Ian Chamberlin et al.

Patent Trials and Appeals Board

Nov 2, 2021

2021001306 (P.T.A.B. Nov. 2, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/844,440 07/27/2010 Ian Chamberlin 26405 8070
23389 7590 11/02/2021
SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
EXAMINER
FLINDERS, JEREMY C
ART UNIT PAPER NUMBER
1639
NOTIFICATION DATE DELIVERY MODE
11/02/2021 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):
Docket@SSMP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN CHAMBERLIN, CHARLES M. CLINTON,
ELI N. GLEZER, BANDELE JEFFREY-COKER, MANISH KOCHAR,
SANDOR KOVACS, DT LE, AARON LEIMKUEHLER,
GREG PINCKNEY, KRISTIAN ROTH, GEORGE SIGAL, and FEI YIN
Appeal 2021-001306
Application 12/844,440
Technology Center 1600
Before DEBORAH KATZ, JOHN G. NEW, and ROBERT A. POLLOCK,
Administrative Patent Judges.
KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review,2 under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1–3, 7, 11–26, 38–44, 48–62, 73–77
and 112–117. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party-in-interest as MESO SCALE
TECHNOLOGIES, LLC. (Appeal Br. 2.)
2 We consider the Final Office Action issued March 19, 2020 (“Final Act.”),
the Appeal Brief filed August 26, 2020 (“Appeal Br.”), the Examiner’s
Answer issued on October 27, 2020 (“Ans.”), and the Reply Brief filed
December 9, 2020 (“Reply Br.”) in reaching our decision.
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Appellant’s Specification is directed to an apparatus for conducting
assays in a multi-well plate format. (See Spec. 9, ll. 9–10.) The apparatus
may include a test plate and a corresponding auxiliary plate. (See id. at 9, ll.
16–26.)
Appellant’s claim 1 recites:
A kit for conducting luminescence assays in multi-well
plates, the kit comprising:
(a) a multi-well assay test plate comprising a plurality of
assay wells for said assay and a test plate identifier; and
(b) an auxiliary plate comprising a plurality of auxiliary
wells, said auxiliary plate comprising (i) dry assay reagents for
use in said assay with said assay test plate, and (ii) an auxiliary
plate identifier,
wherein the test plate identifier or auxiliary plate
identifier comprises a device selected from the group consisting
of an Electrically Erasable Programmable Read Only Memory
(EEPROM) and a Radio Frequency Identification device
(RFID), and
wherein the test plate identifier and the auxiliary plate
identifier store assay information used to identify the test plate
and auxiliary plate, respectively, and wherein the device further
comprises information that identifies both the test plate and the
auxiliary plate as a component of the kit.
(Appeal Br. 14.)
Independent claim 43 recites an auxiliary plate having the same
features as the auxiliary plate of claim 1. (See id. at 18.) Independent claim
112 recites a test plate having the same features as the test plate of claim 1.
(See id. at 22.)
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The Examiner rejects claims 1, 3, 7, 14, 43, 44, and 112–114 under 35
U.S.C. § 103(a) over Burow3 and Oldham.4 (See Ans. 3–6; Appeal Br. 5.)
The Examiner rejects claims 1–3, 7, 11–26, 38–44, 48–62, 73–77, and 112–
117 under 35 U.S.C. § 103(a) over Burow, Oldham, Glezer2007,5
Glezer2003,6 and Gatto-Menking.7 (Ans. 6–9; Appeal Br. 5.) Appellant
does not argue for the separate patentability of any of the rejected claims.
(See Appeal Br. 12.) We focus on claim 1 in our review. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Findings of Fact
1. Burow is directed to a system for high throughput processing of
chemical and biochemical libraries using detectors, including luminescence
detectors. (Burow ¶¶ 9, 20; Ans. 3.)
2. Burow teaches that the system includes a plurality of sample
holders, e.g., multi-well plates, comprising a plurality of test samples or
compounds, including dried or fluidic samples. (Burow ¶¶ 11, 114; Ans. 3.)
3. Burow teaches a second set of sample holders, e.g., assay
holders, containing one or more reagents or components for a particular
assay. The reagents and components from an assay holder may be combined

3 Burow et al., U.S. Patent Application Publication 2002/0090320 A1,
published July 11, 2002.
4 Oldham et al., U.S. Patent 7,382,258 B2, issued June 3, 2008.
5 Glezer et al., U.S. Patent Application Publication 2007/0202538 A1,
published August 30, 2007.
6 Glezer et al., U.S. Patent Application Publication 2003/0113713 A1,
published June 19, 2003.
7 Gatto-Menking et al., U.S. Patent Application Publication 2003/0108973
A1, published June 12, 2003.
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with a test sample to determine the effect of a test sample on assay results.
(Burow ¶¶ 14, 114; Ans. 3–4.)
4. Burow teaches labelling sample holders with at least one
identifier or label, e.g., an RF (“radio frequency”) tag, so that the system can
positively identify each sample holder when retrieving, processing or
detecting each sample. (Burow ¶ 122; Ans. 3–4.)
5. Burow teaches that the labels are optionally used to provide a
compound or sample plate inventory that may be combined with resulting
data from various assays. (Burow ¶ 124; Ans. 4–5.)
6. Oldham teaches an RFID (“radio frequency identification”) tag
for identifying and detecting sample carriers. (Oldham 3, ll. 13–16; Ans. 5.)
7. Oldham teaches the sample carriers may include a structure for
directly or indirectly supporting a biological reagent, for example, plates,
microarrays, sample preparation devices, and assay preparation devices.
(Oldham 4, ll. 21–27; Ans. 5.)
8. Oldham teaches that the RFID tag may include identification
information that can be used to uniquely identify a particular carrier,
biological reagent, or particular assay. (Oldham 5, ll. 43–49; Ans. 15.)
9. Oldham teaches that the RFID tag may include supplemental
information, including descriptive information about a carrier or its contents,
including certain biological reagents and assays to be performed. (Oldham
5, ll. 50–61; Ans. 15.)
10. Oldham teaches that the carrier may include at least one
biological reagent and at least one RFID tag that stores identifying
information about the biological reagent and supplemental information about
the biological reagent. (Oldham 7, ll. 10–16; Ans. 5.)
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11. Glezer2007 teaches a multi-well plate including a plurality of
wells with a dry assay reagent, a plurality of desiccant wells, and a plate top.
(Glezer2007 ¶¶ 39–43, 46–50; Ans. 8.)
12. Glezer2007 teaches kits that may include one or more
additional reagents in one or more containers, including assay components in
one or more plate wells, preferably in dry form. (Glezer2007 ¶¶ 106–107;
Ans. 8.)
13. Glezer2003 teaches plates for performing assays characterized
by multiple wells per plate and multiple domains per well. (Glezer2003 ¶ 9;
Ans. 9.)
14. Glezer2003 teaches a kit including assay components in
separate containers, for example a container comprising binding reagents
and stabilizing agents. (Glezer2003 ¶¶ 144–147; Ans. 9.)

Analysis
We agree with the Examiner that Burow teaches a kit comprising a
multi-well test plate and an auxiliary plate for use in an assay with the test
plate, both plates including an RFID tag. (See Ans. 3–4; see FFs 2–5.) We
also agree with the Examiner that it would have been obvious to modify
Burow’s RFID tag to include Oldham’s RFID information, including
information about the carrier, biological reagent, or assay to be performed.
(See Ans. 5–6; see FFs 6–10.) The resulting combination would have
included a test plate and a corresponding assay plate each with an RFID
identifier, the RFID identifiers identifying corresponding plates to match a
sample to an assay. In addition, we agree with the Examiner that it would
have been obvious to combine Burow and Oldham with the multi-domain
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plates of Glezer2007 and Glezer2003 to allow for increased multiplexing in
systems having corresponding test plates and reagents plates. (See Ans. 7–9;
FFs 11–14.)
Appellant argues that Burow does not teach or suggest different plates
as being part of “the same kit.” (Appeal Br. 6.) Likewise, Appellant argues
that Oldham does not teach or suggest an RFID device identifying first and
second plates as being part of “the same kit.” (Id.) Accordingly, we begin
our analysis by interpreting the term “kit.”
The Examiner finds that the broadest reasonable interpretation of “kit”
“is essentially a pair of plates being a multi-well test plate and a
corresponding auxiliary plate.” (Ans. 11–12.) The Examiner finds that
despite not using the term “kit,” Burow teaches corresponding sample
holders and assay holders that are used together, thereby forming a kit. (See
id. at 12–13.)
Appellant does not present an alternative interpretation of “kit.” (See
generally Appeal Br.) Rather, Appellant argues that Burow teaches original
sample plates which cannot be part of a kit because they already include
samples. (See id. at 6, citing Burow ¶ 128.) Appellant argues further that
Burow teaches a second type of plate to which the samples are transferred,
but does not suggest these plates as being part of a kit. (See id.)
We are not persuaded by Appellant’s argument because Appellant
does not apply the broadest reasonable interpretation of the claim.
Appellant’s claim 1 recites a kit comprising a multi-well test plate and a
corresponding auxiliary plate. Appellant does not identify any express
definition or other disclosure in the Specification that would exclude a test
plate that already includes a sample from being part of a kit with a
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corresponding auxiliary plate. Accordingly, we do not agree that the
broadest reasonable interpretation of the claim would exclude Appellant’s
interpretation of Burow. See In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997) (“Absent an express definition in their specification, the fact that
appellants can point to definitions or usages that conform to their
interpretation does not make the PTO’s definition unreasonable when the
PTO can point to other sources that support its interpretation.”) Moreover,
we do not agree that Burow requires each sample holder to include a test
sample. Rather, Burow uses the term “sample holder” to refer broadly to
containers for test samples or compounds, including reagents or assay
components. (See FFs 2, 3.)
Next, Appellant argues that Oldham does not teach an RFID that
identifies both a first plate and a second plate as a component of the same
kit. (See Appeal Br. 8.) We are not persuaded by this argument because
Appellant argues against Oldham alone, rather than the combination of
Burow and Oldham. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.”) As discussed above, Burow teaches a kit
including a test plate and corresponding auxiliary plate, both having RFID
tags, and Oldham teaches the type of information carried by the RFID tags.
Appellant further argues that Oldham teaches away from using a test
plate identifier and an auxiliary plate identifier that store information used to
identify the plates as claimed because Oldham relies on RFID tags “that
associate with a single reaction plate.” (See Appeal Br. 8–10, citing Oldham
5, ll. 43–49; Fig. 7)(emphasis omitted.) To support this and other
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arguments, Appellant submits the Clinton Declaration.8 Mr. Clinton states
that “Oldham’s teachings would lead those of ordinary skill in the art in a
divergent direction from the present claims—namely to apply plate
identifiers to individual plates so that each individual plate can be
distinguished from the remaining individual plates.” (Clinton Decl. ¶ 17.)
We are not persuaded by Appellant’s arguments and alleged evidence
of teaching away. Mr. Clinton cites to Oldham’s teaching that “[t]he term
‘identification information’ as used herein can, in some embodiments, refer
to information on an RFID tag that can be used to uniquely identify a
particular carrier or biological reagent or to distinguish the carrier or
biological reagent from other carriers or biological reagents.” (see Clinton
Decl. ¶ 16, citing Oldham col. 5, ll. 43–49.) (emphasis added). We do not
agree that Oldham’s disclosure of an alternative embodiment for uniquely
identifying a particular carrier or biological reagent teaches away from the
combination, as Oldham does not criticize, discredit or otherwise discourage
using an RFID tag to label corresponding plates in a kit. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004). Rather, we agree with the Examiner
that a person of ordinary skill in the art would have been motivated to use
Oldham’s RFID information for identifying corresponding test plates and
auxiliary plates to match the appropriate sample plate to the appropriate
assay plate as taught or suggested by Burow.
Appellant generally argues that the Examiner did not assign the
appropriate weight to the Clinton Declaration as evidence for rebutting

8 Declaration of inventor Charles Clinton.
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prima facie obviousness. (See Appeal Br. 7 (citing MPEP 2145); see also
Reply Br. 3 (citing In re Sullivan, 498 F.3d 1345, 1353 (Fed. Cir. 2007)).)
We are not persuaded by Appellant’s argument. The Examiner
considered the Clinton Declaration and identified that the Declaration did
not include further factual evidence. (Ans. 10.) Moreover, the Examiner
addressed each argument presented in the Declaration based on the evidence
before the Office, specifically the prior art used to reject the claims. (See id.
generally.) Appellant has not identified any evidence presented in the
Declaration that the Examiner did not consider. We have considered the
Declaration and agree with the Examiner’s finding that the Declaration is not
persuasive evidence of nonobviousness.
Finally, Appellant argues that the combined prior art does not teach
RFID identifiers that store assay information used to identify one or more
plates that define the claimed kit. (Appeal Br. 10.) Appellant argues that
Oldham teaches a RFID tag that can comprise an information pointer that
utilizes identification information to perform off-carrier information retrieval
from a database. (Id. at 10–11, citing Clinton Decl. ¶ 18.) Appellant argues
that Oldham’s pointer information does not teach assay information stored
on the test plate identifier and auxiliary plate identifier as claimed. (See id.
at 11.)
We are not persuaded by Appellant’s argument. Appellant cites to
one specific embodiment of Oldham which is arguably distinguishable from
the claims. However, Oldham teaches a different embodiment of an RFID
tag that stores identifying information pertaining to at least one biological
reagent and supplemental information pertaining to the at least one
biological reagent. (FF 10.) Oldham teaches that supplemental information
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may include assay information. (FF 9.) Accordingly, Oldham as a whole
teaches RFID identifiers that store assay information used to identify
different plates in a kit as taught by Burow. See In re Gorman, 933 F.2d
982, 986 (Fed. Cir. 1991) (“the test [for obviousness] is whether the
teachings of the prior art, taken as a whole, would have made obvious the
claimed invention.”)
Accordingly, we are not persuaded that the Examiner erred in
rejecting the claims.
Conclusion
Upon consideration of the record and for the reasons given, we affirm
the Examiner’s rejection.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 7, 14,
43, 44, 112–
114
103 Burow, Oldham 1, 3, 7, 14,
43, 44, 112–
114

1–3, 7, 11–
26, 38–44,
48–62, 73–
77, 112–117
103 Burow, Oldham,
Glezer2007,
Glezer2003,
Gatto-Menking
1–3, 7, 11–
26, 38–44,
48–62, 73–
77, 112–117

Overall
Outcome
1–3, 7, 11–
26, 38–44,
48–62, 73–
77, 112–117

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2019).
AFFIRMED