University of ChicagoDownload PDFPatent Trials and Appeals BoardMay 13, 20202019004109 (P.T.A.B. May. 13, 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. 15/164,798 05/25/2016 Rustem F. Ismagilov TUC-002C2 5479 162491 7590 05/13/2020 GOODWIN PROCTER LLP/TALIS/UNIV OF CHICAGO PATENT ADMINISTRATOR 100 NORTHERN AVENUE BOSTON, MA 02210 EXAMINER HURST, JONATHAN M ART UNIT PAPER NUMBER 1799 NOTIFICATION DATE DELIVERY MODE 05/13/2020 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): JGoodwin@goodwinlaw.com KFLICK@TALISBIO.COM US-PatentBos@goodwinlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RUSTEM F. ISMAGILOV, WENBIN DU, LIANG LI, FENG SHEN, KEVIN PAUL FLOOD NICHOLS, DELAI CHEN, and JASON EUGENE KREUTZ ____________ Appeal 2019-004109 Application 15/164,798 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, MICHAEL G. McMANUS, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from a Non- Final Office Action, dated December 11, 2017, rejecting claims 1–30. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appeal 2019-004109 Application 15/164,798 2 Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. An apparatus for determining the quantity of an analyte present in a sample, the apparatus comprising: a top plate comprising a plurality of areas arranged to form a plurality of rows extending parallel to one another; and a bottom plate comprising a plurality of areas arranged to form a plurality of rows extending parallel to one another, and a plurality of channels extending perpendicularly to the plurality of rows of the bottom plate; wherein the top plate and the bottom plate are assembled together so that the top plate is on top of the bottom plate and the areas of the top plate communicate with the areas of the bottom plate so as to form a plurality of rows; wherein at least one of the top plate and the bottom plate is configured to slide relative to the other of the top plate and the bottom plate in order to form a plurality of columns, with each of the plurality of columns in communication with each of the plurality of channels; and wherein the areas in the top plate and the areas in the bottom plate extend at a 45 degree angle relative to the axis of a row. Independent claim 11 recites an apparatus similar to claim 1. Independent claim 21 is to a method to be practiced by the apparatus of claim 1. Appeal 2019-004109 Application 15/164,798 3 The Appellant1 requests review of the Examiner’s rejection of claims 1–30 under 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement.2 Appeal Br. 4; Non-Final Act. 2– 3.3 OPINION After review of the respective positions the Appellant and the Examiner present, we REVERSE the Examiner’s rejection of claims 1–30 under 35 U.S.C. § 112 (pre-AIA), first paragraph, for the reasons the Appellant provides in the Appeal Brief4. We add the following for emphasis. There is no dispute that claims 1–30 are originally-filed claims. See generally Appeal Br. and Non-Final Act.; see also Appeal Br. 19–23 (Claims App. designating each claim as original). The purpose of the written description requirement in 35 U.S.C. § 112, first paragraph, is to “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as the University of Chicago, an Illinois not for profit corporation. Appeal Br. 2. 2 The Examiner withdrew all rejections of the claims on the ground of nonstatutory double patenting. Ans. 3. 3 Appellant requested an oral hearing for this appeal on April 29, 2019, which was scheduled for May 11, 2020. Appellant subsequently elected to waive hearing attendance in a communication dated April 22, 2020. Accordingly, the appeal will be decided based on the brief submitted by Appellant. 4 The Appellant did not file a Reply Brief to the Examiner’s Answer. Appeal 2019-004109 Application 15/164,798 4 (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed. Cir. 1991) (citation omitted)). In addition, the written description requirement of 35 U.S.C. § 112, first paragraph, applies to all claims including original claims that are part of the disclosure as filed. Ariad, 598 F.3d at 1349. As stated by the Federal Circuit, “[a]lthough many original claims will satisfy the written description requirement, certain claims may not.” Ariad, 598 F.3d at 1349; see also LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343–46 (Fed. Cir. 2005); Regents of the University of California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997). The Examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. See In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad, 598 F.3d at 1351 (citations omitted). This test “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. “Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. The Examiner finds that the Specification, as originally filed, does not provide sufficient written descriptive support for these originally-filed claims so as to convey with reasonable clarity to one of skill in the art that the Appellant had possession of the claimed invention. Ans. 4–5. Appeal 2019-004109 Application 15/164,798 5 Specifically, the Examiner finds the following claimed features as lacking adequate written descriptive support: a. “with each of the plurality of columns in communication with each of the plurality of channels” (claims 1–30) (Ans. 4); b. “wherein each of the plurality of channels is connected to an area formed in the bottom plate” (claims 4, 11–22, and 25) (id.); and c. “positioning ink in an area in a row adjacent to the plurality of channels; sliding one of the top plate and the bottom plate relative to the other of the top plate and the bottom plate so as to form the plurality of columns, with each column being in communication with one of the plurality of channels; and determining the quantity of the analyte present in the sample by detecting the longitudinal position of the ink contained in the plurality of channels” (claims 21–30) (id. at 4–5). After consideration of the Appellant’s arguments (Appeal Br. 8–18), we agree with the Appellant that there is reversible error in the Examiner’s determination that originally-filed claims 1–30 lack adequate written descriptive support. The Examiner’s premise for this rejection is that there is no literal support for the disputed language. Non-Final Act. 3–5; Ans. 4. However, given that claims 1–30 are originally-filed claims, the originally-filed claims satisfy the written description requirement for the disputed language. The Examiner does not present any evidence or reasoning to explain why persons skilled in the art would not recognize a description of the invention defined by the claims in the original disclosure, taking into account the originally- filed claims. In fact, we find no instance where the Examiner addresses the originally-filed claims as evidence, or lack thereof, of written descriptive Appeal 2019-004109 Application 15/164,798 6 support. See generally Non-Final Act. and Ans. Thus, the Examiner has not established that the original disclosure, including the originally-filed claims, is insufficient to reasonably convey to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Accordingly, we reverse the Examiner’s prior art rejection of claims 1–30 under 35 U.S.C. § 112, first paragraph for the reasons the Appellant presents and we give above. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–30 112, first paragraph Written Description 1–30 REVERSED Copy with citationCopy as parenthetical citation