Ex Parte Wittwer et al

Board of Patent Appeals and Interferences

Oct 29, 2009

10914648 (B.P.A.I. Oct. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARL T. WITTWER and KIRK M. RIRIE
____________

Appeal 2009-003538
Application 10/914,648
Technology Center 1700
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Decided: October 29, 2009
____________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
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Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 28-33, 40-46, and 48-50 (Appeal Brief filed June 13, 2007,
hereinafter “Br.,” at 2; Final Office Action mailed January 26, 2007). We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

STATEMENT OF THE CASE
Appellants’ claimed invention generally relates to an apparatus (i.e.,
system) for carrying out biological processes, for example, polymerase chain
reactions (Specification, hereinafter “Spec.,” 1, ll. 28-29).
Claims 28 and 50 read as follows:
28. A system comprising
a plurality of containers, said containers comprising walls
composed of an optically transparent material and defining a
volume having a first and second dimension, wherein the first
dimension is less than the second dimension and the ratio of
volume to external surface area of the container is less than 1
mm;
a continuously rotatable carousel for holding said
plurality of containers and sequentially moving the plurality of
containers, one-by-one to a monitoring position;
a source of forced air for heating and cooling said
plurality of containers; and
means for performing fluorescent detection on a sample
contained within one of said plurality of containers and held at
said monitoring position, while each sample is simultaneously
subjected to rapid thermal cycling.

50. A system comprising
a plurality of capillary tubes having a closed end, an open
end, an inner diameter of less than lmm, and walls about 0.lmm
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thick, wherein said capillary tube [sic] are composed of an
optically transparent material and define a volume having a first
and second dimension, wherein the first dimension is less than
the second dimension and the ratio of volume to external
surface area of the container is less than 1 mm
a funnel-shaped portion, having a sample receiving port
and a sample transfer port, said funnel-shaped portion being
joined to the open end of each capillary tube, so that the sample
transfer port of the funnel-shaped portion and the open end of
the vessel are in alignment;
a removable structure that seals the sample receiving port
of each funnel-shaped portion; and
a continuously rotatable carousel for holding said
plurality of containers.
(Claims App’x.)
The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed September 25, 2007, hereinafter
“Ans.,” 3):
Natelson 3,219,416 Nov. 23, 1965
Hawes 3,556,659 Jan. 19, 1971
Garner 5,241,363 Aug. 31, 1993
Zaun 5,415,839 May 16, 1995
Mitoma 6,144,448 Nov. 7, 2000
Carl T. Wittwer, G. Chris Fillmore, and David J. Garling, Minimizing
the Time Required for DNA Amplification by Efficient Heat Transfer to
Small Samples, 186 ANALYTICAL BIOCHEMISTRY 328-331 (1990).

The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 28-30, 40-42, and 49 as unpatentable over the combined
teachings of Garner, Zaun, Wittwer, and Mitoma (Ans. 4-6);
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II. Claims 31-33 as unpatentable over the combined teachings of
Garner, Zaun, Wittwer, Mitoma, and Hawes (Ans. 6-7);
III. Claims 43-45, 48, and 50 as unpatentable over the combined
teachings of Garner, Zaun, Wittwer, Mitoma, and Natelson
(Ans. 7-8); and
IV. Claim 46 as unpatentable over the combined teachings of
Garner, Zaun, Wittwer, Mitoma, Natelson, and Hawes (Ans. 8-
9).
We reverse the rejections with respect to all claims except for claim
50.

ISSUES
All appealed claims, except claim 50, recite a limitation directed to a
fluorescent detector. Specifically, claims 28-33, 40-42, and 49 recite
“means for performing fluorescent detection on a sample contained within
one of said plurality of containers and held at said monitoring position, while
each sample is simultaneously subjected to rapid thermal cycling” (claim
28). For the claimed “means for performing fluorescent detection,”
Appellants point to the Specification at page 38, lines 19-31, which
describes, inter alia, photomultiplier tubes for fluorescent detection (Br. 3).
Claims 43-46 and 48 recite a similar limitation of “a fluorimeter assembly
for illuminating and detecting fluorescence of a sample held within the
container at said monitoring position while all samples are being
simultaneously subjected to rapid thermal cycling” (claim 43).

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Claims 28-33, 40-46, 48, and 49
The Examiner acknowledged, inter alia, that Garner differs from the
claimed subject matter in that it does not describe the limitations with
respect to: (i) “a continuously rotatable carousel for holding . . . containers
and sequentially moving [them], one-by-one to a monitoring position”; and
(ii) a “means for performing fluorescent detection on a sample contained
within one of said plurality of containers and held at said monitoring
position, while each sample is simultaneously subjected to rapid thermal
cycling” (claim 28; Ans. 4-5). To account for the “continuously rotatable
carousel” limitation, the Examiner relied on Zaun, which is said to teach
rotatable heating rings (i.e., carousel) that hold a plurality of sample
containers and move them one-by-one to a monitoring position for optical
interrogation, while also thermally cycling the samples (Ans. 4). The
Examiner concluded that it would have been obvious to one of ordinary skill
in the art to optically interrogate Garner’s samples using Zaun’s rotatable
heating rings in order to “allow[] more than one sample to be thermal cycled
at one time.” (Ans. 4). As for the “means for fluorescent detection . . .”
limitation, the Examiner relied on Mitoma, which is said to teach the use of
a fluorescent detection device to monitor a sample during thermal cycling
(Ans. 5). According to the Examiner, it would have been obvious to one of
ordinary skill in the art to include “an optical detection system” (i.e.,
fluorescent detection system) in Garner as suggested by Mitoma “for the
known and expected result of providing an alternative means . . . for
monitoring the contents of a sample container during thermal cycling
reactions” because Mitoma’s system “reduces the effect the excitation light
has on the temperature of the sample . . .” (id.).
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Appellants, on the other hand, contend that there is no suggestion to
combine Zaun’s rotatable carousel with the fluorescent detection system
taught by Mitoma because the fiber optics used in Mitoma’s fluorescent
system are attached to the sample chambers, which would prevent the
sample chambers from freely spinning, i.e., “continuously rotating” (Br. 7-
8).
Thus, a dispositive issue arising from the contentions of the Examiner
and Appellants is:
Have Appellants shown reversible error in the Examiner’s conclusion
that one of ordinary skill in the art would have been led to provide Garner’s
apparatus with a means for performing fluorescent detection in view of the
teachings of Mitoma while, at the same time, providing a continuously
rotatable carousel in view of the teachings of Zaun?

Claim 50
The Examiner acknowledged, inter alia, that Garner differs from the
claimed subject matter of claim 50 in that it does not disclose: (i) “a funnel-
shaped portion . . . joined to the open end of each capillary tube”; and (ii) “a
continuously rotatable carousel” (Ans. 4 and 7-8). As for the “funnel-shaped
portion . . .” limitation, the Examiner relied on Natelson, which was found to
teach the use of funnels with sample capillary tubes (Ans. 16). The
Examiner concluded that it would have been obvious to one of ordinary skill
in the art to provide a funnel in Garner’s sample tube having a closed end to
“facilitate[] the filling of the capillary tube section” (Ans. 16-17). In a
manner similar to that advanced against claim 28, the Examiner relied on
Zaun for the “continuously rotatable carousel” limitation (Ans. 4). In
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addition, the Examiner concluded that it would have been obvious to
substitute Zaun’s heating system connected to a power source with a forced
air system as taught by Wittwer because they are alternate systems
recognized in the art “for controlling the temperature within a microcapillary
tube during a thermal cycling reaction,” thus resulting in continuously
rotatable rings (Ans. 4-5 and 11). Also, the Examiner found that Wittwer
inherently discloses the claimed inner diameter and wall thicknesses of the
containers (i.e., “inner diameter of less than 1mm” and “walls about 0.1mm
thick”) because Wittwer discloses the same capillary containers disclosed as
suitable for the claimed invention in Appellants’ Specification (Ans. 5 and
17).
Appellants counter that the “claimed system comprises a capillary
tube that is closed at one end” and that “[c]losing the end of the Natelson
capillary tube at the end opposite the funnel portion would destroy the
function of the funnel component in the Natelson system” (Br. 12). In
addition, Appellants assert that Zaun does not disclose a “continuously
rotatable carousel” capable of continuously revolving or rotating without
stopping because Zaun’s rotatable heating rings are attached to heating
wires, which would render Zaun’s device incapable of continuous rotation
(Br. 6-7). Furthermore, Appellants argue that the recited dimensions for the
inner diameter and wall thickness of the capillary tubes (i.e., “an inner
diameter of less than 1mm” and “walls about 0.1mm thick”) are not
inherently disclosed in Garner or Natelson (Br. 12-13).

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Thus the issues arising from the contentions of the Appellants and the
Examiner are:
Have Appellants shown reversible error in the Examiner’s finding that
the use of Wittwer’s forced air heating system in lieu of Zaun’s heating
source and wires attached to the rotatable heating rings in Garner would
have resulted in a continuously rotatable carousel?
Have Appellants shown reversible error in the Examiner’s finding that
Wittwer’s capillary tube, when used in Garner, would necessarily have the
inner diameter and wall thickness, as recited in claim 50?
Have Appellants shown reversible error in the Examiner’s
obviousness conclusion as to claim 50 because the combination of Wittwer’s
capillary tube with Natelson’s funnel for use in Garner would have
destroyed the function of the funnel?

FINDINGS OF FACT (“FF”)
1. Garner discloses a system for conducting thermal cycling on a
micropipette (i.e., capillary tube) while optically interrogating
samples contained in the micropipette (col. 10, ll. 34-39 and 65-
68).
2. Garner differs from claim 28 in that it does not disclose, inter
alia, a “continuously rotatable carousel for holding [a] plurality
of containers” and “means for performing fluorescent detection
on a sample,” as required by the claim.
3. Relative to claim 50, Garner does not disclose, inter alia, a
funnel attached to the micropipette (i.e., capillary tube).

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4. Mitoma’s Figure 2 is reproduced below:

Figure 2 depicts a sample container 7 in a container holder 9,
wherein optical fibers from a light source and to a detecting
apparatus are connected to the container holder below the
sample container (col. 6, ll. 21-27).
5. Mitoma discloses that the container holder comprises a plurality
of concave sections for holding multiple containers, with
optical fibers at each concave section (col. 5, ll. 62-66).
6. Zaun’s Figure 8A is reproduced below:

Figure 8A depicts heating rings 90, 92 that are rotated by motor
109 to successively move the support strip 61 of each detection
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chamber (i.e., sample container) into a viewing position,
whereby a detection system comprising, inter alia, a camera
lens 102 measures colorimetric signals reflected from the strip
61 (col. 15, ll. 10-16 and 20-26).
7. Zaun states that heat is delivered to rings 90, 92 via
conventional resistive heat strips 95, 96 attached to the rings or
by other known means such as a manifold or by conductance
(col. 12, ll. 30-36).
8. Wittwer teaches the use of forced air for transferring heat in
thermal cycling processes (Wittwer at 328).
9. Wittwer discloses the use of KIMAX 46485-1, which
Appellants disclose as a suitable capillary tube in a working
example, as a container for samples to be analyzed (Wittwer at
329; Spec. at 17, ll. 16-18).
10. Natelson’s Figure 1 is reproduced below:

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Figure 1 depicts a funnel 16 attached to a capillary tube 15 to
facilitate dispensing of fluids (i.e., solvent and gas) into and
through the capillary tube 15 (col. 2, ll. 29-34; col. 4, ll. 23-26
and 29-33).

PRINCIPLES OF LAW
While the Supreme Court of the United States explained that an
obviousness “analysis need not seek out precise [prior art] teachings,” the
Court nonetheless did not dispense with the need for evaluating the evidence
to determine whether a person having ordinary skill in the art would have
had “an apparent reason to combine the known elements in the fashion
claimed.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR, 550 U.S. at 417.

ANALYSIS
Claims 28-33, 40-46, 48, and 49
We agree with Appellants that the Examiner’s obviousness conclusion
as to claims 28-33, 40-46, 48, and 49 based on the proposed combination of
Garner, Mitoma, and Zaun is not well founded. To account for the
differences between the claimed subject matter (e.g., claim 28) and Garner,
the Examiner relied on: (i) Mitoma’s teaching of a fluorescent detection
device for optically monitoring a sample during thermal cycling; and (ii)
Zaun’s teaching of a rotatable carousel (Ans. 4-5; FF 1, 2, and 4-7).
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But as pointed out by Appellants, Mitoma discloses a container holder
for sample containers, in which fiber optics of a fluorescent detector are
integral with the container holder at each sample container (FF 4 and 5; Br.
7-8). While Zaun does disclose rotatable rings that hold detecting chambers
(i.e., sample containers) and successively move the detecting chambers to a
monitoring position where a detection system measures colorimetric signals
from the samples (FF 6), the use of Zaun’s rotatable rings in combination
with fiber optics that are integral with the container holder as shown in
Mitoma has not been shown to result in a “continuously rotatable carousel,”
as required by the claims. Nor has the Examiner provided sufficient
evidence or reasoning that would have suggested to one of ordinary skill in
the art that Mitoma’s fiber optic detection system could be further modified
to facilitate a “continuosly rotatable carousel,” as required in the claimed
invention, or that such further modification would have been successful.
Accordingly, we reverse the Examiner’s rejections as to claims 28-33,
40-46, 48, and 49.

Claim 50
Claim 50, however, does not require a fluorescent detector. Thus, the
basis for our reversal of claim 28 above is not determinative of the outcome
as to claim 50.
With respect to claim 50, Appellants contend that Zaun does not
disclose a continuously rotatable carousel because wires are attached to the
rotatable heating rings (Br. 6-7). This contention is misplaced because it
fails to address the Examiner’s reasoning that Wittwer would have suggested
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the use of forced air heating, which would have dispensed with the need for
Zaun’s wires connected to a power source (Ans. 11; FF 7-9).
We also find no persuasive merit in Appellants’ contention that the
function of Natelson’s funnel would have been destroyed when the funnel is
combined with capillary tubes that have one closed end (Br. 11-12). While
Garner does not disclose a funnel joined to a capillary tube (FF 1 and 3), the
Examiner relied on Natelson, which discloses a funnel joined to the end of a
capillary tube to facilitate dispensing of fluids (i.e., solvent and gas) into and
through the capillary tube (Ans. 7; FF 10). Given these teachings, we
discern no error in the Examiner’s reasoning that one of ordinary skill in the
art would have understood that the function of the funnel (i.e., directing
fluids into a capillary tube) would not have been altered in the apparatus
resulting from the combined teachings of Garner and Natelson. Nothing
substantiates Appellants’ position that a funnel would be inoperable when
used with a capillary tube having a closed end.
Appellants also argue that the Examiner erred because Garner and
Natelson do not inherently disclose capillary tubes having the recited
dimensions of “an inner diameter of less than 1mm” and “walls about
0.1mm thick,” as recited in claim 50 (Br. 12-13). This argument is also
unpersuasive because it does not address the collective teachings of the
references. In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references.”).
Here, the Examiner found that Wittwer inherently discloses the recited
dimensions of the claimed capillary tubes because Wittwer discloses the
same capillary tubes that Appellants disclose as suitable for the claimed
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invention (FF 9). Appellants did not contest this finding. Thus, we cannot
reverse on this basis.

CONCLUSION
Appellants have shown reversible error in the Examiner’s conclusion
that one of ordinary skill in the art would have been led to provide Garner’s
apparatus with a means for performing fluorescent detection in view of the
teachings of Mitoma while, at the same time, providing a continuously
rotatable carousel in view of the teachings of Zaun.
Appellants have not shown reversible error in the Examiner’s finding
that the use of Wittwer’s forced air heating system in lieu of Zaun’s heating
source and wires attached to the rotatable heating rings would have resulted
in a continuously rotatable carousel.
Appellants have not shown reversible error in the Examiner’s
obviousness conclusion as to claim 50 because the combination of Wittwer’s
capillary tube with Natelson’s funnel for use in Garner would have
destroyed the function of the funnel.
Appellants have not shown reversible error in the Examiner’s finding
that Wittwer, when used in Garner, would necessarily have the capillary tube
dimensions as recited in claim 50.

DECISION
The Examiner’s rejections under 35 U.S.C. § 103(a) of:
claims 28-30, 40-42, and 49 as unpatentable over the combined
teachings of Garner, Zaun, Wittwer, and Mitoma;
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claims 31-33 as unpatentable over the combined teachings of Garner,
Zaun, Wittwer, Mitoma, and Hawes;
claims 43-45 and 48 as unpatentable over the combined teachings of
Garner, Zaun, Wittwer, Mitoma, and Natelson; and
claim 46 as unpatentable over the combined teachings of Garner,
Zaun, Wittwer, Mitoma, Natelson, and Hawes
are reversed.
We affirm, however, the Examiner’s decision to reject appealed claim
50 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings of
Garner, Zaun, Wittwer, Mitoma, and Natelson.
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)(iv).

AFFIRMED-IN-PART

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