Ex Parte Venter et alDownload PDFPatent Trial and Appeal BoardMar 17, 201612532403 (P.T.A.B. Mar. 17, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/532,403 03/15/2010 J. Craig Venter 95432 7590 03/21/2016 Synthetic Genomics, Inc. c/o DLA Piper LLP (US) 4365 Executive Drive Suite 1100 San Diego, CA 92121-2133 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. 616872000300 7421 EXAMINER HOBBS, MICHAEL L ART UNIT PAPER NUMBER 1799 NOTIFICATION DATE DELIVERY MODE 03/21/2016 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): gtdocket@dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte J. CRAIG VENTER, ERIC J. MATHUR, GERARDO VINCENTE TOLEDO, and HW AI WEN CHANG Appeal2014-006927 Application 12/532,403 Technology Center 1700 Before CHUNG K. PAK, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. PAK, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's decision finally rejecting claims 1, 2, 4, 5, and 8 through 13. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The subject matter on appeal is directed to an apparatus for sorting cells in a controlled environment that comprises a sample handling vestibule linked via an airlock to a cell sorting compartment comprising a cell sorter. 1 Appellants identify the Real Party in Interest as Synthetic Genomics, Inc. (Appeal Brief filed December 3, 2013 ("App. Br.") at 4.) Appeal2014-006927 Application 12/532,403 (Spec. i121.) The apparatus further comprises a fluidics compartment linked to the cell sorting compartment by one or more fluidics tubes and a chamber equalization tube. (Spec. i-fi-122-23.) Details of the appealed subject matter are recited in illustrative claim 1, reproduced below from the Claims Appendix to the Appeal Brief. 1. An apparatus for sorting cells in a controlled environment, comprising: a sample handling vestibule linked to a cell sorting compartment via an airlock, wherein the cell sorting compartment comprises a cell sorter; and a fluidics compartment linked to the cell sorting compartment by one or more fluidics tubes and a chamber equalization tube, wherein the cell sorter and the fluidics compartment are completely enclosed in the controlled environment. (App. Br. 16, Claims App'x.) Appellants seek review of the following grounds of rejection2 maintained by the Examiner in the Answer entered on iviarch 31, 2014 ("Ans."): 1. Claims 1, 2, 4, 5, 8, 9, and 11 through 13 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of U.S. Patent Application Publication 2005/0019949 Al published in the name of Hall et al. on January 27, 2005 (hereinafter referred to as "Hall") in view of U.S. Patent 4,111,753 issued in the name of Folsom et al. on September 5, 1978 (hereinafter referred to as "Folsom") and U.S. Patent 4,279,345 issued in the name of Allred on July 21, 1981 (hereinafter referred to as "Allred"); and 2 Final Office Action mailed March 4, 2013 ("Final Act."). 2 Appeal2014-006927 Application 12/532,403 2. Claim 10 under 35 U.S.C. § 103(a) as unpatentable over the disclosure of Hall, Folsom, Allred, and U.S. Patent Application Publication 2005/0112541 Al published in the name ofDurack et al. on May 26, 2005 (hereinafter referred to as "Durack"). DISCUSSION Upon consideration of the evidence on this appeal record and each of Appellants' contentions, we concur with Appellants that the Examiner has not demonstrated that the collective teachings of the applied prior art references would have suggested the apparatus recited in claims 1, 2, 4, 5, and 8-13 within the meaning of 35 U.S.C. § 103(a). Accordingly, we reverse the Examiner's§ 103(a) rejections of claims 1, 2, 4, 5, and 8-13 for the reasons set forth in the Appeal Brief. We add the discussion below primarily for emphasis and completeness. Claim 13 requires an apparatus for sorting cells in a controlled environment to comprise a fluidics compartment linked to a cell sorting compartment by a chamber equalization tube and one or more fluidics tubes. Hall discloses a flow cytometer (cell sorter) contained within an adjustably controllable environment containment system 164 (cell sorting 3 For the purposes of this appeal, we select claim 1, the broadest claim on appeal, as representative, and decide the propriety of the rejections under 35 U.S.C. § 103(a) based on this claim alone. 4 The reference numbers listed in the discussion of Hall's disclosures refer to Figure 2 of Hall. 3 Appeal2014-006927 Application 12/532,403 compartment). (Hall if 15, Fig. 2.) Hall discloses that cells and sheath fluid are supplied to the flow cytometer from a cell source 3, and a sheath fluid source 5, respectively. (Hall i-f 5, Fig. 2.) The Examiner determines that the sheath fluid source 5 disclosed in Hall corresponds to the fluidics compartment recited in claim 1. (Final Act. 4.) The Examiner finds that Hall's system includes all of the features recited in claim 1 except (1) a sample handling vestibule linked to a cell sorting compartment via an airlock, and (2) a chamber equalization tube linking a fluidics compartment to a cell sorting compartment. (Final Act. 3-5.) To remedy Hall's lack of disclosure of a sample handling vestibule linked to a cell sorting compartment via an airlock, the Examiner relies on Folsom's disclosure of a transport unit 305 linked to an incubation chamber 16 via an airlock. (Final Act. 4.) The Examiner finds that Folsom discloses that this arrangement allows samples to be introduced into the incubation chamber 16 from the transport unit 30 without exposing the incubation chamber 16 to the outside atmosphere. (Final Act. 5.) The Examiner determines that it would have been obvious to one of ordinary skill in the art at the time of the invention to use the transport unit 30 and airlock as disclosed in Folsom in the system disclosed in Hall to allow samples to be added to, or removed from, Hall's cell sorting chamber without exposing the chamber to the surrounding atmosphere. (Final Act. 4--5.) Thus, the 5 The reference numbers listed in the discussion of Folsom's disclosures refer to Figure 1 of Folsom. 4 Appeal2014-006927 Application 12/532,403 Examiner apparently proposes replacing the cell source 3 disclosed in Hall with the transport unit 30 disclosed in Folsom, and introducing an air lock between the transport unit 30 and Hall's adjustably controllable environment containment system 16, as disclosed in Folsom. To address Hall's lack of disclosure of a chamber equalization tube linking a fluidics compartment to a cell sorting compartment, the Examiner relies on Allred' s disclosure of pressure lines utilized in a cell sorting apparatus. (Final Act. 5.) Specifically, the Examiner finds that Allred discloses a pressure reservoir 312 6 connected through a line 316 to a sheath fluid container 318, and connected through a second line 328 to a cell reservoir 330. (Final Act. 5.) The Examiner determines that because Allred's pressure lines 316, 328 connect the cell reservoir 330, which is part of a cell sorting chamber 310, to the sheath fluid reservoir 318 (fluids chamber), the pressure lines 316, 328 correspond to the chamber equalization tube recited in claim 1. (Ans. 6-7; Final Act. 5.) The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to use the pressure regulation lines disclosed in Allred in Hall's system as modified by Folsom "to regulate the pressure between the two chambers." (Final Act. 5.) 6 The reference numbers listed in the discussion of Allred's disclosures refer to Figure 3 of Allred. 5 Appeal2014-006927 Application 12/532,403 However, contrary to the Examiner's assertions, even if Hall, Folsom, and Allred were combined, the resultant combination would not include a chamber equalization tube as recited in claim 1, for the reasons that follow. Appellants' Specification indicates that one or more pressure equalization tubes link the fluidics compartment of Appellants' apparatus to the cell sorting compartment "in a manner that allows for the atmosphere of the two compartments, including atmospheric pressures therein, to come to equilibrium" (Spec. i-f 23, Figs. 1, 3.) The Specification further indicates that one or more fluidics tubes also link the fluidics compartment to the cell sorting compartment. (Id.) Thus, the one or more pressure equalization tubes (or chamber equalization tubes) allow the atmospheric pressure of the fluidics compartment and the cell sorting compartment to come to equilibrium by providing a link between the two compartments, separate from a link provided by the fluidic tubes. In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (During prosecution of patent applications, "the PTO must give claims their broadest reasonable construction consistent with the specification .... Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation."). As discussed above, the Examiner apparently proposes modifying Hall's apparatus by replacing Hall's cell source 3 with a transport unit 30 as disclosed in Folsom such that an air lock would be present between the transport unit 30 and Hall's adjustably controllable environment 6 Appeal2014-006927 Application 12/532,403 containment system 16 (cell sorting compartment). (Final Act. 4--5.) The Examiner also proposes further modifying the apparatus of Hall as modified by Folsom to incorporate the pressure lines 316, 328 disclosed in Allred, which the Examiner asserts correspond to the chamber equalization tube recited in claim 1. (Final Act. 5.) However, because Allred's pressure lines 316, 328 connect the cell reservoir 330 to the sheath fluid reservoir 318 (Allred col. 6, 11. 43- 56, Fig. 3), if Hall's apparatus as modified by Folsom were further modified as proposed by the Examiner to add Allred' s pressure lines, such pressure lines would connect Folsom's transport chamber 30 to Hall's sheath fluid source 5, and would not connect the cell sorting compartment 16 of Hall's apparatus to the sheath fluid source 5. In other words, Allred' s pressure lines would connect the transport chamber 3 0 (corresponding to the sample handling vestibule recited in claim 1) to the sheath fluid source 5 ( fluidics compartment), rather than connecting the cell sorting compartment 16 to the sheath fluid source 5 (fluidics compartment), as recited in claim 1. In addition, as Appellants point out (App. Br. 13), the Examiner has not established that Allred's pressure lines would actually function as one or more pressure equalization tubes, as required by claim 1. One of ordinary skill in the art reasonably would have understood or inferred from Allred's description of pressure lines 316, 328, and from Allred' s depiction of their configuration in the cell sorting system shown in Figure 3, that the pressure provided by the pressure lines 316, 328 functions to inject the sheath fluid 7 Appeal2014-006927 Application 12/532,403 and cells into the cell sorter (nozzle 322), rather than functioning to equalize pressure between the sheath fluid reservoir 318 and the cell reservoir 330, much less equalize pressure between the sheath fluid reservoir 318 and the cell sorting compartment 310 as required by claim 1. (Allred col. 6, 11. 43- 56, Fig. 3.) Nevertheless, as discussed above, even if the pressure lines disclosed in Allred did function to equalize pressure, incorporation of such lines into Hall's apparatus as modified by Folsom would result in pressure equalization between the transport chamber 30 and the sheath fluid source 5, rather than between the cell sorting compartment 16 and sheath fluid source 5 (fluidics compartment) as recited in claim 1. Accordingly, on this record, we concur with Appellants that the Examiner's evidence and explanation are insufficient to establish a prima facie case of obviousness regarding the subject matter recited in claims 1, 2, 4, 5, and 8 through 13 within the meaning of 35 U.S.C. § 103(a). ORDER In view of the foregoing, the decision of the Examiner to reject claims 1, 2, 4, 5, and 8 through 13 is REVERSED. REVERSED 8 Copy with citationCopy as parenthetical citation