Ex Parte Bauer et al

Patent Trial and Appeal Board

Aug 31, 2017

12277681 (P.T.A.B. Aug. 31, 2017)

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,
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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
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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
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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
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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
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