University of Chicago

Patent Trials and Appeals Board

May 13, 2020

15164798 - (D) (P.T.A.B. May. 13, 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.
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.
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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.
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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.
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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
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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