Ex Parte Kostrzewa et al

Patent Trial and Appeal Board

Mar 27, 2018

13904199 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/904, 199 05/29/2013
110047 7590
BENOIT & COTE
560 boul. Cremazie est
Suite 300
Montreal, QC H2P 1E8
CANADA
03/29/2018
FIRST NAMED INVENTOR
Markus Kostrzewa
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.
P3595USOO 6847
EXAMINER
THOMAS, BINU
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
03/29/2018 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):
docket@benoit-cote.com
phil@benoit-cote.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte MARKUS KOSTRZEWA and ULRICH WELLER1
(Applicant: Bruker Daltonik GmbH and Christiane Boogen)
Appeal2017---007549
Application 13/904, 199
Technology Center 1700
Before BEYERL YA. FRANKLIN, CHRISTOPHER C. KENNEDY, and
MERRELL C. CASHION, JR, Administrative Patent Judges.
FRANKLIN, BEYERL YA., Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims 8, 9, and 11-22. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
STATEMENT OF THE CASE
Claim 8 is illustrative of Appellants' subject matter on appeal and is
set forth below:
1 Appellant identifies the real party in interest as Bruker Daltonik GmbH.
Appeal Br. 1.
Appeal2017---007549
Application 13/904, 199
8. A deposition aid for the manual deposition of samples
on a sample support for ionization with matrix assisted laser
desorption, comprising:
(a) a holder for a sample support with a plurality of
sample sites which is adapted to standardized sample supports
for ionization with laser desorption;
(b) a highlighting device being located, when a sample
support is inserted in the holder, substantially at an upper side
of the sample support, and being configured to highlight at least
one selected sample site from above, wherein light exiting from
one or more light sources, using respectively associated swivel-
mounted guiding elements, or light from a swivel-mounted
spotlight, is guided across the sample support to the at least one
selected sample site to render it visible to the human eye; and
( c) a control system being configured to select the at least
one sample site to be highlighted by the highlighting device and
to control the highlighting device to highlight the at least one
selected sample site from above.
The Examiner relies on the following prior art references
as evidence of unpatentability:
Busey
Franzen
Reilly
Stevenson
Troche
Ryle
Malik
US 2002/0055179 Al
US 6,670,609 B2
US 2004/0183009 Al
US 2005/0036036 Al
US 2006/0278824 Al
US 2007/0072168 Al
US 2010/0321696 Al
2
May 9, 2002
Dec. 30, 2003
Sept. 23, 2004
Feb. 17,2005
Dec. 14, 2006
Mar. 29, 2007
Dec. 23, 2010
Appeal2017---007549
Application 13/904, 199
THE REJECTIONS 2
1. Claims 8, 9, 11-13, and 20 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Ryle in view of Reilly.
2. Claim 14 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ryle, Reilly, and further in view ofFanzen.
3. Claim 15 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ryle, Reilly, and further in view of Troche.
4. Claims 16-19 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Ryle, Reilly, and further in view of Stevenson.
5. Claims 21and22 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Ryle, Reilly, and further in view of Malik.
ANALYSIS
As a preliminary matter, claim 10 is pending in the application, but is
not rejected, and is therefore not before us for review on appeal. Claim 10 is
discussed in the Advisory Action mailed October 25, 2016 as being objected
to in the record.
We reverse the Examiner's determinations for essentially the reasons
provided in the record by Appellants, and add the following for emphasis.
Rejections 1-5
The Examiner proposes to modify Ryle by implementing the swivel
mounted guiding elements of Reilly. Ans. 2-3. Appellants argue, inter alia,
2 In the Final Office Action mailed July 8, 2016, claims 18 and 19 were
rejected under 35 USC 112, 2nd paragraph, in response to which Appellants
filed an Amendment on October 4, 2016, that was entered which alleviated
this rejection, so this rejection is not included here as it has been withdrawn.
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Appeal2017---007549
Application 13/904, 199
that the laser system of the secondary reference of Reilly is not compatible
with the system of Ryle. Appellants argue that Ryle utilizes illumination
from directly above the sample (Ryle, Figure 2) whereas the Reilly system
directs light at a low angle. Reilly, Figure. 1. Appeal Br. 4. Appellants also
argue that Ryle requires visible highlighting of samples whereas Reilly uses
a non-visible laser system. Appellants submit therefore that motivation is
lacking to employ aspects of the system of Reilly to modify Ryle as
proposed by the Examiner. Appeal Br. 2--4.
With regard to the argument that Ryle utilizes illumination from
directly above the sample (Ryle, Figure 2), whereas the Reilly system directs
light at a low angle, the Examiner responds by stating that it is not the case
that Ryle requires illumination from directly above because Figure 2 of Ryle
depicts what appears to be bellows and a slacked line which would indicate
that there is flexibility to direct light to the wells (212) of the assay plate.
Ans. 4--5.
However, we are in agreement with Appellants' interpretation of this
aspect of Ryle as set forth on pages 2--4 of the Reply Brief. Therein,
Appellants convincingly explain how Ryle's Figure 2 in fact indicates a
cover over the mechanical components of the robotic arm (rather than
bellows as interpreted by the Examiner) and the "slacked line" is "slacked"
because it needs to cover the full extension length of the arm.
We are thus convinced of error in the Examiner's interpretation of
Ryle in this regard. As such, the Examiner's position is not adequately
supported by the evidence relied upon in the record.
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Appeal2017---007549
Application 13/904, 199
In view of the above, we reverse each rejection (the Examiner does
not rely upon any of the other applied references to cure the stated
deficiencies of the combination of Ryle in view of Reilly).
DECISION
Each rejection is reversed.
REVERSED
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