Roche Diagnostics Operations, Inc.

Patent Trials and Appeals Board

May 7, 2020

2019004459 (P.T.A.B. May. 7, 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.
14/503,473 10/01/2014 Michael Otter ROH 0074 NA/
P27372-US-1
8414
67491 7590 05/07/2020
DINSMORE & SHOHL, LLP
FIFTH THIRD CENTER
ONE SOUTH MAIN STREET
SUITE 1300
DAYTON, OH 45402
EXAMINER
KWAK, DEAN P
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
05/07/2020 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 MICHAEL OTTER, THOMAS FISCHER,
STEFANIE FROEHNER, PHILLIP MILLER, and MATTHEW METTE
____________

Appeal 2019-004459
Application 14/503,473
Technology Center 1700
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 13–16 and 18–28.3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed Oct. 1, 2014 (“Spec.”);
Final Office Action dated Mar. 9, 2018 (“Final Act.”); Appeal Brief filed
Dec. 21, 2018 (“Appeal Br.”); Examiner’s Answer dated Mar. 18, 2019
(“Ans.”); and Reply Brief filed May 17, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies Roche Diagnostics Operations, Inc.
as the real party in interest. Appeal Br. 2.
3 Claims 1–12 are withdrawn and claim 17 is canceled. Appeal Br. 4.
Appeal 2019-004459
Application 14/503,473

2
CLAIMED SUBJECT MATTER
The invention relates to a method for the homogeneous distribution of
cell components suspended in a liquid on a surface and a device for the
implementation of the method. Spec. ¶ 2; Abstract. Claim 13 illustrates the
subject matter on appeal and is reproduced below from the Claims Appendix
to the Appeal Brief:
13. A device for the homogeneous distribution of cell
components suspended in a liquid on a surf ace of a liquid carrier,
the device comprising:
a. a table having a top surface configured to receive
and position horizontally a liquid carrier thereon;
b. a liquid application device configured to apply said
liquid onto an upper surface of said liquid carrier
when said liquid carrier is positioned horizontally
on the table, wherein the liquid comprises cell
components suspended therein;
c. a distributing bar configured to be spaced above and
apart from the liquid carrier when received and
positioned horizontally on the top surface of the
table and contact in a forward direction liquid
applied, via the liquid application device, to the
upper surface of the liquid carrier, the forward
direction being parallel to the upper surface of the
liquid carrier, and wherein the distributing bar is
positioned horizontally on the table; and
d. a drive device configured to move in the forward
direction the table, the distributing bar, or both the
table and the distributing bar individually or
simultaneously, to move the liquid uniformly across
the liquid carrier surface, wherein the distributing
bar, the liquid carrier or both have positioning
elements configured to maintain a fixed distance of
the distributing bar directly above the liquid carrier
surface during engagement of the drive device.
Appeal 2019-004459
Application 14/503,473

3
Appeal Br. 15 (key disputed claim language italicized and bolded).
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Henderson et al.
(“Henderson”)
US 7,060,448 B2 June 13, 2006
Kram et al.
(“Kram”)
US 2013/0052331 A1 Feb. 28, 2013
REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 13–15, 18–20, 23, and 25–28 are rejected under
pre-AIA 35 U.S.C. § 102(e) as being anticipated by Kram (“Rejection 1”).
Ans. 3; Final Act. 2.
2. Claim 16 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Kram (“Rejection 2”). Ans. 7; Final Act. 6.
3. Claims 21, 22, and 24 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Kram in view of Henderson
(“Rejection 3”). Ans. 8; Final Act. 7.
OPINION
Having considered the respective positions the Examiner and
Appellant advance in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer
and Final Office Action, which we adopt as our own. We add the following
primarily for emphasis.
Appeal 2019-004459
Application 14/503,473

4
Rejection 1
The Examiner rejects claims 13–15, 18–20, 23, and 25–28 under
§ 102 as being anticipated by Kram. Ans. 3–7. In response to the
Examiner’s rejection, Appellant presents argument for the patentability of
claim 13 but does not present separate argument for the patentability of
claims 14, 15, 18–20, 23, and 25–28. Appeal Br. 6. We select claim 13 as
representative and claims 14, 15, 18–20, 23, and 25–28 stand or fall with
claim 13. 37 C.F.R. § 41.37(c)(1)(iv).
To serve as an anticipatory reference, “the reference must disclose
each and every element of the claimed invention.” In re Gleave, 560 F.3d
1331, 1334 (Fed. Cir. 2009). The Examiner finds that Kram describes a
device disclosing each and every element of claim 13 and concludes the
reference anticipates the claim. Ans. 3–5 (citing Kram, Abstract, Figs. 7–18,
¶¶ 13–16, 117, 118, 121, 127, 132, 137, 139, 142, 165, 166, 175). In
particular, regarding “a table having a top surface configured to receive and
position horizontally a liquid carrier thereon” recitation of the claim,
Appellant finds Kram discloses:
a table (e.g., base 360, Fig. 16; see also heater 217, Fig. 14)
having a top surface (see Figs. 14, 17, 18) capable of
receiving and positioning horizontally a liquid carrier
(e.g., slide 120/340) thereon (see Figs. 14, 16 & ¶ 0142 for
example).
Id. at 3.
Appellant argues principally that the Examiner’s rejection of claim 13
should be reversed because the cited art does not disclose “a table having a
top surface configured to receive and position horizontally said liquid carrier
thereon,” as required by the claim. Appeal Br. 6–13. In particular,
Appellant argues the Examiner’s rejection is erroneous because it is based
Appeal 2019-004459
Application 14/503,473

5
on the Examiner’s incorrect interpretation of the term “configured to”
recited in the claim. Id. at 6; see also Reply Br. 1 (“The asserted rationale
for anticipation is based on an incorrect interpretation of the term
‘configured to.’”).
Essentially, Appellant contends the Examiner’s rejection should be
reversed because the Examiner’s interpretation of the term “configured to” is
overly broad. Appellant contends that, in contrast to the interpretation of
“configured to” the Examiner applies in the rejection,
claim 13 requir[es] more than just a table having a top
surface capable of receiving and positioning horizontally
a liquid carrier thereon, but rather a table that requires a
top surface that is designed to accomplish the function
claimed, which is not intended use.
Appeal Br. 6; see also id. at 8–9 (arguing the term “configured to” is
narrower than the phrase “capable of”) (citing In re Giannelli, 739 F.3d
1375 (Fed. Cir. 2014)).
Based on this narrower construction of the term “configured to”
Appellant contends should apply, Appellant argues that in order to establish
Kram anticipates claim 13, the Examiner must show that Kram “disclose[s]
that base 360 is designed to actually receive and position horizontally a
liquid carrier thereon as claimed, which it does not.” Appeal Br. 6.
Appellant relies on principally the same argument as it relates to the
Examiner’s findings regarding Kram’s disclosure of the “liquid application
device” and “distributing bar” limitations of claim 13. Id. at 9–12; Reply
Br. 2. That is, Appellant contends the Examiner’s anticipation analysis as to
Kram’s disclosure of the “liquid application device” and “distributing bar”
limitations of the claim is erroneous because it is likewise based on the
Examiner’s incorrect interpretation of the term “configured to” to mean
Appeal 2019-004459
Application 14/503,473

6
“capable of.” Appeal Br. 12 (arguing that “a sufficient showing of
anticipation has not been set forth” because the Examiner relies on Kram’s
device’s components “being capable of”); see also Reply Br. 2 (“[T]he
Examiner has not adequately explained how Kram’s asserted distributing bar
and liquid application device are ‘configured to’ perform as called for by
claim 13.”).
We do not find Appellant’s arguments persuasive of reversible error
in the Examiner’s rejection based on the fact-finding and reasoning provided
by the Examiner at pages 3–13 of the Answer and pages 2–5 of the Final
Office Action. Rather, on the record before us, we determine a
preponderance of the evidence supports the Examiner’s findings and
determination that Kram discloses all of the limitations of claim 13,
including “a table having a top surface configured to receive and position
horizontally a liquid carrier thereon,” and anticipates the claim, and that the
Examiner’s interpretation of the term “configured to” constitutes the
broadest reasonable interpretation consistent with the Specification.
During prosecution, claims are given their broadest reasonable
interpretation consistent with the Specification. In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim
must be read in light of the Specification, as they would have been
interpreted by one of ordinary skill in the art at the time of the invention. Id.
Regarding “a table having a top surface configured to receive and
position horizontally a liquid carrier thereon” recitation of claim 13, the
Specification provides:
By table it is meant any means which is suitable for
accommodation of the liquid carrier. As a rule it will be a
means with a surface on which the liquid carrier can be
Appeal 2019-004459
Application 14/503,473

7
placed horizontally. For this, the table can in particular
include a planar surface.
Spec. ¶ 27. The Specification, however, does not provide a specific
definition of the term “configured to” beyond the language recited in the
claim. Appellant also does not identify or direct us to any description in
Specification indicating that “configured to” as recited in claim 13, must be
construed narrowly to mean specifically designed to accomplish the function
claimed, as Appellant alleges.
Rather, as the Examiner finds and explains (Ans. 9–10), paragraph 27
of the Specification describes the claimed table as “including a planar
surface,” being “suitable for accommodation of the liquid carrier,” and
having “a surface on which the liquid carrier can be placed horizontally,”
which we find one of ordinary skill would have reasonably understood to
mean that the table is capable of having a liquid carrier horizontally placed
thereon. This interpretation is also consistent with, for example, Figure 2 of
the Specification, which shows table 11 as having a flat, planar top surface
and being positioned horizontally such that it would be capable of having a
liquid carrier, for example, a microscope slide placed thereon. See also
Spec. ¶ 59 (disclosing the claimed device “comprises a table on which a
liquid carrier can be positioned”), ¶ 61 (“The surface of the rectangular
liquid carrier can be made in the size of one or more adjacently laid
microscope slides of any size.”).
Thus, absent any special definition or scope-limiting disclosure in the
Specification, and based on the fact-finding and reasons provided by the
Examiner, for example, at pages 3 and 9–10 of the Answer, we determine
the Examiner correctly applies the broadest reasonable interpretation
consistent with the Specification of the term “configured to” to mean
Appeal 2019-004459
Application 14/503,473

8
capable of. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (“[W]e look to the specification to see if it provides a definition
for claim terms, but otherwise apply a broad interpretation.”).
Accordingly, applying the broadest reasonable interpretation of the
recitation “configured to,” we discern no reversible error in the Examiner’s
finding that Kram discloses “a table having a top surface configured to
receive and position horizontally a liquid carrier thereon,” as claimed. As
the Examiner finds (Ans. 3, 10), Kram discloses a table (e.g., base 360)
having a planar top surface capable of receiving and positioning horizontally
a liquid carrier (e.g., slide 120) thereon. Kram, Figs. 14, 16–18, ¶ 141
(disclosing the apparatus “can process slides in different orientations,
including a generally vertical orientation, horizontal orientation, inclined
orientation, or the like”) ¶ 142 (disclosing “the slide 120 may be moved to a
generally horizontal orientation”), ¶ 145.
Thus, as the Examiner determines (Ans. 3–5, 9–13), we determine one
of ordinary skill in the art would immediately envisage or readily ascertain
the claimed invention, including “a table having a top surface configured to
receive and position horizontally a liquid carrier thereon,” based on Kram’s
disclosure. See In re Petering, 301 F.2d 676, 681 (CCPA 1962) (holding
that to anticipate, one skilled in the art must be able to “at once envisage”
the claimed subject matter in the prior art’s disclosure); see also
Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed.
Cir. 2015) (explaining that even if a prior art reference does not expressly
spell out all the limitations arranged as in the claim, the reference still
anticipates if one of ordinary skill in the art could “at once envisage the
claimed arrangement or combination”).
Appeal 2019-004459
Application 14/503,473

9
Appellant’s arguments do not reveal reversible error in the
Examiner’s factual findings and analysis in this regard. Appellant’s
contentions regarding the In re Giannelli decision and that the term
“configured to” should be construed narrowly to mean designed to (Appeal
Br. 6–9; Reply Br. 1–2) are not persuasive because Appellant does not
identify any structural differences to distinguish the claimed invention from
the apparatus disclosed in the prior art. As the Examiner explains (Ans. 9),
Appellant does not direct us to persuasive evidence that Kram’s base 360
would not have that same capability or be capable of performing the claimed
functional limitation, i.e., receiving and positioning horizontally a liquid
carrier thereon. Indeed, it is well-settled that the patentability of an
apparatus claim depends on the claimed structure, not on the use or purpose
of that structure, Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289
F.3d 801, 809 (Fed. Cir. 2002), or the function or result of that structure, In
re Danly, 263 F.2d 844, 848 (CCPA 1959). Appellant’s mere disagreement
with the Examiner’s factual findings as to what Kram discloses, without
more, is insufficient to establish reversible error. Cf. SmithKline Beecham
Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere
statements of disagreement . . . as to the existence of factual disputes do not
amount to a developed argument.”).
Appellant’s contentions that “[t]he cited reference neither discloses
nor suggests each of the elements positively recited in amended claim 13”
(Appeal Br. 12) and “the Examiner has not adequately explained how
Kram’s asserted distributing bar and liquid application device are
‘configured to’ perform as called for by claim 13” (Reply Br. 2) are not
persuasive because they are conclusory and, without more, do not reveal
Appeal 2019-004459
Application 14/503,473

10
reversible error in the Examiner’s factual findings and analysis in this
regard. Attorney argument is not evidence. In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984). Appellant’s contentions in this regard are also not
well-taken because they are premised on Appellant’s incorrect interpretation
as to what the term “configured to” should be construed to mean.
Accordingly, we affirm the Examiner’s rejection of claims 13–15,
18–20, 23, and 25–28 under pre-AIA 35 U.S.C. § 102(e) as anticipated by
Kram.
Rejections 2 and 3
In response to the Examiner rejection of claim 16 under § 103(a) as
obvious over Kram (Ans. 7) (Rejection 2), and the Examiner’s rejection of
claims 21, 22, and 24 under 35 U.S.C. § 103(a) as obvious over the
combination of Kram and Henderson (Ans. 8–9) (Rejection 3), Appellant
does not present any new or additional substantive arguments in the Appeal
Brief.
Rather, Appellant relies on the same arguments previously discussed
and presented above in response to the Examiner’s rejection of claim 13.
See Appeal Br. 13 (“By virtue of claim 16’s dependency from unobvious
claim 13 in view of Kram . . . this claim is likewise patentable over the cited
art for at least the same reasons note[d].”); id. at 14 (“[I]t is submitted that
claims 21, 22 and 24, also by virtue of their dependency from unobvious
claim 13, are patentable over combined teachings of Kram and Henderson et
al.”).
Thus, based on the fact-finding and reasoning provided by the
Examiner, and for principally the same reasons discussed above for
affirming the Examiner’s Rejection 1, we affirm the Examiner’s rejection of
Appeal 2019-004459
Application 14/503,473

11
claim 16 under 35 U.S.C. § 103(a) as obvious over Kram and the
Examiner’s rejection of claims 21, 22, and 24 under 35 U.S.C. § 103(a) as
obvious over the combination of Kram and Henderson.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
13–15,
18–20, 23,
25–28
102(e) Kram 13–15,
18–20, 23,
25–28

16 103(a) Kram 16

21, 22, 24 103(a) Kram,
Henderson
21, 22, 24

Overall
Outcome
13–16, 18–28

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