Richard David. Abbott et al.

Patent Trials and Appeals Board

Dec 16, 2019

13834056 - (D) (P.T.A.B. Dec. 16, 2019)

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.
13/834,056 03/15/2013 Richard David Abbott 18244.5 1465
67292 7590 12/16/2019
BARNES & THORNBURG LLP (Biofire)
11 SOUTH MERIDIAN STREET
INDIANAPOLIS, IN 46204
EXAMINER
HASSAN, LIBAN M
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
12/16/2019 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):
indocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD DAVID ABBOTT,
PATRICK L. RILEY, ZACKERY KENT EVANS, and
LYLE M. NAY
__________

Appeal 2019-001834
Application 13/834,056
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) the final rejections of
claims 23–27 and 32–59. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as BioFire
Defense, LLC (Appeal Br. 2).
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STATEMENT OF THE CASE
Appellant’s invention is directed to optical systems and apparatuses
configured for the simultaneous observation and monitoring of sample wells
in a 96-well plate (Spec. ¶ 9).
Claim 23 is illustrative (emphasis added):
23. An apparatus, comprising:
a thermocycling system configured for subjecting a
plurality of biological samples contained within a
corresponding plurality of sample containers to thermal cycling;
and
an optical system defining an optical path that is
operatively associated with the thermocycling system, the
optical system being configured and arranged for substantially
simultaneous monitoring of fluorescence in each of the plurality
of biological samples, the optical system including:
a sample block comprising an element of the optical path,
wherein the sample block includes a top
surface and a plurality of sample wells arranged in
an array, the wells defining a plurality of recessed
bottom surfaces, respectively; and
a compound curved mirror having a reflective surface
with a surface profile corresponding to a non-apex portion of a
paraboloid that defines a first axis of curvature having a first
curvature substantially orthogonal to a second axis of curvature
having a second curvature with the first curvature being
different than the second curvature, the mirror being positioned
and arranged in the optical path relative to the sample block
and to a common reference point, such that overall ray lengths
from each of the plurality of recessed bottom surfaces to the
common reference point by means of the reflective surface are
substantially the same, wherein the mirror allows simultaneous
observation of the plurality of recessed bottom surfaces from
the common reference point without interference or eclipsing
by the plurality of sample wells.
Appeal Br. 38 (Claims App.) (emphasis added).
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Appellant appeals the following rejections:2
1. Claims 23–27 and 32–34 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Tamaoki et al. (US 7,628,958 B2; issued Dec. 8,
2009, “Tamaoki”), in view of Troll (US 5,721,435; issued Feb. 24,
1998), as evidenced by Meloni et al. (US 2012/0025097 A1;
published Feb. 2, 2012, “Meloni”) (Ans. 3–8).
2. Claims 35 and 36 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tamaoki, in view of Troll, as evidenced by Meloni,
and further in view of C. Pruss et al., “Testing Aspheres,” Optics &
Photonics News, 19(4):24–29 (2008) (“Pruss”) (Ans. 8–9).
3. Claims 37–41 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tamaoki, in view of Troll, as evidenced by Meloni,
and further in view of Hasson et al. (US 2008/0003588 A1; published
Jan. 3, 2008, “Hasson”) (Ans. 10–12).
4. Claim 42 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Tamaoki, in view of Troll, as evidenced by Meloni, and further
in view of Hasson, and further in view of Neuzil et al. (US
2010/0227386 A1; published Sept. 9, 2010, “Neuzil”) (Ans. 12–13).
5. Claim 43 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Tamaoki, in view of Troll, as evidenced by Meloni, and further
in view of Väisälä et al. (US 6,377,346 B1; issued Apr. 23, 2002,
“Väisälä”) (Ans. 13).

2 In the Advisory Action dated May 5, 2018, the Examiner indicated that an
amendment, filed April 20, 2018, would be entered and that the amendment
overcame the § 112, second paragraph, rejection (Advisory Act. 2, 3).
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6. Claims 44–50 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tamaoki, in view of Troll, as evidenced by Meloni
(Ans. 14–18).
7. Claim 51 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Tamaoki, in view of Troll, as evidenced by Meloni, and further
in view of Pruss (Ans. 18–19).
8. Claims 52 and 54–59 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tamaoki, in view of Troll, as evidenced by Meloni
(Ans. 19–24).
9. Claim 53 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Tamaoki, in view of Troll, as evidenced by Meloni, and further
in view of Pruss (Ans. 24–25).
Of claims 23–27 and 32–43, Appellant offers separate arguments in
support of independent claim 23 and dependent claims 27, 33, and 34 (see,
e.g., Appeal Br. 2–10). We select claim 23 as representative of claims 24–
26, 32, and 35–43. Accordingly, claims 24–26, 32, and 35–43 will stand or
fall with our analysis of claim 23. Claims 27, 33, 34, and 44–59 will be
discussed separately.
FINDINGS OF FACT & ANALYSIS
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s prior art rejections under 35 U.S.C.
§ 103(a) for the reasons presented by the Examiner and add the following for
emphasis.
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A. Rejections of claims 23–27 and 32–43 as unpatentable over the
combination of Tamaoki and Troll, as evidenced by Meloni; either
with or without Pruss, Hasson, Hasson and Neuzil, or Väisälä
a. Claims 23–26, 32, and 35–43
With regard to claim 23, the Examiner’s findings and conclusions
regarding Tamaoki and Troll, as evidenced by Meloni, are located on pages
3–6 of the Answer.
The Examiner finds that Tamaoki would have rendered obvious each
component and limitation of the apparatus recited in independent claim 23,
except that Tamaoki does not disclose a compound curved mirror having
off-axis parabolic features (Ans. 3–5). Figure 11 of Tamaoki, reproduced
below, illustrates the interior components of a reaction detection device:

Figure 11 of Tamaoki illustrates reaction detection device 29,
including Peltier element 10 for heating/cooling reaction containers 7; and
curved reflective plate 40, which provides means for reflecting light from
light source lamp 23 (not shown) to irradiate reaction containers 7 (Tamaoki
13:20–35; Fig. 11). Camera 27 detects the received fluorescence reflected
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from curved plate 40 and emitted from each irradiated reaction container 7
(id. at 11:28–30).
The Examiner finds that Troll discloses an apparatus for measuring
optical properties of biological and chemical substances comprising a
compound curved mirror (Ans. 5; see also Troll Fig. 5). Figure 5 of Troll,
reproduced below, illustrates an optical measurement system, which
employs an off-axis parabolic mirror:

Troll’s Figure 5 illustrates optical detection system 300, including
light beam 107, test surface 102, parabolic mirror 310, and light emissions
103, which are emitted from test surface 102 and reflected by parabolic
mirror 310 to detector 106 (Troll 3:24–26; 8:34–46).
The Examiner finds that the reflective surface of Troll’s compound
curved mirror 310 is structurally similar and possesses the same non-
rotationally symmetric features as the instant compound curved mirror (Ans.
5). According to the Examiner, Meloni discloses that it is well known in the
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art that off-axis parabolic mirrors, such as Troll’s, improve imaging of an
optical system and avoid chromatic aberrations (id.).
The Examiner determined that it would have been obvious for one of
ordinary skill in the art at the time of the invention “to have substituted the
mirror of Tamaoki with that of Troll in order to produce the desired
collimating/focusing function” recited in claim 23 (id.). According to the
Examiner, an ordinarily skilled artisan would have been motivated to
substitute Tamaoki’s curved reflective plate 40 with Troll’s off-axis
parabolic mirror 310 because doing so “would have resulted [in] an optical
system having the added advantage of improving the imaging of
[Tamaoki’s] optical system . . . free of chromatic aberrations” (id.).
Appellant argues that the Examiner’s applied prior art does not render
obvious each limitation recited in claim 23 (see Appeal Br. 5–11; Reply Br.
2–5).3 Specifically, Appellant contends the Examiner has not established
that the proposed combination of Tamaoki and Troll, with evidence from
Meloni, teaches or suggests
that [Tamaoki’s] mirror that is positioned to evenly irradiate a
sample block is also positioned and arranged “such that overall
ray lengths from each of the plurality of recessed bottom
surfaces to the common reference point by means of the
reflective surface are substantially the same” and “simultaneous
observation of the plurality of recessed bottom surfaces from
the common reference point without interference or eclipsing

3 Appellant argues in the Reply Brief that the Examiner has included new
grounds of rejection, which were not advanced by the Examiner prior to the
Examiner’s Answer (see, e.g., Reply Br. 3–5). Since the Examiner’s failure
to designate a rejection in an Answer as a new ground is a petitionable issue,
not an appealable one, we do not address the matter. MPEP § 1207.03(b);
see also MPEP § 1002.02(c)(6); In re Hengehold, 440 F.2d 1395, 1403
(CCPA 1971).
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by the plurality of sample wells” is permitted[,] as required by
the claims
(Appeal Br. 8) (emphasis added). Appellant contends that Tamaoki’s “goals
of producing parallel or nearly parallel light and minimizing unevenness of
the measurement sensitivity across reaction containers are different from
producing ray lengths that are substantially the same” (id. at 10 (citing 37
C.F.R. § 1.132 Declaration of Patrick L. Riley, filed May 18, 2016, ¶ 8,
“Riley Decl. 2016”)). Appellant argues that “only paraboloid-shaped
mirrors positioned and arranged as required by the claims will produce
overall ray lengths that are substantially the same” (Appeal Br. 10 (citing 37
C.F.R. § 1.132 Declaration of Patrick L. Riley, filed 2018, ¶ 16, “Riley Decl.
2018”).
Appellant further argues that the Examiner has not provided evidence
that Troll’s mirror shape inherently produces the requisite ray lengths (Reply
Br. 2). Appellant argues that the Examiner has not provided a reason to
modify Tamaoki’s device to include Troll’s mirror (Appeal Br. 13–15;
Reply Br. 7–8). In view of these alleged deficiencies, Appellant concludes
that the ordinarily skilled artisan “would[,] therefore[,] not necessarily
position and arrange Troll’s mirror in Tamaoki’s device in a way that would
arrive at the claimed invention” (Appeal Br. 10).
Appellant’s arguments are not persuasive.
Appellant admits that the ordinarily skilled artisan would have
expected that images produced using either the claimed compound curved
mirror or Troll’s mirror would have been similar because each mirror is
paraboloid-shaped (id. at 12). Thus, we are persuaded by the Examiner that
Troll’s mirror is structurally the same as the instant mirror.
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As the Examiner finds: (i) Troll’s mirror 310 is arranged and
positioned in the optical path between the sample block and a common
reference point; and (ii) the arrangement of Troll’s mirror 310, sample block
10, and detector 106 in the optical path inherently produces overall ray
lengths that are substantially the same (Advisory Act. 3, dated Mar. 29,
2018; see also Troll Fig. 5). The Examiner, furthermore, finds Troll teaches
that detector 106 may be placed, i.e., positioned, either close to or away
from the parabola’s focus (Ans. 28 (citing Troll 8:34–50)).
Based on these findings, the Examiner reasonably concluded that “one
of ordinary skill in the art would have been motivated to” substitute
Tamaoki’s curved reflective plate 40 with Troll’s off-axis parabolic mirror
310 “because doing so would have resulted in nothing more than the simple
substitution of one known reflective mirror for another for the expected
result of producing [the] desired collimating/focusing function” (Ans. 29).
We, therefore, are persuaded by the Examiner that
it would have been obvious to one of ordinary skill in the art to
have arranged the modified compound curved mirror of
modified Tamaoki such that the ray lengths from each of the
plurality of recessed bottom surfaces to the common reference
point [are] substantially . . . the same, so as to illuminate and
optically analyze the plurality of samples in the array of wells
simultaneously
(id. at 29–30) (emphasis added).
In other words, the Examiner has provided a well-reasoned analysis of
how and why the ordinarily skilled artisan would have reasonably expected
that Tamaoki’s reaction detection device, modified with Troll’s paraboloid-
shaped mirror, would have possessed the light collimating/focusing
functions recited in claim 23.
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On this record, Appellant has not met the burden of showing that the
Examiner’s proposed reaction detection device cannot be configured to
provide: (i) overall ray lengths from each of a plurality of recessed bottom
surfaces to a common reference point by means of a reflective surface that
are substantially the same; and (ii) simultaneous observation of the plurality
of recessed bottom surfaces from the common reference point without
interference or eclipsing by a plurality of sample wells. In re Best, 562 F.2d
1252, 1255 (CCPA 1977) (explaining that “[w]here . . . the claimed and
prior art products are identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product”). See also In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (Court found no dispute
that claimed and prior art product had the same structure so that the prior art
structure is capable of performing the recited function.); Intel Corp. v. U.S.
Int’l Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991) (Courts have
interpreted functional language in an apparatus claim as requiring that the
prior art apparatus possess the capability of performing the recited
function.).
Accordingly, Appellant’s arguments do not persuasively address the
Examiner’s reasoning, which supports the findings and conclusions in the
stated rejections. Therefore, Appellant’s arguments are insufficient to
convince us of reversible error in the Examiner’s rejections.
Appellant argues that one of ordinary skill in the art, concerned with
Tamaoki’s goal of minimizing the unevenness of measurement sensitivity,
would not have modified Tamaoki with Troll’s teachings (Appeal Br. 11–
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13). According to Appellant, Troll is not concerned with imaging at all, let
alone accurate imaging (id.). Appellant argues that: (i) Troll acknowledges
that accurate imaging requires calibration; and (ii) Troll’s paraboloid-shaped
mirror would have produced images that are distorted (id. at 11–12 (citing
Riley Decl. 2018 ¶¶ 11, 21; Spec. ¶¶ 68, 71; Riley Decl. 2016 ¶ 12)).
Appellant thus argues that the references, with allegedly disparate goals,
“teach away from each other” (Reply Br. 6).
We are not persuaded by these arguments because they are directed to
limitations not recited in independent claim 23, which is silent regarding
limitations concerned with imaging quality. With regard to Appellant’s
Declaration evidence, we agree with the Examiner that Riley Decl. 2016
attacks the references individually instead of addressing what the combined
teachings of the prior art would have suggested to the ordinarily skilled
artisan. In re Keller, 642 F.2d 413, 425 (CCPA 1981). We are further
unpersuaded by Riley Decl. 2018, as the claims do not require any image
processing systems with special calibration algorithms for processing
imaging data. We, moreover, note that these Declarations do not show
comparative evidence establishing that the claimed mirror yields unexpected
benefits over the prior art mirror.
While there is no dispute that Troll is unconcerned with forming an
accurate image, Meloni provides evidence that Troll’s paraboloid-shaped
mirror improves imaging (Ans. 5, 35). Thus, we agree with the Examiner
that one of ordinary skill in the art would have recognized that Tamaoki’s
curved reflective plate 40 may be substituted by Troll’s off-axis parabolic
mirror 310 because each possesses optical properties for the analysis of
biological materials (see id. at 35–36). Therefore, we do not find that Troll’s
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disclosure teaches away; it does not indicate that “the line of development
flowing from the reference’s disclosure is unlikely to be productive of the
result sought by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994).
Thus, based on a preponderance of evidence in this record, we sustain
these rejections as to claims 24–26, 32, and 35–43.
b. Claim 27
With regard to claim 27, the Examiner’s findings and conclusions
regarding Tamaoki and Troll, as evidenced by Meloni, are located on page 7
of the Answer. Claim 27 is set forth below (emphasis added):
27. The apparatus of claim 23, wherein the plurality of
recesses are configured to interface with the plurality of
sample containers, the sample containers including an
exterior surface, and interior surface, and a plurality of
recessed bottom surfaces that define a plurality of points
of interest, and wherein the first and second curvatures
are configured and arranged such that the overall ray
length from the plurality of points of interest to the
common reference point are substantially the same.
Appeal Br. 39 (Claims App.).
Appellant argues that the Examiner has not established that modified
Tamaoki teaches or suggests that the mirror should be positioned relative to
“a plurality of recessed bottom surfaces” as Tamaoki is merely concerned
with evenly irradiating the reaction specimens (id. at 16). Therefore,
according to Appellant, the applied prior art cannot “arrive at an apparatus
wherein ‘the overall ray length from the plurality of points of interest to the
common reference point are substantially the same’ as required by claim
27.” (Id.)
Appellant’s arguments are not persuasive.
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For the reasons set forth above and in the Answer, Appellant’s
argument fails to identify reversible error in the Examiner’s reasoned
determination that
it would have been obvious to one of ordinary skill in the art to
have arranged [Tamaoki’s] modified compound curved mirror
. . . such that the ray lengths from each of the plurality of
recessed bottom surfaces to the common reference point [are]
substantially the same, so as to illuminate and optically analyze
the plurality of samples in the array of wells simultaneously
(Ans. 38). The Examiner persuasively finds that modified Tamaoki’s
reaction containers 7 include “recessed bottom surfaces that define a . . .
plurality of points of interest” (id. at 7 (citing Tamaoki Fig. 11)).
Thus, based on a preponderance of evidence in this record, we sustain
this rejection as to claim 27.
c. Claims 33 and 34
With regard to claims 33 and 34, the Examiner’s findings and
conclusions regarding Tamaoki and Troll, as evidenced by Meloni, are
located on page 8 of the Answer. Claims 33 and 34 are set forth below
(emphasis added):
33. The apparatus of claim 23, wherein the optical path
further comprises a camera and an illumination light
source, wherein at least the camera is positioned
substantially at the common reference point.
34. The apparatus of claim 33, wherein the camera and the
illumination light source are each in a fixed position in
the optical path relative to the sample block and to the
reflective surface of the mirror, the sample block,
illumination light source, and the compound curved
mirror being positioned and arranged relative to one
another such that the plurality of recessed bottom
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surfaces can be illuminated substantially simultaneously
by the illumination light source and observed
substantially simultaneously from the common reference
point by the camera.
Appeal Br. 39–40 (Claims App.).
With regard to claim 33, Appellant argues that Tamaoki: (i) is only
concerned with evenly irradiating the biological samples in each of the
plurality of sample wells; and (ii) fails to teach or suggest adjusting the
relative positioning of its camera as a requirement to achieve evenness of
illumination (id. at 16, 17). Appellant thus argues that Tamaoki fails to
teach or suggest “a camera” that “is positioned substantially at the common
reference point,” as recited in the claim (id. at 16).
With respect to claim 34, Appellant argues that Tamaoki “does not
provide any discussion concerning the relative positioning of its camera with
the reflective surface of the mirror, the sample block, illumination light
source in order to achieve evenness of irradiation” (id. at 18).
Appellant’s arguments are not persuasive.
As the Examiner finds, Tamaoki’s camera 27 is positioned in the
optical path and, thus, the emitted fluorescent light in each of the irradiated
wells is directed to the camera (Ans. 39; see Fig. 3). We note that
Tamaoki’s Figures 11 and 12 depict the relative position of a camera with
respect to the mirror, the sample block, and illumination light. We,
therefore, agree with the Examiner that the emitted light’s common
reference point is the camera positioned in Tamaoki’s optical path (Ans. 39).
Thus, based on a preponderance of evidence in this record, we sustain
this rejection as to claims 33 and 34.
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B. Rejections of claims 44–59 as unpatentable over the combination of
Tamaoki and Troll, as evidenced by Meloni; either with or without
Pruss
Appellant’s arguments for reversal of the Examiner’s rejections of
claims 44–59 are substantially similar to the arguments proffered for
reversal of the rejections of claims 23–27 and 32–43 (compare Appeal Br.
19–36, Reply Br. 12–25 with Appeal Br. 5–19, Reply Br. 2–11). For the
reasons set forth above, Appellant’s arguments do not persuasively address
the Examiner’s reasoning, which supports the findings and conclusions in
the stated rejections. Therefore, Appellant’s arguments are insufficient to
convince us of reversible error in the Examiner’s rejections.
Thus, based on a preponderance of evidence in this record, we sustain
these rejections.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
23–27, 32–
34
103(a) Tamaoki, Troll, Meloni 23–27, 32–34
35, 36 103(a)

Tamaoki, Troll, Meloni,
Pruss
35, 36
37–41 103(a) Tamaoki, Troll, Meloni,
Hasson
37–41
42 103(a)

Tamaoki, Troll, Meloni,
Hasson, Neuzil
42
43 103(a) Tamaoki, Troll, Meloni,
Väisälä
43
44–50 103(a) Tamaoki, Troll, Meloni 44–50
51 103(a) Tamaoki, Troll, Meloni,
Pruss
51
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
52, 54–59 103(a) Tamaoki, Troll, Meloni 52, 54–59
53 103(a) Tamaoki, Troll, Meloni,
Pruss
53
Overall
Outcome
23–27, 32–59
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED