Ex Parte PRINS et al

Patent Trials and Appeals Board

Jan 30, 2019

14646826 - (D) (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/646,826 05/22/2015 MENNO WILLEM JOSE PRINS
24737 7590 02/01/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2012P01136WOUS 2537
EXAMINER
HANDY,DWAYNEK
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
02/01/2019 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte MENNO WILLEM JOSE PRINS and
GODEFRIDUS JOHANNES VERHOECKX 1
(Applicant: Koninklijke Philips N.V.)
Appeal2018-003953
Application 14/646,826
Technology Center 1700
Before BEYERL YA. FRANKLIN, DONNA M. PRAISS, and
DEBRA L. DENNETT, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant identifies the real party in interest as Koninklijke Philips N.V.
App. Br. 2.
Appeal2018-003953
Application 14/646,826
Appellant requests our review under 35 U.S.C. § I34(a) of the Examiner's
decision rejecting claims 1-12 and 14--16. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellant's subject matter on appeal and is set forth
below:
1. A cartridge for uptake and processing of a medium, comprising:
an inlet portion with an inlet via which the medium can be taken
up;
an assay chamber in which the medium can be processed; and
a suction reservoir;
wherein the assay chamber and the suction reservoir are
connected to the inlet portion to trap a quantity of air in the assay
chamber when the medium fills the inlet portion, and wherein the
quantity of trapped air in the assay chamber stops the medium in
the inlet portion from entering the assay chamber.
App. Br. 14 (Claims Appendix) (emphasis added).
The Examiner relies on the following prior art references as evidence of
unpatentability:
Pugia
Ahn
Battrell
US 2004/0241042 Al
US 2005/0130292 Al
US 2010/0112723 Al
2
Dec. 12, 2004
June 16, 2005
May 6, 2010
Appeal2018-003953
Application 14/646,826
THE REJECTIONS
1. Claims 1-6, 9-12, 14, and 16 are rejected under pre-AIA 35 U.S.C. § 102(b)
as being anticipated by Battrell.
2. Claims 7 and 15 are rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Battrell in view of Ahn.
3. Claim 8 is rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable
over Battrell in view of Pugia. 2 Ans. 6.
ANALYSIS
Upon consideration of the evidence and each of the respective positions set
forth in the record, we find that the preponderance of evidence supports Appellant's
position. Accordingly, we reverse each of the Examiner's rejections on appeal
essentially for the reasons set forth in the Appeal Brief and the Reply Brief, with the
following emphasis.
It is the Examiner's position that Battrell anticipates the claimed subject
matter, particularly with regard to the claim language regarding "wherein the
assay chamber and the suction reservoir are connected to the inlet portion to
trap a quantity of air in the assay chamber when the medium fills the inlet
portion, and wherein the quantity of trapped air in the assay chamber stops the
medium in the inlet portion from entering the assay chamber". Ans. 1--4. On
the other hand, it is Appellant's position that the presence of air does not
2 Note that the Final Action indicates the rejection of claim 8 is over Battrell in
view of Ahn and refers to a previous Office Action. The Appeal Brief and Reply
Brief also refer to Ahn instead of Pugia for this rejection. This is a harmless
inconsistency as it is not critical to our analysis and determinations in this decision.
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Appeal2018-003953
Application 14/646,826
actively stop fluid from entering Battrell' s channel 7, but aids in the
transmission of the suction pulse, causing the fluids to start flowing. Appeal
Br. 6. We are persuaded by this line of argument as presented throughout the
record as there would be no need for Battrell' s capillary stops 21, 22 or 18, 19
if the presence of air actively stops fluid from entering channel 7. We thus
reverse Rejection 1. Because the Examiner does not rely upon the
additionally applied references (applied in Rejections 2 and 3) to cure this
stated deficiency of Battrell, we also reverse Rejections 2 and 3 for the same
reasons.
Each rejection is reversed.
DECISION
ORDER
REVERSED
4