Progenity Inc.Download PDFPatent Trials and Appeals BoardAug 16, 20212021000253 (P.T.A.B. Aug. 16, 2021) Copy Citation 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. 15/694,458 09/01/2017 Mitchell Lawrence Jones 128683-0004UT01 3327 181087 7590 08/16/2021 PROGENITY / PCHS 525 B STREET SUITE 2200 SAN DIEGO, CA 92101 EXAMINER KUHLMAN, CATHERINE BURK ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 08/16/2021 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): PTONotifications@procopio.com Patents@progenity.com docketing@procopio.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MITCHELL LAWRENCE JONES, CHRISTOPHER LOREN WAHL, AARON OLAFUR LAURENCE PHILIPPSEN, MATTHIEU OLIVIER LEMAY, and NICHOLAS DAVID ALLAN Appeal 2021-000253 Application 15/694,458 Technology Center 3700 ____________ Before DANIEL S. SONG, MICHAEL J. FITZPATRICK, and WILLIAM A. CAPP, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant, Progenity, Inc.,1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Action rejecting claims 14, 15, 29–31, 88, 89, and 92–108. See generally Appeal Br.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies itself as the real party in interest. Appeal Br. 1. 2 Appellant did not file a reply brief. Appeal 2021-000253 Application 15/694,458 2 STATEMENT OF THE CASE The Specification The Specification’s “disclosure relates to systems and methods for extracting and/or analyzing a sample, such as a sample present in an ingestible device.” Spec. 1:19–20. The Claims Claims 14, 15, 29–31, 88, 89, and 92–108 are rejected. Final Act. 1. No other claims are pending. Id. at 2. Claims 29 and 102 are independent; all other claims are dependent claims. Appeal Br. 4–7. Claim 29 is illustrative and reproduced below. 29. A method, comprising: separating an ingestible device into a first portion and a second portion, the first portion comprising a sampling chamber, the sampling chamber comprising an absorbent material member that contains a sample; and after separating the ingestible device into the first and second portions, centrifuging the first portion of the ingestible device to transfer at least a portion of the sample from the absorbent material member into a tube. Appeal Br. 4. Appeal 2021-000253 Application 15/694,458 3 The Examiner’s Rejections The Examiner’s rejections, both pursuant to 35 U.S.C. § 103, are as follows: (1) claims 14, 15, 29, 30, 88, 89, and 92–108 as unpatentable over Amoako-Tuff,3 Ferren,4 and Aronowitz5 (Final Act. 3); and (2) claim 31 as unpatentable over Amoako-Tuff, Ferren, Aronowitz, and Buckley6 (id. at 7). DISCUSSION Rejection 1 Appellant argues the rejection of claims 14, 15, 30, 88, 89, and 92– 101 together under one subheading and the rejection of claims 102–108 together under a separate subheading (although the latter subheading misidentifies the argued claims). Appeal Br. 2; see 37 C.F.R. § 41.37(c)(1)(iv) (“Under each heading identifying the ground of rejection being contested, any claim(s) argued separately or as a subgroup shall be argued under a separate subheading that identifies the claim(s) by number.”). “When multiple claims subject to the same ground of rejection are argued as a group or subgroup by appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone.” 37 C.F.R. § 41.37(c)(1)(iv). As authorized by that rule, we select independent claim 29 as representative of claims 14, 15, 29, 30, 88, 3 US 2015/0011874 A1, published Jan. 8, 2015 (“Amoako-Tuff”). 4 US 8,000, 784 B2, issued Aug. 16, 2011 (“Ferren”). 5 US 2013/0209993 A1, published Aug. 15, 2013 (“Aronowitz”). 6 US 2002/0179669 A1, published Dec. 5, 2002 (“Buckely”). Appeal 2021-000253 Application 15/694,458 4 89, and 92–101 and independent claim 102 as representative of claims 102– 108. Claims 14, 15, 29, 30, 88, 89, and 92–101 Appellant presents two brief arguments against the rejection of claim 29. Neither argument is persuasive of Examiner error. First, Appellant argues: “[W]hile the Examiner relied in part of paragraph [0063] of Amoako-Tuffour (see Final Office Action, page 5), this portion of Amoako-Tuffour discloses in vivo analysis and measurements and makes no reference to separating an ingestible device into a first part and a second part.” Appeal Br. 2. The Examiner responds by noting that the Final Action also cites to paragraph 291 of Amoako-Tuffour, which describes ex vivo separation and analysis. Ans. 3 (citing Final Act. 2). More specifically, paragraph 291 states: “After the ingestible medical device 850' completes its operation and is retrieved, the first portion 12 and the second portion 14 can be detached from each other for post-processing on a base station 900, as illustrated in FIGS. 12A to 12C.” Amoako-Tuffour ¶291. The Examiner has adequately rebutted Appellant’s argument. Appellant did not file a reply brief. Second, Appellant argues: “[T]he Examiner did not properly establish that, after reading Amoako-Tuffour, a person of ordinary skill in the art would have understood that there was any frailty in the device design that would be overcome by the Examiner’s proposed modifications.” Appeal Br. 2. The Examiner responds that “such an understanding [of the primary reference] is not required to establish a prima facie case of obviousness.” Ans. 3. Nor does Appellant cite any legal authority for such a proposition. Appeal Br. 2. The fact that the prior art—for example, Amoako-Tuffour— Appeal 2021-000253 Application 15/694,458 5 may already perform adequately does not preclude a skilled artisan from seeking to improve upon it. See Dystar Textilfarben GmBH & Co, v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006) (“the desire to enhance commercial opportunities by improving a product or process is universal— and even common-sensical”). We have considered Appellant’s arguments, but they do not apprise us of error in the Examiner’s rejection of claim 29. Accordingly, we affirm the rejection of claim 29 as well as that of claims 14, 15, 30, 88, 89, and 92–101, which fall therewith. 37 C.F.R. § 41.37(c)(1)(iv). Claims 102–108 With respect to independent claim 102, Appellant presents only one additional argument: “the Examiner did not properly establish that the result of the proposed combination of references would yield a method that includes centrifuging a first portion of the ingestible device to transfer: i) a first portion of a sample to a first tube; and ii) a second portion of the sample to a second tube.” Appeal Br. 2–3. No analysis or explanation is provided to support this argument. See 37 C.F.R. § 41.37(c)(1)(iv) (“The arguments shall explain why the examiner erred as to each ground of rejection contested by appellant. . . . A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”). We determine the Examiner set forth a prima facie case of unpatentability of claim 102, including its recitation of “after separating the ingestible device into the first and second portions, centrifuging the first portion of the ingestible device to transfer: i) the first portion of the sample to a first tube; and ii) the second portion of the sample to a second tube.” Appeal 2021-000253 Application 15/694,458 6 See Final Act. 5–7; Ans. 4. Appellant’s sole argument against that rejection is conclusory and fails to explain why the Examiner allegedly erred in the rejection. Accordingly, we affirm the rejection of claim 102 as well as that of claims 103–108, which fall therewith. 37 C.F.R. § 41.37(c)(1)(iv). Rejection 2 Appellant argues against the rejection of claim 31 as part of its arguments against the rejection of claims 14, 15, 29, 30, 88, 89, and 92–101. Appeal Br. 2. As discussed above, those arguments fails to persuade us of error in the rejection of claim 29. They likewise fail to apprise us of error in the rejection of claim 31. Accordingly, we affirm the rejection of claim 31. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 14, 15, 29, 30, 88, 89, 92–108 103 Amoako-Tuff, Ferren, Aronowitz 14, 15, 29, 30, 88, 89, 92–108 31 103 Amoako-Tuff, Ferren, Aronowitz, Buckley 31 Overall Outcome 14, 15, 29– 31, 88, 89, 92–108 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 Copy with citationCopy as parenthetical citation