Ex Parte Bouma et al

Patent Trial and Appeal Board

Aug 21, 2018

13264231 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/264,231 10/13/2011 Peter Hermanus Bouma
24737 7590 08/23/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2009P00105WOUS 1081
EXAMINER
PRAKASH, GAUTAM
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER HERMANUS BOUMA and
MARTINUS LEONARDUS JOSEPHUS GEYSELAERS
Appeal2017-006792
Application 13/264,231
Technology Center 1700
Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and
AVEL YN M. ROSS, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-11, and 14--16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our Decision we refer to the Specification filed October 13, 2011
("Spec."), the Final Office Action appealed from dated May 25, 2016
("Final Act."), the Appeal Brief filed October 21, 2016 ("Appeal Br."), the
Examiner's Answer dated January 25, 2017 ("Ans.") and the Reply Brief
filed March 21, 2017 ("Reply Br.").
2 Appellants identify Koninklijke Philips N.V. as the real party in interest.
Appeal Br. 3.
Appeal2017-006792
Application 13/264,231
STATEMENT OF THE CASE
The subject matter on appeal relates to a gas-free fluid chamber
"suitable for, for instance, performing a polymerase chain reaction." Spec.
1. Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A fluid chamber being in communication with,
a first channel suitable for functioning as an inlet for fluids
into said fluid chamber;
a second channel suitable for functioning as an outlet for
fluids out of the fluid chamber;
wherein at least one protrusion projects into the fluid
chamber;
wherein said at least one protrusion is positioned at at least
one location where the second channel is connected to the fluid
chamber; and
wherein a surface of said at least one protrusion inside the
fluid chamber is smooth, said surface being configured to control
a propagation of the fluids and increase an ability for the fluids
to follow the surface.
Appeal Br. 17 (Claims App'x).
REJECTIONS
The Examiner maintains the following rejections3:
A. Claims 1, 3, 4, and 14 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Carafilidis. 4 Final Act. 3--4.
B. Claims 1, 3-8, 10, and 14--16 stand rejected under
3 The Examiner withdrew the rejection to claims 1, 3-11, and 14--16, under
35 U.S.C. § 112, second paragraph as being indefinite (Advisory Action
dated August 4, 2016) and the rejection of claims 1, 3, 4, 10, and 14, under
35 U.S.C. § 102(b), as being anticipated by Bradford (US 39,987, issued
September 15, 1863). Ans. 2.
4 J. Carafilidis, US 1,505,861, issued August 19, 1924 ("Carafilidis").
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Application 13/264,231
35 U.S.C. § I03(a) as unpatentable over Uhnanella. 5 Id.
at 4---6.
C. Claims 9 and 11 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Ulmanella in view ofNurse. 6 Id. at
6-7.
Appellants seek our review of Rejections A---C. See generally Appeal
Br. Appellants present argument in support of claims 1 (Rejections A and
B) and claim 16 (Rejection B) and do not separately argue the remaining
dependent claims or Rejection C. Id. at 10, 13, 14--15. Therefore, consistent
with the provisions of 37 C.F.R. § 4I.37(c)(l)(iv) (2013), we limit our
discussion to claims 1 and 16, and all other claims stand or fall together with
claim 1.
OPINION
Re} ection A -Anticipation (claims 1, 3, 4, and 14)
The Examiner rejects claim 1 (among others) as anticipated by
Carafilidis. Final Act. 3. The Examiner finds that Carafilidis describes each
of the claimed elements of claim 1. Id. at 3--4 ( citing Carafilidis, Fig. 2).
Appellants contend that the Examiner's citation to the "structural wall
of the pipe that is necessary for forming the U-shape smoke passage and the
elliptical reservoir side wall as being a protrusion, presumably into the
reservoir," is in error because "this wall cannot be both a wall which forms
5 Ulmanella et al., US 2007/0280856 Al, published December 6, 2007
("Ulmanella").
6 Nurse et al., US 2008/0163945 Al, published July 10, 2008 ("Nurse").
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Appeal2017-006792
Application 13/264,231
the reservoir and the smoke passage and be a protrusion which projects into
the reservoir." Appeal Br. 9.
In the Answer, the Examiner provides annotated Figure 2, shown
below, to further explain his findings.
B
.,~... \ t:J.i .. • ,, .. f,;'. -.t.·'»-.?., •. ..,, .<··'\, ·?· -·· ,,,., .•
fluid Ct\iHTI~r
Figure 2
Figure 2 "is a longitudinal section view through the device." Carafilidis, 11.
27-28. Illustrated above in Figure 2 is a reservoir 10 and a first and second
channel 9 and 11. Id. at 11. 49-57, Fig. 2. The Examiner also explains that
annotated Figure 2 illustrates a fluid chamber as claimed, defined by wall B,
where protrusion A "is positioned at the location where the outlet channel is
connected to the fluid chamber." Ans. 4. The Examiner further finds that
"[t]he surface of the protrusion [A] is smooth and is configured to control of
fluid propagation and increase an ability for the fluid to follow the surface."
Id.
Appellants assert that the Examiner's interpretation of fluid chamber
is contrary Carafilidis which defines the reservoir as the elliptically-shaped
chamber. Reply Br. 6. Appellants also argue that if referenced portion A
corresponds to the protrusion of the claim the claim and the portion B is the
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Application 13/264,231
wall of the fluid chamber, then the protrusion "would not be located at the
location where the second channel" is connected to the fluid chamber as
claimed. Id.
Appellants' arguments fail to identify a reversible error in the
Examiner's rejection. The issue is not how Carafilidis defines various
components of its structure; the issue is whether the structure disclosed in
Carafilidis discloses the fluid chamber claimed by Appellants. A prima
facie case of anticipation under § 102 exists where the Examiner establishes
all elements arranged as specified in a claims are disclosed within the four
comers of a reference, either expressly or inherently, in a manner enabling
one skilled in the art to practice an embodiment of the claimed invention
without undue experimentation. ClearValue, Inc. v. Pearl River Polymers,
Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012); Sanofi-Synthelabo v. Apotex
Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008). Here, as shown in the
Examiner's annotated version of Carafilidis Figure 2, Carafilidis describes a
fluid chamber B, a first and second channel 9 and 11, and a protrusion A
projecting into the fluid chamber where the surface of protrusion A is
smooth and protrusion A is positioned at a location where the second
channel is connected to the chamber. We further disagree with Appellants
that protrusion A is not located at a position where the second channel is
connected to the chamber. That protrusion A acts to lengthen channel 11
does not change the fact that the protrusion begins and is positioned at a
point on the wall where channel 11 and chamber B connect, in much the
same manner as depicted in Appellants' drawings. On this record, the
Examiner's position is supported by a preponderance of the evidence.
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Application 13/264,231
Rejection B- Obviousness (claims 1, 3---8, 10, and 14-16)
The Examiner rejects claims 1, 3-8, 10, and 14--16, as obvious over
Ulmanella. Final Act. 4--5. The Examiner finds that Ulmanella teaches the
fluid chamber claimed except that Ulmanella "do[ es] not explicitly teach
that the surface of the protrusion is smooth and is configured to control of
fluid propagation and increase an ability for the fluids to follow the surface."
Id. at 5. But, the Examiner reasons that one ordinarily skilled in the art
would have had the ability "to use smooth protrusions according to any
design needs in order to alter the forces acting on the portions of the
meniscus moving in differing manners." Id. (citing Ulmanella ,r 88).
Claim 1:
Appellants contend that Ulmanella fails to describe a fluid chamber
where the "surface of said at least one protrusion inside the fluid chamber is
smooth," as required by claim 1. Appeal Br. 11. Specifically, Appellants
urge that "Ulmanella teaches a device for controlling bubble formation in
microfluidic devices comprising a plurality of rectangular teeth 55 that
extend from a lateral portion 26 of the surface defining the chamber
proximate the outlet channel 24." Id. Appellants explain that the teeth
inhibit the movement of fluid at the leading portion "to permit the meniscus
to catch up ... so that the sample front may reach the outlet channel ... at
the same time." Id. Appellants urge that the rectangular teeth are not
smooth but rather "hav[ e] sharp comers which provide a decreased ability of
an advancing fluid front to follow the surface as compared to a smooth
surface," and further explain that "[a] surface designed to retard the
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Application 13/264,231
movement of a fluid is completely different than a surface specifically
designed to allow the fluid to follow the surface." Id. at 12.
Appellants fail to identify a reversible error in the Examiner's
rejection. As the Examiner explains, Ulmanella does not teach only
rectangular, teeth-like protrusions having sharp corners as Appellants
suggest. Ans. 4. Rather, Ulmanella describes different shapes and
arrangements can be used to affect fluidic performance. Ans. 6 ( citing
Ulmanella ,r 88). 7 In particular, Ulmanella explains
that the shape, arrangement, dimensions, orientation, spacing,
position within the chamber, and number of projecting members,
grooves, reliefs or other features may vary and may be selected
based on various factors, including, but not limited to, for
example, improvement in fluidic performance ( e.g., reduction in
bubble entrapment), liquid and/or surface physicochemical
properties, geometry of the chamber ( surface roughness, shape,
nonuniformities), filling conditions (flow rates, pressure
differentials, centrifugal/ centripetal forces due to centrifugal
filling), [etc.] . . . . [Further] it is envisioned that any type of
surface feature that alters the forces acting on the portions of the
meniscus moving in differing manners ( e.g., at differing rates)
may be utilized and is considered within the scope of the
invention.
Ulmanella ,r 88. Thus, as the Examiner concludes, Ulmanella teaches that
the shapes of the protrusions may vary and further provides a reason why the
person of ordinary skill would vary the shapes thereby establishing a prima
facie case of obviousness. Ans. 6. The Examiner further notes that
Appellants failed to provide any objective evidence that the claimed
protrusions are any different from those in Ulmanella. Id. at 8. We are not
7 We further observe that Ulmanella describes "various embodiments" as
including teeth-like protrusions thereby suggesting other embodiments do
not have protrusions. See Ulmanella ,r 84.
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Application 13/264,231
convinced by Appellants' argument that "[ w ]hile Ulmanella generally
discloses that the shape of the projecting members may vary, Ulmanella
focuses on the protrusions having sharp comers which increase the surface
retarding forces." Reply Br. 9 ( emphasis added). "[A] reference must be
considered not only for what it expressly teaches, but also for what it fairly
suggests." In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979).
We, therefore, sustain the Examiner's rejection of claims 1, 3-8, 10,
and 14 and 15 as obvious.
Claim 16:
Claim 16, depending from claim 1, additionally recites that "the first
channel and the second channel are positioned next to each other and one
protrusion projects into the fluid chamber; and said protrusion is located
between the first channel and the second channel." Appeal Br. 20 (Claims
App'x). The Examiner reasons that such a configuration "is well within the
abilities of one of ordinary skill in the art to position the channels and select
the number of protrusions in order to alter the forces acting on the portions
of the meniscus moving in differing manners." Final Act. 6.
Appellants argue that the disclosure of Ulmanella is silent regarding a
configuration where the first and second channels are positioned adjacent
one another. Appeal Br. 14. Appellants assert that the only configuration
depicted in Ulmanella illustrates the first and second channels on opposite
sides of the reservoir and that Ulmanella's discussion regarding the
configuration of other features provides no basis for the skilled artisan to
arrive at the invention of claim 16. Id.; see also Reply Br. 10-11 (explaining
a person of ordinary skill in the art would have no reason to modify the
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positions ofUhnanella). As a result, Appellants contend that the Examiner
rejection of claim 16 is based on impermissible hindsight. Appeal Br.
14.Appellants fail to identify reversible error in the Examiner's rejection.
Here, Appellants do not adequately dispute the Examiner's finding that
positioning the first and second channels of the fluid chamber adjacent one
another was well within the skill level of the ordinarily skilled artisan. Nor
do Appellants establish any criticality to the claimed positioning. Further,
we observe that Figures 16 A-B and 17 B-C of Ulmanella, albeit directed to
a different embodiment, depict an arrangement where the first and second
channels are adjacent one another. Accordingly, we "take account of the
inferences and creative steps that a
person of ordinary skill in the art would employ," and determine the
Examiner's finding (Final Act. 6) that "is well within the abilities of one of
ordinary skill in the art to position the channels and select the number of
protrusions in order to alter the forces acting on the portions of the meniscus
moving in differing manners" is supported by the record. KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398,418 (2007); see also id. at 421 ("A person of
ordinary skill is also a person of ordinary creativity, not an automaton."); Ball
Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993
(Fed. Cir. 2009) (under the flexible inquiry set forth by the Supreme Court, the
PTO must take account of the "inferences and creative steps," as well as routine
steps, that an ordinary artisan would employ ( emphasis omitted)).
Therefore, on this record, the preponderance of the evidence supports
the Examiner's findings and conclusions and we sustain the Examiner's
rejection of claim 16.
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CONCLUSION
Appellants failed to identify a reversible error in the Examiner's
rejection of claims 1, 3, 4, and 14, under 35 U.S.C. § 102(b), as anticipated
by Carafilidis.
Appellants failed to identify a reversible error in the Examiner's
rejection of claims 1, 3-8, 10, and 14--16, under 35 U.S.C. § 103(a), as
unpatentable over Ulmanella.
Appellants failed to identify a reversible error in the Examiner's
rejection of claims 9 and 11, under 35 U.S.C. § 103(a), as unpatentable over
Ulmanella in view of Nurse.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 3-11, and
14--16 is affirmed and the Examiner's rejection of claim 16 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1).
AFFIRMED
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