Solentim Ltd

Patent Trials and Appeals Board

Sep 22, 2021

2020005110 (P.T.A.B. Sep. 22, 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.
15/603,184 05/23/2017 Aaron Figg 18573/003001; P109362US 3522
153320 7590 09/22/2021
FBFK
3200 Southwest Freeway, Suite 3200
Houston, TX 77027
EXAMINER
PRAKASH, GAUTAM
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
09/22/2021 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):
docketing@fbfk.law
jhathaway@fbfk.law
rlord@fbfk.law
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte AARON FIGG and YONGGANG JIANG
____________
Appeal 2020-005110
Application 15/603,184
Technology Center 1700
____________
Before LINDA M. GAUDETTE, DEBRA L. DENNETT, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s
decision to reject claims 1–15 of Application 15/603,184, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
15/603,184 filed May 23, 2017; the Non-Final Office Action dated Nov. 7, 2017
(“Non-Final Act.”); the Appeal Brief filed Feb. 6, 2020 (“Appeal Br.”); the
Examiner’s Answer dated Apr. 28, 2020 (“Ans.”); and the Reply Brief filed June
26, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Solentim Ltd. Appeal Br. 4.
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The subject matter of the invention relates to a particle dispensing apparatus.
Spec. 1, ll. 4. The Specification explains that it is often desirable to be capable of
dispensing exactly one particle (such as a cell) from a container of particles into a
receptacle (such as a well of a micro titer well plate) for applications such as
medical research. Id., ll. 7–10. The Specification discloses dispensing a sample
containing zero, one, or more than one cell into a receptacle, then capturing an
image of the sample in the receptacle with an image capture device. Id. 3, ll. 14–
16. Subsequently processing the image allows determination of whether the
dispensed sample contains zero cells, one cell, or more than one cell. Id., ll. 16–
18. If zero cells are determined to be present in the receptacle, the process is
repeated by the processing circuitry causing another sample to be dispensed. Id.,
ll. 18–19. Consequently, receptacles containing zero cells are reduced or even
eliminated, increasing the likelihood that cultivation with a single cell—as opposed
to zero cells or more than one cell—can be achieved. Id., ll. 21–24.
Claim 1, reproduced below from the Claims Appendix of the Appeal Brief,
represents the claimed subject matter:
1. An apparatus comprising:
a receptacle configured to receive a sample, wherein the
receptacle comprises a first side comprising an opening, a second side
comprising a bottom and opposite the first side, and a wall disposed
between the opening and the bottom;
a sample dispenser configured to dispense the sample into the
receptacle through the opening, wherein the sample dispenser is
disposed proximate to the first side of the receptacle;
an image capture device configured to capture an image of the
sample in the receptacle through the bottom of the receptacle, wherein
the image capture device is disposed proximate to the second side of
the receptacle, opposite of the receptacle from the sample dispenser;
and
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processing circuitry in communication with the sample dispenser
and the image capture device, wherein the processing circuitry is
configured to:
process the image to determine whether the receptacle contains
zero cells, exactly one cell, or more than one cell, and
in response to a determination that the receptacle contains zero
cells, cause the sample dispenser to dispense a further sample into the
receptacle.
REFERENCES
The Examiner relies on the following prior art in rejecting claims 1–15 as
obvious under 35 U.S.C. § 103(a):
Name Reference Date
Kobayashi et al.
(“Kobayashi”)
US 8,086,016 B2 Dec. 27, 2011
Kapre US 2015/0064768 A1 Mar. 5, 2015
Shaw GB 2 316 081 A Feb.18, 1998
REJECTIONS
The Examiner maintains the rejection of claims under 35 U.S.C. § 103(a)3 as
follows: (1) claims 1–14 over Shaw in view of Kobayashi; and (2) claim 15 over
Shaw in view of Kobayashi, further in view of Kapre. Non-Final Act. 4–6.

3 We note that Appellant properly appeals from the Examiner’s non-final rejection
of Nov. 7, 2019 because the claims on appeal have been twice rejected. See 35
U.S.C. § 134(a) (“An applicant for a patent, any of whose claims has been twice
rejected, may appeal from the decision of the primary examiner to the Patent Trial
and Appeal Board.”).
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DISCUSSION
Rejection of claims 1–14 as obvious over Shaw in view of Kobayashi
Appellant argues for reversal of the rejection of this group of claims on the
basis of limitations present in independent claim 1. Appeal Br. 16–24. Thus, we
limit our discussion to claim 1, which represents the claims subject to this ground
of rejection. 37 C.F.R. § 41.37(c)(1)(iv) (2017).
The Examiner finds that Shaw teaches most of the limitations of claim 1.
Final Act. 4–5. However, the Examiner finds that the limitation “in response to a
determination that the receptacle contains zero cells, cause[s] the sample dispenser
to dispense a further sample into the receptacle” is not taught by Shaw, but that
Shaw teaches “it is important to be able to deposit just one cell in a particular
location,” thus the limitation is obvious. Id. at 4 (citing Shaw at 5, ll. 21–22). The
Examiner finds also that Shaw does not teach “the receptacle comprises a first side
with an opening, a second side comprising a bottom, and a wall between the first
and second sides” or that the image capture device is proximate to the second side
of the receptacle, opposite from the sample dispenser. Id. The Examiner finds that
devices with a receptacle as claimed and an image capture device proximate to the
second side of the receptacle are well known, relying on Kobayashi. Id. The
Examiner concludes that it would have been obvious to one of ordinary skill in the
art to modify Shaw to use a receptacle and place the image capture device
proximate to the second side of the receptacle as taught by Kobayashi. Id. at 4–5.
Appellant argues, inter alia, that the Examiner does not provide a logical
reason or expectation of success for the proposed modification of Shaw’s device
with Kobayashi. Appeal Br. 20. This argument is persuasive.
Figure 1 of Shaw is reproduced below:
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Figure 1 shows a diagrammatic perspective view of an embodiment of
Shaw. Shaw, 9, ll. 18–19. Single particle dispensing apparatus (10) is supported
above X-Y table (12) which carries substrate (14) that may be, e.g., a culture plate.
Id., 10, ll. 4–6. Dispensing apparatus (10) includes a pressurized tank (18) that
contains a sparse dispersion of particles, with the dispersion being fed from tank
(18) through outlet line (20). Id., 10, ll. 9–13. Outlet line (20) then passes through
optical detector (26). Id., 10, ll. 17–18. Discharge portion (28) extends from
optical detector (26) towards substrate (14). Id., 10, ll. 24–26. Gutter (30) may be
positioned to catch droplets discharged from line (28) and return them to tank (18).
Id., 10, l. 26–11, l. 1. Gutter (30) may be displaced to a position permitting
discharge onto substrate (14). Id., 11, ll. 2–5.
If a single particle or cell is detected and identified as being alone in line
(28), it is held there in the fluid and can be dispensed. Id., 13, ll. 19–21. If
multiple particles are present, the fluid can be directed to waste or recirculation.
Id., 13, 24–25.
The Examiner fails to explain how modifying Shaw’s device to move the
image capture device from its location in Shaw to a location underneath the
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receptacle disclosed in Kobayashi would still allow one to view and isolate a single
cell or single particle in the discharge line.
In Shaw, the optical detector detects the presence of a single cell or particle
while it is in a discharge line before it is discharged to a substrate or a gutter for
recycling or discarding. Shaw, Fig. 1; 10:–11:10. Movement of Shaw’s image
capture device to a location on the far side of the substrate (or receptacle) from the
discharge portion of the discharge line would not allow Shaw’s device to detect
whether a single cell or particle is present in the discharge line before a sample is
discharged.
“The Patent Office has the initial duty of supplying the factual basis for its
rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies” in the cited references. In re Warner, 379
F.2d 1011, 1017 (CCPA 1967). More than merely demonstrating that each claim
element was independently known in the prior art is required. KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007) (“[I]t can be important to identify a reason
that would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does.”). “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). In
the absence of such an explanation, the rejection must be reversed. Id.; In re
Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998) (“hindsight” is inferred when the
specific understanding or principal within the knowledge of one of ordinary skill in
the art leading to the modification of the prior art in order to arrive at appellant's
claimed invention has not been explained); Perfect Web Techs. Inc. v. InfoUSA,
Inc., 587 F.3d 1324, 1330 (Fed. Cir. 2009) (“[T]o invoke ‘common sense’ or any
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other basis for extrapolating from prior art to a conclusion of obviousness, [the
factfinder] must articulate [their] reasoning with sufficient clarity for review.”).
Because the Examiner has not established that moving the image capture
device from its location in Shaw to the location in Kobayashi would have allowed
one to view and isolate a single cell or single particle, we do not sustain the
rejection of claim 1 as obvious over Shaw in view of Kobayashi. For the same
reasons, we do not sustain the rejection of claims 2–14 as obvious over these
references.
Rejection of claim 15 as obvious over Shaw in view of Kobayashi, further in
view of Kapre
Appellant argues that the additional teaching of Kapre does not cure the
deficiencies of Shaw and Kobayashi. Appeal Br. 26.
We do not sustain the rejection of claim 15 for the reasons discussed above
in relation to claim 1.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–14 103(a) Shaw, Kobayashi 1–14
15 103(a) Shaw, Kobayashi, Kapre 15
Overall
Outcome
1–15
REVERSED