Ex Parte Neijzen et al

Patent Trial and Appeal Board

Oct 25, 2017

14355462 (P.T.A.B. Oct. 25, 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.
14/355,462 04/30/2014 Jacobus Hermanus Maria Neijzen 2011P01215WOUS 5692
24737 7590 10/27/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue SIEFKE, SAMUEL P
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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):
patti. demichele @ Philips, com
marianne. fox @ philips, com
katelyn.mulroy @philips .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACOBUS HERMANUS MARIA NEIJZEN and
WENDY UYEN DITTMER
Applicant: KONINKLIJKE PHILIPS N.V.1
Appeal 2017-002149
Application 14/355,462
Technology Center 1700
Before: CHUNG K. PAK, AVELYN M. ROSS, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant requests our review under 35 U.S.C. § 134(a) of a final
rejection of claims 6, 7, 15, and 19—212. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Appellant claims a sensor apparatus for optical examination of a
1 The real party in interest, KONINKLIJKE PHILIPS N.V., is the Applicant,
and thus the Appellant. Appeal Brief filed February 15, 2016 (“App. Br.”),
1.
2 Claims 3—5, 8—10, 12—14, 16—18, and 22 stand withdrawn from
consideration. Final Office Action entered July 16, 2015 (“Final Act.”), 2.
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Application 14/355,462
sample. App. Br. 3. Claim 6 illustrates the subject matter on appeal and is
reproduced below, with contested limitations italicized:
6. A sensor apparatus for optical examination of a
sample, comprising:
a cartridge including a first sample chamber and a
second sample chamber;
at least one light source configured to irradiate the
first sample chamber with a first input light beam and the
second sample chamber with a second input light beam;
wherein the first sample chamber and a direction
of the first input light beam are configured such that the
first input light beam is reflected from the first sample
chamber by total internal reflection to form a first output
light beam;
wherein the second sample chamber is configured
to reflect the second input light beam from an interior of
the second sample chamber to form a second output light
beam;
a light detector configured to convert light
received on a single image plane into an electrical signal
for analysis by an analysis unit;
at least one optical element configured to direct the
first output light beam and the second output light beam
to said single light detection surface such that the first
output light beam and the second output light beam are
detected with the same light detector.
App. Br. 11 (Claims Appendix) (emphasis added).
The Examiner sets forth the rejection of claims 6, 7, 15, and 19—21
under 35 U.S.C. § 102(b) as anticipated by Archibald et al. (US
2003/0175160 Al, published September 18, 2003) in the Final Office Action,
and maintains the rejection in the Answer entered September 23, 2016.
DISCUSSION
Upon consideration of the evidence relied-upon in this appeal and the
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Application 14/355,462
respective positions of the Examiner and Appellant, we do not sustain the
Examiner’s rejection of claims 6, 7, 15, and 19—21 under 35 U.S.C. § 102(b)
for the reasons set forth in the Appeal Brief and below.
We decide this appeal based on independent claim 6 because the
remaining rejected claims include all the limitations of claim 6.3 As set forth
above, claim 6 requires a sensor apparatus for optical examination of a
sample to comprise a cartridge that includes a first sample chamber and a
second sample chamber, and at least one light source configured to irradiate
the first sample chamber with a first input light beam and the second sample
chamber with a second input light beam. Claim 6 further requires the first
sample chamber to be configured such that the first input light beam is
reflected from the first sample chamber by total internal reflection, and
requires second sample chamber to be configured to reflect the second input
light beam from an interior of the second sample chamber.
According to the Examiner, under the broadest reasonable
interpretation, the word “reflect” recited in claim 6 in connection with the
second sample chamber encompasses total internal reflection (as recited in
claim 6 in connection with the first chamber). Ans. 4—5, 8—9. The Examiner
finds that Archibald discloses a sensor apparatus in which a prism directs a
plurality of parallel light beams towards individual sample chambers, where
total internal reflection off the surfaces of the samples occurs. Ans. 4 (citing
Archibald Fig. 4). The Examiner finds that Archibald defines “total internal
reflection” as occurring at an interface where a transparent optical structure,
such as a sample well, contacts a sample. Ans. 4, 8—9 (citing Archibald
3 Independent claim 19 recites all the limitations of claim 6 and recites an
additional limitation not included in claim 6.
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1109). The Examiner finds that, “[i]n other words the interior surface [of a
sample well] that contacts the sample is where the reflection occurs and this
is the same surface claim 6 speaks of in the second sample chamber.” Ans.
4, 8. The Examiner thus takes the position that Archibald’s disclosure of
total internal reflection occurring at an interface where a sample well
contacts a sample meets the limitation in claim 6 of reflection of an input
light beam from a first sample chamber by total internal reflection, and also
meets the limitation in claim 6 of reflection of an input light beam from an
interior of a second sample chamber.
However, Appellant’s Specification discloses that total internal
reflection takes place at a detection surface of a first sample chamber to
produce a first output light beam, and a second output light beam “comes
from the interior of the inspectable [second] chamber.” Spec. 2,11. 8—11,
21—22; 3,11. 3—9, 13—15 (emphasis added). Appellant’s Specification also
discloses that input light beams “must be totally internally reflected at the
TIR [total internal reflection or first] chamber and enter the inspectable
[second] chamber.” Spec. 6,11. 19—21 (emphasis added). Therefore,
according to Appellant’s Specification, total internal reflection of a first
input light beam takes place at the surface (detection surface) of a first
sample chamber to produce a first output light beam, whereas a second input
light beam enters a second chamber to produce a second output light from
the interior of the second chamber.
Although the Examiner interprets the word “reflect” recited in claim 6
in connection with the second sample chamber as encompassing total
internal reflection, Appellant’s Specification makes clear that input light
beams enter the interior of the second sample chamber, while total internal
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reflection occurs at the surface of the first sample chamber. Appellant’s
Specification thus distinguishes total internal reflection of an input light
beam at the surface of a first sample chamber from reflection of an input
light beam from the interior of a second sample chamber. The Examiner’s
interpretation of claim 6 is inconsistent with these disclosures in Appellant’s
Specification, and is therefore unduly broad. In re Morris, 127 F.3d 1048,
1054—55 (Fed. Cir. 1997) (“While the Board must give the terms their
broadest reasonable construction, the construction cannot be divorced from
the specification and the record evidence.”); In re Smith Int’l, Inc., 871 F.3d
1375, 1382—83 (Fed. Cir. 2017) (“The correct inquiry in giving a claim term
its broadest reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad reading of the
claim term adopted by the examiner. And it is not simply an interpretation
that is not inconsistent with the specification. It is an interpretation that
corresponds with what and how the inventor describes his invention in the
specification, i.e., an interpretation that is ‘consistent with the
specification.’” (quoting Morris, 127 F.3d at 1054)).
Contrary to the Examiner’s assertions, Archibald’s disclosure of total
internal reflection occurring at an interface where a transparent optical
structure, such as a sample well, contacts a sample, does not correspond to a
(second) sample chamber configured to reflect an input light beam from an
interior of the sample chamber, as recited in claim 6. It follows that the
Examiner does not establish that Archibald discloses all of the features
recited in claim 6, and we accordingly do not sustain the Examiner’s
rejection of claims 6, 7, 15, and 19—21 under 35 U.S.C. § 102(b) as
anticipated by Archibald.
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DECISION
In view of the reasons set forth above and in the Appeal Brief, we
reverse the Examiner’s rejection of claims 6, 7, 15, and 19—21 under 35
U.S.C. § 102(b).
REVERSED
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