Theranos, Inc.Download PDFPatent Trials and Appeals BoardNov 25, 20202020000145 (P.T.A.B. Nov. 25, 2020) Copy Citation 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. 13/945,202 07/18/2013 Elizabeth A. Holmes 2001.201 3065 107075 7590 11/25/2020 Labrador Diagnostics LLC 160 Foss Creek Cir #2369 Healdsburg, CA 95448 EXAMINER LIU, SHUYI S ART UNIT PAPER NUMBER 1774 NOTIFICATION DATE DELIVERY MODE 11/25/2020 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): docketing@labradordiagnostics.com eofficeaction@appcoll.com patents@labradordiagnostics.com PTOL-90A (Rev. 04/07) Appeal 2020-000145 Application 13/945,202 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ELIZABETH A. HOLMES, DANIEL YOUNG, TIMOTHY SMITH, SCOTT RIDEL, JOHN KENT FRANKOVICH, and MICHAEL SIEGEL Appeal 2020-000145 Application 13/945,202 Technology Center 1700 ____________ Before TERRY J. OWENS, JEFFREY T. SMITH, and MERRELL C. CASHION, JR., Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge SMITH. Opinion Dissenting filed by Administrative Patent Judge OWENS. SMITH, 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, 18, 19, and 21–32 are pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE 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 Theranos IP Company, Inc. Appeal Br. 2. Appeal 2020-000145 Application 13/945,202 2 Appellant’s invention is generally directed to a compact high speed centrifuge for use with sample containers. (Spec. ¶ 5.) Independent claim 1 is representative of the appealed subject matter and is reproduced below: 1. A compact high speed centrifuge for use with sample containers, the centrifuge comprising: a centrifuge rotor comprising: a first portion comprising a thermally insulating material; a second portion comprising a thermally conductive material; one or more receptacles in the centrifuge rotor for receiving the sample containers, wherein containers are arranged in areas with the thermally insulating material; a centrifuge housing shaped to enclose at least a circumferential perimeter of the centrifuge rotor; a first air bearing configured to operably support an underside surface of the centrifuge rotor, wherein at least a portion of the first air bearing is defined by the centrifuge housing; and a second air bearing configured to operably support an lateral surface of the centrifuge rotor, wherein at least a portion of the second air bearing is defined by the centrifuge housing; wherein the thermally conductive material is configured to channel heat in a direction leading away from the containers. Claims Appendix. The following rejections are presented for our review: 2 I. Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over Boeckel (US 5,551,241, iss. Sept. 3, 1996) in view of Wakita (US 2 The complete statement of the rejections on appeal appears in the April 5, 2018 Final Action (Final Act. 3–10). Appeal 2020-000145 Application 13/945,202 3 4,460,351, iss. July 17, 1984) and Krumme (US 2010/0034492 A1, pub. Feb. 11, 2010). II. Claims 18, 19, and 32 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Boeckel, Wakita, Krumme and Werfel (US 2002/0074882 A1, pub. June 20, 2020). III. Claims 21–23 and 27 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Boeckel, Wakita, Krumme, and further in view of Gordon (EP 1129783 A2, pub. Sep. 5, 2001) and Meeks (US 2006/0013733 A1, pub. Jan. 19, 2006). IV. Claims 24–26 and 28–31 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Boeckel, Wakita, Krumme, Gordon, Meeks, and Ryu (US 2010/0009831 A1, pub. Jan. 14, 2010). OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections,” citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)). 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 2020-000145 Application 13/945,202 4 Rejection I Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Boeckel, Krumme and Wakita. We limit our discussion to the independent claim 1 as argued by Appellant. (Appeal Br. 4–10). Appellant argues Krumme fails to describe a housing that provides an air bearing feature as required by independent claim 1. (Appeal Br. 4–6.) Appellant argues Krumme instead uses pressurized gas at discrete structures that are not part of the centrifuge housing to provide the air bearings. (Appeal Br. 4 citing Krumme ¶ 36.) Appellant’s arguments are not persuasive of reversible error for reasons the Examiner presents. (Ans. 9–11.) Appellant has not refuted the Examiner’s determination that Krumme’s axial air bearings 10, 11, and 12 as well as Krumme’s radial air bearings 13, 14, and 15 are all structures supported by or attached to the housing 2.3 (Final Act. 9; Krumme ¶ 18.) Appellant has not established that Krumme’s attachment configuration is patently distinct from the claimed invention. Appellant points to Specification paragraphs 214, 215, and 217 and Figures 19b and 20 as descriptive of the air bearings required by the claimed invention. (Appeal Br. 3.) Specification paragraph 215 specifically discloses that air bearing 724 is configured to opposite side walls of the centrifuge rotor. This description does not require the air bearing to be an integral portion of the housing but rather is inclusive of an attachment (configuration) to the housing. Thus, Appellant has not directed us to evidence that establishes a patentable 3 Appellant has not refuted the Examiner’s determination that Krumme stator 2 is a housing structure (Final Act. 4). Appeal 2020-000145 Application 13/945,202 5 distinction between an air bearing that is attached to the housing versus an air bearing configured to the housing. Appellant argues the Examiner relies on impermissible hindsight to combine the teachings of the cited art. Appellant specifically states: [T]hat ABSENT the impermissible use of HINDSIGHT, there is NO technical benefit cited by the Examiner for making the proposed combination of using a 300 RPM design of a CT scanner (Krumme) to “improve” the bearing function of a 12000 RPM centrifuge (Wakita). (Appeal Br. 6, emphasis original.) We are unpersuaded by this argument. As the Examiner explains in the Answer, one of ordinary skill in the art would have been capable of applying Krumme’s teaching of a known method of enhancement to a “base” device to Boeckel’s centrifuge with the expectation that the modified device would be suitable to perform Boeckel’s centrifuging operation. Ans. 12. Therefore, the Examiner has provided a reasonable basis for combining the teachings of the cited art. Further, Appellant has not directed us to evidence that air bearings were recognized to be unsuitable for operation at high speeds. The prior art cited by the Examiner establishes that bearing functions can be achieved utilizing air bearings as an alternative to mechanical bearings. (See Krumme ¶ 5.) A person of ordinary skill in the art would have recognized the suitable adjustments that would have been necessary for operating air bearings dependent upon the speed of rotation. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Appeal 2020-000145 Application 13/945,202 6 Appellant further argues the Examiner has failed to establish a reasonable expectation of success for utilizing Krumme’s bearings configured for a vertical device given the horizontal configuration ascribed by Boeckel. (Appeal Br. 8–9.) Appellant’s arguments lack persuasive merit. It is not necessary to physically incorporate the air bearings described by Krumme into the device described by Boeckel to render obvious the claimed invention. See In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure cannot be incorporated in Ambrosio are basically irrelevant, the criterion being not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.”); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review.”) and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does not involve an ability to combine their specific structures.”).. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant has not directed us to evidence that air bearings were recognized to be unsuitable for use at various angles. Given that Krumme establishes that bearing functions can be achieved utilizing air bearings as an alternative to mechanical bearings (see Krumme ¶ 5), Appellant has not explained adequately why one skilled in the art would not have been capable Appeal 2020-000145 Application 13/945,202 7 of adjusting Krumme’s air bearings to perform at a desired angle of operation. See KSR. 550 U.S. at 418. For the foregoing reasons and those the Examiner presents, we sustain the rejection of claim 1. Rejections II–IV Claims 18, 19, and 21–32 are rejected under 35 U.S.C. § 103(a) as unpatentable over Boeckel, Wakita and Krumme in combination with additional references stated in their respective rejections. Appellant relies on the arguments presented for claim 1 to address the rejections of claims 18, 19, and 21–32. (Appeal Br. 10.) Appellant does not assert non-obviousness based on the additional features set forth in claims 18, 19, and 21–32 by explaining how the additional references cited by the Examiner fail to establish the obviousness of these additional features. Because we do not find Appellant’s arguments persuasive as to independent claim 1, it follows that these arguments are unpersuasive as to claims 18, 19, and 21–32. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 103(a) Boeckel, Wakita, Krumme 1 18, 19, 32 103(a) Boeckel, Wakita, Krumme, Werfel 18, 19, 32 Appeal 2020-000145 Application 13/945,202 8 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 21–23, 27 103(a) Boeckel, Wakita, Krumme, Gordon, Meeks 21–23, 27 24–26, 28–31 103(a) Boeckel, Wakita, Krumme, Gordon, Meeks, Ryu 24–26, 28–31 Overall Outcome 1, 18, 19, 21–32 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 Appeal 2020-000145 Application 13/945,202 OWENS, Administrative Patent Judge, dissenting. Setting forth a prima facie case of obviousness requires establishing that the applied prior art would have provided one of ordinary skill in the art with an apparent reason to modify the prior art to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Boeckel “relates to thermoelectric coolers preferably designed for installation within the housing of centrifuges” (col. 1, ll. 14–15). Boeckel uses a plurality of heat sinks mounted horizontally concentric with respect to the rotor of the centrifuge (col.1, ll. 53–55). Krumme discloses a computer tomograph (CT scanner) (¶ 3). Krumme teaches (¶ 5): In modem computer tomographs of high resolution, the rotating part of the gantry rotates at high rotation numbers, for example 300 r.p.m. Simultaneously a very high positional tolerance of the gantry in ranges distinctly below 1 mm is required. With this, mechanical bearings frequently approach limits of what is technologically possible. Here, an elegant way of providing a bearing function is by means of an aerodynamic bearing, also known as an air bearing. Krumme’s CT scanner comprises “a rotatable device having aerostatic bearing facilities and a direct drive in the form of a segmented ring motor so that it can be equipped with a simpler and thus also less costly bearing means” (¶ 8). The Examiner finds that “it would have been well within the capability of one having ordinary skill in the art to support the rotor of Boeckel et al. with radial and axial air bearings as taught by Krumme, and to position the air bearings as necessary to allow for horizontal orientation, for Appeal 2020-000145 Application 13/945,202 2 example, by evenly distributing the air bearings around the circumference of the rotor” (Ans. 15–16). The Examiner also finds (Ans. 11−12): [O]ne of ordinary skill in the art would be well aware that what would be considered a "high" rotational speed for a larger rotational device, such as the gantry of a CT scanner, would not necessarily be considered a “high” rotational speed for a smaller rotational device, since the RPM of a rotational device is a function of the radius of the rotor. Given such understanding, however, one of ordinary skill in the art would still be able to glean from the teachings of Krumme that air bearings can provide improved bearing performance at high rotational speeds for a rotatable device of any give size, including a centrifuge of any size. The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a “base” device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art. The Examiner concludes that “[i]t would have been obvious for one having ordinary skill in the art at the time of the invention to have provided the centrifuge of Boeckel et al. with the air bearings of Krumme for the purpose of providing improved bearing function for a rotatable device at high rotation numbers (paragraph [0003], [0005], [0023])” (Final Rej. 5). The Examiner’s finding that it would have been well within the capability of one having ordinary skill in the art to support Boeckel’s rotor of with Krumme’s radial and axial air bearings does not establish that Krumme would have provided one of ordinary skill in the art with an apparent reason to make that modification. Also, the Examiner does not provide evidence supporting the Examiner’s finding that “one of ordinary skill in the art would still be able to glean from the teachings of Krumme Appeal 2020-000145 Application 13/945,202 3 that air bearings can provide improved bearing performance at high rotational speeds for a rotatable device of any give size, including a centrifuge of any size.” See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Accordingly, I dissent from the affirmance of the Examiner’s rejection. Copy with citationCopy as parenthetical citation