Menarini Silicon Biosystems S.p.A.

Patent Trials and Appeals Board

Sep 29, 2020

14353303 - (D) (P.T.A.B. Sep. 29, 2020)

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.
14/353,303 04/22/2014 Gianni Medoro 20022/48568 4623
4743 7590 09/29/2020
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
EXAMINER
XU, XIAOYUN
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
09/29/2020 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GIANNI MEDORO, ALEX CALANCA,
and NICOLÒ MANARESI

Appeal 2019-006548
Application 14/353,303
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY R. SNAY, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 9–24. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Menarini
Silicon Biosystems S.p.A. Appeal Brief dated May 31, 2019 (“Appeal Br.”)
1.
Appeal 2019-006548
Application 14/353,303

2
CLAIMED SUBJECT MATTER

The present application generally relates to a device for optical
analysis of particles suspended in a fluid at low temperatures. Specification
filed April 22, 2014 (“Spec.”) 2–3. The Specification teaches that certain
optical analyses are performed at temperatures below ambient temperature.
Id. at 2. Such temperatures may “trigger phenomena of condensation on the
outer surface” of a device. Id. at 2–3. Condensation is undesirable as it may
impair the optical analysis. Id. at 2, 3. This may be remedied by including
means to heat the optical inspection surface (i.e., the top surface) to a
temperature above the dew point (Td) of the ambient air. Id. at 9.
Claim 9 is illustrative of the subject matter on appeal and is
reproduced below with certain limitations bolded for emphasis:

9. An apparatus for optical analysis of particles contained in
suspension in a fluid, at temperatures lower than dew point
temperature relative to ambient conditions, comprising:
- at least one microchamber containing said fluid and delimited
between a first and a second surface;
- a first cooling device thermally coupled with the first surface
by a first thermal resistance and adapted to subtract heat from
the microchamber by an amount such as to maintain said fluid
at a first temperature that is lower than the dew point
temperature relative to ambient conditions; and
- an optical inspection surface thermally coupled to the second
surface by a second thermal resistance; characterized in that, in
combination:
- the second thermal resistance has a thermal
conductivity value equal to or less than half the thermal
conductivity of the first thermal resistance; and
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Application 14/353,303

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- the apparatus further comprises a thermal flow
generator for establishing a thermal flow at the optical
inspection surface while the apparatus is operative and
optical analysis of the particles is being performed through the
optical inspection surface, wherein the thermal flow is such
that the optical inspection surface is constantly maintained
at a second temperature higher than the dew point
temperature relative to ambient conditions of the air which
laps the optical inspection surface in use.
Appeal Br. 10–11 (Claims App.) (reformatted for clarity).
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Hollander US 4,682,007 July 21, 1987
Manaresi et al.
(“Manaresi”)
US 2009/0218223 A1 Sept. 3, 2009
Nielsen et al. (“Nielsen”) WO 02/41999 A1 May 30, 2002

REJECTIONS
The Examiner maintains the following rejections:
1. Claims 9, 10, 13–17, 20, 21, and 24 are rejected under pre-
AIA 35 U.S.C. § 103(a) as being unpatentable over Nielsen
in view of Manaresi. Final Action dated Sept. 10, 2018
(“Final Act.”) 3–7.
2. Claims 11, 12, 18, 19, 22, and 23 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Nielsen in view
of Manaresi and Hollander. Id. at 7–8.
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DISCUSSION
Rejection 1. The Examiner rejects claims 9, 10, 13–17, 20, 21, and
24 as obvious over Nielsen in view of Manaresi. Id. at 3–7.
Nielsen is titled “Decondenser Unit.” Nielsen, code (54). Nielsen
teaches a method and apparatus for counteracting condensed dew on the
cover of a test plate used in optical analysis. Id. at 2. Figure 3 of Nielsen is
reproduced below.

Figure 3 of Nielsen depicts “an apparatus for treating a test plate in advance
of inspection of the wells.” Id. at 5. Figure 3 shows test plate 1 with an
array of wells 2 (microchambers) positioned between cooling plate 5 and
heating plate 4. Id. The wells 2 are covered and sealed by cover film 3. Id.
Nielsen teaches that “[t]he time the test plate stays between the
cooling plate and the heating plate may be 1–10 minutes which has appeared
to keep the covering film free from harmful condense for 30 minutes which
is sufficient for a careful optical reading of the reactions in the individual
wells.” Id. at 2.
In support of the rejection, the Examiner finds that one of ordinary
skill in the art would have had reason to modify Nielsen to establish a
thermal flow at the optical inspection surface while the apparatus is
operative. Final Act. 5–6. The Examiner notes that Nielsen teaches that
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blowing hot air over the covered wells of the test plate “may make the
condense water evaporate to make the film transparent but the effect will
only last for a time which is too short to allow the wanted inspection of the
wells.” Id. at 5. The Examiner further finds that “[o]ne of ordinary skill in
the art would have recognized that the condense water starts to form on the
transparent cover film as soon as the test plate leaves the decondenser” and
as a result would have been led to analysis of the samples while the test plate
is still in the decondenser. Id. at 6.
Appellant argues that the rejection is in error. Appeal Br. 4–6.
Appellant asserts that Nielsen teaches only a decondenser and lacks any
guidance to perform optical analysis contemporaneously with “a
decondensing function.” Id. at 4–5. Appellant directs us to Nielsen’s
teaching that, “[w]hen a sufficient temperature difference is provided it will
last some time before condensation of the film takes place” and that such
“time is sufficient to perform the wanted inspection.” Id. at 5 (emphasis
omitted) (citing Nielsen 4:35–5:2). Appellant further directs us to Nielsen’s
teaching that, when the temperature of the top film is raised and the
temperature of the bottoms of the wells is lowered, any condensation is
“shifted from the top film . . . to the bottom of the wells.” Id. (citing Nielsen
4:31–34).
In view of such teachings, Appellant reasons that a person of ordinary
skill in the art would not have had reason to modify Nielsen. Id. at 5–6.
Appellant argues that the proposed modification would have been viewed
“as unnecessary and contrary to the purpose of Nielsen in providing a rapid
automated scanning process that can allow for processing of piles of test
plates with simultaneous decondensing of one test plate while another is
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optically analyzed.” Id. Appellant further argues that one of skill in the art
would perceive no value in increasing the time prior to formation of
condensate because “Nielsen expressly teaches that the disclosed apparatus
allows for sufficient condensation free time to perform the necessary optical
analysis.” Id. at 6.
In the Answer, the Examiner determines that “[t]he motivation [for
the proposed modification] is to keep the least condensed water on the
transparent cover film, because Nielsen teaches that the defogging effect will
only last for a time.” Examiner’s Answer dated July 12, 2019 (“Ans.”) 10.
Thus, the Examiner determines that a person of ordinary skill in the
art would have had reason to make the proposed modification so as to extend
the period of time during which one may perform optical analysis
unimpeded by condensation. Appellant argues that this is in error because
Nielsen’s decondenser allows for sufficient time for analysis prior to
formation of condensation.
In its Reply Brief, Appellant reiterates its view that condensation does
not begin until the inspection surface drops to a certain temperature. Reply
Brief dated Sept. 3, 2019 (“Reply Br.”) 2–4. Appellant further directs us to
Nielsen’s teaching that the separate decondenser provides adequate time for
analysis. Id. at 3. Appellant argues that this would have weighed against
one of ordinary skill in the art perceiving a need for increasing the time
during which the optical surface remains free of condensate. Id. at 4.
As persons of scientific competence in the fields in which they work,
examiners are responsible for making findings, informed by their scientific
knowledge, as to the meaning of prior art references to persons of ordinary
skill in the art. Absent legal error or contrary factual evidence, those
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findings can establish a prima facie case of obviousness. In re Berg, 320
F.3d 1310, 1315 (Fed. Cir. 2003). The Examiner’s determination that the
prevention of condensation for an extended time would have been desirable
is reasonable on its face. This is so regardless of whether there is an interval
after removal from a decondenser unit during which condensation does not
occur. “[C]ase law does not require that a particular combination must be
the preferred, or the most desirable, combination described in the prior art in
order to provide [the] motivation for the current invention.” In re Fulton,
391 F.3d 1195, 1200 (Fed. Cir. 2004); see also KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 401 (2007) (“a combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.”). Accordingly, Appellant has not persuaded us of
harmful error in this regard.
Appellant presents additional argument regarding the rejection of
claim 21. Appeal Br. 6–8. Claim 21 is an independent claim generally
similar to claim 9 but which requires “a thermal flow generator attached to
the optical inspection surface for establishing a thermal flow at the optical
inspection surface while the apparatus is operative.” Id. at 13 (Claims
App.). In the Final Office Action, the Examiner finds that one of ordinary
skill in the art would have had reason to attach a “thermal flow generator”
(heating mechanism) to the inspection surface (top surface of the wells of
the test plate) “because attaching the thermal flow generator to the optical
inspection surface would simply increase the efficiency of the heating.”
Final Act. 6. The Examiner further posits that the thermal flow generator
could be configured to be removably attached to the inspection surface for
ease of use. Id.
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Appellant argues that the rejection of claim 21 is in error. Appeal Br.
6–8. Appellant argues as follows: that there is no indication that a faster,
more efficient heating process would decrease overall efficiency as the
cooling function still needs to take place (id. at 6–7); that the use of a
heating attachment would add an additional, unnecessary, step to the overall
process (id. at 7); that one of skill in the art would not attach the heat plate to
the inspection surface because Nielsen employs the space between the heat
plate and the test plate to ensure proper ventilation (id.); and that the
proposed configuration may lead to overheating (id.).
Appellant’s first argument, that there is no indication in Nielsen that
more rapid heating would reduce overall time in the decondenser unit, is not
persuasive of error. The Examiner’s stated rationale, to increase the
efficiency of the heating, is reasonable and has not been shown to be in
error. Further, one may infer that the times needed for heating and cooling
will vary depending on the temperature of the heating and cooling plates.
Thus, at certain temperature settings, an attached heating unit may lead to
increased efficiency.
Appellant’s second argument, that the use of a heating attachment
would add an additional, unnecessary, step is also unpersuasive of error.
“[A] given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to combine.”
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Here,
there may be a tradeoff between an additional step and more efficient
heating. Such design tradeoffs do not necessarily obviate a reason to
combine. Id.
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Appellant’s third argument, that a heating attachment would prevent
Nielsen from using the space between the heat plate and the test plate to
ensure proper ventilation, is not persuasive of error. Nielsen’s teaching
concerns the space between the heat plate and the cooling plate. See Nielsen
3. This differs from the space between the heat plate and the test plate.
Appellant’s fourth argument, that the proposed configuration may
lead to overheating, is also unpersuasive. Appellant asserts that “[t]he
skilled person would expect attachment of the heater to the optical
inspection surface to be potentially detrimental as it brings more direct
heating to the contents of the test plates.” Appeal Br. 7. This statement,
however, is not supported by citation to factual evidence of record. See
Estee Lauder, Inc. v. L’Oréal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)
(Argument made by counsel in a brief does not substitute for evidence
lacking in the record.). Further, one of skill in the art would be expected to
make appropriate adjustments to prevent undesirable effects such as
overheating. See KSR Int’l Co., 550 U.S. at 418 (“a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.”).
In view of the foregoing, Appellant has not shown error in the
rejection of any claim.

Rejection 2. The Examiner rejects claims 11, 12, 18, 19, 22, and 23
as obvious over Nielsen in view of Manaresi and further in view of
Hollander. Final Act. 7–8. Appellant relies upon the arguments described
above in support of its appeal of these claims. Appeal Br. 4. As we have
not found such arguments to be persuasive, we determine that Appellant has
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not shown error with regard to the rejection of claims 11, 12, 18, 19, 22, and
23.

CONCLUSION

The Examiner’s rejections are affirmed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
9, 10, 13–
17, 20, 21,
24
103(a) Nielsen, Manaresi 9, 10, 13–
17, 20, 21,
24

11, 12, 18,
19, 22, 23
103(a) Nielsen, Manaresi,
Hollander
11, 12, 18,
19, 22, 23

Overall
Outcome
9–24

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