Ex Parte Xie et al

Patent Trial and Appeal Board

Mar 16, 2018

12774138 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121774,138 05/05/2010
95896 7590 03/20/2018
Knobbe, Martens, Olson & Bear, LLP
2040 Main Street
14th Floor
Irvine, CA 92614
FIRST NAMED INVENTOR
Tong Xie
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.
BDALV.022A (P-10800) 7347
EXAMINER
GAKH, YELENA G
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
03/20/2018 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):
efiling@knobbe.com
ip_docket@bd.com
j ayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TONG XIE and BENNY WING HUNG LAI
Appeal2017-000540
Application 12/774,138
Technology Center 1700
Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision to reject claims 1, 3, 6, 7, 12-15, 21, 54 and 55.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM, but designate our affirmance as a NEW GROUND of
Rejection.
1 The real party in interest is stated to be Alverix, Inc. (Appeal Br. 3).
Appeal2017-000540
Application 12/774, 138
Claim 1 is illustrative of the appealed subject matter (emphasis added
to highlight key limitations):
1. A system comprising:
an assay test strip including a test portion and an encoder
portion, the test portion including at least one analyte reaction
section, the encoder portion including a plurality of optically
detectable markings each at one of a plurality of known
positions;
an assay test strip reader comprising a body sized to
receive the assay test strip;
at least one detector fixedly connected to the body, the at
least one detector positioned within the body such that an
inserting of the assay test strip or a removing of the assay test
strip by an operator, which results in movement of the assay test
strip with respect to the body and the at least one detector, causes
the at least one detector to detect signals based on different points
on the assay test strip, the at least one detector configured to
detect an encoder optical signal indicative of the position of the
assay test strip within the body and to detect an analyte optical
signal indicative of a reaction of at least one analyte;
at least one light source associated with the at least one
detector, the at least one light source configured to illuminate at
least a portion of the assay test strip adjacent to the at least one
detector; and
control electronics coupled to the at least one detector, the
control electronics configured to:
receive analyte optical signals and encoder optical
signals from the at least one detector,
determine, using the encoder optical signals, the
relative position of the assay test strip with respect to the
detector at a given point in time, even when a first portion
of the assay test strip is moved more quickly or more
slowly than a second portion of the assay test strip,
construct, using the analyte optical signals and the
relative position of the assay test strip with respect to the
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Appeal2017-000540
Application 12/774, 138
detector at the given points in time, a representation of the
spacing of detected analyte reaction regions, regardless of
the speed with which the assay test strip is moved through
the reader by the operator, and
generate at least one result signal based on the
representation.
Appeal Br. 37, 38 (Claims App.).
The following rejections have been maintained by the Examiner:
(a) Claims 54 and 55 are rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description
requirement;
(b) Claims 1, 3, 6, 7, 12-15, 21, 54, and 55 are rejected under pre-
AIA 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject
matter which applicant regards as the invention;
(c) Claims 1, 3, 6, 7, 12-15 and 21 are rejected under pre-AIA
35 U.S.C. § 102(b) as being anticipated by Fouquet (US Pub.
2007/0188736 Al, published Aug. 16, 2007), with claim 12 also
rejected under 35 U.S.C. § 103(a) as unpatentable over Fouquet.
(d) Claims 1, 3, 6, 7, 14, 15, and 21 are rejected under
35 U.S.C. § 103(a) as unpatentable over Petruno (US Pub.
2006/0240541 Al, published Oct. 26, 2006); with claims 12 and
13 rejected as unpatentable over the combined prior art of Petruno
and AAPA (Applicants' admission of prior art).
Although Appellants address the Examiner's objection to the
Specification (Appeal Br. 35; Final Action 2, 3), we have no jurisdiction
over this objection, which must be reviewed by a Director via a timely filed
petition (3 7 C.F .R. § 1.181 ).
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Appeal2017-000540
Application 12/774, 138
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants' contentions, we determine that the claims fail to particularly
point out and distinctly claim the subject matter which the inventors regard
as the invention. We, therefore, affirm the Examiner's rejection of all the
claims for indefiniteness under§ 112, i-f 2, and the rejection of claims 54 and
55 under§ 112, i-f 1 for a lack of written description, but since our reasoning
differs from that of the Examiner, designate these as a new ground of
rejection.
We reverse the Examiner's§§ 102 and 103(a) rejections for the
reason set out below.
I. NEW GROUND OF REJECTION
We denominate our affirmance of the Examiner's rejection of all the
claims for indefiniteness as a NEW GROUND OF REJECTION pursuant to
our authority under 37 C.F .R. § 41.50(b ). 2 We further note that Appellants
have not addressed the Examiner's position with respect to the indefiniteness
of dependent claim 21.
Claims 1, 3, 6, 7, 12-15, 21, 54 and 55 are rejected under 35 U.S.C.
§ 112, i-f 2 as indefinite for failing to particularly point out and distinctly
claim the subject matter which the inventor regards as the invention. Cf
Aristocrat Techs. Aust!. Pty Ltd. v. Int 'l Game Tech., 521 F.3d 1328, 1331
2 We limit our discussion to independent claim 1. Our analysis applies to
each of the appealed claims.
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Appeal2017-000540
Application 12/774, 138
(Fed. Cir. 2008). This is a new ground of rejection pursuant to our authority
under 37 C.F.R. § 41.50(b).
Claim 1 recites "control electronics configured to: receive ... ,
determine ... , construct ... , and generate ... " (emphasis added). This
limitation does not include the word "means," thus, a rebuttable presumption
exists that this limitation is not a means-plus-function limitation. Williamson
v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). This
presumption can be overcome, however, if the limitation "fails to recite
sufficiently definite structure or else recites function without reciting
sufficient structure for performing that function." Id. at 1349 (citation and
internal quotation marks omitted). That is the case here. Although, the
limitation recites a control electronics function of "determining" and
"constructing" and "generating," these functions are recited "without reciting
sufficient structure for performing that function." Id. (citation and internal
quotation marks omitted). A control electronics per se cannot normally
accomplish the recited functions without means for doing so; in fact, the term
"a control electronics configured to" seems little more than a synonym for "a
control electronics comprising means for." See, e.g., id. at 1350 (explaining
that " ... nonce words that reflect nothing more than verbal constructs may be
used in a claim in a manner that is tantamount to using the word 'means'
because they 'typically do not connote sufficiently definite structure' and
therefore may invoke § 112, i-f 6." (citation omitted)). Indeed, Appellants
stress that"[ e Jach of these 'determin[ing]' and 'construct[ing]' features define
a structural limitation of the claimed control electronics" that distinguishes
over the applied prior art (Reply Br. 4 ).
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Appeal2017-000540
Application 12/774, 138
As the claim is devoid of language that provides the requisite structure,
we conclude the "control electronics configured to" "determine", and
"construct", and "generate" limitation is a means-plus-function limitation(s).
In light of this conclusion, we next consider whether Appellants'
written description contains corresponding structure for the "control
electronics configured to" limitation(s). Cf Aristocrat Techs., 521 F.3d at
1331. In computer-implemented inventions such as the one at issue, see, e.g.,
Spec. 426-28, the corresponding structure must include an "algorithm that
transforms [a] general purpose microprocessor to a special purpose computer
programmed to perform the disclosed algorithm." Aristocrat Techs., 521 F.3d
at 1338 (citation and internal quotation marks omitted). No such algorithm is
disclosed here for determining the relative position as recited "even when a
first portion is moved more quickly or more slowly than a second portion of
the test strip" or for constructing the analyte signal "regardless of the speed
with which the assay test strip is moved through the reader by the operator".
Appellants' written description simply states that the control electronics
perform these functions; the written description does not set forth an
algorithm for doing so. See, e.g., Spec. i-fi-f 121, 122, 125. Accordingly, this
limitation lacks corresponding structure and is therefore, indefinite under
35 U.S.C. § 112, i12.
As all remaining claims depend from claim 1 and are not supported by
corresponding structure for the aforementioned functions, these claims are
also indefinite under 35 U.S.C. § 112, i12. Furthermore, to the extent
claims 54 and 55 must further define claim 1, there is no structure provided
for the "configured to construct" functions recited in these claims. We,
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Application 12/774, 138
therefore, enter a new ground of rejection for these claims under 35 U.S.C.
§ 112, ii 2.
Accordingly, on this record, we conclude that all the claims are
indefinite.
We also affirm the Examiner's rejection of claims 54 and 55 for a lack
of written description for similar reasons as set forth above; that is, limitations
that are indefinite for the reasons explained in the new ground above also
indicate that the inventor has not provided sufficient disclosure to show
possession of the invention. Claim 54 states "wherein the control electronics
are configured to construct the representation of the spacing of detected
analyte reaction regions during insertion [of] the assay test strip into the body
of the assay test strip reader by the user" and claim 55 states "wherein the
control electronics are configured to construct the representation of the
spacing of detected analyte reaction regions during removal of the assay test
strip from the body of the assay test strip reader by the user." These recited
functions of the control electronics are unbounded functional limitations that
would cover all ways of performing the functions and are thus both indefinite
and not described, since the Specification does not appear to define any
algorithms for programming the control electronics as claimed. 3
II. REJECTIONS UNDER§ 102 and 103
Our analysis of the claims above indicates that considerable
speculation is required for determining the corresponding structure required
3 While similar reasoning also applies to the functions recited in claim 1, we
decline to add the remainder of the claims to the lack of written description
rejection.
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Appeal2017-000540
Application 12/774, 138
for the control electronics function(s). Therefore, any consideration of the
merits of the outstanding rejections would be improperly based on
speculative assumptions as to the scope of the claims. See In re Wilson, 424
F.2d 1382, 1385 (CCPA 1970); In re Steele, 305 F.2d 859, 862-63 (CCPA
1962). Accordingly, we reverse proforma all the prior art rejections.
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides that "[a] new ground of rejection ...
shall not be considered final for judicial review."
Section 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same record. 37
C.F.R. § 41.50(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).
ORDER
AFFIRMED
NEW GROUND OF REJECTION (37 C.F.R. § 41.50(b))
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