Ex Parte Thomas

Patent Trial and Appeal Board

Aug 30, 2017

13657614 (P.T.A.B. Aug. 30, 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.
13/657,614 10/22/2012 Bradley Scott Thomas QIA-117US 8238
107326
R Dtn erPresiti a
7590 09/01/2017 EXAMINER
2200 Renaissance Blvd MERCADO, ALEXANDER A
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09/01/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRADLEY SCOTT THOMAS
(Applicant: QIAGEN GAITHERSBURG, INC.)
Appeal 2017-001930
Application 13/657,614
Technology Center 2800
Before ROMULO H. DELMENDO, WESLEY B. DERRICK, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 8-28. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
1 We cite to the Substitute Specification (“Spec.”) filed January 11, 2013;
Final Office Action (“Final Act.”) dated June 2, 2015; Appellant’s Appeal
Brief (“App. Br.”) dated March 4, 2016; Examiner’s Answer (“Ans.”) dated
September 28, 2016, and Appellant’s Reply Brief (“Reply Br.”) dated
November 18, 2016.
2 Appellant identifies Qiagen Gaithersburg, Inc. as the real party in interest.
App. Br. 2.
Appeal 2017-001930
Application 13/657,614
BACKGROUND
The subject matter on appeal relates to a method for evaluating
adequacy of a sample for processing. Claims 8 and 25—the only
independent claims on appeal—are reproduced below from the Claims
Appendix of the Appeal Brief (some indentation and line spacing added)
8. An ultrasonic sample evaluation process comprising:
placing a sample vial into a test receptacle, the sample
vial having a bottom and a sidewall extending upwards in a
vertical direction from the bottom, the sample vial containing a
liquid medium extending from the bottom of the sample vial to
a meniscus at the top of the liquid medium;
generating an ultrasonic source signal;
directing at least one ultrasonic source signal into a first
location at the bottom of the sample vial to thereby propagate
the source ultrasonic signal upwards in the vertical direction
through the liquid medium;
receiving a plurality of reflected ultrasonic signals at a
second location at the bottom of the sample vial;
evaluating the plurality of reflected ultrasonic signals to
identify a pattern characteristic of a reflection off the meniscus;
generating an estimate of the amount of liquid medium
contained in the sample vial based on a time characteristic of
the pattern characteristic of a reflection off the meniscus;
evaluating the plurality of reflected ultrasonic signals to
identify the presence of a pattern characteristic of a reflection
off a collection implement located in the liquid medium; and
generating a signal indicating the presence of a collection
implement in the liquid medium upon identifying the pattern
characteristic of the reflection of the collection implement
located in the liquid medium.
25. A method for evaluating multiple properties of epithelial
cells suspended in a liquid medium, the method comprising:
providing a sample vial containing a liquid medium with
epithelial cells suspended therein;
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Appeal 2017-001930
Application 13/657,614
using a first ultrasonic scattering pattern to measure the
volume of the liquid sample; and
using a second ultrasonic scattering pattern to determine
whether a collection implement is located in the liquid medium.
REJECTIONS3
I. Claims 8, 9, 12-19, 22, and 23 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Bachur4 and Africk.5
II. Claims 10, 11, 25, and 26 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bachur, Africk, and McHale.6
III. Claims 27 and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bachur, Africk, McHale, and Chekan.7
IV. Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bachur, Africk, and Cloutier.8
V. Claim 24 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Bachur, Africk, and Husher.9
DISCUSSION
Each independent claim on appeal includes a step of using an
ultrasonic scattering pattern to identify the presence of a collection
implement in a liquid medium. Claim 8 (“evaluating the plurality of
3 Final Act. 3-10.
4 US 2010/0003714 Al, published January 7, 2010 (“Bachur”).
5 US 2006/0178581 Al, published August 10, 2006 (“Africk”).
6 US 2002/0193784 Al, published December 19, 2002 (“McHale”).
7 US 2011/0281297 Al, published November 17, 2011 (“Chekan”).
8 US 2011/0092817 Al, published April 21, 2011 (“Cloutier”).
9 US 2004/0065143 Al, published April 8, 2004 (“Husher”).
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Application 13/657,614
reflected ultrasonic signals to identify the presence of a pattern characteristic
of a reflection of a collection implement located in the liquid medium”);
claim 25 (“using a second ultrasonic scattering pattern to determine whether
a collection implement is located in the liquid medium”). The Examiner
finds that Bachur discloses using an ultrasonic reflection pattern to identify a
liquid surface for estimating sample volume, but fails to teach using the
reflection pattern to identify presence of a collection implement in the
sample. Final Act. 4.
Each of Rejections I-V is premised on the Examiner’s finding that
“Affick teaches an ultrasonic measuring method including evaluating a
plurality of ultrasonic signals (backscattered signals) to identify the presence
of a pattern characteristic of a reflection off a collection implement (107) in
a liquid medium.” Final Act. 4 (citing Africk Abstract, ^ 56).
Appellant argues that the Examiner’s interpretation of Africk is
incorrect. App. Br. 4-5; Reply Br. 2. We agree.
Africk teaches evaluating properties of particles or cells in suspension
by measuring a Doppler effect of fluid movement induced by acoustic
interrogating signals. Affick Abstract. At the passage relied upon the
Examiner, Africk explains that acoustic energy reflected from a stirrer bar
present in the fluid is “distinguished from the desired signal” by timing each
subsequent tone burst to coincide with Doppler shifted components caused
by the stirrer bar. Id. ^f 56 (emphasis added). Because the collected
backscattered energy is collected during the period between tone bursts (id.
54), Affick’s timing disclosed in paragraph 56 serves to exclude collection
of backscattered energy associated with the stirrer bar, not evaluate or use it.
See id. 56. The Examiner further reasons that evaluation of spurious
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Application 13/657,614
Doppler shifted signals necessarily takes place in Africk so that proper
separation of the tone hurts can be set, (Ans. 3—4 (citing Africk 56)), but
the record lacks a sound basis that such spurious Doppler shifted signals
occur in Africk’s method, or that it would be necessary to evaluate them
prior to setting the tone burst timing. We are persuaded that the Examiner’s
finding that Africk teaches evaluating backscattered signals to identify the
presence of a pattern characteristic of a reflection off a collection implement
is not supported by a preponderance of evidence.10 On this record,
accordingly, the Examiner’s articulated reasoning falls short of that
necessary for a prima facie case. See In re Warner, 379 F.2d 1011, 1017
(CCPA 1967) (“The Patent Office has the initial duty of supplying the
factual basis for its rejection, ft may not. . . resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.”).
For the foregoing reasons, we are persuaded that the Examiner has not
set forth a factual basis which is sufficient to support a prima facie case of
obviousness. Accordingly, Rejections I-V are not sustained.
DECISION
The Examiner’s decision rejecting claims 8-28 is reversed.
REVERSED
10 We add that, to the extent that Africk might be viewed as recognizing that
a foreign body (e.g. a stirrer bar) influences an acoustic reflection pattern,
what remains missing in the evidence presented in this Appeal is evidence of
a reason why one skilled in the art would have applied that knowledge to
identify the presence of a foreign body (e.g. a collection implement) in a
fluid sample such as that of Bachur.
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