Robert Kincaid et al.

Patent Trials and Appeals Board

Dec 30, 2019

13918572 - (D) (P.T.A.B. Dec. 30, 2019)

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.
13/918,572 06/14/2013 Robert Kincaid 20130104-01 7149
22878 7590 12/30/2019
Agilent Technologies, Inc.
Global IP Operations
5301 Stevens Creek Blvd
Santa Clara, CA 95051
EXAMINER
VALDEZ, PATRICK F
ART UNIT PAPER NUMBER
2611
NOTIFICATION DATE DELIVERY MODE
12/30/2019 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):
Agilentdocketing@cpaglobal.com
ipopsadmin@agilent.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT KINCAID and MELANIE TORY
Appeal 2018-002635
Application 13/918,572
Technology Center 2600
Before JOSEPH L. DIXON, ALLEN R. MACDONALD, and
CHARLES J. BOUDREAU, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 7–15, and 17–20. See Final Act. 1.
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. Appellant identifies the real party in interest as Agilent
Technologies, Inc. Appeal Br. 1.
Appeal 2018-002635
Application 13/918,572
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CLAIMED SUBJECT MATTER
The claims are directed to a system for automating laboratory
experiments. Claim 1, reproduced below, is representative of the claimed
subject matter:
1. An apparatus comprising:
a controller and
a top planar surface comprising a display area and a first
component area adapted to receive a first component, said
display area displaying an image determined by said controller,
said image providing information about said first component,
wherein said controller determines said image by interacting with
said first component when said first component is placed in said
first component area,
wherein said planar surface comprises a touch enabled
computer display screen and said controller determines an
identity for said first component based on a touch pattern on said
touch enabled computer display screen, said touch pattern being
generated by said first component touching said touch enabled
computer display screen at a plurality of locations on said touch
enabled computer display screen
REFERENCES
The prior art relied upon by the Examiner is:
Curtis US 2003/0107738 A1 June 12, 2003
Du US 2005/0102056 A1 May 12, 2005
Zhang et al. US 2005/0112033 A1 May 26, 2005
Gu et al. US 2011/0290882 A1 Dec. 1, 2011
Pradeep US 2012/0219980 A1 Aug. 30, 2012
Andolina US 2013/0194192 A1 Aug. 1, 2013
Feldotte WO 2012/104034 A12 Aug. 9, 2012

2 Please note US 2013/0333957 A1 “Weighing Compartment with
Integrated Balance” is used herein as an English translation document, and
passages of Feldotte cited herein refer to the translation, consistent with the
Examiner’s and Appellant’s usage.
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REJECTIONS
Claims 1, 7, 13, and 17 stand rejected under pre-AIA U.S.C. § 103(a)
as being un-patentable over Du in view of Andolina.
Claims 8, 14, 15, and 20 stand rejected under pre-AIA U.S.C. § 103(a)
as being un-patentable over Du and Andolina further, in view of Pradeep.
Claims 9 and 10 stand rejected under pre-AIA U.S.C. § 103(a) as
being un-patentable over Du and Andolina, and, further, in view of Zhang.
Claim 11 stands rejected under pre-AIA U.S.C. § 103(a) as being un-
patentable over Du, in view of Andolina in view of Zhang and, further, in
view of Curtis.
Claim 12 stands rejected under pre-AIA U.S.C. § 103(a) as being un-
patentable over Du and Andolina further in view of Gu.
Claims 18 and 19 stand rejected under pre-AIA U.S.C. § 103(a) as
being un-patentable over Du and Andolina in view of Feldotte and, further,
in view of Pradeep.
OPINION
35 U.S.C. §103
Claim 1
Appellant contends the Examiner errs that one skilled in the art
“would be motivated to replace display 18 shown in Figure 2 of Du with the
touch-enabled display of Andolina, because the computer could identify the
display component placed in area 26.” (Appeal Br. 6.) Appellant further
contends that the “Examiner’s argument assumes that the computer does not
already know the identity of that component that is placed in area 26.”
(Appeal Br. 6.)
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Appellant further argues that “the Examiner does not explain how
getting the identity of the object from the object, as opposed to getting that
identity from information inputted by the user, which would include other
information as well, is worth altering the mode of operation of the system of
Du.” (Appeal Br. 6.)
Appellant contends that “the Examiner is confusing the mode of
operation of the device with the measurements to be provided by the
device.” (Appeal Br. 6.) Appellant also contends that “Examiner has not
pointed to any teaching that such ink could be applied to the plastics used in
micro-titer plates and still maintain the charge” and “[i]t should also be
noted that the plates would need to be printed after manufacture and
sterilization but before use without contaminating the plates in a manner that
would alter the assays performed in the plates.” (Appeal Br. 7.)
Appellant argues that “[t]he electrically charged ink would need to
remain charged throughout the experiment and not attract neutralizing
charges from the environment that would render the charged ink invisible.”
(Appeal Br. 7.)
Appellant contends that “the alteration of Du suggested by the
Examiner would not have a reasonable expectation of success or of
providing the benefits claimed by the Examiner.” (Appeal Br. 7.)
Arguments must be commensurate in scope with the actual claim
language. In re Self, 671 F.2d 1344, 1348 (CCPA 1982); see In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts . . . are not
commensurate with the claim scope and are therefore unpersuasive.”).
“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . .” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Instead, the
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relevant issue is “what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” Id. “Combining the
teachings of references does not involve an ability to combine their specific
structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973); see also In re
Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-established that a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements.”).
The Examiner maintains that
the proposed changes to Du’s apparatus comprise modifying
[the] display panel and associated software to incorporate the
touch-related features and functionality of Andolina’s touch
screen such that an object/component may be “identified” when
the component is placed on Du/Andolina’s touch screen, with the
expected benefit of improving the accuracy of ‘identifying’ the
component since a user is not required to manually enter text
and/or a numeric code to establish the identity of the component.
(Ans. 4–5.)
Appellant contends that the combination of the Du and Andolina
references would change the basic mode of operation of the system of Du.
(Appeal Br. 5.)
The Examiner maintains that “modifying Du with Andolina’s touch
screen does not change the fact that a user may still interact with the
combined Du/Andolina apparatus/system to manually input information in
order to edit sampling protocols.” (Ans. 5.)
We note claim terms are to be given their broadest reasonable
interpretation, as understood by those of ordinary skill in the art and taking
into account whatever enlightenment may be had from the Specification. In
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). “In the patentability
context, claims are to be given their broadest reasonable interpretations . . .
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limitations are not to be read into the claims from the specification.” In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).
We disagree with Appellant and find that under the broadest
reasonable interpretation, the claimed invention is not specifically limited to
chemical/sample analysis as argued by Appellant. We further find the
intended field of use in chemical/sample analysis does not change the
principle of operation of the display and touch sensitive system. Although
the combination may have some impact on the end use of the system, we
find the claimed generic “apparatus” is not directed to any specific intended
field of use and the claimed “first component” has no specific characteristics
so as to further limit the claimed invention. Therefore, we find Appellant’s
argument regarding the combination of prior art teachings to be unavailing.
Appellant argues that the Examiner has not pointed to any teaching
that the conductive ink could be applied to the plastics used in the micro-titer
plates and still maintain the charge and there would be no reasonable
expectation of success. (Appeal Br. 6–7.)
The Examiner maintains that Appellant’s argument is not
commensurate in scope with the language of independent claim 1. (Ans. 5–
6.) We agree with the Examiner that Appellant’s argument is based upon
limitations not expressly found in the claimed invention, and Appellant is
arguing a bodily incorporation of the two teachings rather than what would
have been suggested to one of ordinary skill in the art at the time of the
invention. Consequently, we find Appellant’s argument to be unpersuasive
of error in the Examiner’s factual findings or conclusion of obviousness of
independent claim 1.
In the Reply Brief, Appellant contends that the Examiner fails to
address why one of ordinary skill would make the alterations to the system
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of the Du reference to arrive at a device that satisfies the claims of the
present application. (Reply Br. 1.) Additionally, Appellant contends that if
the system did not know the identity of the plate, the system could not
generate the image because the Du reference utilizes protocols in which the
user is instructed to perform an operation on one particular cell in a plate
where the system must know the type of plate and layout in advance as well
as the identity of the plate using information is entered when the user edits
the profile for the procedure. (Reply Br. 2.) Appellant also contends that
proposed modifications must have a reasonable expectation of success
independent of the claim limitations. (Reply Br. 2.)
We disagree with Appellant and find the Examiner has shown a
reasonable expectation of success of the combined disclosures and
suggestions of the prior art teachings to the general field of touch enabled
computer screens and controllers. Moreover, we find Appellant’s argument
with respect to the reasonable expectation of success does not have a nexus
to the claimed scope of the invention. We further find Appellant’s argument
is based upon a bodily incorporation of the prior art teachings rather than
what would be suggested to the skilled artisan relative to the scope of the
claimed invention.
Appellant also contends that “the modifications to Du suggested by
the Examiner would lead to a device that does not function for the purposes
of Du, because the charged surface would be discharged during the
experiment, and hence, no longer readable.” (Reply Br. 2.)
We disagree with Appellant, as discussed above, and find that the
general teachings of the Du reference are readily combinable with the
teachings of the Andolina reference. Moreover, we find Appellant’s
arguments are directed to a bodily incorporation of the Du reference to the
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specific implementation and use, but the claimed invention is directed to a
broader application of the general teachings and suggestions of the prior art
references. Therefore, we agree with the Examiner that a person of ordinary
skill in the art would have combined the teachings and suggestions of the Du
and Andolina references “with the expected benefit of quickly and
accurately identifying a sample component since said sample component
may be identified using attached barcode information.” (Final Act. 5.)
Therefore, we find Appellant’s argument to be unpersuasive of error in the
conclusion of obviousness.

Claim 17
For claim 17, Appellant provides general arguments that correspond
to the arguments advanced with respect to independent claim 1. (Appeal Br.
7–8.) Additionally, Appellant contends that while the Du reference
integrates “multiple displays and multiple computers into a work station, Du
is silent with respect to how that integrated system is laid out,” and the
description in the Du reference “does not teach that the two adapters are
independent of each other and that there is a controller that interacts with the
two adapters and places the images in the display areas.” (Appeal Br. 8.)
The Examiner maintains, rather, that “[a] plurality of computers and a
plurality of display panels can be integrated into a single sample handling
system. Sample handling control menu 20 can be either displayed on the
same panel as the sample container image 26 or on a separated display
panel.” (Ans. 9 (citing Du ¶ 98).) We agree with the Examiner that the Du
reference teaches and suggests the combination of plural panels with either a
single or separate controllers. Therefore, we find Appellant’s argument to
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be unavailing to show error in the Examiner’s factual findings or conclusion
of obviousness of independent claim 17.
Appellant contends that with the modification of the Du reference,
the proposed system operates in a different manner than that of Du and that
there is no reasonable expectation of success. (Appeal Br. 7.) We disagree
with Appellant, as discussed above. As a result, we find Appellant’s
argument to be unavailing to show error in the Examiner’s factual findings
or conclusion of obviousness of independent claim 17.

Claims 8–11, 14–15 and 20
With respect to the dependent claims, Appellant relies upon the
arguments advanced with respect to independent claims 1 and 17, and
Appellant contends that the additional prior art references do not provide the
missing teachings in the respective independent claims. Because we found
no deficiency in the base combination, we find Appellant’s argument to be
unpersuasive to show error in the Examiner’s conclusion of obviousness of
the dependent claims.

Claims 12, 18, and 19
With respect to dependent claim 12, Appellant contends the
combination of Du and Andolina does not teach the limitations of claim 1
and the Gu reference does not provide the missing teachings. (Appeal Br.
9.) Appellant further contends that the “Examiner’s argument assumes that
a QR code printed in electrically conducting ink can be read via the touch-
enabled screen with sufficient accuracy to detect the code and determine its
location and orientation,” and Appellant contends that the “Examiner has not
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cited any evidence that the touch-enabled screens have that level of
resolution.” (Appeal Br. 10.)
The Examiner maintains that Appellant is arguing the references
individually and that “a person of ordinary skill in the art may
either print directly or affix a QR code onto a first component in a pre-
determined location and orientation (i.e. upper-left corner, oriented
substantially in a horizontal direction).” (Ans. 12.) The Examiner further
maintains that the Gu reference “expressly discloses the input device may be
a touch-enabled device” (see Gu Figure 14 and para. 96), “therein leading
one of ordinary skill in the art to reasonably conclude a QR code printed in
electrically conducting ink can be read via the touch-enabled screen with
sufficient accuracy to detect the code and determine its location and
orientation.” (Ans. 13.) We agree with the Examiner and conclude that the
disclosed input device would have had the ability to read the code and was
within the level of skill in the art and that the claim sets forth no physical
dimensions or characteristics that would prevent proper operation of the
combined teachings. Additionally, Appellant has not provided a specific
argument for patentablility or provided any reason why it would not have
been within the ability of the input device in the combination to perform the
function as proffered by the Examiner. Moreover, Appellant has not
provided further argument in the Reply Brief in response to the Examiner’s
further clarifications of the obviousness rejection in the Examiner’s Answer.
As a result, we find Appellant’s argument does not show error in the
Examiner’s factual findings or conclusion of obviousness of dependent
claim 12.
With respect to dependent claim 18, Appellant contends that someone
knowing the apparatus of Du would not “be motivated to search the art area
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of Feldotte to improve the apparatus of Du,” and the “Examiner has not
provided any factually articulated reasoning for someone of ordinary skill to
search the art area of Feldotte.” (Reply Br. 3.)
We disagree with Appellant and find that the Feldotte reference
discloses a well-known alternative in display devices to use a well-known
projector in place of a physical display device (Feldotte paragraphs 8 and
11) rather than other physical display devices. We note that the broadest
reasonable interpretation of independent claim 17 merely recites a “display
area” and the Feldotte reference discloses the use of both known
alternatives. The Examiner further maintains that Appellant is arguing
limitations not in the claims. (Ans. 17.) As a result, we agree with the
Examiner and find Appellant’s argument to be unpersuasive of error in the
Examiner’s factual findings or conclusion of obviousness of dependent
claim 18.
With respect to dependent claim 19, Appellant argues “the camera, as
placed in the reference, could not form an image of the underside of the
adapters, which the Examiner identifies as the work surface.” (Appeal Br.
11.) Appellant provides further argument that the Examiner is
overgeneralizing the fields of measurements of substances. (Reply Br. 3.)
The Examiner substantively responds to Appellant’s general argument
and clarifies the application of the prior art in combination. (Ans. 18.) We
disagree with Appellant’s argument regarding the fields of measurement and
processing and find Appellant’s argument is not commensurate in scope
with the broad language directed to the generic “system” recited in the
language of independent claim 17 and further limited in dependent claims 18
and 19 setting forth the generic limitations. As a result, we find the
Examiner’s reliance upon the general teachings and suggestions in the prior
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art references to be reasonable in light of the broad field of endeavor of the
claimed invention. Therefore, we find Appellant’s argument does not show
error in the Examiner’s factual findings or conclusion of obviousness of
dependent claim 19.

CONCLUSION
The Examiner’s obviousness rejections are affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 7, 13, 17 103 Du, Andolina 1, 7, 13, 17
8, 14, 15, 20 103 Du, Andolina, Pradeep 8, 14, 15,
20

9, 10 103 Du, Andolina, Zhang 9, 10
11 103 Du, Andolina, Zhang,
Curtis
11
12 103 Du, Andolina, Gu 12
18, 19 103 Du, Andolina, Feldotte,
Pradeep
18, 19
Overall
Outcome:
1, 7–15,
17–20

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).
AFFIRMED