Ex Parte Matthiesen et al

Patent Trial and Appeal Board

Mar 27, 2018

14001714 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/001,714 11/06/2013
22878 7590
Agilent Technologies, Inc.
Global IP Operations
5301 Stevens Creek Blvd
Santa Clara, CA 95051
03/29/2018
FIRST NAMED INVENTOR
Steen Hauge Matthiesen
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.
09138.0140-00000 1072
EXAMINER
BARRON, SEAN C
ART UNIT PAPER NUMBER
1653
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):
IPOPS.LEGAL@agilent.com
Agilentdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEEN HAUGE MATTHIESEN and S0REN NIELSEN
Appeal2017-004681
Application 14/001, 714
Technology Center 1600
Before DEBORAH KATZ, ULRIKE W. JENKS, and JOHN G. NEW,
Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject the claims as obvious. 1 We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants identify Agilent Technologies, Inc. as the real party in interest.
Appeal Br. 3.
Appeal2017-004681
Application 14/001, 714
STATEMENT OF THE CASE
Claims 1--4, 6-10, 12, 13, 17, 18, 20, 32, 35, 50-52 and 54--56 are on
appeal, and can be found in the Claims Appendix of the Appeal Brief.
Claim 1 below is representative of the claims on appeal, and reads as
follows:
1. A method for removing at least a portion of embedding
medium from an embedded biological sample comprising:
placing at least one support having an embedded
biological sample on its surface into a pretreatment container,
adding a carrier composition to the pretreatment
container,
adding to the pretreatment container at least one reagent
forming a layer on the surface of the carrier composition,
increasing the volume of carrier composition in the
pretreatment container, at least until the at least one reagent
forming layer contacts at least a portion of the embedded
biological sample, and
removing at least a portion of the reagent forming layer
by increasing the volume of the carrier composition in the
pretreatment container.
Appeal Br. 10 (Claims Appendix).
The claims stand rejected as follows:
I. Claims 1--4, 6-10, 12, 17, 18, 20, 32, 35, 50, and 54 underpre-AIA
35 U.S.C. § 103(a) as unpatentable over Farmilo. 2 Ans. 3 3-6.
II. Claims 13, 18, 35, 51, 55, and 56 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Farmilo in view ofWinther. 4 Ans.
6-11.
2 Farmilo et al., US 5,695,942, iss. Dec. 9, 1997 ("Farmilo").
3 Examiner Answer mailed January 4, 2017 ("Ans.").
4 Winther et al., US 2009/0155907 Al, pub. June 18, 2009 ("Winther").
2
Appeal2017-004681
Application 14/001, 714
III. Claim 52 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over
Farmilo, Winther in further view of Reinhardt. 5 Ans. 11.
Obviousness over Farmilo
There are three obviousness rejections, and all are premised on the
teachings of Farmilo either alone or in combination with Winther, and
Winther and Reinhardt, so we will discuss them together. See App. Br. 8-9
(Neither Winther nor Reinhardt "remedy the above described deficiencies.").
Does the preponderance of evidence of record support the Examiner's
conclusion that Farmilo's device in its ordinary operation renders the
claimed method obvious?
The Examiner finds that Farmilo teaches an automated device for
immunocytochemical staining of imbedded tissues. See Farmilo, Abstract;
see also Ans. 4. "Farmilo envisions adapting chamber 114 and the entire
apparatus for steps of dewaxing of paraffin and hydration of biological
samples with xylene and alcohols respectively." Ans. 4. The Examiner
acknowledges that Farmilo does not "teach adding a reagent forming a layer
and then adding a carrier composition such that the reagent forming layer is
formed on top of the carrier composition such as to be contacting the
embedded biological sample" or increasing the volume of the carrier so that
"reagent forming layer overflows out of the pretreatment container." Id. at
5. The Examiner concludes that
a person of ordinary skill in the art would have had a reasonable
expectation of success in operating the device of Farmilo to
inject a carrier composition before the reagent wherein the
carrier composition does not contact the biological sample
5 Reinhardt et al., US 7,468,161 B2, issued Dec. 23, 2008 ("Reinhardt").
3
Appeal2017-004681
Application 14/001, 714
using inlet port 68 overflowing to outlet port 70 in Fannilo's
device. A person of ordinary skill in the art would have had a
reasonable expectation of success in operating Farmilo's device
to remove embedding medium because outlet port 70 is higher
than inlet port 60 as shown in Fig. 3, and so incoming organic
solvents and aqueous carrier solutions would necessarily fill
from bottom to top and exit/overflow via outlet port 70. Any
mixed organic-aqueous solutions would necessarily have the
organic phase above or on top of the aqueous phase and so the
organic solvent phase would contact the biological tissue before
the aqueous carrier phase as a mixed organic-aqueous solution
is added from inlet port 68. The skilled artisan would have
been motivated to do because Farmilo envisions adapting the
device to methods of removing embedding media from slides
comprising embedded biological tissues and teaches xylene as a
well-known solvent to dissolve/remove paraffin wax from
biological tissues followed by rehydration with alcohols prior to
any immunohistocytochemical staining.
Ans. 5---6 (emphasis added); see also Final Act. 5-6, (mailed February 19,
2016 ("Final Act.")). According to the Examiner a "prima facie case for
obviousness was established over the ports of Farmilo and the inherent
par[t]itioning of organic and aqueous solvents in any mixed phase solution."
Advisory Act. 2, (mailed April 29, 2016 ("Advisory Act.")).
Appellants contend that the Examiner has not articulated a sufficient
rational based on facts in the record to support the Examiner's conclusion of
obviousness. See Appeal Br. 4--5.
Farmilo teaches an apparatus for staining tissue that "includes reagent
supply means for supplying reagent solutions to the first chamber and
drainage means for draining said reagent solutions from said first chamber."
Farmilo 2:5-8. Figure 3, of Farmilo, reproduced below, shows a clamshell
view of two cells of the apparatus.
4
Appeal2017-004681
Application 14/001, 714
Fig. 3, shown above, is a view of the cell for holding a biologic sample.
"[H]oles 37 and 39 are located along the bottom edge of well 38 and are in
flow communication with tubes 41 and 43 respectively which are attached to
the bottom of cell body 34 for supplying and draining reagents such as wash
buffers to and from the cell." Farmilo 3:8-12. The cell body also has a
heating element.
Interposed between cell body 34 and head portion 50 is a
thermal insulator 54 for thermally insulating the head from the
cell body. Insulator 54 may be fabricated of a plastic such as
nylon or TEFLON®. Channels 60 extend through cell body 34
and a channel 62 extends through cell head 50. Channels 60
and 62 are provided for passing fluid through the cell
components for heating or cooling. Tubes 68 and 70 are
secured to body 34 and head 50 respectively to provide fluid
inlets and outlets. Cell body 34 and head 50 may be heated or
cooled to the same temperature using a common source of
heating fluid or alternatively they may be selectively heated or
cooled using separate sources of fluid because of insulator 54
disposed therebetween.
Farmilo 3:33--45.
On this record, we find that Appellants have the better position. In
formulating the rejection, the Examiner relies on the positions of the inlet
5
Appeal2017-004681
Application 14/001, 714
port 68 and outlet port 70 of Farmilo's device as evidence that an organic
aqueous medium passed over the biologic material using these two ports
would be expected to form two phases (partitioning of solvents) and thereby
the organic phase is expected to touch the embedding medium before the
aqueous solution. See Ans. 4--5; see also Advisory Act. 2. Farmilo teaches
that channels 60 and 62 attach to tubes 70 and 68 that provide for fluid inlet
and outlet for the purpose of heating and cooling the cell block. See Farmilo
3 :33--45. We find no evidence, and the Examiner has not directed us to such
evidence, that these channels and attached tubes are open into the cell
chamber that holds the biologic sample. Therefore, any medium that flows
through these two ports identified by the Examiner would not touch the
biologic medium and thereby not meet the claim limitation of contacting an
embedded biological sample. See Appeal Br. 10, Claims Appendix (Claim 1
"one reagent forming layer contacts at least a portion of the embedded
biological sample.").
Farmilo teaches that "[ o ]ther fluid delivery systems will be readily
apparent to those skilled in the art," however, without more changing the
location of inflow and outflow of the cell chamber would not be obvious. 6
Farmilo 4:45--46. Because we find no evidence that port 68 is open to the
chamber holding the biologic sample we find that the evidence does not
support the Examiner's conclusion that Farmilo teaches a method having all
limitations of independent claim 1 and dependent claims thereto. We, thus,
6 We offer no opinion whether it would have been obvious to the ordinary
artisan to overflow the cell holding the biologic sample by only inflowing
reagents through the bottom holes 37 and 39 of Farmilo's device. See
Farmilo 3:8-12.
6
Appeal2017-004681
Application 14/001, 714
reverse the rejections under 35 U.S.C. § 103(a) that rely on the teachings of
Farmilo.
SUMMARY
We reverse the rejection of all claims.
REVERSED
7