Quest Diagnostics Investments Incorporated

Patent Trials and Appeals Board

Jun 18, 2020

2019004698 (P.T.A.B. Jun. 18, 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.
14/991,987 01/10/2016 Qibo Jiang 054769-6911 1017
109855 7590 06/18/2020
Quest Diagnostics
Attn: Legal Department
33608 Ortega Highway
San Juan Capistrano, CA 92675
EXAMINER
FRITCHMAN, REBECCA M
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
06/18/2020 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):
ipdocketing@foley.com
joel.s.white@questdiagnostics.com
joshua.e.kim@questdiagnostics.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte QIBO JIANG, SUM CHAN, and RICHARD E. REITZ
____________

Appeal 2019-004698
Application 14/991,987
Technology Center 1700
___________

Before KAREN M. HASTINGS, LILAN REN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134 of the
Examiner’s final decision rejecting claims 1–12 under 35 U.S.C. § 103(a) as
being unpatentable over the combined prior art of Midttun (Øivind Midttun
et al., Multianalyte Quantification of Vitamin B6 and B2 Species in the
Nanomolar Range in Human Plasma by Liquid Chromatography—Tandem
Mass Spectrometry, 51 Clinical Chemistry 7, 1206–16 (2005) (“Midttun”))
and Guzzetta (Andrew Guzzetta, Reverse Phase HPLC Basics for LC/MX,
IonSource Tutorial (July 22, 2001), https://ionsource.com/tutorial/

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 Quest
Diagnostics Investments Incorporated (Appeal Br. 1).
Appeal 2019-004698
Application 14/991,987

2
chromatography/rphplc.htm (last viewed June 15, 2020)).2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal (emphasis added
to highlight key limitation in dispute):
1. A method for detecting the presence or amount of
pyridoxal 5’-phosphate in a body fluid sample by tandem mass
spectrometry, comprising:
(i) purifying said sample with an extraction column and
an analytical column for chromatographic separation;
(ii) generating a parent ion of said pyridoxal 5’-
phosphate from said purified sample;
(iii) generating one or more daughter ions of said parent
ion; and
(iv) detecting the presence or amount of one or more said
ions generated in step (ii) or step (iii) or both, and relating the
detected ions to the presence or amount of said pyridoxal 5’-
phosphate in said sample.
(Appeal Br. 15, Claims Appendix).
Appellant’s arguments are directed to the meaning of the italicized
phrase in claim 1 (Appeal Br. 12, 13; Reply Br. 2–4). Accordingly, we
decide the appeal on the basis of the arguments made in support of
patentability of claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).

2 The Examiner withdrew the rejection under 35 U.S.C. § 101 (Ans. 6).
Appeal 2019-004698
Application 14/991,987

3
ANALYSIS
After considering the evidence presented in this Appeal and each of
Appellant’s arguments, we are not persuaded that Appellant identifies
reversible error. We review the appealed rejections for error based upon the
issues identified by Appellant and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections.”). We sustain the
Examiner’s rejection for the reasons expressed in the Final Office Action
and the Answer.
We add the following primarily for emphasis.
Appellant does not dispute most of the Examiner’s findings based on
Midttun and Guzzetta (Final Act. 4–7). The Examiner relies upon Midttun
for a teaching of an extraction column and an analytical column as recited in
claim 1 (Final Act. 4, 5; Ans. 4).
Appellant makes three main arguments: 1) the method of Midttun is
laborious and time consuming compared to the method of the present
invention (Appeal Br. 13); 2) Midttun does not use an extraction column as
does the presently claimed method (id.); and 3) the Examiner is mistaken
that Midttun’s C8 guard column is an extraction column because it “is part
of the analytical HPLC column” of Midttun (Reply Br. 4).
With respect to Appellant’s first argument, the Examiner counters that
there is nothing in the claim about the efficiency or accuracy of the method
recited (Ans. 7). Limitations not appearing in the claims cannot be relied
upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appeal 2019-004698
Application 14/991,987

4
With respect to Appellant’s arguments listed as 2) and 3) above, it is
well established that “the PTO must give claims their broadest reasonable
construction consistent with the specification. . . . Therefore, we look to the
specification to see if it provides a definition for claim terms, but otherwise
apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007) (also noting that “as applicants may amend
claims to narrow their scope, a broad construction during prosecution creates
no unfairness to the applicant or patentee”); see also Alloc, Inc. v. Int’l
Trade Comm’n, 342 F.3d 1361, 1370 (Fed. Cir. 2003) (A court must not
read particular embodiments and examples appearing in the Specification
into the claims unless the Specification requires it.).
Notably, Appellant’s Specification lacks any limiting definition of an
“extraction column” (see generally Spec.; see also, e.g., Spec. ¶ 17
(disclosing a large particle extraction column, for use “[i]n preferred
embodiments”), ¶ 18). As pointed out by the Examiner, Midttun explicitly
discusses two columns, a guard column, with 5 µm particle size, and an
analytical column, with 3.5 µm particle size (Ans. 8; Midttun p. 1209).
Guard columns are known to remove impurities before the sample reaches
the analytical column (Ans. 8). Appellant has not provided any evidence to
support the assertion that the guard column is not an extraction column.
Thus, the Examiner reasonably determined that the claim recitation “an
extraction column and an analytical column” encompasses the use of
Midttun’s C8 guard/extraction column and C8 analytical column (id.).
Therefore, Appellant has not demonstrated reversible error in the
Examiner’s determination that the disputed claim term encompasses the
guard column of Midttun.
Appeal 2019-004698
Application 14/991,987

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Accordingly, we sustain the Examiner’s rejection of independent
claims 1, as well as all claims dependent thereon, noting that Appellant
relies upon the arguments made for claim 1 for all the other claims.
The decision of the Examiner is affirmed.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–12 103(a) Midttun, Guzzetta 1–12

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

AFFIRMED