Ex Parte Bauer et alDownload PDFPatent Trial and Appeal BoardAug 31, 201712277681 (P.T.A.B. Aug. 31, 2017) 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. 12/277,681 11/25/2008 Ralf Bauer ROA 0097 NA/23823 US 6483 67491 7590 09/05/2017 DINSMORE & SHOHL, LLP FIFTH THIRD CENTER ONE SOUTH MAIN STREET SUITE 1300 DAYTON, OH 45402 EXAMINER WRIGHT, PATRICIA KATHRYN ART UNIT PAPER NUMBER 1798 NOTIFICATION DATE DELIVERY MODE 09/05/2017 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): daytonipdocket@dinsmore.com pair_roche@firsttofile.com jackie.pike@roche.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RALF BAUER, WERNER SCHONENBERGER, and ROGER ITEN Appeal 2016-007020 Application 12/277,681 Technology Center 1700 Before CATHERINE Q. TIMM, MICHAEL P. COLAIANNI, and JENNIFER R. GUPTA, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-007020 Application 12/277,681 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1—19, 33 and 36. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants’ invention is directed to a system and a method for managing information relating to requests for a number of tests to be made on at least one sample within a laboratory environment (Spec. 12). Claim 1 is illustrative: 1. A system for managing information relating to requests for a number of tests to be made on at least one sample within a laboratory environment, the system comprising: a decision unit; at least one pre-analytical unit configured to scan the at least one sample and to sort, aliquot and/or archive the at least one sample on request according to respective test requirements included within a respective sample order, the pre-analytical unit being further configured to extend the respective sample order with sorting/aliquoting information in terms of sample information regarding sample extension and sample position to provide an extended sample order and to upload the extended sample order to the decision unit; and at least one analytical unit configured to run at least one corresponding test of the number of tests on the appropriately sorted and/or aliquoted sample and to upload the test results to the decision unit, the decision unit being located in a sample distribution area of the laboratory environment, and configured: to enable at least one host component to access the system and to submit the sample order for the at least one sample, to act as intermediary and coordinator in communication between the at least one pre-analytical unit and the at least one analytical unit, to coordinate processing of the number of tests via a recursive workflow until all tests have been done, to manage required data information transfers between the different units by combining information coming from the at least one pre-analytical unit and the at least one analytical unit as a basis to make a next decision, 2 Appeal 2016-007020 Application 12/277,681 to download the sample order comprising sample identification and sample test requests from the at least one host component, to distribute the at least one sample to an appropriate analytical unit according to distribution criteria based on pre-analytical information from the at least one pre-analytical unit and/or on test results from tests of the number of tests which have already been performed by the at least one analytical unit, to update, before the at least one sample physically leaves the appropriate analytical unit, the sample order with respect to the uploaded test results in which the decision unit processes the test results, derives therefrom still open and/or pending test requests, decides about further actions to be performed by at least one of the at least one pre-analytical unit and the at least one analytical unit and initiates those actions, if necessary, and to add new or confirmation tests or to comment, block, release, replace, modify or extend any requested test, so that the updated sample order is to be processed again until all test requests have been done, to collate gained test results with the sample, and to provide a respective report to the at least one host component, (emphasis added) Appellants appeal the following rejection: Claims 1—19, 33, and 36 are rejected 35 U.S.C. § 103(a) as unpatentable over Fava (US 6,721,615 B2 issued Apr. 13, 2004). Appellants argue the same limitation appearing in independent claims 1,13, and 33 for each claim on appeal (Br. 10-19). We select claim 1 as representative of the claims on appeal. FINDINGS OF FACT & ANALYSIS Appellants argue that Fava fails to teach the decision unit is configured “to update, before the at least one sample physically leaves the appropriate analytical unit, the sample order with respect to the uploaded test results in which the decision unit processes the test result.” (Br. 10). Appellants contend and the Examiner finds that Fava teaches moving the 3 Appeal 2016-007020 Application 12/277,681 samples from the analytical unit to a sorting rack before the decision unit provides new test orders. Id. Appellants contend that the Examiner engaged in impermissible hindsight in concluding that it would have been obvious to modify Fava’s system so that the samples wait in the analytical unit until the decision unit updates the sample order with respect to the test results before physically leaving the analytical unit (Br. 11—12). Appellants contend that the Examiner’s findings with regard to modifying Fava’s system to have the samples wait in the analytical unit until the decision unit updates is only gleaned from Appellants’ disclosure not the teachings of Fava (Br. 12). Appellants contend that Fava teaches not to leave the samples in the analytical unit while waiting for the new test orders because Fava teaches that the system automatically estimates the time before completion of each sample test and then distributes sample containers along the system to optimize workflow, avoiding queues and bottlenecks (Br. 13). Appellants contend that leaving the samples in the analytical unit would change Fava’s mode of operation that allots certain time for each sampling. (Br. 13). Contrary to Appellants’ arguments, the Examiner’s rejection is based upon the teachings of Fava and the knowledge of a person of ordinary skill in the art (Ans. 4—5, 10—13). Specifically, the Examiner finds that Fava teaches that after the samples have been removed from the analyzers 11 to a sorting rack, the Data Manager may automatically ask for new test orders or automatically re-execute some tests and/or add some new tests (called reflex tests) to the Sample Protocol for further analytical investigation (Ans. 12). The Examiner finds that Fava discloses that the re-execution of tests or executing new tests includes automatically picking up the Sample Container again by the IOM robot and routing the samples again to the appropriate 4 Appeal 2016-007020 Application 12/277,681 analyzers 11. Id. The Examiner finds that one of ordinary skill in the art would have recognized that the repetitive transport of the samples for the re testing in the same analyzer would have been avoided by simply waiting to see if the Data Manager indicates that additional tests were required to be performed on the samples (Ans. 5, 13). The Examiner’s obviousness conclusion is based upon Fava’s teachings that additional transportation may be required for retesting and the knowledge of a person of ordinary skill in the art. Appellants do not contest the Examiner’s findings with respect to the knowledge of one of ordinary skill in the art. Appellants’ arguments rather focus on hindsight. However, the Examiner’s analysis is not based on hindsight but rather, the teachings of Fava coupled with the uncontested knowledge of the ordinarily skilled artisan. That Fava does not teach to hold the samples in the analyzer is not determinative because a person of ordinary skill in the art is a person of ordinary creativity, not an automaton. KSR v. Teleflex Inc., 550 US 398, 421 (2007). We are unpersuaded by Appellants’ argument that modifying Fava’s system so that the Data Manager updates the sample order with respect to the uploaded test results before the at least one sample physically leaves the appropriate analytical unit would change the mode of Fava’s operation. The Examiner finds that the only modification being made to Fava is removing the step of moving the sample container to the sorting rack and back to the analyzer before it is determined whether or not reflex testing is necessary (Ans. 13). In other words, it would have been obvious to modify the movement of the containers through Fava’s system, but the underlying testing and reporting test results would not have changed. The Examiner’s findings are supported by Fava that teaches that the timing of the particular 5 Appeal 2016-007020 Application 12/277,681 protocols affect the speed at which the samples are processed (Fava col. 6,1. 62 to col. 7,1. 67). Fava teaches that some sampling protocols take more time than other protocols and allows bottlenecks within a certain limit (Fava, col. 7,11. 5—10). Fava teaches to estimate automatically the time before completion of each sample test and then distribute Sample Containers along the system in order to optimize the workflow (Fava col 5,11. 30—34). This teaching, however, further describes that some sampling processes may take more time, so that the distribution of the containers to the analyzers would accommodate the sample that require a longer amount of time to analyze. In other words, the teaching to avoid bottlenecks does not preclude having an analyzer that includes a longer sampling time. Indeed, Fava does not disclose the particular times for each sampling. In our view, Fava does not teach away from leaving the samples in an analyzer for a longer period of time so that further instructions to be sent to the analyzer from the data manager. On this record, the preponderance of the evidence favors the Examiner’s obviousness conclusion. We affirm the Examiner’s § 103 rejection over Fava. DECISION The Examiner’s decision is affirmed. 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. § 41.50(f). ORDER AFFIRMED 6 Copy with citationCopy as parenthetical citation