Ex Parte Luoma

Patent Trial and Appeal Board

Aug 12, 2016

12106755 (P.T.A.B. Aug. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/106,755 04/21/2008
15725 7590 08/16/2016
Abbott Laboratories
Dept 0377
Building AP6A-1
100 Abbott Park Road
Abbott Park, IL 60064-6008
FIRST NAMED INVENTOR
Robert Paul Luoma II
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.
6801USD2 8369
EXAMINER
KWAK,DEANP
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
08/16/2016 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):
docketing@hfzlaw.com
patents_abbott_park@abbott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT PAUL LUOMA II
Appeal 2015-001136
Application 12/106,755
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-13 and 15-24 of Application
12/106,755 under 35 U.S.C. § 102(b) as anticipated. Final Act. (Aug. 14,
2013). Appellant 1 seeks reversal of this rejection pursuant to 35 U.S.C.
§ 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
1 Abbott Laboratories is identified as the real party in interest. App. Br. 2.
Appeal 2015-001136
Application 12/106,755
BACKGROUND
The '755 Application describes a sample and reagent handling system
for automatically testing samples in a diagnostic analyzer. Spec. 1: 10-11.
The system includes a transporter configured for moving sample or reagent
carriers from a loading bay to different locations, depending on each
carrier's contents. Id. at 2:27-32. The transporter is configured for random
access to a plurality of carriers in the loading bay to facilitate preemptive
prioritization or retesting of a sample. Id. at 1: 19-20; 2:32-33.
Claim 1 is representative of the '755 Application's claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A carrier handling system for an assay testing diagnostic
analyzer, comprising:
a loading rack comprising a first loading bay and a second
loading bay, each of the first loading bay and the second loading
bay to receive and hold a carrier;
an identification device to identify a feature associated with
the carrier to determine a type of a content loaded on the carrier;
a positioner having an opening to receive the carrier, the
positioner to move the carrier from a first position to a second
position; and
a transporter to move the carrier from the first loading bay or
the second loading bay to a first location or a second location
depending on the type of the content to perform a diagnostic
process using the content, the transporter having random access
to the carrier in the first loading bay and the second loading bay,
the transporter capable of picking up the carrier from the loading
rack, placing the carrier into the loading rack, placing the carrier
onto the positioner, picking up the carrier from the positioner,
presenting the carrier to the identification device, and scanning
the feature to determine the presence of the carrier in a tray or a
slot in the loading rack.
App. Br. 40.
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Appeal 2015-001136
Application 12/106,755
REJECTION
The Examiner finally rejected claims 1-13 and 15-24 under 35 U.S.C.
§ 102(b) as anticipated by Cohen. 2 Final Act. 2 (Aug. 14, 2013).
The Examiner also finally rejected claims 5-8 under 35 U.S.C. § 112,
if 2, as indefinite. Id. According to the Examiner, "[r]egarding claim 5,
[the] recitation 'further comprising a first carrier support that comprises the
first location' is unclear." Id. After entry of the Final Rejection, Appellant
"amended claim 5 to advance prosecution and removed the recitation in
question." App. Br. 15; see Amendment 3 (Nov. 11, 2013). In an Advisory
Action, the Examiner indicated that the Nov. 11, 2013 Amendment would be
entered. Adv. Act. 1 (Nov. 19, 2013). The Examiner's Answer does not
indicate that the final rejection of claims 5-8 under 35 U.S.C. § 112, if 2,
was withdrawn. The Examiner's Answer, however, lists the rejection to
claims 1-13 and 15-24 under 35 U.S.C. § 102(b) as the sole rejection on
appeal. Ans. 2. The Examiner's Answer, furthermore, is only responsive to
Appellant's arguments urging reversal of the anticipation rejection. See
generally id. at 6-12. Accordingly, we regard the amended claims as
overcoming the final rejection of claims 5-8 under 35 U.S.C. § 112, if 2.
Thus, the rejection of claims 5-8 under 35 U.S.C. § 112, if 2, is not before
us.
On appeal, the Examiner maintains the following rejection:
1. Claims 1-13 and 15-24 are rejected under 35 U.S.C. § 102(b)
as anticipated by Cohen. Final Act. 2.
2 EP 0979999 A2, published February 16, 2000.
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Appeal 2015-001136
Application 12/106,755
DISCUSSION
Appellant argues for the reversal of the rejections of dependent claims
7-11, 13, 15-17, 22, and 24 on the basis of limitations present in
independent claim 1. See App. Br. 12-39. We, therefore, limit our analysis
to claim 1 for the rejections of these claims. Accordingly, claims 7-11, 13,
15-17, 22, and 24 will stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv). Appellant separately argues forthe reversal of the
rejections of dependent claims 2-6, 12, 18-21, and 23. See App. Br. 11, 26-
39.
Rejection 1. The Examiner rejected claims 1-13 and 15-24 as
anticipated by Cohen. Final Act. 2. To resolve the appeal of this rejection,
we need only address claim 1.
The Examiner must establish a prima facie case of anticipation under
§ 102 by showing, as a matter of fact, that all elements arranged as specified
in a claims are disclosed within the four comers of a reference, either
expressly or inherently, in a manner enabling one skilled in the art to
practice an embodiment of the claimed invention without undue
experimentation. Clear Value, Inc. v. Pearl River Polymers, Inc., 668 F.3d
1340, 1344 (Fed. Cir. 2012); Sanofi-Synthelabo v. Apotex Inc., 550 F.3d
1075, 1083 (Fed. Cir. 2008). Although it is well established that claims
directed to an apparatus must be distinguished from the prior art in terms of
structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473,
1477-78 (Fed. Cir. 1997), to satisfy the functional limitations in an
apparatus claim, the prior art apparatus must be capable of performing the
claimed function. Id. at 14 78. As such, to establish such capability recited
in claim 1, the Examiner must demonstrate that the prior art carrier handling
system possesses the necessary structure to function as claimed.
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Appeal 2015-001136
Application 12/106,755
Appellant argues, inter alia, that the rejection of claims 1-13 and 15-
24 as anticipated by Cohen should be reversed because the Examiner erred
by finding that Cohen describes a carrier handling system comprising "a
transporter having random access to a carrier in a first loading bay and a
second loading bay." App. Br. 16. In particular, Appellant argues that
Cohen's "infeed tray 120/cross-feed 95/outfeed tray 450 combination cannot
be the transporter recited in claim 1 because none of [these components],
alone or in combination, is structurally designed to have or capable of
having random access to a first loading bay and a second loading bay." See
Reply Br. 4--5 (emphasis in original).
We agree that the Examiner has so erred for the reasons expressed on
pages of 4--9 of the Reply Brief. As Appellant points out, Cohen's "cycling
of the infeed tray 120 moves racks 60[, i.e., "the carrier[s]" (claim 1),]
placed in the infeed 80[, i.e., "the first loading bay" (claim 1 ),] rearward in
the order in which the racks 60 were placed in the infeed 80 for delivery to
the cross-feed 95 .... " Id. at 5 (emphasis m original). Thus, Cohen's cross-
feed 95 does not have random access to any rack 60 placed in infeed 80.
Compare with Spec. 15:27-29 ("[t]he transporter 130 preferably has random
access to any of the sample carriers 126 or reagent carriers 128, regardless of
where they are positioned in the loading bay 120").
Likewise, Appellant demonstrates that the rotation of Cohen's outfeed
tray 450 facilitates the sequential removal of racks 60 from cross-feed 95 to
outfeed 100, i.e., "the second loading bay" (claim 1). Reply Br. 7. Racks 60
are thereby moved frontward in outfeed 100 in the same order in which
racks 60 were placed in infeed 80. See Cohen i-f 76-78. Thus, Cohen's
cross-feed 95 does not have random access to any rack 60 placed in outfeed
100. Compare with Spec. 15:27-29.
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Appeal 2015-001136
Application 12/106,755
Appellant shows, furthermore, that Cohen's infeed tray 120 does not
have access to outfeed 100. Reply Br. 5. Thus, infeed tray 120 does not
have random access to carriers in the second loading bay. Id. Likewise,
Appellant persuasively argues that outfeed tray 450 does not have access to
infeed 80 and, thus, cannot have random access to carriers in the first
loading bay. Id. at 6.
Therefore, the Examiner's finding that Cohen's rack handling system
possesses the necessary structure to have random access to a carrier in a first
loading bay and a second loading bay is erroneous.
CONCLUSION
On the basis of the record before us and for the reasons set forth
above, we reverse the rejection of claims 1-13 and 15-24 of the '755
Application as anticipated by Cohen.
REVERSED
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