Ex Parte Sharpe et al

Patent Trial and Appeal Board

Feb 20, 2018

14030946 (P.T.A.B. Feb. 20, 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.
14/030,946 09/18/2013 Johnathan Charles Sharpe 118153-05002 8133
106574 7590 02/22/2018
McCarter & English / Cytonome/ST, LLC
265 Franklin St.
Boston, MA 02110
EXAMINER
KWAK, DEAN P
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
02/22/2018 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):
docket @ mccarter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHNATHAN CHARLES SHARPE, RUDOLF HULSPAS,
and KRISTOPHER SCOTT BUCHANAN
Appeal 2017-005705
Application 14/030,946
Technology Center 1700
Before MICHAEL P. COLAIANNI, DONNA M. PRAISS and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 2, 4, 7, 9, 11-13, 15-17, 30, and 31. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM-IN-PART.
Appeal 2017-005705
Application 14/030,946
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A flow cell for processing particles in a stream, comprising:
an enclosed sort chamber including a first plurality of fluid contact
surfaces forming a plurality of regions in fluid communication with one
another, the fluid contact surfaces defining:
a stream focusing region;
an orifice located downstream of the focusing region;
a particle interrogation region located downstream of the orifice; and
a droplet deflection region,
wherein the fluid contact surfaces of the sort chamber are integrally
constructed,
wherein the sort chamber includes at least one surface transmissible to
electromagnetic radiation from an excitation source, and
wherein the flow cell is operatively sealed.
Appellant1 requests review of the Examiner’s rejection of claims 1, 2,
4, 7, 9, 11-13, 15-17, 30, and 31 under 35 U.S.C. § 102(b) as anticipated by
Hall (US 2003/0138967 Al, published July 24, 2003). Final Act. 2; App.
Br. 6.
1 Cytonome/ST, LLC is the Applicant and is also identified as the real party
in interest. App. Br. 2.
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Application 14/030,946
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s prior art rejection of claims 1, 7, 12,
13, 16, 30, and 31 for the reasons presented by the Examiner. However, we
REVERSE the Examiner’s prior art rejection of claims 2, 4, 9, 11, 15, and
17 for the reasons presented by Appellant. We add the following for
emphasis.
As a preliminary matter, we first address Appellant’s argument as to
the interpretation of the language “integrally constructed” in claims 1, 2, and
4. App. Br. 9 (footnote 1); Reply Br. 4-5.
“[Djuring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000)). See also In re Am. Acad. ofSci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in
patent applications is not determined solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction in
light of the specification as it would be interpreted by one of ordinary skill in
the art.) (citations omitted); Phillips v. AWHCorp., 415 F.3d 1303, 1315
(Fed. Cir. 2005) (“[T]he specification ‘is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term.’” (Citation omitted)).
We agree with Appellant that the term “integrally constructed” is to
be interpreted as defined in paragraph 36 of the Specification. App. Br. 9
(footnote 1); Reply Br. 4-5. That is, the language recited in independent
claim 1 “the fluid contact surfaces of the sort chamber are integrally
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Application 14/030,946
constructed” describes fluid contact surfaces that are “in a permanent,
structural relationship as a single unit.” Spec. ^ 36. In addition, we interpret
the term “fluid contact surfaces” in claim 1 as “reservoirs, tubes, chambers,
vessels, nozzles, orifices, fittings and/or other elements which contact and/or
are exposed to fluid in the flow cell.” Spec. ^ 31.
Claims 1, 7, 12, 13, 16, 30, and 31
Wq AFFIRM.
Appellant presents arguments for claims 1,16, 30, and 31. See
generally App. Br. Appellant does not present separate arguments for
claims 7, 12, and 13. Id. We address the claims argued. However, claims 7,
12, and 13 stand or fall with independent claim 1, from which they depend.
Claim 1
Claim 1 is directed to a flow cell comprising an enclosed chamber
including a plurality of fluid contact surfaces integrally constructed.
The Examiner finds Hall discloses a flow cell comprising a sort
chamber 16 having a plurality of fluid contact surfaces integrally constructed
as claimed. Final Act. 2—4; Hall Figure 2, 33^40, 45. We note the fluid
contact surfaces in Hall that contact or are exposed to the fluid are
principally the surfaces of component 2 enclosed by chamber 16 as well as
the internal surfaces of chamber 16. Hall Figure 2.
Appellant argues that Hall does not provide any construction details
for the device in Figure 2 and, thus, fails to disclose that Hall’s item 7 or
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Application 14/030,946
Hall’s item 14 has fluid contact surfaces integrally constructed (or even
"constructed as a whole") with Hall’s item 6 or Hall’s item 2. App. Br. 10.
We are unpersuaded of error for the reasons presented by the
Examiner. Final Act. 2-3. In order to anticipate, a reference must identify
something falling within the claimed subject matter with sufficient
specificity to constitute a description thereof within the purview of § 102. In
re Schaumann, 572 F.2d 312, 317 (CCPA 1978). It is well established that
specific examples of the claimed subject matter are not necessary to
establish anticipation. Rather, to anticipate, one skilled in the art must be
able to “at once envisage” the claimed subject matter in the prior art
disclosure. In re Petering, 301 F.2d 676, 681 (CCPA 1962). Further, in
determining whether a reference anticipates the subject matter recited in a
claim, “it is proper to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826
(CCPA 1968).
Hall’s Figure 2 shows a flow cell having fluid contact surfaces which
contact and/or are exposed to fluid in the flow cell that are in a structural
relationship as a single unit. A person of ordinary skill would have drawn a
reasonable inference from HalFs Figure 2 that the fluid contact surfaces in
Hall’s Figure 2 are in a permanent, structural relationship (that is, integrally
constructed). While Appellant asserts Hall’s Figure 2 is a diagrammatic
representation of the flow cell lacking construction details (App. Br. 10),
Appellant directs us to no portion of Hall or provide any other objective
evidence that supports this assertion. Appellant, at most, has provided mere
attorney arguments and such arguments of counsel cannot take the place of
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Application 14/030,946
evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re
Payne, 606 F.2d 303, 315 (CCPA 1979).
Appellant argues Hall expressly discloses that different models of
flow cytometers from various manufacturers may be accommodated by
enclosure 26. App. Br. 11; Hall ^ 41. According to Appellant, items 2, 6, 7
and 14 of Hall’s device are provided separately and inserted into enclosure
26. App. Br. 11; Hall Figures 2 and 3.
We are also unpersuaded by these arguments for the reasons presented
by the Examiner. Ans. 6. Moreover, Appellant does not adequately explain
why the versatility of enclosure 26 for accommodating different models of
flow cytometers necessarily means a flow cytometer, once selected and
placed in the enclosure, would not result in the fluid contact surfaces being
integrally constructed, as defined in the Specification.
Claim 16
Claim 16 requires the stream focusing region to include a torsional
hydrodynamic focusing region.
The Examiner finds the claimed limitation does not further define a
structure that distinguishes the claim from the device of the prior art. Ans. 7.
According to the Examiner, the Specification defines the claimed “torsional
hydrodynamic focusing region” as a region that applies forces to particles.
Ans. 7; Spec. ^ 74.
Appellant argues that the language of the claim provides a structural
limitation not taught by Hall. App. Br. 15.
We are unpersuaded by this argument for the reasons given by the
Examiner. Ans. 7. Moreover, the Specification describes the torsional
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Application 14/030,946
region as a shape that may gradually taper, linearly or with a curvature, as it
extends downstream. Spec. 75-76. This description relates to a conical
surface labelled as surface 114b on Appellant’s Figure 10C. Hall’s Figure 2
also shows a conical surface on component 2. Thus, even assuming
arguendo that the claim language provides a structural limitation, Appellant
has not adequately explained how the claimed torsional region is
distinguishable over the conical region shown in Hall’s component 2.
Appellant has not explained why the conical region of Hall’s component 2
would not result in a region applying forces to particles.
Claim 30
Claim 30 requires the flow cell to enclose all of the fluid contact
surfaces.
The Examiner finds the claimed limitation does not further define a
structure that distinguishes the claim from the device of the prior art. Ans. 8.
Appellant argues that the language of the claim provides a structural
limitation not taught by Hall. App. Br. 16.
We are unpersuaded by this argument for the reasons given by the
Examiner. Ans. 8. Moreover, assuming arguendo that a structural limitation
is claimed, Appellant has not adequately explained why one skilled in the art
would not have inferred from Hall’s Figure 2 that all fluid contact surfaces
are enclosed by the chamber 16.
Claim 31
With respect to claim 31, the Examiner relies on Hall’s oscillation
generator to meet the claimed limitation. Final Act. 4. Appellant does not
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Application 14/030,946
contest the Examiner’s finding that Hall’s oscillation generator is a surface
acoustic wave generator. See generally App. Br.
Accordingly, we affirm the Examiner’s prior art rejection of claims 1,
7, 12, 13, 16, 30, and 31 for the reasons presented by the Examiner and
given above.
Claims 2, 4, 9, 11, 15, and 17
Wq reverse.
We refer to the Examiner’s Final Action for a statement of the
rejection for the above noted claims. Final Act. 3-5.
With respect to claims 2 and 4, we agree with Appellant that the
Examiner does not point to any portion of Hall that adequately describes or
infers that sample vessel 3 and sheath vessel 5 are integrally constructed as
claimed. App. Br. 12-13; Final Act. 3
With respect to claim 9, we agree with Appellant that the claim
limitation describes a structure to accommodate a transducer. App. Br. 14.
The Examiner does not direct us to any portion of Hall that describes this
feature. See generally Final Act. and Ans. Similarly, we agree with
Appellant that the Examiner does not direct attention to any portion of Hall
that describes the subject matter of claim 15 (flow control mechanism for a
peristaltic pump). App. Br. 14-15; Final Act. 3.
With respect to claims 11 and 17, we also agree with Appellant that
the Examiner does not point to any portions of Hall that describe the
limitations of these claims. App. Br. 14-16; see generally Final Act. and
Ans. In fact, the Examiner’s reliance on paragraphs 71 and 72 for claim 17
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Application 14/030,946
appear to relate to Appellant’s disclosure as there are no such paragraphs in
Hall. Final Act. 4.
Accordingly, we reverse the Examiner’s prior art rejection of claims
2, 4, 9, 11, 15, and 17 for the reasons presented by Appellant and given
above.
ORDER
The Examiner’s prior art rejection of claims 1, 7, 12, 13, 16, 30 and
31 under 35 U.S.C. § 102(b) is affirmed.
The Examiner’s prior art rejection of claims 2, 4, 9, 11, 15, and 17
under 35 U.S.C. § 102(b) is reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART
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