Ex Parte Hanafusa et al

Patent Trial and Appeal Board

Apr 27, 2016

12525947 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/525,947 08/05/2009
74384 7590
Cheng Law Group, PLLC
1133 13th St. N.W.
Suite C2
Washington, DC 20005
04/27/2016
FIRST NAMED INVENTOR
Nobuhiro Hanafusa
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.
NOG-0332 2647
EXAMINER
DAUNER, JOSEPH G
ART UNIT PAPER NUMBER
1634
MAILDATE DELIVERY MODE
04/27/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NOBUHIRO HANAFUSA, KORETSUGU OGATA, TAKAHIRO
NISHIMOTO and MASKI KANAI 1
Appeal2014-001496
Application 12/525,947
Technology Center 1600
Before FRANCISCO C. PRATS, ULRIKE W. JENKS, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to micro-
fluid reactor plates, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
STATEMENT OF THE CASE
The invention relates to a reactor plate used for chemical and
biological assays and analyses. Spec. i-f 1. The plates contain a series of
1 Appellants identify the Real Party in Interest as Shimadzu Corporation.
Appeal Br. 2.
Appeal2014-001496
Application 12/525,947
micro chambers comprising wells in the surface of a reactor plate. Spec. ,-r 2.
Channels are provided for introducing materials into the individual chambers
and for venting air from the chambers as materials are introduced. Id. The
vented air is collected in a variable member such as a bellows. Spec. i-f 29.
A switching valve controls the flow of materials entering the chambers and
the flow of air into the variable member. Spec. i-f 23.
Claims 1-7, 9-13, 16-17 and 19 are on appeal. Claim 1 is illustrative
and reads as follows:
1. A reactor plate comprising:
a reaction well;
a reaction well channel connected to the reaction well,
the reaction well channel being constituted from a groove
formed in the contact surface between two members bonded
together or from the groove and a through hole formed in the
member,
the reaction well channel including a main channel, a
metering channel branched off the main channel and having a
predetermined capacity, and an injection channel of which one
end is directly connected to the metering channel and the other
end is connected to the reaction well, the injection channel
being formed narrower than the metering channel not so as to
allow the passage of a liquid at a liquid introduction pressure
applied to introduce the liquid into the main channel and the
metering channel and at a purge pressure applied to purge the
liquid from the main channel but so as to allow the passage of
the liquid at a pressure higher than the liquid introduction
pressure and the purge pressure;
a reaction well air vent channel directly connected to the
reaction well and formed separately from the reaction well
channel;
a variable member having an internal capacity being
passively variable by expanding and contracting, the variable
member being provided in the reactor plate; and
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Appeal2014-001496
Application 12/525,947
a switching valve being configured to connect the main
channel and the reaction well air vent channel to the variable
member so as to allow moving a gas in the main channel and
the reaction well air vent channel to the variable member in a
closed system;
thereby the main channel and the reaction well air vent
channel are kept hermetically sealed,
wherein the main channel has an elongated structure
defining a flow path extending in the direction of elongation
and where the metering channel branches from a side of the
flow path.
The claims stand rejected as follows:
Claims 1, 3, 5-7, 9-11, 16, 17, and 19 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Geiser (WO 2005/070546 Al, published
Aug. 4, 2005) ("Geiser") in view of Jedrzejewski (US 2001/0036669 Al,
published Nov. 1, 200l)("Jedrzejewski"), Woudenberg (US 6,124,138 Bl,
issued Sept. 26, 2000)("Woudenberg") and McNeely (US 2002/0033193 Al,
published Mar. 21, 2002)("McNeely").
Claim 2 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Geiser in view of Jedrzejewski, Woudenberg and McNeely as applied
to claim 1, and in further view of Kellogg '125 (US 2004/0191125 Al,
published Sept. 30, 2004)("Kellogg l ")as defined by Kellogg '248 (US
6,143,248 B2, issued Nov. 7, 2000)("Kellogg 2").
Claim 4 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Geiser in view of Jedrzejewski, Woudenberg and McNeely as applied
to claim 1, and in further view of Kaneko (US 2006/0023030 Al, published
Feb. 2, 2006)("Kaneko").
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Appeal2014-001496
Application 12/525,947
Claims 12 and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Geiser in view of Jedrzejewski, Woudenberg and
McNeely as applied to claim 1, and in further view of Striepeke (US
2005/0238536 Al, published Oct. 27, 2005)(Striepeke").
DISCUSSION
Issue
All of the claims at issue depend from claim 1. The Examiner has
rejected claim 1 under 35 U.S.C. § 103(a) as unpatentable over Geiser in
view of Jedrzejewski, Woudenberg and McNeely. Final Act. 6. The
Examiner finds that the combination of references teaches a reactor plate
having all of the elements of the reactor plate described in claim 1. Id. In
particular, the Examiner finds that McNeely teaches the use of a variable
member to capture air forced out of a reaction chamber and Woudenberg
teaches the use of a switching valve in a reactor plate to control the flow of
fluids. Final Act. 11-12.
Appellants contend that Woudenberg does not disclose a variable
member thus it does not teach the use of a switching valve in combination
with a variable member. Appeal Br. 12. In addition, Appellants argue that
McNeely does not disclose a variable member that can both expand and
contract. Appeal Br. 10-11.
The issue with respect to this rejection is whether the Examiner has
established by a preponderance of the evidence that claim 1 is obvious over
Geiser in view of Jedrzejewski, Woudenberg and McNeely as defined by
35 U.S.C. § 103(a).
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Appeal2014-001496
Application 12/525,947
Findings of Fact
FFl. McNeely discloses a reaction plate with a plurality of reaction
wells or chambers. McNeely i-f 44.
FF2. McNeely discloses the use of an expandable air bladder to
capture air forced out of reaction chambers. McNeely i-f 51.
FF2. The air bladders in McNeely have fixed or known volumes. Id.
Principles of Law
"In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant." In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993).
"The Patent and Trademark Office (PTO) must consider all claim
limitations when determining patentability of an invention over the prior
art." In re Lowry, 32 F.3d 1579, 1582, 32 USPQ2d 1031, 1034 (Fed. Cir.
1994).
When establishing that claimed subject matter would have been
obvious under§ 103, the Examiner may rely on the doctrine ofinherency to
show that a reference necessarily describes a claimed feature. Jn re Kao,
639 F.3d 1057, 1070 (Fed. Cir. 2011 ).
[T]he very essence of inherency is that one of ordinary skill in the art
would recognize that a reference unavoidably teaches the property in
question." Agilent Technologies, Inc. v. Afjj;metrix, Inc., 567 F.3d 1366,
1383 (Fed. Cir. 2009) (emphasis added); see also In re Oelrich, 666 F.2d
578, 581 (CCPA 1981) ("Inherency, however, may not be established by
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Appeal2014-001496
Application 12/525,947
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.").
Thus, if "the disclosure is sufficient to show that the natural result
flowing from the operation as taught would result in the performance of the
questioned function, it seems to be well settled that the disclosure should be
regarded as sufficient." Oelrich, 666 F. 2d at 581 (quoting Hansgirg v.
Kemmer, 102 F.2d 212, 214 (CCPA 1939)).
Analysis
Appellants have argued that the Examiner has failed to demonstrate
that all of the elements of claim 1 are present in the cited references.
Appeal Br. 9. Specifically Appellants have urged that the references fail to
teach a "variable member having an internal capacity being passively
variable by expanding and contracting." Id. Appellants further argue that
while McNeely teaches the use of an "expandable air bladder," McNeely is
silent as to whether such bladders can also contract. Appeal Br. 11.
The Examiner argues that McNeely discloses an air bladder that
performs the same function as the variable member of the instant claims and
as such inherently meets the claim limitation. Ans. 5. The Examiner goes
on to argue that because the expandable air bladder expands to fill a specific
volume, one skilled in the art would recognize that the bladder must be made
of a flexible material. Ans. 6. The Examiner then states that a flexible
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Application 12/525,947
bladder would inherently have the ability to expand and contract and
therefore would have a variable capacity. Ans. 6-7.
We find the Examiner's arguments unpersuasive. The Examiner has
failed to demonstrate why the air bladders of McNeely inherently must be
flexible or able to contract as claim 1 requires. As the Examiner contends,
McNeely describes its bladders as being expandable. FF2. Nonetheless,
McNeely also teaches that the air bladders have a fixed or known volume.
FF3. This supports a finding that the air bladders of McNeely do not
necessarily have a variable volume and are not necessarily flexible. Absent
a clear showing that the air bladders are made of a flexible material that
necessarily is capable of contracting as required by claim 1, a generally
finding of inherency cannot be sustained. By itself, the mere likelihood that
McNeely's bladder is capable of contracting is insufficient to establish that
that property is inherent in the bladder. In re Oelrich, 666 F .2d at 5 81
(cannot establish inherency by probability). We conclude that the Examiner
has failed to establish a prima facie case of obviousness and reverse the
rejection of claim 1. The remaining claims on appeal depend from claim 1
and include the limitation calling for a variable member. Therefore we
reverse the rejection of the remaining claims as well.
Conclusion of Law
We find that the Examiner has failed to establish by a preponderance
of the evidence that claim 1 is obvious over Geiser in view of Jedrzejewski,
Woudenberg and McNeely as defined by 35 U.S.C. § 103(a). Because they
depend from claim 1 and contain the same limitation regarding a variable
member, we also hold that the Examiner has failed to establish that the
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Application 12/525,947
remaining claims are unpatentable as obvious as defined by 35 U.S.C. §
103(a).
SUMMARY
We reverse the rejection of claims 1-7, 9-13, 16-1 7, and 19.
REVERSED
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