Ex Parte Wan et al

Patent Trial and Appeal Board

Jan 10, 2018

14029215 (P.T.A.B. Jan. 10, 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.
14/029,215 09/17/2013 Zhiliang Wan 130-000722US 1728
22798 7590 01/12/2018
QUINE INTELLECTUAL PROPERTY LAW GROUP, P.C.
2033 CLEMENT AVENUE
SUITE 200
ALAMEDA, CA 94501
EXAMINER
KILPATRICK, BRYAN T
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
01/12/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZHILIANG WAN and NAN ZHANG
Appeal 2017-005062
Application 14/029,2151
Technology Center 1700
Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and BRIAN
D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—10 and 36-42. We have jurisdiction. 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 The Appellant is the applicant, Micropoint Bioscience, Inc., which the
Appeal Brief also identifies as the real party in interest. App. Br. 1.
Appeal 2017-005062
Application 14/029,215
STATEMENT OF THE CASE2
Appellant describes the invention as relating to analytical cartridges
that could be used to detect analytes that react with reagents. Spec. 2, 82.
Claim 1, reproduced below with emphasis added to certain key recitations, is
the only independent claim on appeal and is illustrative of the claimed
subject matter:
1. An analytical cartridge comprising:
a detection channel having one or more capillary
dimensions;
a porous substrate disposed along a detection channel
surface, which substrate does not fill a cross-section of the
detection channel; and,
one or more analytical regions comprising one or more
reagents located in or on the substrate.
App. Br. 9 (Claims App’x).
REFERENCES AND REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. The Examiner rejects claim 40 under 35 U.S.C. § 112 as
failing to comply with the written description requirement. Ans. 3.
Rejection 2. The Examiner rejects claims 36 and 38 under 35 U.S.C.
§ 112 as indefinite. Id. at 4.
Rejection 3. The Examiner rejects claims 1—10 and 36—38 on the
ground of nonstatutory double patenting as being unpatentable over claims
1-14 of Wan et al, U.S. Patent No. 8,263,024 B2, Sep. 11, 2012. Id. at 5.
2 In this opinion, we refer to the Final Office Action dated February 11, 2016
(“Final Act.”), the Appeal Brief filed August 10, 2016 (“Appeal Br.”), the
Examiner’s Answer dated December 13, 2016 (“Ans.”), and the Reply Brief
filed January 31, 2017 (“Reply Br.”).
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Application 14/029,215
Rejection 4. The Examiner rejects claims 1—10 and 36—38 on the
ground of nonstatutory double patenting as being unpatentable over claims
1-14 of Wan et al., U.S. Patent No. 8,551,422 B2, Oct. 8, 2013. Id. at 6.
Rejection 5. The Examiner rejects claims 1, 2, 4—10, 37, 39, and 40
under 35 U.S.C. § 102 as anticipated by Davis et al., US 2007/0031283 Al,
Feb. 8, 2007 (hereinafter “Davis”). Id. at 7.
Rejection 6. The Examiner rejects claims 3, 36, 38, 41, and 42 under
35 U.S.C. § 103 as unpatentable over Davis. Id. at 9.
ANALYSIS
Rejection 1. The Examiner rejects claim 40 as failing to comply with
the written description requirement of 35 U.S.C. § 112. Ans. 3. Claim 40
recites, “The cartridge of claim 1, wherein the detection channel is not an
incubation chamber.” App. Br. 11 (Claims App’x). The Examiner
maintains that the recitation “is not explicitly and/or clearly disclosed within
the instant specification” and is therefore new matter. Ans. 3,11.
Our reviewing court has addressed the written description requirement
as it applies to negative claim recitations by stating that “[njegative claim
limitations are adequately supported when the specification describes a
reason to exclude the relevant limitation. Such written description support
need not rise to the level of disclaimer.” Santarus, Inc. v. Par Pharm., Inc.,
694 F.3d 1344, 1351 (Fed. Cir. 2012). Here, Appellant explains that the
original specification provides numerous examples of separate incubation
chambers and detection chambers. App. Br. 2. A preponderance of the
evidence supports Appellant’s position. For example, Figure 1 of the
Specification depicts detection channel 16 as separate from incubation
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Application 14/029,215
chamber 14. Spec. Fig. 1,141. Because the Specification describes the
detection channel and incubation chamber as distinct areas of the cartridge,
we agree with Appellant that the Specification provides a reason why a
person of skill in the art would implement a detection channel that is not an
incubation chamber. Accordingly, we do not sustain the Examiner’s written
description rejection of claim 40.
Rejection 2. The Examiner rejects claims 36 and 38 under 35 U.S.C.
§ 112 as indefinite. Ans. 4. These two claims recite “most of a fluid flow
through the detection channel occurs in a part of the cross section not
occupied by the porous substrate” and “a majority of a fluid flow through the
detection channel flows outside the porous substrate” respectively. App. Br.
10 (Claims App’x). The Examiner maintains that the recitations are
indefinite because it is unclear what type of fluid is referred to in each claim.
Ans. 4, 12.
During prosecution, rejection of a patent claim may be maintained
where the Examiner identifies how claim language is “ambiguous, vague,
incoherent, opaque, or otherwise unclear” and the Appellant fails to provide
a satisfactory response. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir.
2014). Appellant argues that the claims refer to flow generically without
distinguishing to types of fluid. App. Br. 2—3. We agree with Appellant’s
position. Claims 36 and 38 refer to fluid flow through the detection channel
(see, e.g., Spec 126 (referring to majority of fluid avoiding resistance of
substrate)), and, because the claim lacks further specificity, a person of skill
in the art would understand that the fluid generally refers to all fluid flowing
through the detection channel.
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Application 14/029,215
Because the recitations of 36 and 38 are not unclear and because
Appellant provides a satisfactory response, we do not sustain the Examiner’s
indefiniteness rejection of claims 36 and 38.
Rejections 3 and 4. Appellant does not respond to the Examiner’s
double patenting rejections. Ans. 11. We thus summarily sustain these
rejections. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identity the alleged error in the examiner’s rejections”)).
Rejection 5. The Examiner rejects claims 1, 2, 4—10, 37, 39, and 40 as
anticipated by Davis. Ans. 7. The Examiner finds that Davis teaches an
assay cartridge having incubation zones 2013 in communication with each
other via sample distribution channel 2018. Id. (referencing Davis Fig. 12).
The Examiner finds that Davis employs supports for immobilizing binding
partners “wherein the supports can be separation filters — i.e., ‘a porous
substrate’ [as recited by claim 1].” Id. The Examiner finds that Davis also
discloses that “the supports (discussed in the form of beads, but applied to
all other forms of supports) are contained within an incubation zone . . . but
do not completely cover the entirety of the zone.” Id.
Appellant argues that the Examiner’s rejection is in error because
Davis does not teach “a porous substrate . . . which substrate does not fill a
cross-section of the detection channel” as recited in claim 1. App. Br. 4.
We agree that the Examiner has not adequately explained how Davis teaches
this recitation.
The Examiner finds that the supports of Davis can be separation filters
and that separation filters are a porous substrate. Ans. 12—13. We note that
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Application 14/029,215
the Examiner does not find that Davis’s beads equate to claim 1 ’s recited
porous substrate. Reply Br. 3. The Examiner cites Davis at paragraphs 149
to 155 as teaching that supports do not cover the entirety of the incubation
zone. Ans. 7. Paragraph 149 of Davis, however, discusses selection of a
support and concludes that “magnetizable capture beads” are an
advantageous choice for a support. Davis 1149. Paragraphs 150 to 154 of
Davis then discuss orientation of such beads. In particular, paragraph 151
discusses how the “bead distribution” may occupy only a certain percentage
of the incubation zone and paragraph 152 discusses how such distribution of
beads may be achieved. Paragraph 155 discusses exemplary blocking agents
but does not address arrangement of supports within the incubation zone.
Reviewing Davis as a whole, the preponderance of the evidence best
supports Appellant’s position that Davis does not address, at paragraphs 149
to 155, what percent of the incubation zone or a detection channel a porous
substrate should occupy (because the paragraphs relating to orientation refer
only to beads) and do not address to what extent a separation filter/porous
substrate should fill regarding the cross section of the incubation channel or
a detection channel. App. Br. 4; Reply Br. 3.
The Examiner also finds that Davis teaches this claim 1 recitation
because incubations zones 2013 are connected to distribution channel 2018
via passageway 2019. Ans. 13. The Examiner has not adequately explained
this rationale. Reply Br. 3. The Examiner does not find that passageway
2019 is a detection channel. Id. Thus, it is unclear why absence of a porous
substrate in passageway 2019 is relevant to claim 1 ’s recitation that the
porous substrate be “disposed along a detection channel surface” but “not fill
a cross-section of the detection channel.”
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Application 14/029,215
Because the Examiner has not adequately explained how Davis
teaches “a porous substrate disposed along a detection channel surface,
which substrate does not fill a cross-section of the detection channel” as
recited by claim 1, we do not sustain this rejection.
Rejection 6. The Examiner rejects claims 3, 36, 38, 41, and 42 as
unpatentable as obvious over Davis. Ans. 9. The Examiner’s obviousness
rationale does not cure the Examiner’s error with regard to claim 1 discussed
above. Ans. 9-10, 15—16. The Examiner does not, for example, explain
why a person of skill in the art would have substituted the beads discussed at
Davis 1151 for a porous substrate (or, alternatively, why it would have been
obvious to modify the beads to be a porous substrate) and does not explain
why the cross-section recitation of claim 1 would have been obvious.
Accordingly, we also do not sustain this rejection.
DECISION
For the above reasons, we affirm [rejection 3] the Examiner’s
rejection of claims 1—10 and 36—38 on the ground of nonstatutory double
patenting as being unpatentable over claims 1—14 U.S. Patent No. 8,263,024
and [rejection 4] the Examiner’s rejection of claims 1—10 and 36—38 on the
ground of nonstatutory double patenting as being unpatentable over claims
1—14 of U.S. Patent No. 8,551,422. We reverse [rejection 1] the Examiner’s
rejection of claim 40 under 35 U.S.C. § 112 as failing to comply with the
written description requirement, [rejection 2] the Examiner’s rejection of
claims 36 and 38 under 35 U.S.C. § 112 as indefinite, [rejection 5] the
Examiner’s rejection of claims 1, 2, 4—10, 37, 39, and 40 under 35 U.S.C.
§102 as anticipated by Davis, and [rejection 6] the Examiner’s rejection of
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Application 14/029,215
claims 3, 36, 38, 41, and 42 under 35 U.S.C. § 103 as unpatentable over
Davis.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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