Theranos, Inc.

Patent Trials and Appeals Board

Nov 25, 2020

2020000145 (P.T.A.B. Nov. 25, 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.
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.
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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).
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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.
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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).
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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”).
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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
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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
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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
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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
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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.