Colin Bozarth et al.

Patent Trials and Appeals Board

Nov 23, 2020

2019002014 (P.T.A.B. Nov. 23, 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.
14/838,647 08/28/2015 Colin BOZARTH LUMN.P0009US.D1 2696
108120 7590 11/23/2020
Parker Highlander PLLC
1120 S. Capital of Texas Hwy
Bldg 1, Suite 200
Austin, TX 78746
EXAMINER
HIXSON, CHRISTOPHER
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
11/23/2020 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):
docket@phiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COLIN BOZARTH, ROSS JOHNSON and
ADAM SCHILFFARTH
Appeal 2019-002014
Application 14/838,647
Technology Center 1700
Before BEVERLY A. FRANKLIN, JULIA HEANEY, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 22–26. We have jurisdiction.
35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Luminex
Corporation. Appeal Br. 3.
Appeal 2019-002014
Application 14/838,647

2
CLAIMED SUBJECT MATTER
The claims are directed to methods for collecting a sample of
magnetic beads from a liquid. Claim 22, reproduced below with the
dispositive limitation italicized, is illustrative of the claimed subject matter:
22. A method for collecting a sample of magnetic beads from
a liquid, comprising:
obtaining a system comprising:
a well comprising:
a first trench;
a second trench; and
a ridge between the first trench and the second
trench, wherein the first trench is parallel to the second
trench, wherein: the working volume of the well is
between about 25 uL and about 10 mL; and
a magnet external to the well, wherein the
magnet is adjacent to the first trench, where the magnet is
configured to selectively exert a magnetic force on the first
trench;
obtaining a first suspension comprising a plurality of
magnetic beads suspended in a first liquid;
introducing a volume of the first suspension into the
well;
exerting a magnetic force on the first trench;
precipitating magnetic beads from the first suspension;
forming a pellet of magnetic beads in the first trench;
introducing a probe into the second trench; and
aspirating with the probe a portion of the first liquid
from the second trench.
Appeal Br. 11 (Claims App’x).

Appeal 2019-002014
Application 14/838,647

3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Molho US 2007/0184463 A1 Aug. 9, 2007
Kelso US 2009/0246782 A1 Oct. 1, 2009
Kunal Sur, Immiscible Phase Nucleic Acid Purification Eliminates PCR
Inhibitors with a Single Pass of Paramagnetic Particles through a
Hydrophobic Liquid, Vol. 12, No. 5, J. Mol. Diagn. 620–628 (2010).
REJECTIONS
Claims 22–24 are rejected under 35 U.S.C. § 102(b) as anticipated by
or, in the alternative, under pre-AIA 35 U.S.C. § 103(a) as obvious over
Kelso. Non-Final Act.2 4–6.
Claims 24 and 25 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Kelso in view of Sur. Id. at 7.
Claim 26 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Kelso in view of Molho. Id. at 8.
OPINION
Rejection I
Appellant argues the claims subject to this rejection as a group.
Appeal Br. 4–9.3 Therefore, consistent with our rules, we select claim 22 as
representative and decide the appeal of this rejection on the basis of claim 22
alone. Claims 23 and 24 will stand or fall with claim 22. 37 C.F.R.
§ 41.37(c)(1)(iv).

2 We refer to the Non-Final Official Action dated February 22, 2018, from
which this appeal is taken.
3 We rely on the Appeal Brief filed August 22, 2018 in response to the
Notice of Defective Appeal Brief which identifies errors in the Appeal Brief
filed July 20, 2018.
Appeal 2019-002014
Application 14/838,647

4
The dispositive issue raised by Appellant’s arguments on appeal is
whether the Examiner has reasonably supported the finding that Kelso
discloses the last recited step of the claimed method, i.e., “aspirating with
the probe a portion of the first liquid from the second trench.” Appeal Br. 4–
9. We determine that the Examiner has supported this finding with a
preponderance of the evidence and affirm the rejection. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992) (“patentability is determined on the totality
of the record, by a preponderance of evidence with due consideration to
persuasiveness of argument.”).
Relevant to this appeal, the Examiner finds that Kelso implicitly
discloses “aspirating with the probe a portion of the first liquid from the
second trench.” Non-Final Act. 5 (quoting Kelso ¶ 246 “where ‘the elution
buffer/bead slurry is transferred to a . . . tube’, where beads/elution buffer
contain captured elements of the first fluid – thus, they include ‘a portion of
the first liquid’”).
Appellant argues that “[t]he Examiner provides no support or citation
for” this finding. Appeal Br. 8–9. This argument is unpersuasive because
the Examiner does cite to a specific paragraph of Kelso. Non-Final Act. 5
(citing Kelso ¶ 246). Moreover, in the Answer, the Examiner offers further
explanation of how Kelso’s disclosure evinces this limitation. Ans. 5–6.
There, the Examiner clarifies that “[i]n the rejection, the examiner’s position
was that the ‘portion of the first liquid’ . . . was the viral RNA which was to
be eluted (from the beads) once they were transferred from the second trench
to the ‘screw-cap tube’.” Id. at 5. “Because the beads take on the viral RNA
in the first trench . . . and are then transferred to the second trench [], the
beads would be expected to still comprise the viral RNA, and so would still
Appeal 2019-002014
Application 14/838,647

5
have a ‘portion of the first fluid’ when transferred out of the second trench.”
Id. at 6. Notably, Appellant does not address the Examiner’s detailed
explanation supporting this finding with any degree of specificity in the
Reply Brief.4 Reply Br., generally.
Therefore, Appellant does not persuade us of reversible error in the
Examiner’s rejection of claims 22–24.
Rejections II and III
Appellant relies on the same deficient argument for these rejections as
it does for Rejection I. Appeal Br. 9. Because those arguments are
unpersuasive for Rejection I, they are equally unpersuasive for Rejections II
and III.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
22–24 103(a) Kelso 22–24
24, 25 103(a) Kelso, Sur 24, 25
26 103(a) Kelso, Molho 26
Overall
Outcome
22–26

4 Appellant does raise a new argument in the Reply Brief that “claim 22
requires aspirating . . . while the magnetic force is exerted on the first trench
to form the pellet of precipitated magnetic beads.” Reply Br. 4. We do not
consider this argument, however, because Appellant has not established
good cause for its consideration. 37 C.F.R. §41.41(b)(2).
Appeal 2019-002014
Application 14/838,647

6
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