Colin Bozarth et al.Download PDFPatent Trials and Appeals BoardNov 23, 20202019002014 (P.T.A.B. Nov. 23, 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. 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 Copy with citationCopy as parenthetical citation