Progenity Inc.

Patent Trials and Appeals Board

Aug 16, 2021

2021000253 (P.T.A.B. Aug. 16, 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.
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.
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Application 15/694,458

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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.
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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”).
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Application 15/694,458

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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—
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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.”
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Application 15/694,458

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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