Ex Parte Regan et alDownload PDFPatent Trial and Appeal BoardJul 16, 201312712345 (P.T.A.B. Jul. 16, 2013) 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. 12/712,345 02/25/2010 John Frederick Regan IL-11738B 2505 24981 7590 07/17/2013 Lawrence Livermore National Security, LLC LAWRENCE LIVERMORE NATIONAL LABORATORY PO BOX 808, L-703 LIVERMORE, CA 94551-0808 EXAMINER HURST, JONATHAN M ART UNIT PAPER NUMBER 1775 MAIL DATE DELIVERY MODE 07/17/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte JOHN FREDERICK REGAN and JAMES MICHAEL BIRCH ________________ Appeal 2012-002544 Application 12/712,345 Technology Center 1700 ________________ Before TERRY J. OWENS, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-002544 Application 12/712,345 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-7, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a method for disease diagnosis. Claim 1 is illustrative: 1. A computer implemented method of diagnosing diseases at hospitals, staffed pharmacies or unstaffed locations for analyzing a vial containing a specimen sample from a user, comprising the steps of: providing an automated diagnostic vending machine, providing a computer in said automated diagnostic vending machine, providing a diagnostic unit in said automated diagnostic vending machine operably connected to said computer, providing an automated genetic assay diagnostic instrument in said diagnostic unit in said automated diagnostic vending machine that performs nucleic acid extraction from the specimen and produces a genetic assay from the specimen and produces a disease diagnoses, providing a unit for communicating said disease diagnoses to the users in said automated diagnostic vending machine operably connected to said computer and to said diagnostic vending machine unit, positioning said diagnostic vending machine at the hospitals, the staffed pharmacies or the unstaffed locations, delivering the vial to said automated diagnostic vending machine, using said automated diagnostic vending machine for sample acquisition and processing to perform said nucleic acid extraction from the specimen and produce said genetic assay from the specimen and to produce said disease diagnosis, Appeal 2012-002544 Application 12/712,345 3 using said automated diagnostic vending machine for diagnosing diseases from the specimen sample providing said disease diagnosis, and using said unit for communicating said disease diagnoses to the users in said automated diagnostic vending machine for communicating said disease diagnosis to the user. The References Ammann US 6,335,166 B1 Jan. 1, 2002 Devlin US 2002/0064881 A1 May 30, 2002 Bulat US 6,638,218 B2 Oct. 28, 2003 Squilla US 2006/0111620 A1 May 25, 2006 The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1- 3 over Squilla in view of Ammann, claims 4-6 over Squilla in view of Ammann and Devlin and claim 7 over Squilla in view of Ammann, Devlin and Bulat. OPINION The rejections are affirmed as to claims 1, 2 and 4-7 and reversed as to claim 3. In most of the Appellants’ arguments in the Brief and the Reply Brief the Appellants improperly address each reference individually and argue that the reference does not disclose or suggest claim requirements for which the reference is not relied upon by the Examiner. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references”). We address only the Appellants’ arguments directed toward the references relied upon by the Examiner to meet the Appellants’ argued claim limitations. Appeal 2012-002544 Application 12/712,345 4 Rejection of claims 1-3 over Squilla in view of Ammann Squilla discloses a medical kiosk at which an unassisted customer can obtain a disease diagnosis using a medical test which can be a saliva test or a hair sample DNA test and can receive the results of the diagnosis (¶¶ 0006, 0009, 0015, 0041, 0048, 0056, 0080, 0111, 0113). Ammann discloses an automated, computer-controlled, self-contained, stand-alone diagnostic analyzer which can carry out nucleic acid-based assays and preferably stores specimens, reaction receptacles, materials used in performing the assays, and assay waste products (col. 4, ll. 17-48; col. 24, l. 52 – col. 25, l. 2). Ammann teaches that the uses for diagnostic assays include determine disease states (col. 1, ll. 16-21). Claims 1 and 2 The Appellants argue that Ammann does not produce a genetic assay and a disease diagnosis (Br. 22-23; Reply Br. 2). Ammann produces a genetic assay (col. 4, ll. 17-34) and indicates that it can provide a disease diagnosis (col. 1, ll. 9-21). Thus, in view of Squilla’s disclosures that the uses of Squilla’s medical kiosk are not limited and include providing DNA information (¶¶ 0009, 0041, 0077-83, 0113), one of ordinary skill in the art, through no more than ordinary creativity, would have been led by Squilla to configure Ammann’s analyzer as a medical kiosk so that an unassisted customer can carry out and obtain the results of a genetic assay for disease diagnosis. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (in making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Appeal 2012-002544 Application 12/712,345 5 The Appellants argue that Squilla does not communicate disease diagnoses to users (Reply Br. 4). Squilla communicates to consumer’s analysis results which would include the disease diagnosis discussed above (¶¶ 0015, 0048, 0055-59). The Appellants argue regarding claim 2 that Ammann does not disclose sample acquisition needles (Br. 24). Ammann’s indication that genetic assays can be carried out on blood samples (col. 2, ll. 8-13) would have led one of ordinary skill in the art, through no more than ordinary creativity, to include, among the materials used to perform the analysis which are stored in the analyzer (col. 4, ll. 39- 43, needles for taking blood samples. See KSR, 550 U.S. at 418. Thus, we are not persuaded of reversible error in the rejection of claims 1 and 2. Claim 3 The Appellants argue regarding claim 3 that Ammann does not disclose sample lines (Br. 24-25). The Examiner argues that the use of multiple sample lines in Ammann’s analyzer would be a mere duplication of parts and would reduce the amount of time required to perform a number of tests (Ans. 7-8, 24). The Examiner has not pointed out where Squilla or Ammann discloses any sample line or explained why those references would have fairly suggested a sample line to one of ordinary skill in the art. The Examiner, therefore, has not established a prima facie case of obviousness of the method claimed in the Appellants’ claim 3. Appeal 2012-002544 Application 12/712,345 6 Rejection of claims 4-6 over Squilla in view of Ammann and Devlin Devlin discloses an automated clinical analyzer wherein, after an aliquot of a patient’s specimen has been tested, another aliquot of the specimen is retained for a period of time to enable a second test of the specimen (abstract; ¶¶ 0019, 0038-39). The Appellants argue that Devlin does not disclose supporting the archived aliquots on a tray (Br. 33-34). Devlin’s disclosure of supporting the aliquot storage vessel (43) on shelves, clips or other similar storage vessel receptacles (¶ 0038) would have led one of ordinary skill in the art, through no more than ordinary creativity, to use a support device similar to a shelf such as a tray. See KSR, 550 U.S. at 418. The Appellants argue that Devlin does not disclose claim 1’s requirements which the Appellants argue are lacking from Squilla and Ammann (Br. 32-33; Reply Br. 9-10). As set forth above regarding the rejection of claim 1, those claim requirements would have been rendered prima facie obvious to one of ordinary skill in the art by the combined disclosures of Squilla and Ammann. Rejection of claim 7 over Squilla in view of Ammann, Devlin and Bulat Bulat discloses a medical kiosk which includes a credit card reader for payment of physician services (col. 14, ll. 36-37, 53-56). The Appellants assert that the applied references lack the claim 7 requirements, but the Appellants provide no substantive supporting argument (Br. 42-43). Appeal 2012-002544 Application 12/712,345 7 The Appellants argue that Bulat does not disclose claim 1’s requirements which the Appellants argue are lacking from Squilla and Ammann (Reply Br. 12). As explained above regarding the rejection of claim 1, those claim requirements would have been rendered prima facie obvious to one of ordinary skill in the art by the combined disclosures of Squilla and Ammann. For the above reasons we are not persuaded of reversible error in the rejections of claims 1, 2 and 4-7. DECISION/ORDER The rejection under 35 U.S.C. § 103 of claims 1-3 over Squilla in view of Ammann is affirmed as to claims 1 and 2 and reversed as to claim 3. The rejection under 35 U.S.C. § 103 of claims 4-6 over Squilla in view of Ammann and Devlin and claim 7 over Squilla in view of Ammann, Devlin and Bulat are affirmed. It is ordered that the Examiner’s decision is affirmed-in-part. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART kmm Copy with citationCopy as parenthetical citation