Ex Parte Hollenbeck et al

Patent Trial and Appeal Board

Mar 30, 2017

13356956 (P.T.A.B. Mar. 30, 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.
13/356,956 01/24/2012 Ronald C. Hollenbeck SP11-024 4881
22928 7590 04/03/2017
TORNTNO TNmRPORATFD
EXAMINER
SP-TI-3-1
CORNING, NY 14831
GRAY, SUNGHEE Y
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
04/03/2017 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):
u sdocket @ corning .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte RONALD C. HOLLENBECK, DAVID ANDREW PASTEL,
HAK C. SIM, CAMERON J. TOVEY,
and CYNTHIA L. WIDA
Appeal 2015-007648
Application 13/356,956
Technology Center 2800
Before MARKNAGUMO, MICHAEL P. COLAIANNI, and
N. WHITNEY WILSON, Administrative Patent Judges.
OPINION FOR THE BOARD BY COLAIANNI, Administrative Patent
Judge.
OPINION DISSENTING-IN-PART BY NAGUMO, Administrative Patent
Judge.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
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Appeal 2015-007648
Application 13/356,956
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1—9. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appellants’ invention is directed to a method with accurate microplate
position detection (Spec. 12).
Claims 1 and 4 are illustrative:
1. A method of determining the position of a microplate having a
surface and that supports one or more biosensors in an optical
reader system, the method comprising:
scanning a beam spot over a scan path over a portion of the
microplate surface, the scan path having a first general direction
and an oscillating component in a second direction perpendicular
to the first general direction and imparted by a scanning mirror
device having an adjustable orientation, thereby defining a two-
dimensional scan path;
passing the oscillating component of the two-dimensional scan
path over at least a portion of a position-detecting feature of the
microplate and generating reflected light from the position­
detecting feature;
detecting the reflected light as a function of the scanning mirror
device orientation to establish a measured profile of the position­
detecting feature; and
determining, from the measured profile of the position­
detecting feature a center of the position-detecting feature.
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Application 13/356,956
4. The method of claim 1, further comprising performing multiple
scans of the beam spot over multiple two-dimensional scan paths
having different amplitudes of the oscillating component.
Appellants appeal the following rejections:
1. Claims 1, 2, 4, 5, and 7—9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gollier et al. (US 2006/0139641 Al; June 29, 2006)
in view of Livingston (US 2009/0159812 Al; June 25, 2009).
2. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Gollier in view of Livingston and Crafts et al. (US 2011/0096326 Al;
Apr. 28,2011).
3. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Gollier in view of Livingston and Tomaru (US 2006/0204402 Al;
Sept. 14, 2006).
Appellants argue claims 1 and 4 separately (App. Br. 10—12). Claims 2,
3, and 5—9 will stand or fall with our analysis of the rejection of claim 1.
FINDINGS OF FACT & ANALYSIS
CLAIM 1
The Examiner’s findings regarding Gollier and Livingston are located
on pages 2 to 4 of the Final Action. The Examiner finds that Gollier teaches
the subject matter of claim 1 except for passing the oscillating component of
the two-dimensional scan path over at least a portion of a position detecting
feature of the microplate and an oscillating component in a second direction
perpendicular to the first direction and imparted by a scanning mirror device
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Application 13/356,956
having an adjustable orientation (Final Act. 3). The Examiner finds that
Livingston teaches using an adjustable mirror to provide an oscillating
component in a two-dimensional scan path wherein an oscillating
component in a second direction is perpendicular to the first general
direction (Final Act. 3). The Examiner finds that Livingston’s scanning
pattern is one standardized way of efficiently scanning the two-dimensional
area while avoiding overlap in the scanning (Final Act. 3; Ans. 3). The
Examiner concludes that it would have been obvious to include an
oscillating component in a second direction perpendicular to the first
direction and imparted by a scanning mirror device having an adjustable
orientation into Gollier’s system in order to provide improved accuracy of
data as taught by Livingston (Final Act. 3—4).
Appellants argue that Livingston’s method and device relies upon the
light produced by the fluorescing of single molecule to detect the presence
of a material and thus is not concerned with reflected light from outside the
sample (App. Br. 11). Appellants contend that one of ordinary skill in the
art would not look to Livingston in order to modify Gollier because
Livingston’s oscillating component resides with the sample and is used for
the sole purpose of eliciting the emission of fluorescent light from the
sample. Id. Appellants contend that applying Livingston’s teachings to
Gollier would have rendered Gollier unsatisfactory for its intended purpose
because Livingston’s oscillated component is used only for the sample
whereas the claim requires processing reflected light (App. Br. 12).
Appellants’ argument fails to specifically address or otherwise show
reversible error with the Examiner’s finding that Livingston teaches that
using an oscillating component in the light scanning device is a well-known
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Application 13/356,956
technique in the art (Final Act. 3; Ans. 3). Appellants’ argument that
Livingston’s teaching to use the light scanning to fluoresce a single molecule
would have rendered Gollier unsuitable for its intended purpose amounts to
an argument that one of ordinary skill would not have bodily incorporated
Livingston’s device and method with Gollier’s device and method. The
Examiner’s rejection is, however, based upon using Livingston’s well-
known scanning technique that uses an oscillating component in place of
Gollier’s mirror-controlled light scanning system that simply directs the light
on a path across a microplate in order to improve accuracy and efficiency.
Livingston’s use of the light to cause a single molecule to fluoresce does not
detract from the Examiner’s unchallenged finding that Livingston’s optical
scanning system using an oscillating component is well-known in the art for
improving accuracy and efficiency by avoiding overlap during scanning.
On this record, we affirm the Examiner’s § 103 rejections of claims
1—3 and 5—9.
CLAIM 4
Appellants argue that neither Gollier nor Livingston teaches
performing multiple scans of the beam spot over multiple two-dimensional
scan paths having different amplitudes of the oscillating component (App.
Br. 12).
The Examiner finds that Gollier’s teaching to scan the microplate at a
first and second angle to the scanning direction corresponds to the different
amplitudes of the oscillating component (Final Act. 4). The Examiner
further finds that Gollier’s teaching to use two different angle sets implies
two different amplitudes of the oscillating component (Ans. 7). The
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Application 13/356,956
Examiner finds that using an arbitrary angle selection for scanning (i.e.,
amplitude selection) would have been obvious to try for an ordinarily skilled
artisan (Ans. 7). The Examiner further finds that it would have been obvious
to try different amplitudes to determine which covers the entire scanning
area (Ans. 7—8).
The Examiner has not shown where Gollier teaches using different
amplitudes for the multiple two-dimensional scan paths. Gollier teaches
scanning the surface of the microplate in two different directions but the
Examiner has not explained how that necessarily teaches that using different
amplitudes for the multiple scans. The Examiner concludes that using
different amplitudes would have been obvious to try but fails to establish
that the selection of amplitudes is one of a finite number of predictable
solutions with a reasonable expectation of success as argued by Appellants
(Reply Br. 9—11).
Because the Examiner has not established that the subject matter of
claim 4 would have been obvious in over the teachings of Gollier and
Livingston, we are constrained to reverse the Examiner’s § 103 rejection of
claim 4.
DECISION
The Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
ORDER
AFFIRMED-IN-PART
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte RONALD C. HOLLENBECK, DAVID ANDREW PASTEL,
HAK C. SIM, CAMERON J. TOVEY,
and CYNTHIA L. WIDA
Appeal 2015-007648
Application 13/356,956
Technology Center 2800
OPINION DISSENTING-IN-PART BY NAGUMO, Administrative Patent
Judge.
I dissent, respectfully, from the Decision by the majority to affirm the
rejection of claim 1 and the non-separately argued claims. In my view,
Appellants have shown that the Examiner failed to come forward with
sufficient evidence demonstrating that a person of ordinary skill in the art
would have had a reason to modify the optical reader system described by
Gollier to perform the sinusoidal scan pattern suggested by Livingston for its
single molecule fluorescent scanning analyzer. The signal obtained from
‘position-detecting features” (diffraction gratings) scanned by Gollier and
the fluorescent-label-tagged biomolecules of interest to Livingston, and the
reasons the subject samples are scanned are, as Appellants point out
(App. Br. 10—11), so different that, aside from the commonality of optical
detection, there seems to be little in common. The mere finding that a
feature known to the prior art could have been incorporated into some
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Application 13/356,956
known embodiment in the prior art—a finding that has not been explained in
any detail the present case—is not enough to establish either a real-world
motivation or a reasonable expectation of success. In my view, Livingston
provides no more motivation to modify Gollier than the generalized “notice”
that sinusoidal search patterns are known in the prior art.
On the present record, I would reverse all of the appealed rejections,
not just the rejection of claim 4. I therefore, with respect, dissent-in-part
from the decision to affirm, in part.
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