Ex Parte Schilffarth et al

Patent Trial and Appeal Board

Mar 27, 2017

11750000 (P.T.A.B. Mar. 27, 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.
11/750,000 05/17/2007 Adam Richard Schilffarth LUMN. P0069US 9293
108120 7590 03/29/2017
Parker Highlander PLLC
1120 S. Capital of Texas Hwy
Bldg 1, Suite 200
Austin, TX 78746
EXAMINER
HASSAN, LIB AN M
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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):
docket @ phiplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM RICHARD SCHILFFARTH, WILLIAM R. DEICHER,
JOHN C. CARRANO, and JESSE C. PHILLIPS
Appeal 2016-000092
Application 11/750,000
Technology Center 1700
Before GEORGE C. BEST, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
February 14, 2014 decision finally rejecting claims 1, 3, 6—9, 11, 12, 29-37, 39,
and 40 (“Final Act.”). We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We reverse.
1 Appellants identify the real party in interest as Luminex Corporation
(Appeal Br. 3).
Appeal 2016-000092
Application 11/750,000
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a portable system for processing and
analyzing biological or environmental samples (Abstract). The portable systems
include an automated assay preparation module which is coupled to an analysis
module (id.). The analysis module includes a chip-based flow cytometer (id.).
Details of the claimed invention are set forth in independent claim 1, as
reproduced below from the Claims Appendix (emphasis added):
1. A portable system for processing and analyzing biological or
environmental samples, comprising:
an automated assay preparation module configured to process a
sample into a fluid assay with fluorescently tagged
particles; and
a microfluidic analysis module coupled to the automated assay
preparation module, wherein the microfluidic analysis
module comprises a chip-based flow cytometer having:
a first input conduit for receiving the fluid assay;
a second distinct conduit for receiving a sheath fluid;
a fluid flow chamber coupled to the first and second input
conduits, wherein the fluid flow chamber is configured
to generate a fluid stream with the fluid assay confined
within the sheath fluid;
a channel coupled to the fluid flow chamber for routing
the fluid stream through the flow cytometer;
an illumination subsystem comprising a light source
system and an optical system collectively configured
to direct light toward an interrogation region of the
channel;
a measurement subsystem comprising:
a collection system comprising collection optics
configured to gather fluorescence emitted from the
fluorescently tagged particles; and
an examination system for analyzing the collected
fluorescence;
wherein the first conduit, second conduit, fluid flow
chamber, channel, and at least some collection optics
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Appeal 2016-000092
Application 11/750,000
of the collection system are fixedly arranged within a
substrate, and
wherein the light source system is configured such that
individual light sources within the light source system
direct light at different spots within the interrogation
region, and wherein the collection system is configured
such that the fluorescent light emitted from the
fluorescently tagged particles at each of the different
spots is collected by a different detector of the
collection system.
REJECTIONS
I. Claims 1,3,6, 8—9, 11—12, 29-34, 36—37 and 39-40 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Kraus2 in view
of Kurabayashi.3
II. Claims 7 and 35 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kraus in view of Kurabayashi, and further in view of
Harju.4
DISCUSSION
Because we decide this appeal based on limitations common to both
independent claim 1 and independent claim 30 and, therefore, common to
each of the claims, we focus our discussion on the rejection of claim 1 over
Kraus in view of Kurabayashi.
A full statement of the rejection is set forth in the Final Action (Final
Act. 2-4). In general, the Examiner finds that Kraus discloses an automated
assay preparation module in combination with a flow cytometer, but “does not
2 Kraus, Jr. et al., US 2003/0186465 Al, published October 2, 2003.
3 Kurabayashi et al., US 2003/0054558 Al, published March 20, 2003.
4 Harju et al., US 5,780,857, issued July 14, 1998.
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Appeal 2016-000092
Application 11/750,000
explicitly disclose a microfluidic analysis module coupled to the automated
assay preparation module wherein the module is a chip-based flow cytometer”
(Final Act. 3). The Examiner then finds that Kurabayashi discloses a chip-
based flow cytometer and detection system, and that it would have been
obvious to use Kurabayashi’s cytometer in the system of Kraus (Final Act. 3—
4).
Appellants argue that even if the combination set forth in the rejection
were made, the resulting system would not meet all of the claimed limitations
(see, generally, Appeal Br. 4—8). In particular, Appellants contend that
Kurabayashi’s flow cytometer does not have a light source system that is:
configured such that individual light sources within the light
source system direct light at different spots within the
interrogation region, and wherein the collection system is
configured such that the fluorescent light emitted from the
fluorescently tagged particles at each of the different spots is
collected by a different detector of the collection system.
(Appeal Br. 5, quoting claim 1, emphasis in original brief). Thus, Appellants
argue, inter alia, that Kurabayashi’s system does not have individual light
sources which direct light at different spots within the interrogation region.
In response, the Examiner finds that Kurabayashi’s system uses fiber
optics as the light impingement and collection systems (Ans. 3, citing
Kurabayashi 128), and that the light impingement optical fibers 81, 82, and
83 are positioned at different angles along the walls of the flow cell channel
containing the interrogation zone, as depicted in the following annotated
version of Kurabayashi’s FIG. 10:
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Appeal 2016-000092
Application 11/750,000
An annotated version of Kurabayashi’s FIG. 10 shows an embodiment of
Kurabayashi’s invention which employs a plurality of fiber optic light
impingement and/or collection paths of a flow cytometer cell or apparatus.
The Examiner finds that “[si]nce the optical fibers [81, 82, and 83] are
positioned and enter the interrogation zone at different angles, the optical
fibers are viewed to direct light at different spots within the interrogation zone
(i.e. at different spots (entrance) on the walls of the interrogation zone)”
Ans. 3). However, as explained by Appellants (Reply Br. 4), the walls of the
interrogation zone of Kurabayashi are not “within the interrogation zone,” as
Kurabayashi explicitly teaches that the sample fluid in its device should be
located in the middle of the channel, away from the walls {id., citing
Kurabayashi || 4, 31).
Thus, we determine that, the preponderance of the evidence of record
supports Appellants’ argument that the Examiner erred in finding that
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Appeal 2016-000092
Application 11/750,000
Kurabayashi discloses a light source system which is configured such that
individual light sources direct lights at different spots with the interrogation
region.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). In this instance, as outlined above, the Examiner has
not adequately established that the cited art would have rendered obvious a
system in which a light source system is configured such that individual light
sources direct lights at different spots with the interrogation region.
Therefore, we reverse the rejection.
CONCEUSION
We REVERSE the rejection of claims 1,3,6, 8—9, 11—12, 29-34, 36—
37 and 39-40 under 35 U.S.C. § 103(a) as being unpatentable over Kraus in
view of Kurabayashi.
We REVERSE the rejection of claims 7 and 35 under 35 U.S.C. § 103(a)
as being unpatentable over Kraus in view of Kurabayashi, and further in view
of Harju.
REVERSED
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