Ex Parte Lefebvre et al

Patent Trial and Appeal Board

Mar 30, 2016

11349663 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111349,663 0210712006
8791 7590 03/31/2016
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
Gilles Lefebvre
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.
7705P011X2 9036
EXAMINER
GORDON, BRIAN R
ART UNIT PAPER NUMBER
1798
MAILDATE DELIVERY MODE
03/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GILLES LEFEBVRE and PA TRICK P .JENNINGS
Appeal2014-007133
Application 11/349,663
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4-10 and 32--40. We have jurisdiction under 35 U.S.C. § 6.
Appellants' invention is directed to a method of dispensing reagent.
App. Br. 3-5. Appealed claim 1 is reproduced below:
Appeal2014-007133
Application 11/349,663
1. A method of dispensing reagent, comprising:
determining an inventory of an automated reagent
dispensing system comprising a plurality of stainers, the
determining an inventory comprising retrieving information
from an identifier on at least one slide retaining tray in the
automated reagent dispensing system;
downloading, by the automated reagent dispensing
system, a secondary reagent staining protocol for secondary
reagents from a central controller to the automated reagent
dispensing system;
transmitting the secondary reagent staining protocol to a
manifold controller of the automated reagent dispensing
system;
operating the automated reagent dispensing system to
perform the secondary reagent staining protocol based on a
processing program and independently of the central controller
and independent of additional communication with the central
controller during performance of the secondary reagent staining
protocol, \'I/herein the secondary reagent staining protocol
comprises a staining process to dispense one or more of the
secondary reagents to a sample in the at least one slide retaining
tray;
dispensing at least one of the secondary reagents from a
reagent container into the at least one slide retaining tray
according to the secondary reagent staining protocol;
determining a primary reagent staining protocol for a
primary reagent; and
transmitting the primary reagent staining protocol to the
manifold controller of the automated reagent dispensing
system.
Appellants request review (App. Br. 5---6) of the following
rejections from the Examiner's Final Action:
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Appeal2014-007133
Application 11/349,663
l. Claims 1, 2, 4, 6-10, and 32--40 rejected under pre-AIA 35
U.S.C. § 102(b) as anticipated by or, in the alternative, under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Lemme et al.,
(US 2002/0110494 Al, published August 15, 2002, hereinafter
"Lemme").
II. Claim 5 rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Lemme.
OPINION
Prior Art Rejections1
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner's prior art rejections (Rejections I
and II) for the reasons presented by the Examiner. We add the following for
emphasis.
Claim 1
Independent claim 1 describes an automated process for delivering
secondary reagents to a slide tray through the use of a distinct protocol
downloaded from a central controller (computer) and transmitted to a
manifold controller such that the secondary reagent protocol is performed
without further communication from the central controller.
1 In addressing Rejection I, Appellants argue independent claims 1 and 32
together and presents separate arguments only for dependent claims 6, 7, 36
and 37. See Appeal Brief, generally. In addressing the separate rejection of
claim 5 (Rejection II), Appellants rely on the arguments presented when
discussing independent claim 1. App. Br. 10. Accordingly, we select
independent claim 1 as representative of the subject matter on appeal and
limit our discussion to this claim. The separate arguments presented for
claims 6, 7, 36 and 37 will be addressed separately. However, claims 2, 4, 5,
8-10, 32-35 and 38--40 will stand or fall with independent claim 1.
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Appeal2014-007133
Application 11/349,663
The Examiner found Lemme anticipates the subject matter of
independent claim 1 by disclosing a staining method using a host device 32
and remote device 166 in communication with each other, where the remote
device 166 independently executes a staining program downloaded from the
host device 32. Final Act. 6-7; Lemme Figure 1, i-fi-1240-250.
Appellants argue Lemme discloses a host device and a remote device
operating jointly and, thus, Lemme does not disclose operating the
automated reagent dispensing system independently of the central controller
as recited in claim 1. App. Br. 7; Lemme i-fi-1240-250. According to
Appellants, Lemme discloses communication between the host and remote
devices during staining. App. Br. 7-8; Lemme i1242.
We are unpersuaded by Appellants' arguments and agree with the
Examiner's finding that Lemme describes the remote device 166 performing
the execution of the staining steps independent from the host device 32.
Ans. 9-10; Lemme i-fi-f 112, 240. While Appellants argue that Lemme
discloses communication between the host and remote devices during
staining, Lemme clearly discloses the remote devices 166 perform the
execution of the steps for staining. Lemme i1240. Moreover, Lemme
discloses an operator may repeatedly execute the last run at the touch of a
button 295 that is part of the remote device 166 without requiring the
operator to again download the program from the host device 32. Lemme
Figure 2, i-f 112. Appellants' arguments do not adequately address this
disclosure in Lemme. Furthermore, Appellants have not explained a
patentable distinction between operating the host and remote devices
independently and operating them in communication.
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Appeal2014-007133
Application 11/349,663
Claims 6, 7, 3 6 and 3 7
The subject matter of claims 6 and 36 requires safety measures to
detect hazardous conditions and whether stopping processing of the
processing program upon detection of the hazardous condition. The subject
matter of claims 7 and 37 requires activating at least one evacuation port of
the slide retaining tray.
In addressing the rejection of these claims, Appellants argue Lemme
does not describe the above noted features. App. Br. 9.
We have considered Appellants' arguments with respect to these
claims and are unpersuaded. With respect to claims 6 and 36, the Examiner
found Lemme describes a system capable of making, sending and receiving
error notifications such that a run is stopped automatically upon detection of
a given condition. Ans. 11-12; Lemme i-fi-f 112, 118. With respect to claims
7 and 37, the Examiner found Lemme describes activating an evacuation
port (outlet tube) by sliding the carousel slide tray. Ans. 12; Lemme i-f 103.
Appellants have not adequately distinguished the subject matter of claims 6,
7, 36 and 37 from this disclosure in Lemme.
Accordingly, we affirm the Examiner's prior art rejection of claims 1,
2, 4, 6-10 and 32--40 under 35 U.S.C. § 102 (b) (Rejection I) for the reasons
presented by the Examiner and given above.
Because anticipation is the epitome of obviousness, we also sustain
the Examiner's prior art rejections under 35 U.S.C. § 103 (Rejections I and
II). See In re Baxter Travenol Laboratories, 952, F.2d 388, 391 (Fed. Cir.
1991 ); In re Fracalossi, 681 F .2d 792, 794, (CCP A 1982).
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Appeal2014-007133
Application 11/349,663
ORDER
The Examiner's prior art rejections of claims 1, 2, 4, 6-10 and 32--40
under 35 U.S.C. §§ 102 (b) and 103(a) are affirmed.
The Examiner's prior art rejection of claim 5 under 35 U.S.C.
§ 103(a) is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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