Ex Parte COLLINS et al

Patent Trials and Appeals Board

Apr 29, 2019

14307598 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/307,598 06/18/2014 Charles J. COLLINS
108120 7590 05/01/2019
Parker Highlander PLLC
1120 S. Capital of Texas Hwy
Bldg 1, Suite 200
Austin, TX 78746
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
LUMN.P0070US.CP1.C2 5295
EXAMINER
TURK,NEILN
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
05/01/2019 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):
docket@phiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES J. COLLINS, WILLIAM R. DEICHER,
JARDEN E. KRAGER, ADAM R. SCHILFFARTH,
and ROSS G. JOHNSON
Appeal2018-006600
Application 14/307,598 1
Technology Center 1700
Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an Appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 15-18 and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellant and the real party in interest is LUMINEX CORPORATION.
(See App. Br. 3.)
Appeal2018-006600
Application 14/307 ,598
The appealed invention relates to a system configured to perform
imaging and analysis of particles to measure characteristics of the particles.
(Spec. 3.) Independent claim 15 is representative of the appealed subject
matter and reproduced below:
15. A system for analyzing a fluidic assay, comprising:
a fluidic flow-through chamber comprising an imaging region,
wherein the imaging region comprises a central point and a
leading edge of the imaging region;
a magnet comprising a polarizing axis and a leading edge of the
magnet, wherein:
the polarizing axis of the magnet is located downstream of the
central point of the imaging region; and
the leading edge of the magnet is located downstream relative
to the leading edge of the imaging region;
a mechanism for selectively positioning the magnet in
proximity to the imaging region of the fluidic flow-through
chamber, the mechanism comprising an actuator and a magnetic
field strength sensor;
an illumination subsystem configured to illuminate the imaging
region of the fluidic flow-through chamber; and
a photosensitive detection subsystem configured to image the
imaging region of the fluidic flow-through chamber when
illuminated;
wherein an interior back portion of the imaging region of the
fluidic flow-through chamber comprises a roughened surface.
(App. Br. 12 (Claims Appendix).)
2
Appeal2018-006600
Application 14/307 ,598
The following rejections are presented for our review:
I. Claims 15-17 and 21 are rejected under 35 U.S.C. § I03(a) as
unpatentable over the combined teachings of Batishko (US 2004/0234898
Al; Nov. 25, 2004) and Hoet (US 2003/0170686 Al; Sept. 11, 2003).
II. Claim 18 is rejected under 35 U.S.C. § I03(a) as unpatentable over
the combined teachings of Batishko, Hoet, and Williams (US 2003/0186255
Al; Oct. 2, 2003).
The complete statement of the rejections on appeal appear in the Final
Office Action. (Final Act. 3-7.)
OPINION
Upon consideration of the evidence in this Appeal record, in light of
the respective positions advanced by the Examiner and Appellants, we
determine that Appellants have identified reversible error in the Examiner's
rejection of independent claim 15. We add the following:
The dispositive issue for this Appeal is:
Did the Examiner err in determining that Batishko teaches or suggests
"a fluidic flow-through chamber comprising an imaging region, wherein the
imaging region comprises a central point and a leading edge of the imaging
region" and "a magnet comprising a polarizing axis and a leading edge of
the magnet" as required by independent claim 15?2
2 The Examiner cited Hoet and Williams to address other limitations of the
claim not related to the dispositive issue. Consequently, a discussion of
these references is unnecessary.
3
Appeal2018-006600
Application 14/307 ,598
Annotated Figure 6 from the Appeal Brief is reproduced below:
Annotated FIG. 6
Annotated Figure 6 illustrates an imaging region 94, a central point
110 and leading edge 114 of the imaging region, a magnet 100 with a
polarizing axis 108 and a leading edge 112. According to the Specification,
the flow moves from inlet 96 to outlet 98, as such, the leading edge of a
component is the edge closest to the inlet 96 ( e.g. the first edge of the
component when moving from inlet 96 to outlet 98). (Spec. 42--45.)
The Examiner finds Batishko discloses a magnetic flowcell system
and method. (Final Act. 3-5.) According to the Examiner:
Batishko discloses a fluidic flow-through chamber 46 comprising an
array of flowcells 50, which each includes a fluid inlet 52 and outlet
54 (providing inlets and outlets as in cl. 17[)]; wherein it is noted that
the imaging region is not particularly-structured at present and is
given by way of a capability of the light source, wherein it is said that
such light source is fully capable of providing excitation light such to
an imaging region such that the widths of the input and output
channels are tapered relative to the width of the imaging region.
Examiner further asserts that the imaging region of Batishko is
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Appeal2018-006600
Application 14/307 ,598
defined toward the left-hand side of the flow-through chamber and
extending to the right therefrom up to and before the leading edge of
the magnet 42 (left side of the magnet as seen in fig. 2). Herein, such
imaging region has a center point and a leading edge, and the
polarizing axis of the magnet is located downstream of the central
point of the imaging region and the leading edge of the magnet (i.e.
the left-edge as seen fig. 2) is located downstream relative to the
leading edge of the imaging region (i.e. the furthest edge on the left
side of the imaging region). Further, herein, the polarizing axis and
leading edge of the magnet are both located to the right, i.e.
"downstream", of the defined imaging region discussed above when
viewing fig. 2 in plain.
(Final Act. 3--4.)
We cannot sustain the appealed rejections. The Examiner has failed
to identify where Batishko describes or suggest a fluidic flow-through
chamber comprising an imaging region, wherein the imaging region
comprises a central point and a leading edge of the imaging region and a
magnet comprising a polarizing axis and a leading edge of the magnet as
required by independent claim 15. The Examiner, when explaining the
rejection of claim 15, relies on Batishko's Figure 2 which is reproduced
below:
Fig. 2
Batishko, Fig. 2
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Appeal2018-006600
Application 14/307 ,598
The Examiner has failed to adequately identify a specific imaging
region in Batishko. According to the Examiner, the imaging region in
Batishko is defined toward the left-hand side of the flow-through chamber
and extending to the right therefrom up to and before the leading edge of the
magnet 42. (Ans. 4.) Contrary to the Examiner's position, Batishko
describes element 44 as a sensing arrangement that extends the entire length
of the device shown in Figure 2, and sensor 72 is positioned in the center of
the device. (See also Batishko ,r 29.) Consequently, the elements relied
upon by the Examiner in rejecting independent claim 15 are not supported
by the descriptions of Batishko .
For the foregoing reasons and those stated in the Brief, we determine
that the Examiner's conclusion of obviousness is not supported by facts.
"Where the legal conclusion [ of obviousness] is not supported by facts it
cannot stand." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, we cannot sustain the Examiner's decision to reject claims 15-
18 and 21.
DECISION
The rejections under 35 U.S.C. § 103(a) of claims 15-18 and 21 are
reversed.
REVERSED
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