UNIVERSITY OF KANSAS

Patent Trials and Appeals Board

Jul 6, 2020

14765754 - (D) (P.T.A.B. Jul. 6, 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.
14/765,754 08/04/2015 Nikki CHENG 10KU040M-05 8653
147202 7590 07/06/2020
Ray Quinney & Nebeker-KU
Paul N. Taylor
36 South State Street
Suite 1400
Salt Lake City, UT 84111
EXAMINER
EDWARDS, LYDIA E
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
07/06/2020 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):
patent@rqn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NIKKI CHENG, WEI BIN FANG, TERRY N. FADDIS, and
JOHN PRESTON WHITE
Appeal 2019-003082
Application 14/765,754
Technology Center 1700
Before CATHERINE Q. TIMM, JEFFREY B. ROBERTSON, and
WHITNEY N. WILSON, Administrative Patent Judges.
TIMM, 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 1–8 and 21–26. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 The
University of Kansas. Appeal Br. 3.
Appeal 2019-003082
Application 14/765,754
2
CLAIMED SUBJECT MATTER
The claims are directed to a device for imaging at least two test
components. See, e.g., claim 1. Figure 1, reproduced below, shows an
embodiment of the device.

Figure 1 is a perspective view of mimetic device 100. Device 100
includes inner chamber 104 that defines an interior volume 106.

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Application 14/765,754
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Figure 2 depicts an exploded view of inner chamber 104 and is
reproduced below:

As can be seen in Figure 2, inner chamber 104 includes base 202,
external wall 204, and internal wall 206. Spec. ¶ 27. External wall 204
includes external opening 2102 and internal wall 206 includes internal
opening 212. Spec. ¶ 32. External wall 204 may rotate relative to internal
wall 206 to align the openings to form channel 110 (shown in Figure 1).

2 Mislabeled 212 in Figure 2.
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Application 14/765,754
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Spec. ¶ 28. In this way, either external wall 204 or internal wall 206 serves
as a gate, which is able to seal the opening as shown in Figs. 3-2 and 4-2.
Between external wall 204 and internal wall 206 and transversely across
channel 110 is porous member 208. Spec. ¶ 32.
Claim 1, reproduced below with reference numerals from Figures 1
and 2, is illustrative of the claimed subject matter:
1. A device [100] for imaging at least two test
components, the device [100] comprising:
a chamber [104] having a base [202] and at least one wall
[204] that define an interior and an exterior of the chamber
[104];
an external opening [210, labeled 212 in Fig. 2] through
the at least one wall [204] of the chamber [104], the external
opening [210] adjacent the base [202] of the chamber [104], the
external opening [210] having an upper surface in the at least
one wall [204] and being defined by the upper surface, the
external opening [210] configured to provide fluid
communication between the interior and exterior of the
chamber [104];
a gate [206] moveable relative to the chamber and
configured to selectively seal the opening [210]; and
a porous member [208] disposed transversely across the
external opening.
Appeal Br. 30 (Claims Appendix).3

3 Appellant refers to the embodiment of Figure 6 in the Summary of Claimed
Subject Matter when summarizing the subject matter of claim 1. Appeal
Br. 3–7. We do not interpret claim 1 an encompassing the embodiment of
Figure 6 because claim 1 requires a gate and a porous member as separate
elements. See Becton, Dickinson & Co. v. Tyco Healthcare Group LP, 616
F.3d 1249, 1254 (Fed. Cir. 2010) (“Where a claim lists elements separately,
‘the clear implication of the claim language’ is that those elements are
‘distinct component[s]’ of the patented invention.” (citations omitted)). The
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Application 14/765,754
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Deisboeck US 2001/0031480 A1 Oct. 18, 2001
Renken US 2013/0210131 A1 Aug. 15, 2013

REJECTIONS
The Examiner maintains the following rejections.
Claims 1–8 and 21–26 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Deisboeck in view of Renken. Final Act. 6.
Claim 26 is rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112
(pre-AIA), first paragraph, as failing to comply with the written description
requirement. Final Act. 4.

OPINION
Obviousness
Turning first to the rejection of claims 1–8 and 21–26 as obvious over
Deisboeck in view of Renken, we agree with Appellant that the Examiner
reversibly erred in interpreting “base” and “adjacent” and also in finding a

Specification does not describe the embodiment of Figure 6 as having two
separate structures for the gate and porous member, but only a tab 614 that is
both porous and serves as a gate. Spec. ¶¶ 44–45. Thus, claim 1 does not
encompass the embodiment of Figure 6. See In re Smith Int’l, Inc., 871 F.3d
1375, 1382–83 (Fed. Cir. 2017) (holding that the correct interpretation “is an
interpretation that corresponds with what and how the inventor describes his
invention in the specification, i.e., an interpretation that is ‘consistent with
the specification.’”) (quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
Appeal 2019-003082
Application 14/765,754
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reason for incorporating a porous member across the external opening of
Deisboeck.
Deisboeck discloses a device with delivery chamber 26 that separates
control chamber 12 and test chamber 14. Deisboeck ¶ 44. Figures 2a and 2b
depict cylinder 22 within delivery chamber 26. Fig. 2a; ¶ 45. Figure 2a, as
annotated by the Examiner, is reproduced below:

Ans. 3.
Figure 2a is a cross-sectional view of Diesboeck’s delivery chamber.
Diesboeck ¶ 28. As shown above, cylinder 22 has an opening 26a.
Diesboeck ¶ 45. The Examiner finds that opening 26a is through a wall of
the chamber and further finds that holes 22a and 26a create a slit that
inherently provides a lower base surface. Final Act. 6; Ans. 3. But we agree
with Appellant that the structure relied on by the Examiner as a base and a
wall does not meet the requirements of claim 1.
Claim 1 requires “a chamber having a base and at least one wall that
define an interior and an exterior of the chamber.” The surface of the slit
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Application 14/765,754
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does not cooperate with a wall to define an interior and an exterior of the
chamber. The slit only defines an opening to a channel. Moreover, as
pointed out by Appellant, the base must be separate from the wall. Reply
Br. 4–5. The claim requires two separate structures. The base would be
understood to be the bottom of a structure that defines the chamber. The
surface of the opening 26a is not such a structure. Nor do we agree with the
Examiner’s finding that Deisboeck’s opening 26a is “adjacent” to a base,
i.e., bottom, of the chamber. Ans. 2–3.
The Examiner also finds that the combination of Deisboeck and
Renken discloses an external opening adjacent the base of the chamber.
Final Act. 7. But the finding lacks reasoning supporting a suggestion to
incorporate Renken’s port 164, which has a different function than
Deisboeck’s opening 26a. Final Act. 7; Ans. 2–4.
We also agree with Appellant that the Examiner failed to provide
adequate support for the finding of a reason or suggestion to incorporate
Renken’s horizontally-disposed filter 330 in Deisboeck’s vertically-disposed
opening. Appeal Br. 13.
For the foregoing reasons, we reverse the rejection under §103(a).

Written Descriptive Support
The Examiner rejects claim 26 under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement. Final Act. 4. The Examiner finds no support for a
porous member that “fills more than a third of an annular gap.” According to
the Examiner, the Specification “only provides support for a porous member
that partially fills an annular gap.” Final Act. 4 (emphasis omitted).
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We agree with Appellant that paragraph 33 of the Specification
provides adequate support. Appeal Br. 26–27. Paragraph 33 conveys a range
of heights and circumferential lengths for the porous member in the
following disclosure:
In another example, the porous member 208 may extend around
about a third of the inner perimeter (i.e. circumference in a
circular case) of the external wall 204 and/or the outer
perimeter of the internal wall 206. In a further example, the
porous member 208 may at least partially fill an annular gap
(not shown) between the external wall 204 and the internal wall
206 (i.e. be the same height as the external wall 204 and/or the
internal wall 206 and/or extend around the entire perimeter of
the external wall 204 and/or the internal wall 206). In yet a
further example, the porous member 208 may completely fill an
annular gap (not shown) between the external wall 204 and the
internal wall 206 (i.e. be the same height as the external wall
204 and/or the internal wall 206 and extend around the entire
perimeter of the external wall 204 and/or the internal wall 206).
Spec. ¶ 33. The porous member may extend around about a third of the
circumference. It may be the same height as the external wall. It may extend
around the entire perimeter. It may be the same height and extend around the
entire perimeter, i.e., it may completely fill the annular space. This
disclosure of ranges of heights and circumferential lengths reasonably
conveys that Appellant was in possession of porous members filling more
than a third of the annular gap located between the two walls.

CONCLUSION
The Examiner’s decision to reject claims 1–8 and 21–26 is reversed.

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Application 14/765,754
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DECISION SUMMARY
In summary:
Claim(s) 35 U.S.C. § Basis/Reference(s) Affirmed Reversed
26 112(a) 0r
112 (pre-
AIA), first
paragraph
Written
Description
26
1–8, 21–26 103(a) Deisboeck, Renken 1–8, 21–26
Overall
Outcome
1–8, 21–26

REVERSED