Koshin Hamasaki et al.

Patent Trials and Appeals Board

Oct 22, 2019

14768771 - (D) (P.T.A.B. Oct. 22, 2019)

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.
14/768,771 08/19/2015 Koshin HAMASAKI H&A-10047 8866
24956 7590 10/22/2019
MATTINGLY & MALUR, PC
1800 DIAGONAL ROAD
SUITE 210
ALEXANDRIA, VA 22314
EXAMINER
TURK, NEIL N
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
10/22/2019 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOSHIN HAMASAKI
and TOSHIRO SAITO
Appeal 2018-009043
Application 14/768,771
Technology Center 1700

Before GEORGE C. BEST, N. WHITNEY WILSON, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,2 Hitachi High-
Technologies Corporation, appeals from the Examiner’s decision to reject
claims 1, 4–9, and 11–15. Final Act. 4, 5, 9. We have jurisdiction under
35 U.S.C. § 6(b).

1 The record on appeal includes the Specification of August 19, 2015
(“Spec.”), the Examiner’s Final Action of November 3, 2017 (“Final Act.”),
Appeal Brief of March 23, 2018 (“Appeal Br.”), the Examiner’s Answer of
July 24, 2018 (“Ans.”), and Reply Brief of September 21, 2018 (“Reply
Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Hitachi
High-Technologies, Corp. Appeal Br. 3.
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We AFFIRM.
CLAIMED SUBJECT MATTER
“The present invention relates to a method for quantifying trace
amounts of biomolecules, to a structure of a quantification device, and to an
analyzer configuration.” Spec. ¶ 4. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A biomolecule analyzing device comprising:
a solution of magnetic fine particles bound with a
measurement target and labelled with a fluorescent dye, the
magnetic fine particles consisting of paramagnetic fine particles
having a particle size less than or equal to 1 μm;
a solution vessel including a pair of hydrophilic upper and
lower flat substrates which confine the solution in the solution
vessel;
a magnetic field generator configured to generate a
magnetic field and that is disposed on a side of one of the flat
substrates, wherein the magnetic field generator switches the
magnetic field on and off, or switches strengths of the magnetic
field to immobilize the magnetic fine particles of the solution in
the solution vessel on an inside of the one of the flat substrates;
an excitation light source to irradiate the fluorescent dye
bound to the magnetic fine particles; and
a camera to acquire an image of bright spots from light
emitted from the fluorescent dye bound to the magnetic fine
particles,
wherein a width between the flat substrates is 80 μm or
less, and
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wherein a measured bright spot count of the bright spots
obtained from the image is greater than 80% of a theoretical
bright spot count.
Claims Appendix (Appeal Br. 17).3
REFERENCES
The prior art references relied upon by the Examiner are:
Ohtsuka
Huang
Warthoe
Heil
US 2009/0321662 A1
US 2010/0120630 A1
US 2011/0008776 A1
US 2011/0065209 A1
Dec. 31, 2009
May 13, 2010
Jan. 13, 2011
Mar. 17, 2011
REJECTIONS
Claim 15 is rejected under pre-AIA 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 4.4
Claims 1, 4–9, 11, and 13–15 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Ohtsuka in view of Warthoe. Final Act. 5.
Claim 7 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ohtsuka, Warthoe, and Huang. Final Act. 9.
Claim 12 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ohtsuka, Warthoe, and Heil. Final Act. 9.

3 A Notice of Defective Appeal Brief was issued on April 11, 2018 notifying
Appellant that the Appeal Brief of March 23, 2018 lacks a correct copy of
the appealed claims. Appellant subsequently filed a correct copy of the
appealed claims which includes claim 1 as shown herein.
4 The indefiniteness rejection of claim 12 has been withdrawn and is
therefore not before us. Ans. 9.
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OPINION
Indefiniteness Rejection of Claim 15
Claim 15 depends from claim 1 and additionally recites “wherein the
paramagnetic fine particles have the particle size greater than or equal to
0.02 μm.”
The Examiner rejects claim 15 finding that the recited particle size
being “greater than or equal to 0.02 μm” is indefinite because it may exceed
“a particle size less than or equal to 1 μm” which is recited in claim 1. Final
Act. 4; Ans. 10 (finding that the particle size recited in claim 1 “does not
coincide with the recitation of claim 15 which allows for particles of a size
greater than 1 micrometer”).
“A claim is indefinite if, when read in light of the specification, it
does not reasonably apprise those skilled in the art of the scope of the
invention.” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
1342 (Fed. Cir. 2003). In this case, claim 1 requires the maximum particle
size to be 1 μm whereas dependent claim 15 further requires the minimum
particle size to be greater than or equal to 0.02 μm. A skilled artisan would
therefore understand claim 15, dependent from claim 1, to require the
particular size to be between 0.02 μm and 1 μm. See Appeal Br. 7 (stating
that claim 15 includes all limitations of claim 1 as well as the limitation
recited in claim 15).
We do not sustain the Examiner’s indefiniteness rejection of claim 15.
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Obviousness Rejection of Claim 15
Appellant argues that the Examiner reversibly erred in finding that
Warthoe teaches or suggests a biomolecule analyzing device having “a
width between the flat substrates [that] is 80 μm or less” as recited in claim
1. Although Appellant acknowledges that “Warthoe does disclose the
claimed height as a generality[,]”6 Appellant argues that the Examiner erred
for failing to “acknowledge that Warthoe discloses it is preferable to
configure the first section 3 to have a height (i.e., 200 μm to 1000 μm)
greater than twice the claimed height of 80 μm.” Appeal Br. 11.
“In response to the argument that this choice, as well as other choices
which must be made from among the disclosures of the reference, is made
from other than the preferred embodiments disclosed by [the reference], we
reiterate that ‘all disclosures of the prior art, including unpreferred
embodiments, must be considered’ in determining obviousness.” In re
Burckel, 592 F.2d 1175, 1179 (CCPA 1979) (internal citations omitted).
Because Warthoe undisputedly discloses a height of 0.05 to 2 mm or 50 to
2000 μm which is within the recited range of “80 μm or less,” (see Appeal
Br. 11) we are not persuaded that the Examiner reversibly erred here.
Appellant additionally argues that such “particle sizing” in Warthoe—
that is, the preferred height of Warthoe’s reaction chamber—“explicitly

5 Appellant does not present separate arguments for the obviousness
rejection of claims 4–9 and 11–15. See, e.g., Appeal Br. 8–16. These claims,
therefore, stand or fall with the obviousness rejection of claim 1. See id.; see
also 37 C.F.R. § 41.37(c)(1)(iv).
6 Appellant does not dispute that the height of the reactor chamber in
Warthoe teaches or suggests the recited width of a solution vessel. Compare
Appeal Br. 11–13, with Final Act. 7–8.
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leads away from” the recited particle size of “less than or equal to 1 μm.”
Appeal Br. 13 (emphasis omitted). Appellant, however, does not adequately
expand on this statement to explain why the Examiner reversibly erred. In
any case, Appellant does not dispute the Examiner’s finding that Ohtsuka
teaches or suggests the recited particle size of “less than or equal to 1 µm.”
Compare Appeal Br. 12–13, with Final Act. 6 (citing Ohtsuka ¶ 108 for the
teaching). “A statement that a particular combination is not a preferred
embodiment does not teach away absent clear discouragement of that
combination.” Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380
(Fed. Cir. 2005) (citations omitted). Appellant’s unelaborated argument is
therefore likewise without persuasive merit.
We are also not persuaded that the Examiner erred for failing to
“acknowledge or consider that Warthoe discloses that it is preferable to use a
bimodal distribution rather than a conventional single mode distribution.”
Appeal Br. 11. From the outset, Appellant does not adequately explain why
this argument supports patentability of claim 1—which is an apparatus claim
and does not recite a particular distribution of microparticles.
Moreover, as analyzed supra, “[a]ll the disclosures in a reference must
be evaluated, including nonpreferred embodiments.” In re Mills, 470 F.2d
649, 651 (CCPA 1972). To the extent that Appellant’s argument regarding
the distribution mode relates to the reason to combine the Warthoe with
Ohtsuka (Appeal Br. 13), the record does not support Appellant’s argument
that Worthoe’s preferred embodiments would have discouraged a person of
ordinary skill from taking the path set out therein, or lead an ordinary artisan
in a direction divergent from the patent taken by Appellant. See In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to teach away
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when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.”). For
example, Appellant argues that “[n]othing in Warthoe discloses or suggests
that the magnetic particle diameter of 100 nm or less (0.1 μm or less) of
Ohtsuka would have improved imaging quality without using a bimodal
distribution of magnetic particles described at para. [0051] of Warthoe and
quantitatively demonstrated in Tables 2 and 3 of Warthoe” but does not
show that Warthoe allows only a bimodal distribution of particles and
discourages all others. Appeal Br. 12 (emphasis omitted).
The Examiner provides multiple reasons that a skilled artisan would
have combined Ohtsuka with Warthoe to arrive at the apparatus recited in
claim 1. Final Act. 8, 12. For example, the Examiner finds that like Ohtsuka,
Warthoe
likewise provides a flow channel with magnetic microparticles
capturing an analyte and optically assessing the capturing
thereof in which providing hydrophilic upper and lower
substrates in the solution vessel provide for allowing the
solution to spread across the substrate surface for increased
contact and optical assessment thereof, and further providing
the solution vessel (i.e. as shown in figs 10A-C of Ohtsuka) to
have a width between the flat substrates 100 micrometers or
less would have been an obvious modification as taught by
Warthoe which is likewise concerned with binding assays
involving particles of likewise scale in which such width
provides a spacing that sufficiently holds and confines the
solution and magnetic microparticles to be properly and
assuredly assessed in the vessel by the CCD detector coincident
therewith.
Id. at 8. Appellant does not address these findings in support of the
Examiner’s obviousness analysis. Compare Appeal Br. 11–13 (arguing
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instead that the Examiner failed to consider the preferred embodiments in
Warthoe and “failed to identify any disclosure in Ohtsuka and Warthoe
which would lead one of ordinary skill in the art to recognize that the
Examiner’s proposed modification would lead to the Examiner’s asserted
improved imaging quality in Ohtsuka”), with Final Act. 8.
The record before us supports the Examiner’s finding that Appellant’s
apparatus is no more the combination of familiar structural elements known
in the art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). As
analyzed supra, Appellant’s arguments regarding the preferred embodiments
in Warthoe do not identify reversible error in the Examiner’s rationale in
support of the rejection. See Appeal Br. 11–13. The record before us
supports the Examiner’s rationale for combining the references to be based
on articulated reasoning with rational underpinning. See KSR, 550 U.S. at
418.
With regard to the claim limitation “wherein a measured bright spot
count of the bright spots obtained from the image is greater than 80% of a
theoretical bright spot count,” Appellant argues that the Examiner failed to
carry the burden of showing that the limitation is taught or suggested in the
prior art. Appeal Br. 15.
Appellant, however, does not address the Examiner’s explicit finding
that the prior art apparatus having identical structural components would
have the capability of achieving the same recited function. Compare id., with
Final Act. 11. More specifically, the Examiner states:
Ohtsuka in view of Warthoe provides to disclose all of the
claimed structural elements, commensurately-arranged and
capable of functioning as claimed and to this end it is asserted
that given such a commensurately-arranged and capably
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functioning device given by Ohtsuka in view of Warthoe, such
combination would be equivocally capable of imaging to a
measured bright spot as recited in the amendment of claim 1.
Final Act. 11. “[T]he patentability of apparatus or composition claims
depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
809 (Fed. Cir. 2002). Given that the record supports the Examiner’s finding
of structural identity and Appellant has not addressed the Examiner’s
reasonable basis showing that the prior art apparatus would provide the same
recited function, we are not persuaded that the Examiner failed to carry the
evidentiary burden here.
Appellant presents Figure 4 of the Specification as support for certain
purported unexpected results. Appeal Br. 15. A party asserting unexpected
results as evidence of nonobviousness has the burden of proving that the
results are unexpected. In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir.
1997). This burden requires Appellant to proffer factual evidence that
actually shows unexpected results relative to the closest prior art. In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991).
Figure 4 of the Specification “is a graph explaining the result of
principle examination according to Example of the invention” (Spec. ¶ 8)—
not a comparison relative to “the closest prior art.” See Baxter Travenol
Labs., 952 F.2d at 392. We are, therefore, not persuaded that unexpected
results have been shown.
CONCLUSION
The Examiner’s indefiniteness rejection of claim 15 is reversed.
The Examiner’s obviousness rejections are affirmed.
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More specifically,
DECISION SUMMARY
Claims
Rejected Basis Affirmed Reversed
1, 4–9, and
11–15
pre-AIA 35
U.S.C. § 103(a)
1, 4–9, and
11–15
15
pre-AIA 35
U.S.C. § 112,
second paragraph
15
Overall
Outcome
1, 4–9, and
11–15
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED