Ex Parte Raiker et al

Patent Trial and Appeal Board

Jul 25, 2018

14418497 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/418,497 01/30/2015 Anil Shivram Raiker
24737 7590 07/27/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2012P01437WOUS 7847
EXAMINER
TURK,NEILN
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
07/27/2018 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):
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 ANIL SHIVRAM RAIKER, RA VINDRA BHAT,
and SHRUTIN ULMAN
Appeal2017-009596
Application 14/418,497
Technology Center 1700
Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
LILAN REN, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicant (hereinafter "Appellant") 1 appeals under 35 U.S.C.
§ 134(a) from the Primary Examiner's final decision to reject claims 1-15.2
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 The Appellant is the Applicant, "Koninklijke Philips Electronics N.V.,"
which, according to the Brief, is the real party in interest ( Appeal Brief filed
January 23, 2017 (hereinafter "Appeal Br.") 2).
2 Appeal Br. 5, 7-11; Reply Brief filed July 5, 2017 (hereinafter "Reply
Br.") 2-6; Final Office Action entered July 15, 2016 (hereinafter "Final
Act.") 3-10; Examiner's Answer entered May 8, 2017 (hereinafter "Ans.")
2-7.
Appeal2017-009596
Application 14/418,497
I. BACKGROUND
The subject matter on appeal relates to a system and method for
separating plasma and/or serum from blood, wherein the system includes an
analysis port for holding a quantity of plasma and/or serum to be analyzed
(Specification filed January 30, 2015 (hereinafter "Spec.") 1. 11. 3--4).
According to the Inventors, the analysis port is configured to provide an
optical path for radiation to pass through the plasma and/or serum during
analysis (id. at 2, 11. 5-7).
Figure 1, which is reproduced below from the Drawings filed January
30, 2015, is illustrative:
.lOG
FIG, 1
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Application 14/418,497
Figure 1 above depicts a partially exploded view of a system 10 in
accordance with the invention, wherein the system 10 includes, inter alia, a
cartridge body 12, a filter 14 with an entry side 30 and an exit side 32, a
plasma and/or serum pathway 16, an analysis port 18 for analyzing bilirubin
level, a negative pressure source 20, and a suction connector port 22, such
that, in one embodiment, filtered blood plasma and/or serum is
communicated from a serum pit 40 to the analysis port 18, which is provided
with an optical path window 52 for passing optical radiation from a
spectrometer (id. at 4, 1. 12-9, 1. 22).
Representative claims 1, 6, and 11, which are broader in scope than
Figure 1 above, are reproduced from the Claims Appendix to the Appeal
Brief (Appeal Br. 13-17), with key limitations emphasized, as follows:
1. A system for separating plasma and/or serum from
blood, the plasma and/or serum separation system comprising:
a filter configured to separate blood plasma and/or serum
from a quantity of blood, wherein the filter has an entry side and
an exit side;
a serum pathway configured to collect the separated blood
plasma and/or serum at the exit side of the filter;
an analysis port disposed in the serum pathway,
configured to hold a quantity of plasma and/or serum during a
plasma and/or serum analysis, wherein the analysis port is
further configured to provide an optical path for radiation to
pass through the plasma and/or serum during the plasma
and/or serum analysis; and
a pressure source configured to communicate with the
serum pathway such that at least a portion of the blood plasma
and/or serum on the exit side of the filter is directed into the
analysis port.
6. A method for separating plasma and/or serum from
blood with a plasma and/or serum separation system, the plasma
and/or serum separation system comprising a filter, a serum
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Application 14/418,497
pathway, an analysis port, and a pressure source, the method
compnsmg:
separating blood plasma and/or serum from a quantity of
blood with the filter, wherein the filter has an entry side and an
exit side;
collecting the separated blood plasma and/or serum at the
exit side of the filter with the serum pathway;
holding a quantity of plasma and/or serum during a
plasma and/or serum analysis with the analysis port, wherein
the analysis port is disposed in the serum pathway, and wherein
the analysis port is further configured to provide an optical
path for radiation to pass through the plasma and/or serum
during the plasma and/or serum analysis; and
generating a pressure, with the pressure source, in the
serum pathway such that at least a portion of the blood plasma
and/or serum on the exit side of the filter is directed into the
analysis port by the combined forces of pressure and capillary
forces.
11. A system for separating plasma and/or serum from
blood, the plasma and/or serum separation system comprising:
means to separate blood plasma and/or serum from a
quantity of blood, wherein the means to separate has an entry
side and an exit side;
means to convey blood plasma and/or serum, the means to
convey configured collect the separated blood plasma and/or
serum at the exit side of the means to separate;
means disposed in the means to convey, to hold a
quantity of plasma and/or serum during a plasma and/or serum
analysis, wherein the means to hold is further configured to
provide an optical path for radiation to pass through the plasma
and/or serum during the plasma and/or serum analysis; and
means to generate a pressure in the means to convey, the
means to generate configured to communicate with the means to
convey such that at least a portion of the blood plasma and/or
serum on the exit side of the means to separate is directed into
the means to hold.
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Appeal2017-009596
Application 14/418,497
II. REJECTION ON APPEAL
On appeal, the Examiner maintains a rejection under pre-AIA 35
U.S.C. § 102(b) entered against claims 1-15 as anticipated by Kitajima et
al. 3 (hereinafter "Ki ta j ima") (Ans. 2-3, 4--7; Final Act. 3--4, 6-10). 4
III. DISCUSSION
The Appellant's arguments focus only on independent claims 1, 6, and
11 ( Appeal Br. 7-11 ). Therefore, all other claims stand or fall with their
respective base claims. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Kitajima describes a blood filter unit
including every limitation recited in claims 1, 6, and 11 (Ans. 2-3).
Regarding the disputed claim limitations highlighted above in reproduced
representative claims 1, 6 and 11, the Examiner finds that: (1) Kitajima's
pent-roof 56 as shown, e.g., in Figure 7 is structurally indistinguishable from
the Inventors' analysis port; and (2) Kitajima's holder body 40's material
may be transparent and, therefore, would permit the passage of photons or
radiation to any plasma or serum contained in pent-roof 56 (Ans. 2-3, 5---6).
The Appellant contends that Kitajima does not anticipate because
Kitajima's pent-roof56 "is used not to hold plasma, but to restrain it from
spouting upward under pressure" and "[ t ]here is nothing at all that would
allow this opening [in the pent-roof 56] to hold plasma rather than simply
allow it to flow through, and it is not even 'capable of' much less 'adapted
3 US 5,979,669, issued November 9, 1999.
4 The Examiner states that a final rejection under 35 U.S.C. § 112, ,r 2, of
claims 6-10 has been withdrawn in view of the Appellant's arguments in the
Appeal Brief (Ans. 3--4).
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Appeal2017-009596
Application 14/418,497
to' hold plasma during analysis" (Appeal Br. 9). Furthermore, the Appellant
argues that "[a] holder body comprising transparent material is not the same
as an analysis port that is configured to provide an optical path for radiation
to pass through the plasma and/or serum during a plasma and/or serum
analysis" (id. at 10).
The Appellant's arguments fail to identify any reversible error in the
Examiner's rejection as to system claims 1 and 11. In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011).
"A patent applicant is free to recite features of an apparatus either
structurally or functionally ... Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk." In re Schreiber, 128
F.3d 1473, 1478 (Fed. Cir. 1997). Where the PTO provides a reasonable
basis to believe that the functional limitation asserted to be critical for
establishing novelty is an inherent characteristic of the prior art, it possesses
the authority to require the applicant to prove that the subject matter shown
in the prior art does not possess the functional characteristic recited in the
claim at issue. Id.
Applying this principle, we discern no reversible error in the
Examiner's rejection of the system (i.e., apparatus) claims. Kitajima's
Figure 7 (annotations added) is reproduced as follows:
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Appeal2017-009596
Application 14/418,497
FIG. 7
43 fh:::l<;lB
...,
42 C~t'(.j{:: p!6t~?. p;):ii•)n
Kitajima's Figure 7 above depicts a longitudinal section of a blood filter unit
capable of separating plasma or serum from blood including, inter alia, a
holder body 40, a filter chamber 41 with blood filtering material 30, a
plasma or serum passage 54, a pent-roof 56, a plasma or serum receiver 52,
and a suction port 58 (Kitajima col. 1, 11. 34--37; col. 2, 11. 8-10, 33-53).
Kitajima teaches that the pent-roof 56 is designed to "prevent spouting
upward of discharged plasma ... at the top of the plasma passage 54 in the
horizontal direction" (id. at col. 12, 1. 62---col. 13, 1. 5). Furthermore,
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Application 14/418,497
Kitajima teaches that the material for holder body 40 may be transparent (id.
at col. 9, 11. 55-59).
Thus, although Kitajima discloses a different analytical method than
that disclosed in the Specification (id. at col. 12, 11. 5-7 ("The upper end of
the holder body is opened, and it becomes a suction port 18 when connected
to an analyzer (not illustrate[ d])"), it would reasonably appear that
Kitajima's opening defined by pent-roof 56 would be capable of holding a
quantity of plasma or serum that may be radiated with photons from an
analyzer through the transparent holder body 40. The Appellant does not
direct us to any evidence to the contrary. In this regard, Kitajima's opening
defined by plasma passage 54 and pent-roof 56 (viewed when the blood
filter unit as shown in Figure 7 is re-oriented 90° clockwise) is structurally
indistinguishable from the Inventors' analysis port 18 as specified in the
system claims and as shown in Figure 1 of the current application.
The Appellant's argument that "[a] holder body comprising
transparent material is not the same as an analysis port that is configured to
provide an optical path for radiation to pass through the plasma and/or serum
during a plasma and/or serum analysis" (Appeal Br. 10) is not well taken.
Claim 1, for example, merely requires that the analysis port is "configured to
provide an optical path for radiation to pass through the plasma and/or serum
during the plasma and/or serum analysis" and fails to distinguish over what
is disclosed in Kitajima.
For these reasons, we uphold the Examiner's rejection as entered
against system claims 1 and 11 (as well as all claims dependent thereon).
The rejection as entered against method claim 6 stands on a different
footing. Claim 6 explicitly requires "holding a quantity of plasma and/or
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Application 14/418,497
serum during a plasma and/or serum analysis with the analysis port" (Appeal
Br. 15). The Examiner does not direct us to any disclosure in Kitajima that
describes----either explicitly or inherently-holding a quantity of plasma
and/or serum during analysis as required by the claim. Merely asserting that
Kitajima "does not preclude the given structure of the pent roof from also
being configured to hold a quantity of plasma and/or serum and provide an
optical path" (Ans. 5) is insufficient.
Therefore, we cannot uphold the Examiner's rejection as entered
against method claims 6-10.
IV. SUMMARY
The Examiner's rejection under 35 U.S.C. § 102(b) of claims 1-15 as
anticipated by Kitajima is affirmed as to claims 1-5 and 11-15 but reversed
as to claims 6-10. Therefore, the Examiner's final decision to reject claims
1-15 is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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