Ex Parte Bui et al

Patent Trial and Appeal Board

Nov 19, 2018

14579858 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/579,858 12/22/2014
8791 7590 11/21/2018
WOMBLE BOND DICKINSON (US) LLP
Attn: IP Docketing
P.O. Box 7037
Atlanta, GA 30357-0037
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Xuan S. Bui
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.
7705P034D 4915
EXAMINER
WRIGHT, PATRICIA KATHRYN
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
11/21/2018 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):
FIP _Group@bstz.com
PTO.MAIL@BSTZPTO.COM
PTO.MAIL@BSTZ.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XUAN S. BUI, ANTHONY L. HARTMAN, TOSHIYUKI
FUJIMAKI, SHINJI TOKUDAIJI, YOSHITAKE OKABE, and
YOSHITADA MIZUSA WA
Appeal 2017-011629
Application 14/579,858
Technology Center 1700
Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
MICHAEL G MCMANUS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claim 1 under 35 U.S.C. § 102(b) as
being anticipated by Spence et al. (US 2009/0298129 Al published Dec. 3,
2009); claim 2 under 35 U.S.C. § 103(a) as being unpatentable over Spence;
and claim 3 under 35 U.S.C. § 103(a) as being as unpatentable over Spence
1 Appellant is the Applicant, Sakura Finetek U.S.A., Inc., who is also stated to
be the real party in interest (Appeal Br. 3).
Appeal 2017-011629
Application 14/579,858
in view of Dole (U.S. 4,978,502 issued Dec. 18, 1990)2. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
Claim 1 is illustrative of the appealed subject matter:
1. An apparatus comprising:
a reagent cartridge comprising a housing that defines a
reagent retaining recess and a reagent directing channel, the
reagent retaining recess is fluidly connected to a first sloped
surface connecting the reagent retaining recess to an outlet
channel extending from a bottom side of the housing, and the
reagent directing channel comprises a first inclined portion and
a second inclined portion connecting the reagent directing
channel to the outlet channel, the second inclined portion
extends from the first inclined portion at a substantially right
angle, and in a direction toward the first sloped surface, such
that the first sloped surface and the second inclined portion
converge with one another at the outlet channel, and
wherein the reagent retaining recess comprises a sidewall
and a ledge extending inwardly from the sidewall, wherein the
ledge is dimensioned to support a reagent capsule removably
positioned within the reagent retaining recess and fluidly couple
the reagent capsule with the first sloped surface.
Appeal Br. 23 (Claims Appendix).
ANALYSIS
Appellant de facto argues that the Examiner has taken an
unreasonably broad interpretation of the recited "reagent retaining recess and
2 The Examiner withdrew the § 112 rejection for indefiniteness of claims 1-
6 and 52-55 (Ans. 2).
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Appeal 2017-011629
Application 14/579,858
reagent directing channel" (Appeal Br. 14, 15; Reply Br. 2--4), as well as the
"first inclined portion" of the reagent directing channel and thus, has not
shown how Spence identically discloses this feature (Appeal Br. 15, 16;
Reply Br. 4, 5) as well as other features required by the claim (Briefs
generally). A preponderance of the evidence supports Appellant's position.
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification." In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000)); see also In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in
patent applications is not determined solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction in
light of the specification as it would be interpreted by one of ordinary skill in
the art.) (citations omitted); Phillips v. AWHCorp., 415 F.3d 1303, 1315
(Fed. Cir. 2005) ("[T]he specification 'is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term."' (Citation omitted)) (see, e.g., Appeal Br.
8, 9 for discussion of the claimed dielectric sidewall layers as set forth in the
Specification).
The Examiner relies upon the structure of a "waste tray cover 1640"
of Spence (Spence ,r 213; Figs. 30A, 30B) as describing all of the structural
features of claim 1, and labels diagram Fig. 30B of Spence with the recited
claim elements (Ans. 3; Final Act. 6).
Appellant urges that one of ordinary skill in the art would not consider
this waste tray cover "a reagent cartridge comprising a housing that defines a
reagent containing recess and a reagent directing channel" and that the
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Appeal 2017-011629
Application 14/579,858
Examiner's labels are not in line with numerous other features as required by
the claims (e.g., Appeal Br. 14--17). Appellant's Specification's description
of the claimed "first sloped surface", the "first inclined portion" and the
"second inclined portion" structure is discussed in the Appeal Brief in the
argument concerning the Examiner's now withdrawn§ 112 rejection (Appeal
Br. 9-12; Spec. ,r,r 93, 94, Figs. 7, 8; Ans. 2). Appellant argues the
Examiner has not established that Spence describes all these features in the
same way as recited in claim 1 (Appeal Br.; Reply Br. generally). For
example, Appellant points out that the vertical top portion of channel 1616
of Spence cannot reasonably be considered "a first inclined portion" as
required by the claims, because it has not been shown to deviate from the
vertical orientation (Appeal Br. 15, 16).
The Examiner has not adequately explained how one of ordinary skill
would have reasonably considered Spence's first sloped surface, and first
inclined portion, as labeled by the Examiner (Ans. 3) to be encompassed by
the language of claim 1 (Ans. generally). Thus, for example only, Spence's
labeled "first inclined portion" as labeled by the Examiner falls short of
being "a first inclined portion" of the reagent directing channel as required
by the claims. Therefore, we agree with Appellant that the Examiner has
taken an unreasonably broad interpretation of the aforementioned claim
limitations when considered in light of the Specification for the reasons
explained in the Briefs and, in doing so, erred in finding that Spence
discloses the claimed subject matter. As such, we cannot sustain the
anticipation rejection. See also, Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1371 (Fed. Cir. 2008) (If a reference does not disclose "not only
all of the limitations claimed but also all of the limitations arranged or
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Application 14/579,858
combined in the same way as recited in the claim", it cannot anticipate under
35 U.S.C. § 102).
Accordingly, we reverse the Examiner's 35 U.S.C. § 102 rejection of
claim 1. Since the Examiner does not rely upon any other reasoning and/or
reference to cure these deficiencies, the § 103 rejections of claims 2 and 3
are also reversed.
DECISION
The Examiner's decision is reversed.
ORDER
REVERSED
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