Stephen Allen

Patent Trials and Appeals Board

Feb 2, 2022

2021000233 (P.T.A.B. Feb. 2, 2022)

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. 14/958,130 12/03/2015 Stephen Allen PKI-705610 1737 91026 7590 02/02/2022 Rhodes IP PLC 3241 Electric Rd STE 1A Bldg D Roanoke, VA 24018 EXAMINER BECKER, JOSEPH W ART UNIT PAPER NUMBER 2483 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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): crhodes@rhodesip.com ipdocketing@rhodesip.com reporting@rhodesip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN ALLEN Appeal 2021-000233 Application 14/958,130 Technology Center 2400 Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, 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 1-3 and 5-20. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as PerkinElmer Health Sciences, Inc. Appeal Br. 3. Appeal 2021-000233 Application 14/958,130 2 CLAIMED SUBJECT MATTER The claims are directed to “configurations of systems, devices and methods . . . that use or place labware or labware components” (Spec. ¶ 51) whereby “[i]n certain configurations, the use of a virtual image to assist in placement of labware components permits the system to alter the position of the labware components” (Spec. ¶ 52). Claim 1, reproduced below with the disputed limitation in italics, is illustrative of the claimed subject matter: 1. A fluid handling system which can receive one or more labware components, add material to or remove material from the labware component and may perform one or more analytical or chemical operations using materials in, or added to, the labware component, the fluid handling system comprising: a support configured to receive at least one labware component at a labware site on top of the support, wherein the labware component is configured to receive and retain a fluid; an image projector separate from the support and configured and positioned to project an image of the at least one labware component above a top surface of the support as a first virtual image in a position above the support at the labware site where the labware component is to be placed on the support to assist in placing the at least one labware component at the labware site on the support; a sampling probe configured to aspirate, dispense, aerate, degas or perform other fluid handling operations on the received fluid in the placed labware component on the support; and a processor electrically coupled to the sampling probe and the image projector and configured to provide a digital image to the projector, wherein the projector receives the digital image from the processor and converts the digital image to the first virtual image that is projected in the position above the support at the labware site. Appeal Br. 15 (Claims Appendix). Appeal 2021-000233 Application 14/958,130 3 REFERENCES2 The Examiner relies on these references: Name Reference Date Du US 2005/0102056 A1 May 12, 2005 Holmes US 2013/0079599 A1 Mar. 28, 2013 Short US 2017/0223244 A1 Aug. 3, 2017 Poggi DE 691 08 321 T2 July 27, 1995 REJECTIONS Claims 1-3, 5-9, and 11-19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Du and Holmes. Final Act. 3. Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable over Du, Holmes, and Short. Final Act. 10. Claim 20 stands rejected under 35 U.S.C. § 103 as being unpatentable over Du, Holmes, and Poggi. Final Act. 10. ISSUES First Issue: Has the Examiner erred in finding Du teaches or suggests the disputed limitation italicized above in the reproduction of claim 1? Second Issue: Has the Examiner erred in determining claim 9 is obvious over the teachings of Du and Holmes? ANALYSIS First Issue Claim 1 recites the disputed limitation an image projector separate from the support and configured and positioned to project an image of the at least one labware component above a top surface of the support as a first virtual image in a position above the support at the labware site where 2 Citations to the references are to the first named inventor/author only. Appeal 2021-000233 Application 14/958,130 4 the labware component is to be placed on the support to assist in placing the at least one labware component at the labware site on the support, Appeal Br. 15 (Claims Appendix). The Examiner rejects claim 1 as obvious over the combination of Du and Holmes. Relevant to the issues before us, the Examiner finds that Du’s description of using a projector to assist in placement of labware components such as sample vials teaches or suggests the disputed limitation. Final Act. 4 (citing Du Fig. 3, ¶ 49); see also Final Act. 3 (citing Du ¶¶ 1-5). Appellant argues the Examiner has erred because none of Du’s embodiments teaches the configuration recited in the claim. Appeal Br. 9- 13. Specifically, Appellant asserts that Du discloses two embodiments using a projector, neither of which teaches the disputed limitation. Appellant argues the configuration shown in Du’s Figure 2 is deficient because it does not include a “projector separate from the support” as recited in the claim and instead includes a display panel 18 positioned as a support platform underneath a sample container 38 which displays an image of a sample compartment 36 to assist in placement of the container. Appeal Br. 10. According to Appellant, the display panel 18 acts as a support, and therefore cannot be considered a “projector separate from the support.” Appeal Br. 9- 10. Appellant further asserts Du’s Figure 2 configuration does not “project an image of the at least one labware component above a top surface of the support” because “the image in the Figure 2 embodiment of Du is on or within the display panel 18” (Appeal Br. 10), and “[not] above the display panel 18 or any other support.” Id. Appellant further argues that Du’s Figure 3 embodiment, while including a projector positioned above a support, is also deficient. Appeal Appeal 2021-000233 Application 14/958,130 5 Br. 10-13. Appellant contends that Du’s Figure 3 embodiment fails to “project an image of the at least one labware component above a top surface of the support as a first virtual image in a position above the support” as claimed because the projected light beam merely points to samples, and does not project any virtual image. Appeal Br. 11-13; see also Reply Br. 2-3. We are not persuaded of error. At the outset, we note that, as the Supreme Court has stated, obviousness requires an “expansive and flexible” approach that asks whether the claimed improvement is more than a “predictable variation” of “prior art elements according to their established functions.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 415, 417 (2007). “[H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. In this regard, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. Here, in contrast, Appellant’s arguments rigidly focus on a narrow reading of individual prior art references, without considering a skilled artisan’s “creativity[] and common sense.” Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). Du demonstrates that the problem of placement of labware components was known. Du ¶ 4 (“[T]he chance of incorrectly locating samples in a manual process becomes a major concern.”). Du further shows that it was known to use projected virtual images of labware objects to assist in placement of objects. Du ¶ 40 (“The top view image 24 of the sample container 38 is displayed on the display panel.”) Although Du’s projected images are used in the context of a display platform that is used to support Appeal 2021-000233 Application 14/958,130 6 the placed objects, Du also recognizes that a light projector may be used to assist in the placement of objects, albeit with illumination instead of virtual images. Du ¶ 49 (“Projector 44 is connected to a computer to generate desired images.”). A person of ordinary skill in the art, possessing these teachings, would have understood that the images displayed on the support display could instead be output to the projector from the computer, as claimed, instead of to a flat panel display. Such a modification would have been obvious because it is a predictable variation using prior art elements according to their established functions. KSR, 550 U.S. at 417 (“If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability”). As such, we are not persuaded the Examiner has erred in rejecting claim 1, and we sustain its rejection under 35 U.S.C. § 103. Second Issue Claim 9 depends from claim 1 and recites that “the projector is configured to project the first virtual image using non-visible light.” Appeal Br. 17 (Claims Appendix). In rejecting claim 9, the Examiner relies on Holmes, finding that Holmes description of the use of spectroscopy would have made it obvious to modify Du by projecting the first virtual image using non-visible light. Final Act. 7 (citing Holmes ¶¶ 1643-1662). Appellant challenges the Examiner’s findings with respect to claim 9, arguing that “the description in Holmes that spectroscopy includes all assays that produce luminescence or change light is not a sufficient teaching to permit the person having ordinary skill in the art to arrive at what is recited in claim 9.” Appeal Br. 13. According to Appellant, “[t]here must be some guidance in Holmes and Du to use non-visible light from a projector, Appeal 2021-000233 Application 14/958,130 7 separate from a support, to provide a first virtual image of a labware component above the support.” Appeal Br. 13. We are not persuaded of error. Appellant’s argument misstates the standard applicable for evaluating obviousness. Appellant’s argument suggests that an explicit suggestion to combine the references must be found in the references themselves. Appeal Br. 13. However, this is not the case. Under KSR, and under Federal Circuit precedent, an explicit teaching, suggestion, or motivation need not be found in the references themselves, and instead may be found in the knowledge available to one of ordinary skill in the art. Dystar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006) (“The motivation need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.”) (citations omitted). Moreover, Appellant does not address the actual rationale provided by the Examiner for combining Du and Holmes. Ans. 5. Accordingly, we are not persuaded of error, and we sustain the rejection of claim 9. Remaining Claims Appellant presents no separate arguments for patentability of claims 2, 3, 5-8 and 10-20. Accordingly, we sustain the Examiner’s rejections of these claims for the reasons stated with respect to the independent claim from which they depend. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION We affirm the Examiner’s decision to reject the claims. Appeal 2021-000233 Application 14/958,130 8 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 5-9, 11-19 103 Du, Holmes 1-3, 5-9, 11-19 10 103 Du, Holmes, Short 10 20 103 Du, Holmes, Poggi 20 Overall Outcome 1-3, 5-20 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