Progenity, Inc.

Patent Trials and Appeals Board

Dec 8, 2020

2020003637 (P.T.A.B. Dec. 8, 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.
15/025,091 03/25/2016 Hans Zou 44090-0090US1 6191
155652 7590 12/08/2020
FISH & RICHARDSON P.C. (Progenity)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
SCHMIDT, EMILY LOUISE
ART UNIT PAPER NUMBER
3783
NOTIFICATION DATE DELIVERY MODE
12/08/2020 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):
Aubrey.Haddach@progenity.com
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS ZOU, JEFFREY A. SHIMIZU,
VENTZESLAV PETROV IORDANOV, KLAAS KERKHOF, and
CHRISTOPH WANKE
Appeal 2020-003637
Application 15/025,091
Technology Center 3700

Before DANIEL S. SONG, STEFAN STAICOVICI, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 7, 8, 12–17, 21, 23, 25, 26, and 28–
49. 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(a). Appellant identifies the real party in interest as Progenity, Inc.
Appeal Br. 1.
Appeal 2020-003637
Application 15/025,091

2
CLAIMED SUBJECT MATTER
The claims are directed to a capsule. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A capsule, comprising:
a housing;
a gas generating unit configured to generate gas in the
housing;
a compressible reservoir sealed relative to the gas
generating unit and configured to contain a substance; and
a threshold valve comprising a solid member and a sealing
member different from the solid member,
wherein:
the housing has an opening defining an outlet for the
substance contained in the reservoir;
the compressible reservoir comprises a deformable
membrane;
when a pressure acting on the threshold valve is less
than a threshold pressure, the sealing member seals the solid
member to the opening so that the threshold valve seals the
opening; and
when the pressure acting on the threshold valve
exceeds the threshold pressure, the threshold valve becomes
permanently detached from the housing, and
wherein at least one of the following holds:
an area of the opening is about the same as a
cross-sectional area of the housing; and
a diameter of the opening is about the same
as a diameter of a cross-section of the housing.
Appeal 2020-003637
Application 15/025,091

3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Houzego US 2004/0215171 A1 Oct. 28, 2004
Gross US 2004/0253304 A1 Dec. 16, 2004
Coppeta US 2005/0055014 A1 Mar. 10, 2005
REJECTIONS
Claims 1, 7, 12–17, 21, 23, 25, 26, and 28–49 are rejected under 35
U.S.C. § 103 as being unpatentable over Houzego and Gross.
Claim 8 is rejected under 35 U.S.C. § 103 as being unpatentable over
Houzego, Gross, and Coppeta.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. 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 identify
the alleged error in the [E]xaminer’s rejections.”). “The arguments shall
explain why the examiner erred as to each ground of rejection contested by
appellant.” 37 C.F.R § 41.37(c)(1)(iv).
Appellant offers no explanation as to why the Examiner erred in
rejecting the pending claims. See Appeal Br. 3. Rather, Appellant simply
alleges, without explanation, that the proposed combinations would not have
been obvious. See id. (“[I]t would not have been obvious to modify
Houzeg[o] in view of Gross to provide the subject matter covered by
independent claim[s 1, 17, and 25]. For example, it would not have been
Appeal 2020-003637
Application 15/025,091

4
obvious to a person of ordinary skill in the art to modify Houzeg[o] in view
of Gross to provide a capsule having a deformable membrane.”) Appellant’s
naked assertions, without more, are insufficient to identify reversible error.
See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 7, 12–17,
21, 23, 25,
26, 28–49
103 Houzego, Gross 1, 7, 12–17,
21, 23, 25,
26, 28–49

8 103 Houzego, Gross,
Coppeta
8
Overall
Outcome
1, 7, 8, 12–
17, 21, 23,
25, 26, 28–49

TIME PERIOD FOR 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