Ex Parte Selker et al

Patent Trial and Appeal Board

Feb 27, 2018

13506585 (P.T.A.B. Feb. 27, 2018)

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.
13/506,585 04/30/2012 Mark Selker FNSSP019 7125
22434 7590 03/01/2018
Weaver Austin Villeneuve & Sampson LLP
P.O. BOX 70250
OAKLAND, CA 94612-0250
EXAMINER
AHMED, JAMIL
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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):
USPTO@wavsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK SELKER and BARBARA PALDUS1
Appeal 2016-006549
Application 13/506,5852
Technology Center 2800
Before CATHERINE Q. TIMM, JEFFREY T. SMITH,
and MICHAEL G. McMANUS, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Non-Final
Rejection of pending claims 1-14 and 16^12, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Mark Selker and Barbara Paldus are the named inventors of the present
application.
2 According to Appellants, the real party in interest is Finesse Solutions, Inc.
See App. Br. 3.
Appeal 2016-006549
Application 13/506,585
Appellants’ appealed invention relates to “[a]n analyzer system for
determining the identity and concentration of at least one target analyte
present in a liquid sample from a bioprocess utilizing anti-Stokes Raman
optical scattering effect.” (Spec. 13). Representative claim 1 is reproduced
from the Claims Appendix to the principal Brief:
1. An analyzer system for determining the identity and
concentration of at least one target analyte present in a liquid
sample from a bioprocess utilizing anti-Stokes Raman optical
scattering effect, said analyzer system comprising:
i) a laser light source emitting light having a wavelength in the
ultraviolet to near infrared spectral region which generates
Raman anti-Stokes emissions when incident on said analyte;
ii) a hollow core photonic band-gap fiber optically connected to
said light source, said fiber including a first inlet configured to
permit introduction of an analyte containing the liquid sample
from the bioprocess into the fiber;
iii) a plurality of reference calibrants comprising multiple
analytes and/or multiple concentrations of analyte
corresponding to an analyte in the sample;
iv) a second inlet permitting introduction of said calibrant into
the fiber;
v) a spectral analysis system optically coupled to said fiber and
configured to (i) detect and measure spontaneously scattered
Raman-shifted anti-Stokes emission signals received from said
fiber and to derive the Raman anti-Stokes spectral peaks and/or
spectra of said calibrants and said target analyte present in the
liquid sample, and to utilize the amplitudes of spontaneously
scattered Raman-shifted anti-Stokes spectral peaks and/or
spectra of the plurality of calibrants and the target analyte in
univariate analysis to thereby quantitatively yield the
concentration of the target analyte in the liquid sample, and (ii)
use the spontaneously scattered Raman-shifted anti-Stokes
spectral peaks and/or spectra of the plurality of calibrants to
establish a baseline response of the analysis system to account
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Appeal 2016-006549
Application 13/506,585
for cross sensitivities or spectral peak overlaps of analytes in
the liquid sample; and
vi) an outlet for expelling the analyte and/or a plurality of
calibrants from the fiber.
Appellants (see generally App. Br.) request review of the following
rejections:
I. Claims 1, 2, 5, 6, 9-11, 14, 16, 18, 26, 27, 30, 32, 34, 35,
and 37-42 are rejected under 35 U.S.C. § 103(a) obvious
over Chen (US 2010/0007876) in view of Ozaki (US
5,870,188) in view of Ramasubramanyan (US
2012/0123688) and in view of Petricoin (US
2010/0203549).
II. Claims 22-25 are rejected under 35 U.S.C. § 103(a) obvious
over Chen in view of Ozaki and Ramasubramanyan and
Petricoin and further in view of Selker (US 2012/0244609).
III. Claims 3, 4, and 33 are rejected under 35 U.S.C. § 103(a)
obvious over Chen in view of Ozaki and Ramasubramanyan
and Petricoin and further in view of Loebig (US
2011/0299065).
IV. Claims 7, 8, and 21 are rejected under 35 U.S.C. § 103(a) as
obvious over Chen in view of Ozaki and Ramasubramanyan
and Petricoin and further in view of Toumbas (US
2012/0135405).
V. Claims 12, 13, 17, 19, 20, 29, and 36 are rejected under
35 U.S.C. § 103(a) as obvious over Chen in view of Ozaki
and Ramasubramanyan and Petricoin and further in view of
Roberts (US 2011/0267612).
VI. Claim 28 is rejected under 35 U.S.C. § 103(a) as obvious
over Chen in view of Ozaki and Ramasubramanyan and
Petricoin and further in view of Tarn (US 2009/0252452).
VII. Claim 31 is rejected under 35 U.S.C. § 103(a) as obvious
over Chen in view of Ozaki and Ramasubramanyan and
Petricoin and further in view of Zeng (US 2003/0231305).
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Appeal 2016-006549
Application 13/506,585
OPINION3
After consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine Appellants have identified reversible error in the appealed
rejections.
Claims 1 and 18
The Examiner erred in the determination that Smith teaches a second
cover that is “movable from a first position where the second cover is
removably attached to and covers a portion of the container to a second
position where the second cover no longer covers the portion of the
container” as required by independent claims 1 and 18.4
The Examiner found Chen teaches an analyzer system for determining
the identity and concentration of at least one target analyte present in a
liquid. The Examiner found Chen discloses all the features of the claimed
invention except: (1) a system utilizing anti-Stokes Raman optical scattering
effect (2) a plurality of reference calibrants comprising multiple analytes
corresponding to an analyte in the sample; (3) a second inlet permitting
introduction of said calibrant into the fiber; (4) receiving spontaneously
scattered Raman-shifted anti-Stokes emission signals; and (5) using the
spontaneously scattered Raman-shifted anti-Stokes spectral peaks and/or
spectra of the plurality of calibrants to establish a baseline response of the
analysis system to account for cross sensitivities or spectral peak overlaps of
analytes in the liquid sample. (Non-Final Act. 4). For these differences the
3 We limit our discussion to independent claims 1 and 18.
4 The complete statement of the rejections on appeal appears in the Non-
Final Office Action. (Non-Final Act. 3-23).
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Appeal 2016-006549
Application 13/506,585
Examiner relies on Ozaki for teaching anti-Stokes Raman optical scattering
effect and both Ramasubramanyan and Petricoin for teaching a plurality of
calibrants. The Examiner determined it was obvious matter of design choice
to use second inlet. (Non Final Act. 4-7).
Appellants argue the Examiner does not explain how Ozaki’s Raman
anti-Stokes detection system could be combined with Chen’s system.
Appellants argue Ozaki’s system utilizes “a flow cell used to reflect an
incident beam multiple times to generate anti-Stokes scattering thus, the
combination of Chen and Ozaki is not physically or logically appropriate.
(App. Br. 22-23).
We agree with Appellants that the Examiner’s rejection of
independent claims 1 and 18 is not well-founded. Appellants argue Ozaki
detects anti-Stokes signals by utilizing multiple reflections produced using a
firee-space capture mechanism which is not interchangeable with Chen’s
hollow-core wave-guiding mechanism. (App. Br. 22-23; Reply Br. 2-3).
We agree with Appellants that the Chen system involves detecting primarily
homonuclear diatomic molecules by transmitting light from a light source
through a hollow-core wave-guiding device, introducing a gaseous medium
between the light source and the hollow-core wave-guiding device, and
detecting molecules within the gas. (See Chen Figure 4). On the other hand
the Ozaki system is a free-space optical system that requires the use of a
sphere-type cell holder to generate multiple reflected beams to provide anti-
Stokes signal of sufficient magnitude for detection and measurement. (See
Ozaki Col. 11, Fig. 8). These two systems are entirely different and not
interchangeable with each other. (Reply Br. 4-5).
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Appeal 2016-006549
Application 13/506,585
The Examiner has not directed us to an adequate basis for combining
the teachings of Chen and Ozaki as proposed. Accordingly, we reverse the
rejection of independent claims 1 and 18.5
Accordingly, for the foregoing reasons we reverse the Examiner’s
decision to reject claims 1-14 and 16^12.
DECISION
The Appealed rejections of claims 1-14 and 16^12 are reversed.
REVERSED
5 The additional reference relied upon by the Examiner in the obviousness
rejections were cited to address limitations of the dependent claims that are
not related to our discussion of the independent claims.
6