BioFire Defense, LLC

Patent Trials and Appeals Board

Nov 23, 2021

2020006556 (P.T.A.B. Nov. 23, 2021)

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.
15/229,046 08/04/2016 Zackery Kent Evans 18244.6A.6.1 7646
122153 7590 11/23/2021
BioFire Defense, LLC
60 East South Temple, Suite 1000
Salt Lake City, UT 84111
EXAMINER
PRAKASH, GAUTAM
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
11/23/2021 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):
docketing@wnlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZACKERY KENT EVANS,
THOMAS KNIGHT BODILY, RICHARD DAVID ABBOTT,
and PATRICK L. RILEY
____________

Appeal 2020-006556
Application 15/229,046
Technology Center 1700
____________
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 5, 6, 8, 9, 12, 13, 18, and 19 of
Application 15/229,046. Corrected Appeal Br. 2 (filed June 2, 2020); Ans. 3
(July 21, 2020).2 We have jurisdiction under 35 U.S.C. § 6.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies BioFire Defense, LLC as the real party in interest. Appeal Br. 2.
2 The Examiner rejected claims 1–19 in the Final Office action dated
September 26, 2019 (hereinafter “Final Act.”). After entry of the Final
Office Action, Appellant canceled claims 3, 4, 7, 10, 11, and 14–17, thereby
mooting several grounds of rejection.
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Application 15/229,046
2
For the reasons set forth below, we reverse.
I. BACKGROUND
The ’046 Application describes a thermal cycling apparatus. Spec. ¶ 2.
These devices are commonly used in nucleic acid amplification processes.
Claim 1 is representative of the claims on appeal and is reproduced
below from the Corrected Appeal Brief’s Claims Appendix. We have
italicized the key limitation in dispute.
1. A thermal cycler apparatus, comprising:
a well block comprising a plurality of wells, wherein
each well defines an interior void space, each well comprising:
an upper sidewall defining an upper conical
portion of the interior void space;
a lower sidewall defining a generally cylindrical
portion of the interior void space below the upper conical
portion; and
a flat bottom defining the bottom of the interior
void space, wherein the flat bottom is perpendicular to
the generally cylindrical portion and is below the
generally cylindrical portion,
the interior void space of each well extending
continuously from the upper conical portion to the flat bottom;
a sample well received within the interior void space and
extending into the generally cylindrical portion of at least one
well, wherein the sample well contacts the upper sidewall of the
at least one well;
a peltier device coupled to the well block; and
a heat sink coupled to the peltier device.
Corrected Appeal Br. 16 (emphasis added).
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Application 15/229,046
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II. REJECTION
On appeal, the Examiner maintains the following rejection:
Claims 1, 2, 5, 6, 8, 9, 12, 13, 18, and 19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Schneebeli,3 Elsener,4 and
Woods.5 Final Act. 3; Ans. 3.
III. DISCUSSION
For the purpose of this appeal, we need only consider independent
claims 1 and 18. Each of these claims specifies, inter alia, the shape of the
wells in the thermal cycler. In particular, claim 1 recites that “each well
defines an interior void space, each well comprising . . . a flat bottom
defining the bottom of the interior void space.” Similarly, claim 18 requires
that “each well defin[e] an interior void space that extends continuously . . .
to a flat bottom defining a distal end of the well.”
For the reasons set forth below, we reverse the rejection of
independent claims 1 and 18. Because we have reversed the rejection of both
of the independent claims, we also reverse the rejection of each of the
remaining dependent claims in the ’046 Application.

3 US 6,197,572 B1, issued March 6, 2001.
4 U.S. RE39,566 E, reissued April 17, 2007.
5 US 2010/0081191 A1, published April 1, 2010.
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Application 15/229,046
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Figure 14 of the ’046 Application—a portion of which is reproduced
below—depicts a well as claimed.
Figure 14 is a cross-sectional view of a well block
of a thermal cycler. Spec. ¶ 18.
The well’s flat bottom is clearly shown in this exemplary embodiment.
The Examiner proffers two different explanations for how the prior art
describes or suggests the limitations recited in claims 1 and 18. We address
these explanations in turn.
A. Schneebeli does not describe or suggest a flat-bottomed well
In rejecting claims 1 and 18, the Examiner found that Schneebeli
depicts flat-bottomed wells. Final Act. 3–4, 7 (citing Schneebeli, Fig. 2). We
determine that this finding is erroneous and cannot support a prima facie
case of obviousness.
After careful review of Schneebeli’s written description, we find that
the reference is silent regarding the shape of the well bottom. Several of
Schneebeli’s figures, however, show wells with conical bottoms. See, e.g.,
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Application 15/229,046
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Schneebeli, Figs. 1, 2, 8, 10. For ease of reference, we reproduce a portion
of Schneebeli’s Figure 2 below.

Schneebeli’s Figure 2 is a cross-sectional view of a
thermal cycler. Schneebeli 2:10. We have
excerpted a portion showing thermal block 71 and
chambers 72 positioned therein. Id. 2:57–60.
Based upon our review of Figure 2, we determine that a person having
ordinary skill in the art would have understood that Figure 2 depicts a well
with a conical bottom.
For these reasons, we determine that the Examiner erred by finding
that Schneebeli describes or suggests a flat-bottomed well in a thermal
cycler’s well block.
B. The Examiner has not explained why a person having ordinary skill in
the art would have modified Schneebeli’s well to incorporate
Elsener’s flat bottom
In the Examiner’s Answer, the Examiner advances a new theory for
how the combination of prior art teaches or suggests the claimed flat-
bottomed well. See Answer 7–8. In this argument, the Examiner finds that
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Elsener describes a flat-bottomed well. Id. at 7. For ease of reference, we
reproduce Elsener’s Figure 4a below:
Elsener’s Figure 4a is a cross-sectional view of a
thermal cycler’s heating plate. Elsener 1:58–59.
The Examiner found that indentation 4 in Elsener’s well plate
corresponds to the claimed well. Answer 7. As shown in Figure 4a,
indentation 4 is shaped as an inverted truncated cone. While it does have a
flat bottom, it does not meet all of the other limitations in claims 1 and 18
regarding the well’s shape. See, e.g., Claim 1 (“each well comprising . . . a
lower sidewall defining a generally cylindrical portion of the interior void
space below the upper conical portion”). The Examiner, however, argues
that it would have been obvious to a person having ordinary skill in the art to
replace the conical bottom of Schneebeli’s well with the flat bottom shown
in Elsener’s Figure 4a. Answer 7–8.
We cannot affirm the Examiner’s rejection of claims 1 and 18 based
upon this theory. When an obviousness rejection is based upon a
combination of references, an examiner must identify a motivation to
combine the references in the manner that creates a prima facie case of
obviousness. In other words, an examiner must explain why a person having
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ordinary skill in the art would have selected the elements from the cited prior
art for combination in the manner claimed. In re Rouffet, 149 F.3d 1350,
1357 (Fed. Cir. 1998). This requirement exists to prevent an examiner from
using the invention as a blueprint for piecing together elements in the prior
art to defeat patentability of the claimed invention. Id. (citing Sensonics, Inc.
v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996)).
In this case, the Examiner has not met this burden. The Examiner
found that well plates with flat-bottomed wells are known. Answer 7 (citing
Elsener, Figs. 4a, 4b). The Examiner argues that the use of Elsener’s flat
well bottom to replace Schneebeli’s conical well bottom would “simply be a
combination of an old element performing the same function it had been
known to perform and yielding no more than one of ordinary skill in the art
would expect from such a combination.” Id. at 7–8 (citing KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 415–16 (2007)).
We determine that the Examiner’s explanation is not sufficient. We
agree with Appellant that the Examiner has failed to explain why a person
having ordinary skill in the art would have chosen to modify only the bottom
of Schneebeli’s well rather than to replace Schneebeli’s well with Elsener’s
well design. See Reply Br. 8–9. In the absence of such an explanation, we
are constrained to conclude that the Examiner’s second theory of
unpatentability is tainted by an impermissible degree of hindsight.
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IV. CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5, 6, 8, 9, 12,
13, 18, 19 103(a) Schneebeli, Elsener, Woods
1, 2, 5, 6, 8, 9,
12, 13, 18, 19
REVERSED