis. Id. ,r,r 3--4. Claim 1 is illustrative ( disputed element italicized):
1. An apparatus for dispersing microbes in a biological
sample and measuring turbidity of the biological sample, the
apparatus comprising:
a transparent container for holding a quantity of the
biological sample in a sealed chamber, the container having a
closed bottom end and an open top end, wherein the open top end
is closable with a cap;
an ultrasonic transducer having a transducer head portion
that generates ultrasonic vibrations;
a container-receiving guide block for holding the container
in an operating configuration in which the container's bottom end
and the transducer head are in direct contact, wherein the
container-receiving guide block has a top end and a bottom end
and a sidewall defining a longitudinally oriented bore extending
from the top end to the bottom end of the container-receiving
guide block for receiving the container, wherein the bottom end
aligns the closed bottom end of the container with the transducer
head;
a light source for shining light into the quantity of the
biological sample for measuring the turbidity of the sample;
a lid assembly, movable between an open position and a
closed position, that is configured and adapted for engaging the
top end of the container and urging the container toward the
transducer head when the container is being held by the
container-receiving guide block and the lid assembly is in the
closed position, so that the container bottom surface is in contact
with the transducer head and the ultrasonic vibrations generated
by the transducer head is [ sic, are] transmitted through the
container wall to the sample and disperse the microbes in the
sample;
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Application 14/866,691
a photo diode for measuring the sample's turbidity by
detecting the light scattered by the microbes in the sample; and
an opening provided on the sidewall of the container-
receiving guide block, the opening providing a viewing access to
the container for the photo diode for measuring the sample's
turbidity.
Appeal Br. 9 (Claims Appendix).
The Examiner maintains, and Appellants2 appeal, the rejection of
claims 1-16 under 35 U.S.C. § 103 over Barr3 in view of Loo4 and
Connelly. 5 Ans. 2; Appeal Br. 4; Final Act. 3.
OPINION
After review of the arguments and evidence presented by both
Appellants and the Examiner, we affirm the stated rejection for essentially
the reasons provided in the Final Office Action and Answer. We add the
following primarily for emphasis.
It is the Examiner's position that claims 1-16 are unpatentable as
obvious over Barr in view of Loo and Connelly for the reasons stated on
pages 3-7 of the Final Action.
In the Appeal Brief, Appellants argue the subject matter of claims 1-
16 as a group. In accordance with 37 C.F.R. § 4I.37(c)(l)(iv), claims 2-16
will stand or fall together with claim 1, which is representative of the group.
2 The listed inventors are identified as the real party in interest on the basis
that "this patent application has not been assigned" (Appeal Br. 2), however,
the given address for each of the listed inventors is that of TB Healthcare
Co., Ltd.
3 Barr et al., US 5,139,745, issued Aug. 18, 1992 ("Barr").
4 Loo et al., US 2014/0272938 Al, published Sept. 18, 2014 ("Loo").
5 Connelly et al., US 7,808,642 B2, issued Oct. 5, 2010 ("Connelly").
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Application 14/866,691
Appellants contend that the rejection is in error because Barr's device
does not have a light source as required by claim 1. Appeal Br. 4.
According to Appellants, Barr discloses a luminometer that is used to detect
the light luminescing from a sample held in a vial and the proposed
modification of Barr with the light source of Loo and Connelly lacks a
rational factual underpinning for the Examiner's stated reason of expanding
the functionality of the device. Id. at 4--5. Appellants assert that because
Barr's device excludes background light with structures such as a shutter and
a light shield in addition to its principle purpose being to detect and measure
light luminescing from the sample, modification by adding a light source
"would require a substantial reconstruction and redesign of the elements of
Barr's luminometer as well as a change in the basic principle under which
Barr's luminometer was designed to operate." Id. at 6. According to
Appellants, the modification would render Barr's luminometer
unsatisfactory for its intended purpose because the Examiner has not
provided "the specific structural modifications that would need to be made
to the luminometer of Barr to function as both a luminometer and a device
having the specific arrangement of elements as recited in instant claims 1
and 9." Id. at 7.
The Examiner responds that Barr's luminometer includes light source
56 for position monitoring and that there is no light shield blocking light
source 56 from interacting with photodetector 48 when shutter 34 is in the
measurement position shown in Figure 3 of Barr. Ans. 5. The Examiner
further responds that Loo and Connelly teach that many types of optical
detection require a light source including detectors for measuring
luminescence, turbidity, etc. Id. at 3. The Examiner finds that Connelly
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Application 14/866,691
discloses that turbidity is a common and necessary measurement when
evaluating biological samples because it is useful in determining the extent
to which glassware has been cleaned before and after an experiment. Id.
The Examiner concludes that a person having ordinary skill in the art would
have recognized the advantage of adding a light source to enable additional
measurements in Barr's device, such as fluorescence and turbidity. Id. at 4.
According to the Examiner, the combined teachings of the cited prior art
would not involve adding extraneous light and would not change the
requirement of a shield to prevent the influx of external light to Barr's
luminometer system because a light source configured to measure
turbidity/fluorescence would likewise need a dark environment devoid of
background light interference. Id. at 4. The Examiner determines that it
would have been within the level of skill of an ordinary artisan to tum on the
added light source to deliver a beam of light to the sample fluid when
fluorescent/turbidity is to be measured in the modified Barr system, i.e., at
the time that the added light source is needed. Id. at 5.
In the Reply Brief, Appellants contend that the proposed modification
of Barr would change Barr's principle of operation because Barr's disclosure
is limited to detecting light from reagent-induced luminescence from a
sample and measuring turbidity is "wholly unrelated to the function of a
luminometer that requires absence of background light." Reply Br. 2.
Appellants also contend that the light source present in Barr's system simply
detects the position of the shutter and is blocked when the sidewalls of the
shutter fit against the sidewalls of the optical chamber creating a dark
environment in the optical chamber. Id. at 3--4.
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We are not persuaded of reversible error in the Examiner's rejection
of claim 1 based on the cited record on appeal.
Appellants do not dispute the Examiner's finding (Ans. 5) that Barr
discloses a light source. Instead, Appellants contend (Reply Br. 3--4) that
the operation of Barr's system ensures the optical chamber is provided with
a dark environment. Appellants also do not dispute the Examiner's findings
(Ans. 3--4) that Connelly teaches the benefit of including an optical
measurement for turbidity when evaluating biological samples and Loo
discloses measuring a variety of optical properties, including turbidity, in an
apparatus for dispersing microbes in a biological sample. Instead,
Appellants contend (Reply Br. 2) that Barr's disclosure is limited to
detecting light from reagent-induced luminescence from a sample because it
is a luminometer.
The difficulty with Appellants' argument is that the rejection is based
on the combined teachings of the cited prior art. "The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference. . . . Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA
1981); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is
not necessary that the inventions of the references be physically combinable
to render obvious the invention under review."); In re Nievelt, 482 F.2d 965,
968 (CCPA 1973) ("Combining the teachings of references does not involve
an ability to combine their specific structures."). "[I]f a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
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technique is obvious unless its actual application is beyond his or her skill."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007).
As the Examiner reasonably finds, the addition of a turbidity
measurement would not render Barr's device unsatisfactory for its intended
purpose because any added optical measurement would also require a dark
environment devoid of background light interference. Ans. 4--5. Because
measuring fluorescence/turbidity requires a light source to be turned on to
create a detectable emission/transmission (Ans. 5) and Loo and Connelly
teach that such a light source would have allowed one to monitor a wider
variety of optical characteristics such as turbidity, rather than just
autofluorescence (Final Act. 5), it would not have been beyond the level of
skill of a person having ordinary skill in the art to have modified Barr's
device to provide a light source for obtaining additional optical
measurements. We are not persuaded by Appellants' argument (Reply Br.
2) that the combination is not reasonable because such additional optical
measurements are "wholly unrelated to the function of a luminometer"
because analysis of a biological sample is involved in each of the cited prior
art references.
Accordingly, we affirm the stated rejection of claims 1-16 under
35 U.S.C. § 103.
DECISION
For the foregoing reasons, including those provided in the Final
Office Action and the Answer, we affirm the Examiner's decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
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ORDER
AFFIRMED
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