Ex Parte Van Lieshout et al

Patent Trial and Appeal Board

Feb 22, 2018

14409922 (P.T.A.B. Feb. 22, 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.
14/409,922 12/19/2014 Ron Lartinus Laurentius Van Lieshout 2012P00471WOUS 9531
24737 7590 02/26/2018
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue TALPALATSKI, ALEXANDER
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
02/26/2018 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):
patti. demichele @ Philips, com
marianne. fox @ philips, com
katelyn.mulroy @philips .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RON LARTINUS LAURENTIUS VAN LIESHOUT,
JOANNES BAPTIST ADRIANUS DIONISIUS VAN ZON,
and TOON HENDRIK EVERS
Appeal 2017-005354
Application 14/409,922
Technology Center 2800
Before JAMES C. HOUSEL, DONNA M. PRAISS, and
JENNIFER R. GUPTA, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 from the Final Rejection of
claims 1, 3-6, 12, 13, 15, 17, and 18. App. Br. 4; Ans. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 In our opinion we refer to the Specification (filed Dec. 19, 2014)
(“Spec.”), the Final Office Action (entered May 20, 2016) (“Final Act.”), the
Appeal Brief (filed Oct. 13, 2016) (“App. Br.”), the Examiner’s Answer
(entered Dec. 14, 2016) (“Ans.”), and the Reply Brief (filed Feb. 14, 2017)
(“Reply Br.”).
Appeal 2017-005354
Application 14/409,922
The subject matter of this appeal relates to “an apparatus for the
processing of magnetic particles that can bind to a binding region.”
Spec. 1:2-3. According to the Specification, the apparatus may be used for
molecular diagnostics, biological sample analysis, chemical sample analysis,
food analysis, and/or forensic analysis. Spec. 6:31-33.
Claim 1 is illustrative below (disputed limitations italicized):
1. An apparatus for processing magnetic particles
(MP, MP’), the apparatus comprising:
a processing chamber comprising a binding region to
which magnetic particles (MP’) can bind, the binding region
being arranged on a processing surface of the processing
chamber,
a magnetic field generator for generating a magnetic field
(H) in the processing chamber; and
a tilting unit for controllably changing an inclination of
the binding region.
App. Br. 12 (Claims Appendix).
The Examiner maintains, and Appellant2 appeals, the rejection of
claims 1, 3-6, 12, 13, 15, 17, and 183 under 35 U.S.C. § 102(b) as
anticipated by Whited.4 App. Br. 3; Ans. 2. Appellant argues the rejection
of claim 1 and relies on those same arguments with respect to claims 3-6,
12, 13, 15, 17, and 18. App. Br. 4-9. In accordance with 37 C.F.R.
§ 41.37(c)(l)(iv), dependent claims 3-6, 12, 13, 15, 17, and 18 will stand or
fall together with independent claim 1 on which they depend.
2 Appellant is the Applicant, Koninklijke Philips N.V., identified in the
Appeal Brief as the real party in interest. App. Br. 3.
3 Pending claims 2, 7-11, 14, and 16 stand allowed. Final Act. 5; App. Br.
3.
4 Whited, US 3,967,892, issued July 6, 1976 (“Whited”).
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Application 14/409,922
OPINION
The dispositive issues for this appeal are: (1) whether the Examiner
erred in construing the claim term “binding region;” (2) whether the
Examiner erred in finding that Whited discloses a binding region as required
by claim 1; and (3) whether the Examiner erred in finding that Whited
discloses a tilting unit for controllably changing an inclination of the binding
region as required by claim 1.
After review of the arguments and evidence presented by both
Appellant and the Examiner, we affirm the stated rejection.
The Examiner finds that Whited’s Figures 1-5 disclose an apparatus
for processing magnetic particles comprising each of the limitations required
by claim 1 for the reasons stated on page 3 of the Final Office Action.
In the Appeal Brief, Appellant argues that the Examiner’s finding that
Whited’s tubular member 110 discloses both a “binding region” and the
“processing surface” required by claim 1 is based on an improper claim
construction. App. Br. 5. According to Appellant, the Examiner’s
construction of claim 1 is in error because claim 1 recites “the binding
region is arranged on a processing surface of the processing chamber, and
not that the binding region is the processing surface of the processing
chamber.” Id. Appellant also contends that Whited does not disclose a
tilting unit as required by claim 1 because Whited’s wheel 72 spins or rotates
and “spinning (or rotating) does not disclose tilting.” Id. Appellant further
argues that Whited’s disclosure of “Rolls 74, 76 are rotated in conjunction
with paddle wheel 72 by a gear train (not shown)” cannot be relied upon
because it is vague and not enabling with regard to how tubular member 110
is “tilted.” Id. at 7.
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Application 14/409,922
The Examiner responds that the surface of Whited’s member 110 is a
processing surface of the processing chamber (28-32) and includes a
binding region on a portion of the processing surface. Ans. 2. Citing
Whited’s Fig. 3 and column 8, line 50, the Examiner further responds that
the processing surface has a binding region with attached magnetic particles
and another region without magnetic particles. Id. The Examiner finds that
this configuration is consistent with Appellant’s Specification wherein
binding region 116 is a portion of surface 115 in processing chamber 114.
Id. at 2-3. The Examiner also responds that the magnetic particles do not
become part of the surface in the prior art, but, rather, they attach to the
binding region and detach at a location where the binding region is not
present. Id. at 4. Regarding Appellant’s argument that spinning is not
tilting, the Examiner states that the claim does not require tilting, but rather,
more broadly claims a tilting unit that changes an inclination of a binding
region. Id. at 3. The Examiner finds that “rotation of the binding region of
the prior art inherently changes the inclination of the region.” Id.
In the Reply Brief, Appellant maintains that for the tubular member
110 to disclose both the binding region and the processing surface, it would
have to be arranged on the surface of itself. Reply Br. 4. According to
Appellant, Whited does not disclose tubular member 110 being arranged on
any surface let alone a processing surface of developer unit 28. Id. at 6.
Regarding the claim requirement that the tilting unit changes an inclination
of the binding region, Appellant contends that the Specification defines a
tilting unit and its function of tilting the binding region as “giving it an
inclination other than horizontal.” Id. at 5 (citing Spec. 3:19-20). Appellant
also quotes page 11 of the Specification: “By tilting the surface 115, a
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Appeal 2017-005354
Application 14/409,922
component of the gravitational force Fg directed along the surface will
become available. This force component will move free particles MP away
from the bound particles Mp’ in the spot.” Id. (quoting Spec. 11:23-25).
For the reasons discussed below, Appellant’s arguments fail to
identify a reversible error in the Examiner’s claim interpretations and
findings as to Whited. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
We find the Examiner’s claim construction reasonable because
Appellant does not direct us to any particular disclosure in the Specification
that restricts the binding region beyond being a portion, area, or location on
the processing surface where binding or attachment occurs. The Examiner’s
finding (Ans. 2-3) that such a construction of binding region is consistent
with the Specification is supported by the record. According to the
Specification, binding region 116 is “located on” processing surface 115 in
the processing chamber 114 and depicted in Figure 1 as a portion or region
of processing surface 115. Spec. 8:15-19; Fig 1. Indeed, the Specification
indicates that “[t]he ‘binding region’ may extend over the whole surface of
the processing chamber, though it will typically be only a part thereof.”
Spec. 2:12-13. The Specification further describes the binding region as
comprising capture probes such as antibodies to which substances such as
magnetic particles may bind. Spec. 8:15-17. The interaction of magnetic
particles to the binding region is said to be “of any type.” Spec. 2:15. A
magnetic field generator (shown in Figure 1 as magnet 153 with poles 153a
and 153b) below binding region 116 is also disclosed in the Specification for
manipulating magnetic particles. Id. at 8:20-24. Appellant asserts that
Whited’s surface 110 cannot disclose both the binding region and the
processing surface because that would require the surface to be arranged on
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Application 14/409,922
the surface of itself. App. Br. 5. However, Appellant does not offer any
affirmative construction or definition of the term that would distinguish the
processing surface from the binding region apart from binding occurring in
the binding region. Accordingly, we are not persuaded that the Examiner
erred in the construction of the term “binding region” as recited in claim 1.
We also are not persuaded that the Examiner erred in finding that
Whited discloses a binding region as properly construed. The Examiner’s
findings that Whited discloses processing chambers 28-32 in which
magnetic particles bind to surface 110 constituting a binding region is
supported by the record. Whited Fig. 3. Appellant does not dispute that
magnetic particles attach to Whited’s surface 110 shown in Figure 3 or that
surface 110 is a processing surface. Instead, Appellant contends that the
binding region must be a separate surface on the processing surface. Reply
Br. 4; App. Br. 5. As discussed above, the broadest reasonable interpretation
of “binding region” is a portion, area, or location on the processing surface
where binding or attachment occurs and encompasses the entirety of the
processing surface and any type of binding.
In addition, we are not persuaded by Appellant that the Examiner
erred in finding that Whited discloses a tilting unit for controllably changing
an inclination of the binding region as required by claim 1. Appellant’s
argument that the rotation disclosed by Whited does not disclose tilting
(App. Br. 5) does not adequately explain why rotation of a surface does not
result in “controllably changing an inclination of the binding region” on
Whited’s surface 110. Appellant’s assertion that the function of tilting is
defined by the Specification as “giving [the binding region] an inclination
other than horizontal” and that the Specification describes gravitational force
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Application 14/409,922
along the surface becoming available from this operation does not
adequately distinguish the change in orientation and gravitational forces
along Whited’s surface 110 as it rotates. See Reply Br. 5 (citing Spec. 3:19—
20). To the extent that Appellant contends that the term “tilting unit”
requires the apparatus to have a processing surface and a binding region that
are uniformly planar such that their orientation with respect to the horizontal
is uniform, such an interpretation of the claim would have us read limitations
into the claim from the Specification. Although the claims are interpreted in
light of the specification, limitations from the specification are not read into
the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Accordingly, we are unpersuaded of error in the Examiner’s finding that
Whited discloses a tilting unit for controllably changing an inclination of the
binding region.
Based on the cited record on appeal, we are not persuaded of error in
the Examiner’s rejection of claim 1. Accordingly, we affirm the stated
rejection of claims 1, 3-6, 12, 13, 15, 17, and 18 as anticipated by Whited.
DECISION
For the foregoing reasons, we affirm the Examiner’s rejection under
35U.S.C. § 102(b).
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
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