Ex Parte TAMAOKI et al

Patent Trial and Appeal Board

Nov 30, 2018

14339092 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/339,092 07/23/2014
23850 7590 11/30/2018
KRATZ, QUINTOS & HANSON, LLP
1420 K Street, N.W.
4th Floor
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
Yuichi TAMAOKI
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.
080385A 1074
EXAMINER
PRAKASH, GAUTAM
ART UNIT PAPER NUMBER
1799
MAIL DATE DELIVERY MODE
11/30/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUICHI TAMAOKI,
AKIFUMI IW AMA, and Y ASUAKI SONODA
Appeal2018-000189
Application 14/339,092
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 7-9 of Application 14/339,092
under 35 U.S.C. § 103(a) as obvious. Final Act. 2-3 (May 20, 2016).
Appellants 1 seek reversal of the rejection pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b ).
For the reasons set forth below, we affirm.
1 Appellants identified Panasonic Healthcare Holdings Co., Ltd. as the
applicant and the real party in interest. Br. 2.
Appeal2018-000189
Application 14/339,092
BACKGROUND
The technical background relates to an apparatus for real-time
detection of a polynucleotide product obtained from a polymerase chain
reaction. Spec. ,r 1.
Claim 7 is representative of the '092 Application's claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
7. A method for detecting fluorescence strength from a
nucleic acid amplification product in real time in each of a
plurality of reaction regions in a reaction vessel undergoing
temperature cycling, comprising the steps of:
after a temperature cycle, detecting using an optical
system fluorescence measurement values [DNA ]raw from each
of the reaction regions in the reaction vessel separately and a
fluorescence measurement value [DNA ]bg, which occurs due to
errors or contamination of the optical system or way-out light
for regions other than the reaction region adjacent to each of the
reaction regions in the reaction vessel, and
subtracting the fluorescence measurement value
[DNA ]bg from the fluorescence measurement value [DNA ]raw
every time the fluorescence measurement value [DNA ]raw is
detected for each of the reaction regions separately to determine
fluorescence strength [DNA ]real of each of the reaction
reg10ns.
Br. 12.
REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 7-9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Leaback. 2 Final Act. 2; Answer 2.
2 US 5,096,807, issued Mar. 17, 1992.
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Application 14/339,092
DISCUSSION
Rejection 1. Appellants argue for the reversal of the obviousness
rejection of claims 7-9 on the basis of limitations present in independent
claim 7. See Br. 6-11. We select claim 7 as representative. Claims 8 and 9
will stand or fall with independent claim 7. 37 C.F.R. § 4I.37(c)(l)(iv). We
address Appellants' arguments regarding claim 7 seriatim.
Appellants argue that the rejection of claim 7 as unpatentable over
over Leaback should be reversed because: (1) Leaback discloses only a
single background fluorescence measurement for multiple reaction regions,
but does not disclose that such a measurement is taken adjacent to each
sample area, Br. 9-10; (2) there is no motivation to modify Leaback's
method for background noise reduction given the differences between the
sources of background noise, namely Leaback' s non-specific immunoassay
binding and the Specification's apparatus errors present in fluorescent
temperature-cycling DNA amplification, id. at 10; and (3), the Examiner's
determination that it would have been obvious to modify Leaback' s method
for reducing background noise in "'a temperature-cycling nucleic acid
amplification light-emitting reaction' ... represents improper hindsight."
Id. at 10-11 (citing Final Act. 3).
Appellants' arguments are not persuasive.
First, Claim 7's limitations are silent with respect to any requisite
multiple background fluorescent measurement for each reaction region. See
In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("Many of [A]ppellant's
arguments fail from the outset because ... they are not based on limitations
appearing in the claims."). We agree with the Examiner that claim 7 only
requires "that fluorescent measurements be made from each reaction region
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Appeal2018-000189
Application 14/339,092
and from adjacent non-reaction regions[,] followed by subtraction of the
second value from the first- and this is exactly what Leaback teaches."
Answer 3.
Furthermore, Leaback distinguishes between the "discrete sample
areas such as the small darker shaded orthogonal areas of' Figure 3 and
"[b ]ackground noise, represented by the shading lines in" the same figure.
Leaback 5:43--45; 5:47--48. We thus agree with the Examiner that Leaback
teaches that "at least a part of the background is adjacent to the reaction
regions." Answer 3, n.2 (citing Leaback Fig. 3).
Second, Claim 7 's preamble states that the claim is directed to "[a]
method for detecting fluorescence strength from a nucleic acid amplification
product in real time in ... reaction regions in a reaction vessel undergoing
temperature cycling." Appellants' arguments (2) and (3) implicitly assert
that the Examiner erred by failing to give weight to this portion of claim 7.
Br. 10-11. We are not persuaded by this argument.
In general, the preamble limits a claim if it recites essential structure,
essential steps, or is otherwise "necessary to give life, meaning, and vitality"
to the claim, Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298,
1305 (Fed. Cir. 1999) (quotingKropa v. Robie, 187 F.2d 150, 152 (CCPA
1951) ), while the preamble is not limiting when the claim body defines a
complete invention "such that deletion of the preamble phrase does not
affect the ... steps of the claimed invention," Catalina Mktg. Int 'l, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). The default
presumption is that a claim's preamble is not limiting. Am. Med. Sys., Inc. v.
Biolitec, Inc., 618 F.3d 1354, 1358 (Fed. Cir. 2010) ("'Generally,' we have
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Application 14/339,092
said, 'the preamble does not limit the claims."' (quoting Allen Eng'g Corp.
v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002))).
In this case, the preamble does not recite any step, let alone an
essential step, of the claimed method. As the Examiner found, the claimed
process steps can be used in a method other than for temperature cycling
nucleic acid amplification reactions. Answer 4. Moreover, the only mention
of such reactions is in the preamble of the claim. Thus, we conclude that
claim 7 's preamble is not a positive claim limitation.
Third, Appellants assert that the Examiner improperly supported the
rejection with the use of hindsight. Br. 10-11. The Examiner, however,
explained why a person of ordinary skill in the art would have modified
Leaback. Final Act 2-3; Answer 2-5. These explanations do not rely upon
hindsight, and Appellants have not demonstrated error in these findings.
Thus, when we consider all of the evidence, we determine that the
preponderance of the evidence supports the Examiner's conclusion of
obviousness for claim 7.
Thus, we affirm Rejection 1.
DECISION
For the reasons set forth above, we affirm the obviousness rejection of
claims 7-9 of the '092 Application.
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 )(iv).
AFFIRMED
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