Roche Diagnostics Operations, Inc.

Patent Trials and Appeals Board

Mar 23, 2020

14556479 - (D) (P.T.A.B. Mar. 23, 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.
14/556,479 12/01/2014 Thomas Jasiulek ROH 0077 NA/
P30984-US-pd
6133
67491 7590 03/23/2020
DINSMORE & SHOHL, LLP
FIFTH THIRD CENTER
ONE SOUTH MAIN STREET
SUITE 1300
DAYTON, OH 45402
EXAMINER
SEIF, DARIUSH
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/23/2020 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):
daytonipdocket@dinsmore.com
jackie.pike@roche.com
pair_roche@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte THOMAS JASIULEK and
ANDREAS TRAPP
__________

Appeal 2019-004969
Application 14/556,479
Technology Center 3700
__________

Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, and 5–11. See Final Act. 1. Claims
2 and 4 have been canceled and claims 12–20 have been withdrawn from
consideration. See App. Br. 4; Final Act. 1–2. We have jurisdiction 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. Appellant identifies the real party in interest as Roche
Diagnostics Operations, Inc. App. Br. 2.
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Application 14/556,479

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STATEMENT OF THE CASE
The claims are directed to a carrier element for use in a packaging
device that transmits wirelessly pressure information from a pressure sensor.
Claim 1, reproduced below, is the sole independent claim before us:
1. A carrier element for use in a packaging device,
wherein
the carrier element is connectable with at least one
transport device of the packaging device,
the carrier element comprises at least one receiving
surface for receiving at least one package,
the receiving surface comprises at least one suction
opening for fixing the package by suction,
the carrier element further comprises at least one pressure
reservoir connected to the suction opening, and
the carrier element further comprises at least one pressure
sensor configured to measure a pressure inside the pressure
reservoir, wherein the carrier element is configured to transmit
wirelessly at least one pressure information that indicates the
pressure inside the pressure reservoir to at least one receiver,
wherein the carrier element is configured to vary a measurement
rate, and wherein the measurement rate is selected from the
group consisting of a rate at which the pressure information is
acquired by the pressure sensor and a rate of wireless
transmission of the pressure information.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Graff US 3,852,938 Dec. 10, 1974
Kaushal US 8,026,113 B2 Sept. 27, 2011
Meyer US 2010/0263986 A1 Oct. 21, 2010

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REJECTION
Claims 1, 3, and 5–112 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Meyer, Graff, and Kaushal. Final Act. 3.

OPINION
In order to arrive at the claimed subject matter, the Examiner proposes
modifying Meyer’s carrier element (box carrier 14) by replacing its feeler
pin 38 with Graff’s pressure sensors 79a, 79b that are used with suction cups
61. Final Act. 3–4 (citing Meyer Figs. 1, 6; Graff 3:44–50, 4:22–30; Figs. 1–
2); see also Graff Fig. 5. The Examiner reasons that “[t]he motivation for
such a replacement would be to avoid any risk of failure of the mechanical
feeler pins thereby ensuring a more reliable controlled method for applying
the suction for gripping.” Final Act. 4; see also Ans. 4.
Appellant argues that the Examiner’s proposed modification is based
on improper hindsight reconstruction. See App. Br. 14 (citing Final Act. 7).3
Appellant also challenges the Examiner’s stated reasoning for replacing
Meyer’s feeler pin 38 with Graff’s pressure sensors 79a, 79b (Ans. 4
(“[r]ecognizing that mechanical switches contacting boxes would be prone
to failure over time, a person having ordinary skill in the art would recognize

2 In the statement of the rejection, the Examiner listed claims 1–11 as being
rejected. Final Act. 3. We regard this as a typographical error because claims
1, 3, and 5–11 are discussed in the body of the rejection (see id. at 3–7) and
claim 2 and 4 have been canceled (see id. at 2).
3 Appellant also contends that in the Interview Summary dated August 23,
2018, the Examiner improperly takes the position that the claim language
“configured to” can be interpreted as “capable of being configured to.” App.
Br. 6. However, the Examiner has withdrawn this position. See Ans. 5.
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that Meyer’s carrier element could be improved by using pressure sensors
rather than mechanical feeler switches, in view of Graffs teachings,”)) as not
being supported by the cited prior art, conclusory, and thus, as based on
hindsight. Reply Br. 1–2 (quoting Ans. 4).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l. v. Teleflex, 550 U.S. 398, 418 (2007). Further, our
reviewing court has frequently cautioned that it is not proper to base a
conclusion of obviousness upon facts gleaned only through hindsight. To
draw on hindsight knowledge of the patented invention, when the prior
art does not contain or suggest that knowledge, is to use the invention as a
template for its own reconstruction—an illogical and inappropriate process
by which to determine patentability. Sensonics Inc. v. Aerosonic Corp., 81
F.3d 1566, 1570 (Fed. Cir. 1996) (citing W.L. Gore & Assoc. v. Garlock,
Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983)). The invention must be viewed
not after the blueprint has been drawn by the inventor, but as it would have
been perceived in the state of the art that existed at the time the invention
was made. Id. (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132,
1138 (Fed. Cir. 1985)). Here, the Examiner did not provide sufficient
evidence to demonstrate, nor technical reasoning to explain, why Meyer’s
mechanical pin has a higher risk of failure or lower reliability as compared
to Graff’s pressure sensors. If anything, it can be argued that Graff’s
pressure sensors, which seem more complex, would be more prone to failure
and thus less reliable than an apparently simpler mechanical pin of Meyer.
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As such, because the Examiner’s statement is conclusory and the Examiner
has not articulated a persuasive reason supported by rational underpinnings
for combining the reference teachings in the manner proposed, we conclude
that it is more likely than not that the Examiner improperly resorted to
hindsight in reaching a conclusion of obviousness. See Reply Br. 2.
The rejection is also deficient for two additional reasons. First, in the
Final Office Action, the Examiner acknowledges that the combination of
Meyer, Graff, and Kaushal does not disclose varying a measurement rate of
acquiring pressure information or varying a measurement rate of wireless
transmission of pressure information, as required for claim 1. Final Act. 5.
The Examiner, however, finds that Kaushal discloses “sampling the various
sensor data at different rates.” Id. (citing Kaushal 12:36–39, 16:43–45; Fig.
11). The Examiner concludes that it would have been obvious to modify the
combination of Meyer, Graff, and Kaushal to have the required feature of
claim 1 because
[a] person having ordinary skill in the art would recognize that a
higher sampling rate would be needed to measure the precise
moment a package is gripped, compared to when the partial
vacuum is applied (no package is gripped), and thus two
sampling rates may be used. A person having ordinary skill in
the art would recognize this would reduce the amount of
superfluous data required to be computed by the receiver,
resulting in less computational expense of the device.
Id. This reasoning is also conclusory. First, from the cited passages and
Figure 11, Kaushal, at best, discloses different sampling rates;4 Kaushal does

4 To the extent that the Examiner found that Kaushal discloses a single
sensor operating at different sampling rates, we do not agree as discussed
below.
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not disclose the different sampling rates for the reasons discussed by the
Examiner. Further, the Examiner did not provide sufficient evidence to
demonstrate, nor technical reasoning to explain, why a higher sampling rate
for precise measurement and a lower sampling rate for reducing superfluous
data and computational expense are desirable in a single system. In other
words, if a higher sampling rate produces precise measurement, then it
would make sense to have the system operate only at that higher sampling
rate. As such, this statement is also conclusory and because the Examiner
has not articulated a persuasive reason supported by rational underpinnings
for combining the reference teachings in the manner proposed, we conclude
that again, it is more likely than not that the Examiner improperly resorted to
hindsight. See App. Br. 13–14.
Further, claim 1 recites “the carrier element is configured to vary a
measurement rate, and wherein the measurement rate is selected from the
group consisting of a rate at which the pressure information is acquired by
the pressure sensor and a rate of wireless transmission of the pressure
information.” In other words, this limitation is different from a carrier
element that uses one measurement rate and another carrier element that
uses a different measurement rate. Appellant argues that Kaushal does not
disclose the same sensor, i.e., the same carrier element, that varies the
measurement rate as claimed. App. Br. 13. The Examiner appears to take the
position that Kaushal does. See Ans. 7–8 (citing Kaushal 16:43–45).
Appellant’s contention is more persuasive. Kaushal discloses “the
data may be obtained from a cluster of similar or dissimilar sensors being
sampled at the same or different rates.” Kaushal 16:43–45. This passage
does not clearly suggest a single sensor that is configured to vary its
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measurement rate. At best, this passage discloses similar sensors that can
sample at the same rates and different sensors that can sample different rates.
We note that in the Answer, the Examiner pivots away from this position
taken in the Final Office Action by asserting that the Specification discloses
variable sampling rate pressure sensors are known. See Ans. 8–10 (citing
Spec. 9:30–10:175). However, even if variable sampling rate pressure
sensors are known, the Specification does not admit that it would have been
obvious to an ordinary artisan to use those sensors to vary data acquisition or
data transmission in a carrier element. Thus, this altered position taken by
the Examiner fails to remedy the lack of rational underpinnings discussed
above.
For the foregoing reasons, we do not sustain the Examiner’s rejection.

CONCLUSION
The Examiner’s rejection is reversed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1, 3, 5–11 103(a)  Meyer, Graff, Kaushal 1, 3, 5–11

REVERSED

5 Rather than citing to the Specification as filed, the Examiner cites to
paragraphs 44 and 45 of the published application (US 2015/0082754 A1).