CTC Analytics AG

Patent Trials and Appeals Board

Sep 23, 2020

2019006016 (P.T.A.B. Sep. 23, 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.
15/472,777 03/29/2017 Lucas LUETHY 2360-0777PUS1 4152
2292 7590 09/23/2020
BIRCH STEWART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
MUI, CHRISTINE T
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
09/23/2020 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUCAS LUETHY and BEAT LUETHY
Appeal 2019-006016
Application 15/472,777
Technology Center 1700
Before LINDA M. GAUDETTE, FRANCISCO C. PRATS, and
LILAN REN, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 10–18 and 30 under 35 U.S.C. § 103 as

1 This Decision includes citations to the following documents: Specification
filed Mar. 29, 2017, as amended (“Spec.”); Final Office Action dated Aug.
28, 2018 (“Final Act.”); Appeal Brief filed Jan. 16, 2019 (“Appeal Br.”);
Claims Appendix filed Feb. 2, 12, 2019 (“Claims App.”); Examiner’s
Answer dated July 8, 2019 (“Ans.”); and Reply Brief filed Aug. 7, 2019
(“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Appellant identifies the real party in interest as CTC Analytics
AG. Appeal Br. 1.
Appeal 2019-006016
Application 15/472,777

2
unpatentable over Tajima (US 5,919,706, iss. July 6, 2999) in view of
Stalder (US 2014/0150923 Al, pub. June 5, 2014).3
We REVERSE.
CLAIMED SUBJECT MATTER
The invention relates to a method for operating a dosing device that
includes measuring the level of a liquid in the vessel or the level of a phase
boundary in the liquid. Spec. 1:6–11. Claim 10, reproduced below, is
illustrative of the claimed subject matter:
10. A method for operating a dosing device, said dosing
device comprising a control unit and a dosing unit, said dosing
unit having a cannula with a first volume and a tip, said dosing
unit also comprising a sampling container fluidically connected
to the cannula, said method comprising the following steps:
a) moving the dosing unit linearly at a predetermined
speed in a first direction along an axis, such that the cannula is
moved into a vessel containing at least one liquid;
b) aspirating a fluid constantly through the cannula, with
a predetermined volumetric flow, by a pump device;
c) measuring at least one optical parameter of the
aspirated fluid using at least one optical sensor, which is
arranged between the cannula and the sampling container;
d) when a change of the at least one optical parameter is
detected, using the control unit to store a first position of the
dosing unit on the axis and interrupting the movement of the
dosing unit;
e) using the control unit to calculate a second position of
the dosing unit on the axis, at which second position the tip of
the cannula has penetrated a first phase boundary, in particular
upon immersion into the liquid, on the basis of the first

3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2019-006016
Application 15/472,777

3
position, the predetermined speed, the first volume and the
predetermined volumetric flow.
Claims App. (emphasis added).
OPINION
Claim 10, the sole independent claim on appeal, recites a method of
operating a dosing device comprising a control unit and a dosing unit having
a cannula with a first volume. Claim 10, preamble. The method includes
steps of moving the dosing unit linearly along an axis at a predetermined
speed into a vessel, and measuring an optical parameter of a fluid (e.g., first
air and then liquid) aspirated through the cannula at a predetermined
volumetric flow. Id. at steps a–c. When a change in the optical parameter is
detected (e.g., when aspirated liquid reaches the optical sensor), the dosing
unit’s position on the axis is stored by the control unit as a first position. Id.
at step d. In the final claim 10 method step, the control unit calculates a
second position of the dosing unit on the axis on the basis of the first
position, the predetermined speed, the first volume, and the predetermined
volumetric flow. Id. at step e. The Appellant explains that “[b]ased on this
calculation, the depth of the cannula in the liquid is known (the distance
between the first and second positions).” Appeal Br. 12.
The Examiner found that Tajima discloses the claim 10 method except
that Tajima does not disclose that the dosing unit includes a cannula. Final
Act. 7–8. The Examiner determined that the ordinary artisan would have
modified Tajima’s dosing unit to include a cannula, as taught by Stalder, “to
inject or [withdraw] a specified volume corresponding to the volume of fluid
to be analyzed and such that contamination of the pump device by the fluid
sample is prevented.” Id. at 8.
Appeal 2019-006016
Application 15/472,777

4
The Appellant argues that the Examiner did not provide sufficient
explanation or identify persuasive evidence to support a finding that Tajima,
alone or in combination with Stalder, discloses or suggests claim 10, step e.
See Appeal Br. 13–14; Reply Br. 3. Responsive to the Appellant’s argument,
the Examiner cites Tajima column 6, line 55 to column 7, line 10, and
provides annotated copies of Tajima Figures 5 and 6 illustrating how the
claimed first and second positions read on the movements of Tajima’s
dosing unit. See Ans. 13–14.
Tajima discloses that “operations of detecting a liquid level in [a]
pipetting device” (Tajima 5:62–63) include the following: receiving
reflected light from a liquid surface while moving a disposable tip toward
the liquid surface (id. at 6:10–17); converting the measured light change
amounts to voltage values (id. at 6:44–46); comparing these voltage values
to a previously stored or predetermined voltage value, and terminating
movement of the disposable tip when the voltage obtained by conversion of
the measured light value equals the previously stored or predetermined
voltage value, i.e., the value corresponding to the light change detected when
the disposable tip reaches the liquid surface (id. at 6:30–40, 44–50); and
measuring the time period required to reach the previously stored or
predetermined voltage value, and computing a liquid level by comparing the
measured time period to a previously stored time period (id. at 6:55–59).
Tajima discloses that when the liquid level has been determined, the control
section then instructs the driving circuit to move the disposable tip a certain
distance into the liquid where liquid is drawn into the disposable tip. Id. at
7:1–10.
Appeal 2019-006016
Application 15/472,777

5
Having reviewed Tajima’s disclosure, we are persuaded that the
Examiner did not provide sufficient explanation or identify persuasive
evidence to support a finding that the applied prior art discloses or suggests
claim 10, step e. Tajima discloses that the CPU “previously stores therein,
for instance, specified values or predetermined values identifying a reflected
state of a light, executes computing and determining such as comparing the
specified values or the predetermined values to measured values, and
transmits an instruction for driving and controlling each of the mechanisms
according to the determination.” Tajima 5:37–43. In other words, Tajima, as
modified by Stalder, discloses moving a cannula from a first position (i.e.,
the position at which the cannula reaches the liquid surface (see Ans. 14,
annotated Tajima Figs. 5 & 6)) to a second position (i.e., the position to
which the cannula is lowered into the liquid (see id.)) based on a comparison
of measured values to previously stored or predetermined values. The
Examiner has not explained how arriving at a second position based on
comparisons to stored values teaches or suggests calculating a second
position based on (1) the first position, (2) a predetermined speed of the
dosing unit as it travels toward the liquid surface, (3) the cannula’s volume,
and (4) the predetermined volumetric flow at which the liquid is aspirated
through the cannula, as recited in claim 10, step e. See, e.g., Spec. 10:18–38
(describing the measurements and calculations used to determine the second
position).
CONCLUSION
The Appellant has identified reversible error in the Examiner’s
obviousness determination as to claim 10. As the rejections of the dependent
Appeal 2019-006016
Application 15/472,777

6
claims are likewise based on the Examiner’s unsupported findings, we do
not sustain the rejection as to any of appealed claims 10–18 and 30.
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
10–18, 30 103 Tajima, Stalder 10–18, 30

REVERSED