Ex Parte Giovanoli et al

Patent Trials and Appeals BoardJul 2, 2019

14113937 - (D) (P.T.A.B. Jul. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/113,937 10/25/2013 6449 7590 07/05/2019 ROTHWELL, FIGG, ERNST & MANBECK, P.C. 607 14th Street, N.W. SUITE 800 WASHINGTON, DC 20005 Nando Giovanoli 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. 4221-105 1215 EXAMINER HYUN,PAULSANGHWA ART UNIT PAPER NUMBER 1797 NOTIFICATION DATE DELIVERY MODE 07/05/2019 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): PTO-PAT-Email@rfem.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NANDO GIOV ANOLI and RETO MENZI Appeal2018-000310 Application 14/113,937 Technology Center 1700 Before JEFFREY T. SMITH, BEYERL YA. FRANKLIN, and SHELDON M. McGEE, Administrative Patent Judges. McGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), Appellants 1 seek our review of the Examiner's decision to reject claims 1-6, 8-12, 14--22, and 24--29. We have jurisdiction. 35 U.S.C. Â§ 6. We reverse. 1 Appellants identify Hamilton Bonaduz AG as the real party in interest. App. Br. 2. Appeal2018-000310 Application 14/113,937 BACKGROUND The subject matter on appeal (independent claim 1) relates to a punching device for processing dried samples, e.g., blood, where the dried sample is punched out of a sample card into a receiving recess of a receiving container such as a micro titer plate. Spec. 1: 6-17. Once the dried sample is transferred into the receiving recess of the receiving container by the punching device, it can be analyzed by any number of analysis methods such as high-performance gas chromatography (HPLC) or polymerase chain reaction (PCR) for DNA analysis. Id. at 1: 18-21. Remaining independent claim 10 relates to a particular method of "evaluating at least one result of a punching operation." App. Br. 21-22. Claim 1 is illustrative of the claimed subject matter and is copied below with key limitations at issue in this appeal italicized: 1. A punching device for processing samples applied to a sample card, the punching device comprising: a movable gripper unit; an image capturing device; at least one punching head having a punch and a lower die, wherein the punch is movable between a rest position in which it is away from the lower die and a punching position in which it is close to the lower die, and wherein the punching head has a receiving opening into which a sample card is introducible by means of the movable gripper unit and is positionable relative to the punching head; a punching drive which is couplable or coupled to the punch of the punching head and by way of which the movement of the punch between the rest position and the punching position is driven, wherein the punching head is set up such that a sample piece punched out of the sample card can be dispensed at an outlet opening of the lower die into a receiving recess m a receiving container arranged beneath the punching head; 2 Appeal2018-000310 Application 14/113,937 a receiving plate supporting the receiving container and having a light source illuminating at least a part of the receiving plate, wherein the light source is arranged such that at least a part of the receiving container located on the receiving plate can be illuminated from the direction of the receiving plate; and an image processing device configured to use data about positioning of the receiving container relative to the image capturing device to determine an analysis set of receiving recesses of the receiving container in an analysis region being a part of the receiving container, said analysis region being changeable by moving the receiving container relative to the image capturing device, wherein the image processing device is further configured to detect outlines of the receiving recesses in the analysis set and to determine the positions thereof, and is further configured to detect sample pieces contained in the receiving recesses in the analysis set. App. Br. 19-20 (emphasis added). Appellants' Figure 8 also provides context for our review of the appealed rejections, and is copied below: 3 Appeal2018-000310 Application 14/113,937 Figure 8 of Appellants' Drawings illustrates "a plan view of the receiving container 12 with its receiving recesses 28." Spec. 12:13-14. Each of the receiving recesses 28 have an outline 272 and may have a sample piece 274 punched from a sample card contained therein. Id. at 12:20-25. REJECTIONS On appeal, the Examiner maintains the following rejections under 35 U.S.C. Â§ I03(a): I. Claims 1, 4---6, 8-11, 16, 17, 20-22, and 26-29 over the combined disclosures of Shoemaker2, Pagels 3, and Hurni 4; II. Claims 2, 3, 18, and 19 over Shoemaker, Pagels, Hurni and further in view of Hashsham5; and III. Claims 12, 14, 15, 24, and 25 over Shoemaker, Pagels, Hurni and further in view of Erling. 6 OPINION Rejection I Appellants present arguments only directed to independent claim 1. App. Br. 6-16. Pursuant to our Rule 4I.37(c)(l)(iv), we select claim 1 as representative and decide the appeal of this rejection on the basis of claim 1 alone. The dispositive issue presented in Appellants' appeal of this rejection is whether the preponderance of evidence supports the Examiner's finding 2 US 2011/0132111 Al published June 9, 2011. 3 US 5,641,682 issued June 24, 1997. 4 US 4,319,271 issued March 9, 1982. 5 US 2010/0105035 Al published April 29, 2010. 6 US 2011/0034343 Al published February 10, 2011. 4 Appeal2018-000310 Application 14/113,937 that the claim recitation that "the image processing device is further configured to detect outlines of the receiving recesses in the analysis set and to determine the positions thereof, and is further configured to detect sample pieces contained in the receiving recesses in the analysis set" is inherently present in the device of Hurni. 7 Final Act. 2-3. Upon review of the present appeal record, we find insufficient evidence supporting the Examiner's inherency finding, and therefore do not sustain the rejection. We start with claim construction. By requiring the image processing device to have a particular configuration, claim 1 requires that the image processing device has specific programming that enables it to perform at least the following three functions: "detect outlines of the receiving recesses in the analysis set," "determine the positions" of those recesses, and "detect sample pieces contained in the receiving recesses." See Typhoon Touch Techs, Inc. v. Dell, Inc., 659 F.3d 1376, 1380-81 (Fed. Cir. 2011) (upholding the district court's holding that a claim reciting "a memory for storing at least one data application configured to determine contents and formats of said inquiries displayed on said screen" required the memory to perform the recited function, rather than simply having a capability of carrying out such function should further modification or programming be made); see also In re Noll, 545 F.2d 141, 148 (CCPA 1976) (holding that a "programmed machine is structurally different from a machine without that program."); see also In re Bernhart, 417 F.2d 1395, 1399-1400 (CCPA 1969) ("[I]f a machine is programmed in a certain new and unobvious way, 7 The Examiner cites Shoemaker and Pagels to address limitations of claim 1 not related to the dispositive issue. Thus, a discussion of Shoemaker and Pagels is unnecessary for disposition of this appeal. 5 Appeal2018-000310 Application 14/113,937 it is physically different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed."). Here, the Examiner finds that Hurni' s image processing device- which the Examiner asserts includes television camera 13 and a computer- inherently carries out the claimed functions of "detect[ing] outlines of the receiving recesses," determining the positions of those recesses, and "detect[ing] sample pieces contained" therein. Final Act. 2-3. The Examiner, however, has not persuasively shown or explained how Hurni is necessarily programmed to perform these functions. The disclosure of Hurni relied on by the Examiner discloses a cytopathologic effect (CPE) assay device having a "chassis 10 having a front shelf 16 provided with a slot adapted to receive a multi-well assay plate 11." Hurni 2:31-34; Fig. 1. "Mounted above the assay plate is a television camera 13 positioned to scan the assay plate and display its image on screen 14." Id. at 2:38--41. The chassis contains "[d]igital computer means." Id. at 2:41--42. Hurni's camera 13 "scans each cm2 of surface in each well with about 213 horizontal lines and about 213 vertical lines," which generates over 14,000 data points for each well. Id. at 2:42--48. "The data points from each well of the assay plate are transmitted by the television camera to the computer which is programmed to evaluate each point as positive or negative for CP E, and then score each well individually as positive or negative." Id. at 2:48-52 (emphasis added). The computer can also optionally be programmed to evaluate the viral titer from the wells' positive or negative scoring, to print the positive-negative "matrix from which the 6 Appeal2018-000310 Application 14/113,937 viral titer may be calculated," or calculate and print this information on tape. Id. at 2:52---62. It is the Examiner's burden to establish a prima facie case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). The factual underpinnings of a rejection "must be based on a preponderance of the evidence." Id. at 1449. Furthermore, "in order to rely on inherency to establish the existence of the claim limitation in the prior art in an obviousness analysis[,] the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." Par Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1195-96 (Fed. Cir. 2014). Here, we are persuaded by Appellants' argument that "[i]t is possible ( even probable) that [Hurni' s] system is arranged so that the computer means need not determine the outlines of the receiving recesses for every assay-since such outlines are fixed and knowable a priori." App. Br. 9; see also Hurni 2:30-34 ("the apparatus ... consists of a chassis 10 having a front shelf 16 provided with a slot adapted to receive a multi-well assay plate 11." ( emphasis added)). Because it is possible that Hurni' s slot may allow the outlines and positions of each assay well (i.e., "receiving recesses") to be known a priori as Appellants argue, and because the Examiner does not explain why Hurni would still need the requisite programming to "detect" such outlines and "determine" such positioning, there is insufficient evidence to support a finding of inherency in this case. We, therefore, cannot sustain the rejection. See In re Warner, 379 F.2d 1011, 1017 ("The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not ... resort to speculation, unfounded 7 Appeal2018-000310 Application 14/113,937 assumptions or hindsight reconstruction to supply deficiencies" in the cited references.). Rejections II and III Because these rejections rely on the same unsupported fact findings as does Rejection I, we do not sustain them. DECISION The Examiner's decision to reject claims 1---6, 8-12, 14--22, and 24-- 29 is reversed. REVERSED 8