Beckman Coulter, Inc.

Patent Trials and Appeals Board

Mar 23, 2022

2021005493 (P.T.A.B. Mar. 23, 2022)

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. 14/074,069 11/07/2013 Michael Eberhardt 5196.202US1 5175 160942 7590 03/23/2022 SLW / Beckman Coulter P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER ALKAFAWI, EMAN A ART UNIT PAPER NUMBER 2865 NOTIFICATION DATE DELIVERY MODE 03/23/2022 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): BECLSpatentdocket@DHR.foundationip.com SLW@blackhillsip.com uspto@slwip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL EBERHARDT CHARLES MARTINEZ, KATHLEEN PAYNE, CHRISTOPH WELTE, and BERND WIEDEMANN Appeal 2021-005493 Application 14/074,069 Technology Center 2800 ____________ Before KAREN M. HASTINGS, DONNA M. PRAISS, and JEFFREY R. SNAY, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-4, 7, 9, 12-19, 35, 37, 38, and 41-46. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 In this Decision, we refer to the Specification filed Nov. 7, 2013 (“Spec.”), the Final Office Action dated Feb. 8, 2021 (“Final Act.”), the Appeal Brief filed June 2, 2021 (“Appeal Br.”), the Examiner’s Answer dated July 26, 2021 (“Ans.”), and the Reply Brief filed Sept. 23, 2021 (“Reply Br.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Beckman Coulter, Inc. as the real party in interest. Appeal Br. 2. Appeal 2021-005493 Application 14/074,069 2 STATEMENT OF THE CASE The invention relates to sample processing systems in the diagnostic laboratory environment, and, particularly, an automated diagnostic laboratory environment having multiple diagnostic analyzers connected by a sample transport system. Spec. ¶ 9. According to the Specification, improving the overall efficiency of sample processing is desirable because there are often more samples to process than processing capacity on a laboratory system. Id. ¶ 7. Independent claim 1, reproduced below, is illustrative of the subject matter on appeal. 32. A method comprising: generating, by at least one processor using a workflow management layer stored in a memory device, a process plan for a sample in a sample container by a sample processing system comprising instruments for processing the sample, wherein the process plan comprises data regarding a process to be run on the sample, statuses of the instruments for processing the sample, and specific steps for preparing the sample for processing on one or more of the instruments; providing the process plan to a process control layer stored in the memory device, wherein the process control layer comprises a first software component that is configured for reviewing and evaluating all samples waiting to be processed by the sample processing system; determining, by the at least one processor using the process control layer, an optimized route consistent with the process plan; dividing, by the process control layer, the optimized route into a plurality of route legs; Appeal 2021-005493 Application 14/074,069 3 providing at least one of the plurality of route legs to a middle control layer, wherein the middle control layer comprises a second software component; generating with the at least one processor and middle control layer instructions to control the operation of a subsystem comprising two or more of the instruments along the at least one of the plurality of route legs; optimizing, by the middle control layer to reduce a number of scheduling requests by the middle control layer to the process control layer, the optimizing including autonomously, without interaction with the process control layer performing by the middle control layer at least one of selecting one or more of the two or more of the instruments that will achieve a fastest possible processing and grouping the two or more instruments of the subsystem for processing based upon shared resources to form an optimized portion of the at least one of the plurality of route legs; providing, by the at least one processor and the middle control layer, device commands to a device control layer, the device control layer comprises a third software component having instrument specific commands for a specific one of the two or more instruments in the optimized portion; and processing the sample using the optimized route including using the instrument specific commands to cause the specific one of the two or more instruments in the optimized portion to process the sample in the sample container. Appeal Br. 36-37 (Claims Appendix) (emphasis added to highlight disputed layers). Claims 7, 12, and 15 are the other independent claims pending in this Appeal. Id. at 37-40. Appellant argues the claims together, relying on the same arguments presented with respect to claim 1 for each of the additional claims. Appeal Br. 16-34. Therefore, we confine our discussion to claim 1, which we select as representative. Claims 2-4, 7, 9, 12-19, Appeal 2021-005493 Application 14/074,069 4 35, 37, 38, and 41-46 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). ANALYSIS We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). After thoroughly considering Appellant’s arguments and evidence, we are persuaded of reversible error in the Examiner’s rejections under 35 U.S.C. §§ 102 and 103. The Examiner maintains the following rejections: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1-4, 7, 9, 12-19, 35, 37, 38, 41-46 102(e) Pollack 3 1-4, 7, 9, 12-19, 35, 37, 38, 41-46 103(a) Pollack Anticipation Rejection of Claim 1 The Examiner finds Pollack discloses the claimed method because Pollack’s system has (1) a central controller processor which maps to the claimed workflow management layer, (2) a subsystem of carriers autonomously controlling the routing which maps to the claimed using the process control layer to determine an optimized route, (3) the optimized 3 US 2015/0276774 A1, pub. Oct. 1, 2015. Appeal 2021-005493 Application 14/074,069 5 route being optimized by autonomous controlling of each on board intelligence of the carrier independent upon the central processor maps to the claimed optimizing by the middle control layer, and (4) intelligent carriers including onboard sensors to assist onboard processors to route the carrier maps to the claimed device control layer having instrument specific commands. Final Act. 3-7. According to Appellant, the Examiner erred in rejecting the claims as anticipated by Pollack because, inter alia, (1) Pollack lacks four control layers as recited in claims 1 and 7, (2) Pollack’s carriers, which the Examiner interprets as the “middle control layer” recited in each of the independent claims, are sample containers rather than instruments for testing, (3) Pollack’s central controller specifically lacks the benefits of a multi-layer structure because Pollack’s scheduling tasks are calculated centrally, and (4) neither the Final Office Action nor the Answer addresses the claim limitations “wherein the process plan comprises data regarding a process to be run on the sample” and “specific steps for preparing the sample for processing on one or more of the instruments.” Appeal Br. 16-20; Reply Br. 4. Appellant directs us to Pollack’s paragraphs 111 and 112, which the Examiner relies on for disclosure of the middle control layer, and asserts Pollack teaches routing carriers by the central controller to instruct the carrier where to go on the track. Id. at 26. Appellant also directs us to Pollack’s paragraph 41 as defining Pollack’s carriers as transportation devices. Id. at 21. We agree with Appellant that claim 1 recites four layers (“workflow management layer,” “process control layer,” “middle control layer,” and “device control layer.” Appeal Br. 36 (Claims Appendix); cf. Ans. 10 (“there Appeal 2021-005493 Application 14/074,069 6 is NO four layers claimed in this application what so ever.”). Regarding the claimed “middle control layer,” the preponderance of the evidence cited in this Appeal record supports Appellant’s position that Pollack does not disclose optimizing by the middle control layer “at least one of selecting one or more of the two or more of the instruments that will achieve a fastest possible processing.” Appeal Br. 28. As Appellant points out, the Examiner’s position misinterprets or ignores the meaning of “instrument” as recited in claim 1. Id. The Specification supports Appellant’s position that “instrument” does not mean sample container, but, rather, a centrifuge, centrifuge robot, an adapter gripper, and a shuttle. Appeal Br. 31 (quoting Spec. ¶ 85). In the Answer, the Examiner finds the middle controller is a controller that provides input/control in the middle of the process, i.e., before the final steps/decision are executed with routes being optimized independently. Ans. 4. The Examiner relies on Pollack’s subsystem of carriers that autonomously control the routing by processors onboard the carriers for the claimed middle control layer for claim 1’s “middle control”/second software component. Final Act. 5 (citing Pollack ¶¶ 41-45, 111-112). However, the record supports Appellant’s assertion that Pollack’s carriers are defined as transportation devices rather than instruments. Pollack ¶ 41. The Examiner’s finding (Ans. 5, citing Pollack ¶¶ 41, 44-45) that Pollack’s intelligent carriers “may include active components, such as processors, motion systems, guidance systems, sensors, and the like” does not alter Pollack’s definition of carriers to make them instruments. “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In Appeal 2021-005493 Application 14/074,069 7 re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[A]nticipation of a claim under § 102 can be found only if the prior art reference discloses every element of the claim . . . .” In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). “[A]bsence from the reference of any claimed element negates anticipation.” Kloster Speedsteel AB v. Crucible Inc., 793 F.2d 1565, 1571 (Fed. Cir. 1986). The preponderance of the evidence does not support the Examiner’s finding that Pollack discloses the claimed layers and, specifically, the claimed “middle control layer.” For a reference to be said to anticipate a claim, it must clearly and unequivocally disclose the claimed [product] or direct those skilled in the art to the [product] without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference. Such picking and choosing may be entirely proper in the making of a 103, obviousness rejection, where the applicant must be afforded an opportunity to rebut with objective evidence any inference of obviousness which may arise from the similarity of the subject matter which he claims to the prior art, but it has no place in the making of a 102, anticipation rejection. In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972) (cited with approval in NetMoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed Cir. 2008)). Based on the cited record in this Appeal, Pollack does not unequivocally disclose “a middle control layer” as required by each of the claims. Accordingly, we reverse the Examiner’s anticipation rejection of claim 1 as well as claims 2-4, 7, 9, 12-19, 35, 37, 38, and 41-46 under 35 U.S.C. § 102(a)(1) for the above reasons. Appeal 2021-005493 Application 14/074,069 8 Obviousness Rejection of Claim 1 Based on the same findings regarding Pollack summarized above, the Examiner alternatively finds claim 1 unpatentable under 35 U.S.C. § 103(a). Final Act. 2-7. Appellant contends the Examiner has not set forth a prima facie case of obviousness for the same reasons that anticipation has not been shown. Appeal Br. 32. In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing, the Examiner must make the factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966) (noting that 35 U.S.C. § 103 leads to three basic factual inquiries: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; and (3) the level of ordinary skill in the art). Furthermore, the Examiner’s obviousness rejection must be based on “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness” . . . . [H]owever, the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ. KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). If the Examiner’s burden is met, the burden then shifts to the Appellants to overcome the prima facie case with argument and/or evidence. Appeal 2021-005493 Application 14/074,069 9 As discussed above in connection with the anticipation rejection, the preponderance of the evidence cited in this Appeal record does not support the Examiner’s finding that Pollack discloses claim 1’s “middle control layer.” Regarding the rejection under 35 U.S.C. § 103(a), the Examiner does not identify the difference between Pollak’s disclosure and claim 1 nor reasoning to support why it would have been obvious to modify Pollak to include the “middle control layer” as required by claim 1 and each of the independent claims. Accordingly, based on this record, we reverse the rejection of claim 1 as well as claims 2-4, 7, 9, 12-19, 35, 37, 38, and 41-46 under 35 U.S.C. § 103(a) over Pollack. Summary In summary, we reverse the Examiner’s rejection of claims 1-4, 7, 9, 12-19, 35, 37, 38, and 41-46. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 7, 9, 12- 19, 35, 37, 38, 41-46 102(e) Pollack 1-4, 7, 9, 12- 19, 35, 37, 38, 41-46 1-4, 7, 9, 12- 19, 35, 37, 38, 41-46 103(a) Pollack 1-4, 7, 9, 12- 19, 35, 37, 38, 41-46 Overall Outcome 1-4, 7, 9, 12- 19, 35, 37, 38, 41-46 REVERSED