Ex Parte Dinges

Patent Trial and Appeal Board

Apr 27, 2017

13530517 (P.T.A.B. Apr. 27, 2017)

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.
13/530,517 06/22/2012 Warren L. Dinges HETF-001/03US
314815-2008
3370
58249 7590 05/01/2017
COOLEY LLP
ATTN: Patent Group
1299 Pennsylvania Avenue, NW
Suite 700
Washington, DC 20004
EXAMINER
MARCHESCHI, MICHAEL A
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
05/01/2017 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):
zpatdcdocketing@cooley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WARREN L. DINGES
Appeal 2015-006180
Application 13/530,5171
Technology Center 1700
Before JEFFREY T. SMITH, N. WHITNEY WILSON, and
JEFFREY R. SNAY, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35U.S.C. § 134 from a Final Rejection
ofclaims 1—9 and 11—22. We have jurisdiction under 35 U.S.C. § 6.
1 The real party in interest is HeatFlow Technologies Inc. (App. Br. 3).
Appeal 2015-006180
Application 13/530,517
Appellant’s invention is generally relates to polymerase chain
reactions (PCR) and, particularly, to methods and systems for detecting PCR
products during the PCR process. (Spec. 12). Claim 1 illustrates the
subject matter on appeal and is reproduced from the Appeal Brief below:
1. A system, comprising:
a sample block including a plurality of sample wells;
at least one heater coupled to the sample block and configured
to add heat to at least one PCR reaction solution when the at
least one PCR reaction solution is disposed within a sample
well from the plurality of sample wells and to add heat to at
least one reference solution when the at least one reference
solution is disposed within a sample well from the plurality of
sample wells;
a first temperature sensor configured and disposed to measure a
temperature of a PCR reaction solution during each of a
plurality of cycles when the PCR reaction solution is disposed
within a first sample well from the plurality of sample wells;
a second temperature sensor configured and disposed to
measure a temperature of a reference solution during each of
the plurality of cycles when the reference solution is disposed
within a second sample well from the plurality of sample wells;
and
a computer controller in communication with the first
temperature sensor and the second temperature sensor, the
computer controller programmed to compare a temperature of
the PCR reaction solution to a temperature of the thermal
reference solution measured during each cycle from the
plurality of cycles and to detect a formation of amplified DNA
within the PCR reaction solution when a difference between a
temperature of the PCR reaction solution and a temperature of
the thermal reference solution is greater than a threshold
temperature difference.
Appellant (see App. Br., generally) requests review of the rejection of
claims 1—9 and 11—22 under 35 U.S.C. § 103(a) as unpatentable over Schick
2
Appeal 2015-006180
Application 13/530,517
US 2005/0190813 Al, Sept. 1, 2005 (Schick) in view of Sundberg et al. US
2007/0026421 Al, pub. Feb. 1, 2007 (Sundberg). (Final Act. 3-22):
OPINION
The dispositive issue on appeal is: Did the Examiner err in
determining that the combination of Schick and Sundberg disclose or
suggest a system with a computer controller programmed to detect amplified
DNA based on a comparison of temperature of a PCR reaction solution to a
reference solution (claim 1), or based on a difference in power input between
a first heating system and a second heating system (claim 9), or based on a
difference in temperature as relates to the enthalpy change (claim 15)?2
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the prior art rejection for the reasons presented by
the Appellant and add the following.
Appellant argues the combination of Schick and Sundberg fails to
disclose or suggest a system with a computer controller programmed to
detect amplified DNA as required by independent claims 1, 9 and 15. (App.
Br. 6—10; Reply Br. 2—9). Appellant argues Sundberg performs melting
curve analyses on samples that have already undergone a PCR process.
(App. Br. 6; Sundberg 172).
The Examinerdoes not adequately address Appellant’s argument
regarding Sundberg’s processes involving the analysis of samples that have
already undergone a PCR amplification process (see, generally, Ans. 2—19).
2 We limit our discussion to independent claims 1, 9 and 15.
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Appeal 2015-006180
Application 13/530,517
Nor does the Examiner address in a persuasive manner why the combination
of Schick and Sundberg would have suggested a computer that is
programmed to detect the formation of amplified DNA within a PCR
reaction solution.
The Examiner relied on Schick for describing a computer controller in
communication with temperature sensors. (Final Act. 3—4). The Examiner
cited Sundberg for describing a method and apparatus for generating thermal
melting curves (thermal analysis) in the analysis of PCR amplification
products. (Final Act. 4). The Examiner agrees with Appellant that
Sundberg’s analysis is on samples that have already undergone a PCR
process. (Ans. 6). Nonetheless the Examiner contends:
Sundberg teaches a method and apparatus for generating
thermal melting curves (thermal analysis) in the analysis of
PCR amplification products (Sundberg, Abstract), which
corresponds to the claimed ‘amplified DNA within the PCR
reaction solution’. In particular, Sundberg teaches thermal
analysis of DNA obtained from a patient sample that has been
purified and amplified by PCR (page 8, [0072]), and Sundberg
teaches the comparison of two thermal property curves
(reference and sample, i.e., PCR reaction solution) to determine
chemical properties (page 9, [0079]).
(Ans. 6—7).
The Examiner further contends the claims do not require a PCR
process to detect amplified DNA based on a temperature difference. (Ans.
6).
The evidence of record does not support the Examiner’s position. The
Examiner has failed to appreciate the scope of the claimed subject matter.
We agree with the Appellant that the independent claims specifically require
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Appeal 2015-006180
Application 13/530,517
a computer that is programmed to detect the formation of amplified DNA
within a PCR reaction solution. (App. Br. 7, 9—10; Reply Br. 2—3 and 7—8).
We also agree with Appellant that Sundberg’s processes involve the analysis
of samples that have already undergone a PCR amplification process and is
not used to detect a formation of amplified DNA within a PCR reaction
solution as recited in the independent claims. (App. Br. 7; Reply Br. 3).
For the foregoing reasons and those stated in the Briefs, we determine
that the Examiner’s conclusion of obviousness is not supported by facts.
“Where the legal conclusion [of obviousness] is not supported by facts it
cannot stand.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, the Examiner’s rejection of claims 1—9 and 11—22 over the
combination of Schick and Sundberg is reversed.
ORDER
The rejection of claims 1—9 and 11—22 under 35 U.S.C. § 103(a) as
unpatentable over Schick and Sundberg is reversed.
REVERSED
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