C2 DIAGNOSTICS

Patent Trials and Appeals Board

Sep 28, 2020

15294274 - (D) (P.T.A.B. Sep. 28, 2020)

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.
15/294,274 10/14/2016 Olivier MAGNIN 0501-1208-1 5955
466 7590 09/28/2020
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD
11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
HURST, JONATHAN M
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
09/28/2020 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):
pair_nixon@firsttofile.com
ptomail@nixonvan.com
yandtpair@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte OLIVIER MAGNIN, LAURENT DAMONNEVILLE, and
SERGE CHAMPSEIX

Appeal 2019-005220
Application 15/294,274
Technology Center 1700
____________

Before JEFFREY T. SMITH, JAMES C. HOUSEL, and
BRIAN D. RANGE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 C2
Diagnostics. Appeal Br. 2.
Appeal 2019-005220
Application 15/294,274

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STATEMENT OF THE CASE
Appellant’s invention is generally directed an optical measurement
method for counting and/or differentiating leucocytes in an automatic
blood analysis apparatus. (Spec. 3.) Independent claim 1 is representative
of the appealed subject matter and is reproduced below:
1. An optical measurement method for counting and/or
differentiating leucocytes in an automatic blood analysis
apparatus, comprising steps of:
- using a blood sample, the dilution rate of which is between
1/100 and 1/500;
- injecting a non-hydrofocused blood sample using a tank, the
section of which having at least one transverse dimension
comprised between 1 and 5 millimetres,
- injecting the blood sample flow with a diameter greater than 50
μm using an injector, of the tank, having an outlet orifice with a
diameter of 50-150 μm;
- illuminating the blood sample flow circulating in the optical
tank along an injection axis by using a light source having an
electroluminescent diode, which emits a light beam along an
optical axis substantially transversely to said injection axis,
- focusing said light beam on the blood sample flow; and
- measuring light originating from the optical tank after
interception by a blood cell of the blood sample,
- detecting light issued from the electroluminescent diode and
diffracted by said blood cell according to narrow angles, smaller
than 10 degrees, relative to the optical axis.
Claims Appendix (emphasis added).
The following rejections are presented for our review: 2

2 The complete statement of the rejections on appeal appear in the June 25,
2018 Non-Final Action. (Non-Final Act. 2–12.)
Appeal 2019-005220
Application 15/294,274

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I. Claims 1–3, 6, and 9–15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Singh (US 2004/0022685 A1; Feb. 5,
2004), Valet (US 4,751,188; June 14, 1988), Hoffman (US 6,813,017 B1;
Nov. 2, 2004), Fritz ( US 2003/0002027 A1; Jan. 2, 2003), and Johnson (US
6,256,096 B1; July 3, 2001).
II. Claims 4, and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Singh, Valet, Hoffman, Fritz, Johnson,
and further in view of Lefevre (US 5,730,941; Mar. 24, 1998).
III. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Singh, Valet, Hoffman, Fritz, Johnson,
Lefevre, and further view of Unterleitner (US 4,498,766; Feb. 12, 1985).
IV. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Singh, Valet, Hoffman, Fritz, Johnson, and further
view of Tycko (US 4,735,504; Apr. 5, 1988).
OPINION
We consider the record to determine whether Appellant has identified
reversible error in the Examiner’s rejections. See 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,” citing Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)).
Appellant argues independent claim 1 clearly states that the blood
sample to be analyzed is non-hydro-focused. Appellant argues the
Examiner’s rejection is based on an erroneous interpretation. (Reply Br. 1–
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Application 15/294,274

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2.) Appellant further argues none of the cited references disclose a non-
hydro-focused sample at the analysis zone.
The dispositive issue for this appeal is the following:
Did the Examiner err in determining that the method of independent
claim 1 is not limited to analysis of non-hydrofocused blood sample?3
We answer this question in the affirmative.
We agree with Appellant that the Examiner erred reversibly in the
determination of obviousness for independent claim 1. The Examiner bears
the initial burden of presenting a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with approval in KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007)).
The Examiner’s rejection is premised on the analysis of hydrofocused
blood samples. The Examiner states:
The examiner notes that the claims only require a step of “injecting a
non-hydrofocused blood sample using a tank”. Importantly, the claims
do not prohibit hydrofocusing throughout the sample flow but merely
prior to injection from a tank.

(Ans. 4.)
Utilizing this interpretation, the Examiner finds Singh discloses an
optical tank in which a blood sample is injected through sample inlets. The
Examiner acknowledges that the blood sample is subsequently hydrofocused

3 We limit our discussion to independent claim 1, the only independent claim
on appeal.
Appeal 2019-005220
Application 15/294,274

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by the addition of a buffer after introduction. The Examiner specifically
states:
Regarding claim 1 Singh et al. discloses an optical
measurement method for counting cells in an automatic sample
analysis apparatus comprising the steps of:
- using a cell sample,
- injecting a non-hydrofocused sample using a tank, the section
of which having at least one transverse dimension comprised between
1 and 5 millimetres. (See Singh Fig.1 and [0055]-[0057] wherein an
optical tank 1 has an inlet 2 with a transverse dimension, i.e.[,]
diameter, of 2 mm. Also non-hydrofocused sample fluid is injected
into the tank utilizing sample inlets 4. It is noted that while the
sample may be hydro-focused focused by buffer fluids after it has
been injected into the tank the sample is a not hydro-focused prior to
injection and as such a non-hydrofocused sample is injected using the
inlet of the tank as is required by the claim and only after injection
would/could the sample be hydrofocused.)
(Non-Final Act. 3 (emphasis added).)
Contrary to the Examiner’s position, the claimed invention specifies
an optical measurement method for counting and/or differentiating
leucocytes in an automatic blood analysis apparatus wherein the steps
describes analysis of a non-hydrofocused blood sample. The claimed
invention does not describe method steps wherein the character of the blood
sample is changed. In particular, claim 1 refers to “injecting a non-
hydrofocused blood sample” and then later refers to “the blood sample.”
The recitation of “the blood sample” refers back to the “a non-hydrofocused
blood sample.” None of the steps indicate that “the blood sample” becomes
non-hydrofocused, or is otherwise altered, at any point. Therefore, “the
blood sample” remains non-hydrofocused in each step.
Appeal 2019-005220
Application 15/294,274

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Accordingly, we REVERSE the Examiner’s prior art rejections of
claims 1–8 under 35 U.S.C. § 103(a) for the reasons the Appellant presents
and we give above.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 6, 9–15 103(a) Singh, Valet,
Hoffman, Fritz,
Johnson
1–3, 6, 9–
15
4, 5 103(a) Singh, Valet,
Hoffman, Fritz,
Johnson, Lefevre
4, 5
7, 8 103(a) Singh, Valet,
Hoffman, Fritz,
Johnson, Lefevre,
Unterleitner
7, 8
16 103(a) Singh, Valet,
Hoffman, Fritz,
Johnson, Tycko
16
Overall
Outcome
1–16

REVERSED