Ex Parte Soini et al

Patent Trial and Appeal Board

Oct 27, 2016

10588861 (P.T.A.B. Oct. 27, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/588,861 05/03/2007 Erkki Soini TUR-185 1995
32954 7590
JAMES C. LYDON
P.O. Box 1406
North Springfield, VA 22151
10/31/2016 EXAMINER
FRITCHMAN, REBECCA M
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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):
j clydon @ starpower.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERKKI SOINI, ALEKSI SOINI, JUHANI SOINI, and
NIKO MELTOLA
Appeal 2014-009942
Application 10/588,861
Technology Center 1700
Before CATHERINE Q. TIMM, BEVERLY A. FRANKLIN, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1—7. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b). An oral hearing was held on October 21,
2016.
Appeal 2014-009942
Application 10/588,861
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below:
1. An in vitro diagnostic method comprising quantification of
a clinical chemistry analyte from a clinical sample wherein the clinical
chemistry analyte
a) undergoes a chemical reaction or reactions with a reagent or
reagents in one or several steps, or in a reaction sequence, or
b) catalyzes a chemical reaction, or reactions, or a reaction in a
reaction sequence of a reagent or reagents, in one or several steps;
in a reaction system, said reaction or reactions or reaction sequence resulting
in a change of a measurable property of a compound or compounds of said
reaction or reactions or reaction sequence wherein
i) said chemical reaction or reactions or reaction sequence results in
• formation of a two-photon fluorescent compound, or
• a change in two-photon fluorescence properties of the reaction
system comprising at least one two-photon fluorescent
compound; and
ii) said analyte is quantified by exciting said two-photon fluorescent
compound or compounds, measuring two-photon excited fluorescence, and
relating said measured fluorescence to method standardization data based on
measurements obtained from reference material of said analyte.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Zarling et al. US 6,537,829 B1 Mar. 25, 2003
(hereafter “Zarling”)
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Appeal 2014-009942
Application 10/588,861
THE REJECTION
Claims 1—7 are rejected under 35 U.S.C. § 103(a) as being obvious
over Zarling.
ANALYSIS
At issue in this appeal is whether the claim term “two-photon
fluorescence” as recited in the claim means simultaneous photon excitation
rather than both simultaneous and sequential photon excitation. On the one
hand, the Examiner believes that this term encompasses both simultaneous
and sequential photon excitation. On the other hand, Appellants submit that
this term means simultaneous photon excitation as defined by their
Specification on page 17. Appeal Br. 8. Reply Br. 1—2. We agree with
Appellants’ stated position for the reasons expressed by Appellants in the
record. Applicants are free to act as their own lexicographers, but any novel
definitions they choose to adopt must be clearly indicated as such. Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) (“[A]
patentee may choose to be his own lexicographer ... as long as the special
definition of the term is clearly stated in the patent specification...”).
Because claim 1 therefore requires simultaneous photon excitation,
we also agree with Appellants that the applied art does not suggest this
limitation for the reasons stated in the record. Appeal Br. 11—12. The
Examiner admits that Zarling teaches sequential photon excitation. Ans. 6.
In view of the above, we reverse the rejection.
DECISION
The rejection is reversed.
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Appeal 2014-009942
Application 10/588,861
ORDER
REVERSED
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