ILLUMINA, INC.

Patent Trials and Appeals Board

Aug 13, 2020

2019004887 (P.T.A.B. Aug. 13, 2020)

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.
14/619,287 02/11/2015 Hod Finkelstein IP-0632-US 6847
146895 7590 08/13/2020
Dierker & Kavanaugh, P.C.
3331 W. Big Beaver Road,
Suite 109
Troy, MI 48084
EXAMINER
TURK, NEIL N
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
08/13/2020 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):
illuminadocket@illumina.foundationip.com
jordano@troypatent.com
juliad@troypatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HOD FINKELSTEIN, CHENG FRANK ZHONG, and
ELIANE H. TREPAGNIER
____________

Appeal 2019-004887
Application 14/619,287
Technology Center 1700
____________

Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
MICHAEL G. McMANUS, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1, 3–8, and 37–49 under 35 U.S.C. § 112 for lack
of enablement and for being indefinite. Claims 2 and 9–36 have been
cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.

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 Illumina, Inc.
(Appeal Br. 3).

Appeal 2019-004887
Application 14/619,287

2

CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is representative of the claimed
subject matter and is reproduced here:
1. An integrated detection, flow cell and photonics (DFP)
device, comprising:
a substrate having an array of pixel elements that sense
photons during active sensing periods of a frame, the substrate
and the pixel elements forming an integrated circuit (IC) photon
detection layer, wherein each pixel element includes a single
photon avalanche diode (SPAD) and an in-pixel detection circuit,
wherein the in-pixel detection circuit includes:
a photon detector switch connected to an output
node of the SPAD;
a temporal accumulator capacitor electrically
connected to the photon detector switch, the temporal
accumulator capacitor to output an analog voltage
proportional to a sum of arrival times for the photons
sensed by the SPAD during the frame;
an event counter switch connected to the output
node of the SPAD;
and
an event counter capacitor electrically connected to
the event counter switch, the event counter capacitor to
output an analog voltage proportional to a number of
photons sensed by the SPAD during the frame;
at least one wave guide formed on the IC photon detection layer
as a photonics layer;
an optical isolation layer formed over at least a portion of the
wave guide; and
a collection of photo resist (PR) walls patterned to define at least
one flow cell channel that is configured to direct fluid along a
fluid flow path, the at least one wave guide aligned to extend
Appeal 2019-004887
Application 14/619,287

3
along the fluid flow path, the flow cell channel configured to
receive samples at sample sites that align with the array of pixel
elements.

Appeal Br. (Claims Appendix 23, 24).

ANALYSIS
Upon consideration of the record, we find that the preponderance of
evidence supports the Appellant’s position that the Examiner has not met his
burden to show that the claims are not enabled for reasons set out in the
Appeal Brief and the Reply Brief (Appeal Br. 8–13; Reply Br. 2–11).
Likewise, we agree with Appellant that one of ordinary skill in the art would
have understood the metes and bounds of the claim language for the reasons
detailed in the briefs (Appeal Brief 15–21; Reply Br. 12–20).
The Examiner states that one “does not need to provide an explanation
as to reasons why undue experimentation would be required to make and use
the full scope of the invention” (Ans. 8, emphasis added). We disagree for at
least the reasons set out in the Reply Brief (e.g., Reply Br. 2–5). Also, Cf.,
LizardTech, Inc. v. Earth Resource Mapping, PTY, Inc., 424 F.3d 1336,
1345 (Fed. Cir. 2005) (citing Union Oil Co. v. Atl. Richfield Co., 208 F.3d
989, 997 (Fed. Cir. 2000) (a claim will not be invalidated on section 112
grounds simply because the embodiments of the specification do not contain
examples explicitly covering the full scope of the claim language, only
enough must be included to convince a person of skill in the art that the
inventor possessed the invention and to enable such a person to make and
use the invention without undue experimentation); In re GPAC Inc., 57 F.3d
1573, 1579 (Fed. Cir. 1995)).
Appeal 2019-004887
Application 14/619,287

4
The Examiner has also not adequately responded to Appellant’s
position that the Fung Declaration2 establishes that one of ordinary skill in
the art would have understood the metes and bounds of the “detection” as
recited in claim 1’s “integrated detection, flow cell, and photonic (DFP)
device” (Reply Br. 9–11, 15; Appeal Br. 17). Appellant has sufficiently
explained that one of ordinary skill in the art would have understood the
scope of the claims. Furthermore, as pointed out by Appellant, it has been
long established that breadth is not indefiniteness. In re Miller, 444 F 2d.
689 (CCPA 1971); In re Gardner, 427 F 2d. 786, 788 (CCPA 1970).
Accordingly, we reverse both of the Examiner’s § 112 rejections for
the reasons explained by Appellant in the briefs.
The decision of the Examiner is reversed.

In summary:
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1, 3–8, 37–
49 112
Lack of
Enablement 1, 3–8, 37–49
1, 3–8, 37–
49 112 Indefiniteness 1, 3–8, 37–49
Overall
Outcome
1, 3–8, 37–49

REVERSED

2 Declaration by Tracy Helen Fung under 35 CFR 1.132, signed August 14,
2018