Ex Parte Roback et al

Patent Trial and Appeal Board

Jun 27, 2016

11679581 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111679,581 02/27/2007
24504 7590 06/29/2016
THOMAS I HORSTEMEYER, LLP
400 INTERSTATE NORTH PARKWAY SE
SUITE 1500
ATLANTA, GA 30339
FIRST NAMED INVENTOR
John D. Roback
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.
50508-1032 3785
EXAMINER
HURST, JONATHAN M
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
uspatents@tkhr.com
kristen.layton@tkhr.com
ozzie. liggins@tkhr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte JOHN D. ROBACK, and
CHRISTOPHER D. HILL YER
Appeal2015-000424
Application 11/679,581
Technology Center 1700
Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
LILAN REN, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-000424
Application 11/679,581
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 2, 4--9, 25, 27, 28, 30, and 31. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants' invention is directed to immunologic assay systems and
methods for separating components of immunological and
immunohematological samples (Spec. i-f 1 ). Appellants' system uses a filter
150 comprising a mesh or a membrane of an inert material including a
plurality of pores (claims 1, 25, 30, and 31; Fig. 2).
Claim 1 is illustrative:
1. An immunological assay system, comprising:
a filter vessel having a filter, wherein the filter vessel is
capable of containing an assay sample comprising cellular
components and wherein the filter comprises a mesh or a
membrane of an inert material including a plurality of pores;
an incubator configured to house the filter vessel while the
assay sample and one or more antibody reagents react in an assay
mixture;
a sample separation system adjacent and within reaching
distance of a robotic arm from the incubator, the sample separation
system being configured to house the filter vessel and separate the
cellular components of the assay sample and the antibody reagents
into various reacted components above the filter;
an image acquisition system adjacent and within reaching
distance of a robotic arm from the sample separation system, the
image acquisition system being configured to house the filter
vessel and detect the presence of interactions between the cellular
components and antibody reagents of the assay mixture above the
filter in the filter vessel, the image acquisition system comprising a
camera or a flow cytometer; and
a robotic pipettor including a robotic arm within reaching
distance of the filter vessel, the incubator, the sample separation
system and the image acquisition system, the robotic pipettor being
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Application 11/679,581
configured to transfer the sample or the reagents between the filter
vessel, incubator, the sample separation system.
Appellants appeal the following rejections:
1. Claims 1, 4---6, 8, and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Longoria (US 4,948, 726, issued Aug. 14, 1990) in
view ofYaremko et al., (hereinafter "Yaremko" US 5,620,898, issued
Apr. 15, 1997).
2. Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Longoria in view ofYaremko, and Imai et al., (US 5,543,292, issued
Aug. 6, 1996).
3. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Longoria in view ofYaremko and Brown et al., (US 6,365,731 Bl,
issued Apr. 2, 2002).
4. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Longoria in view ofYaremko, and Franciskovich (US 5,603,899,
issued Feb. 18, 1997).
5. Claims 25 1, 27, and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Longoria in view of Y aremko, and Waggoner (US
5,486,616, issued Jan. 23, 1996).
6. Claim 28 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Longoria in view of Y aremko, Waggoner and Franciskovich.
Appellants do not appeal the Examiner's double patenting rejections
listed on pages 15-21 of the Final Action. In an after-final response,
1 Claims 25 and 31 use means-plus-function language that invokes 35 U.S.C.
§ 112, i-f 6. Appellants do not dispute the Examiner's interpretation of the
structure of the means-plus-function claim language and how the prior art
reads on the construed claim language.
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Application 11/679,581
Appellants indicated that terminal disclaimer would be filed upon indication
of allowable subject matter (After-Final Amd't dated Dec. 17, 2013, 7-8).
Accordingly, the still pending double patenting rejection are summarily
affirmed.
Regarding rejections (1) to (6), Appellants argue subject matter
common to independent claims 1, 25, 30, and 31 (App. Br. 8-18). We select
claim 1 as representative of the group. Any claim not argued separately will
stand or fall with our analysis of the rejection regarding claim 1.
FINDINGS OF FACT & ANALYSIS
Appellants argue that Longoria and Y aremko fail to teach a filter
comprising a mesh or a membrane of an inert material including a plurality
of pores as recited in claim 1 (App. Br. 8). Appellants contend that
Longoria's filter actively binds and adsorbs reacted components on or within
a specially formulated filter paper having unique biochemical and ionic
characteristics whereas the claim only requires passive retention of the
cellular components (App. Br. 8-9). Appellants argue that Longoria's filter
may be made of fiberglass or cellulose, but the fiberglass or cellulose is
treated with binders and fillers to ensure control of pore size, electrostatic
charge and hydrostatic characteristics (App. Br. 9). Appellants contend that
Longoria's filter once treated with the binders and fillers ceases to be inert
and become activated with respect to certain reactants (App. Br. 9-10).
Appellants contend that the Declaration of Dr. John Roback (hereinafter the
"Roback Declaration") establishes that to the ordinarily skilled artisan "inert
material" in the context of the claim means "a filter that is inert with respect
to the reactants [flowing through it]" (App. Br. 10-11). Appellants argue
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that Longoria's filter material electrostatically attracts the reactants and is
not inert to the reactants (App. Br. 11). Appellants argue that Longoria's
teaching to add binders and fillers to affect pore size and the electrostatic
properties of the filter teaches away from having an inert filter that does not
react with the material being filtered (App. Br. 12). Appellants argue that
Longoria's disclosure in column 3, lines 49-54 that the filter may physically
entrap material is not a disclosure of an inert material but rather a disclosure
of physical adsorption of the filtrate to the filter (App. Br. 13-14).
Appellants argue that Longoria fails to teach that the reacted components are
retained above the filter (App. Br. 14).
Appellants' arguments and evidence in the Roback Declaration are
not persuasive because, as found by the Examiner, the proper construction of
claim 1 merely requires that the filter "comprises a mesh or a membrane of
an inert material including a plurality of pores." The language of claim 1
employs the open-ended claim language "comprising" in the recitation of the
filter material. As such, the claims merely require an inert mesh or
membrane comprised of inert material and do not exclude other additional
materials in the filter. Notably, Appellants do not direct us to any portion of
the Specification that defines inert material. The Specification at i-f 28
discloses that the filter may be made of cellulose acetate membrane, which
Appellants consider to be an inert material.
The Examiner finds that Longoria teaches that the filter is comprised
of, inter alia, fiberglass or cellulose material which is an inert material
(Final Act. 3; Advisory Act. 2; Ans. 4). Appellants do not contest that
Longoria's cellulose mesh or membrane is made of an inert material (App.
Br. 8-14). Indeed, the Specification supports the Examiner's finding that
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Longoria's cellulose is an inert material within the meaning of the properly
construed claim. Accordingly, the claims do not exclude Longoria's filter
composed of inert material and binder or filler.
In light of the proper claim construction, Longoria does not teach
away from using an inert material in the filter. Rather, Longoria teaches
using inert material (i.e., fiberglass or cellulose) as part of the filter.
Appellants argue that there would have been no reason to use a filter of an
inert material to passively retain reactants in Longoria's filter (App. Br. 14).
Contrary to Appellants' argument, the claims do not exclude Longoria' s
filter comprised of inert material having binders and fillers. Accordingly, no
modification of Longoria is required to meet the claims.
Appellants' argument that Longoria fails to teach that the reacted
components are retained above the filter is unpersuasive (App. Br. 14). The
Examiner finds that Longoria must have had the material placed above the
filter at some point before filtering (Ans. 5). The Examiner finds that
Longoria's system is capable of having the sample placed above the filter.
Id. The Examiner further finds that Y aremko teaches using filter vessels in
with the placement of materials above the filter such that the combined
teachings of Longoria and Y aremko would have suggested placing the
material to be filtered above the filter (Ans. 5). The Examiner further finds
that the filter material would have had to be placed above the filter in order
to use gravity to assist in the filtration process. Id. Appellants do not contest
specifically these findings.
Appellants do not contest or otherwise show reversible error with
regard to any of the Examiner's§ 103 rejections. On this record and for the
above reasons, we affirm the Examiner's § 103 rejections of record.
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DECISION
The Examiner's decision is affirmed.
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).
ORDER
AFFIRMED
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