Ex Parte Inoue

Patent Trial and Appeal Board

Apr 26, 2016

11036518 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/036,518
757 7590
BGL
P.O. BOX 10395
CHICAGO, IL 60610
01/13/2005
04/27/2016
FIRST NAMED INVENTOR
Hisaaki Inoue
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.
11333/66 5569
EXAMINER
EOM, ROBERT J
ART UNIT PAPER NUMBER
1797
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 HISAAKI INOUE
Appeal2014-005978
Application 11/03 6,518
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner finally rejecting claims 1-12, 14, 15, 18-20, and
22-25 of Application 11/036,518. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
1 Appellant identifies the real party in interest as Sysmex Corporation. App.
Br. 2.
Appeal2014-005978
Application 11/03 6,518
BACKGROUND
The subject matter on appeal relates to an analyzer provided with a
dispensing unit that dispenses liquid via an electrically conductive
dispensing tip. In operation, a capacitance sensor detects when the tip is
installed or uninstalled, and a controller monitors the detection results and
determines whether the tip remains continuously installed on the dispensing
unit. App. Br. 2.
Claim 1 is illustrative and reproduced from the Claims Appendix of
the Appeal Brief as follows:
1. An analyzer comprising:
an assay part configured to detect an analyte in an assay
sample;
a dispensing unit configured to dispense a liquid via an
electrically conductive dispensing tip detachably installed on
the dispensing unit, the liquid being used for preparing the
assay sample;
a capacitance sensor configured to make a detection on a
capacitance of at least a part of the dispensing unit on which the
dispensing tip is installable;
a transfer unit configured to transfer the dispensing unit through
a plurality of work locations in the analyzer; and
a controller configured to monitor detection results by the
capacitance sensor during transfer periods comprising:
(a) a tip installed period during which the dispensing unit is
in motion, being transferred by the transfer unit, from a tip
installation location where the dispensing tip is put on the
dispensing unit to a tip disposal location where the dispensing
tip is removed for disposal from the dispensing unit, and during
which the controller determines at predetermined intervals
whether or not the dispensing tip remains continuously installed
on the dispensing unit: and
2
Appeal2014-005978
Application 11/03 6,518
(b) a tip uninstalled period during which the dispensing
unit is in motion, being transferred by the transfer unit, from the
tip disposal location to the tip installation location and during
which the controller determines at predetermined intervals
whether or not the dispensing unit remains continuously free of
a dispensing tip.
REFERENCES
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
Stylli et al. us 5,985,214
Momose et al. JP 08-035971
Matsuyama et al. JP 01-59848A
Nov. 16, 1999
(hereinafter "Stylli")
Feb. 6, 1996
(hereinafter "Momose")
June 3, 2001
(hereinafter "Matsuyama")
THE REJECTIONS
1. Claims 1-12, 14, 15, 18, 19, 22, and 23 are rejected under
35 U.S.C. § 103(a) as unpatentable over Momose and Matsuyama.
2. Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Momose and Stylli.
3. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Momose, Matsuyama, and Stylli.
DISCUSSION
Appellant presents a single argument for reversal of the rejection of
all claims at issue, relying on limitations in independent claim 1, and
presenting no argument for separate patentability of the independent or
dependent claims. App. Br. 17-20. We select claim 1 as representative; all
3
Appeal2014-005978
Application 11/03 6,518
other claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv)
(2013). Further, Appellant presents arguments only against the Examiner's
findings and conclusions with respect to Momose and Matsuyama and does
not contest the Examiner's findings or conclusions with respect to Stylli.
We therefore do not need to address Stylli in our decision.
Claim 1 is directed to an analyzer apparatus comprising a controller
configured to monitor detection results by a capacitance sensor, and in
particular the presence of a dispensing tip, in the manner recited in
limitations (a) and (b ). Appellant argues that neither Momose nor
Matsuyama, alone or in combination, teaches detection of a dispensing tip
during a "tip uninstalled period." App. Br. 17-18. More specifically,
Appellant argues that Matsuyama i-f 28 describes sensor 18 detecting the
presence of the disposable tip 12, but does not describe detecting "whether
or not the dispensing unit remains continuously free of a dispensing tip."
Reply Br. 2-3.
Having reviewed Appellant's arguments and considered the evidence,
we find that a preponderance of the evidence supports the determination of
obviousness. We are not persuaded of harmful error in the Examiner's
finding that Matsuyama discloses determining whether or not the dispensing
tip remains installed at two predetermined intervals during the tip uninstall
period. Ans. 4, 8-9. Moreover, a person of ordinary skill in the art
reasonably would have inferred that the determinations made by the
controller described by Matsuyama include a determination of whether the
dispensing unit remains continuously free of a dispensing tip during the
uninstall period, as required by limitation (b ). An obviousness "analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
4
Appeal2014-005978
Application 11/03 6,518
creative steps that a person of ordinary skill in the art would employ." KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, we affirm
the rejections under 35 U.S.C. § 103(a).
We also note the statement in the Final Rejection dated November 20,
2012 (hereinafter, "Final. Act."), that limitations "which are directed to a
manner of operating disclosed analyzer" (i.e., limitations (a) and (b )) are
process limitations that "do not have patentable weight in an apparatus
claim." Final Act. 3 (citing Ex parte Thibault, 164 USPQ 666, 667 (BPAI
1969)). We do not apply that reasoning in our decision because here, the
"controller configured to monitor detection results" recited in claim 1
requires that programming or software must be present in the controller in
order to meet the claim limitation. See Typhoon Touch Techs., Inc. v. Dell,
Inc., 659 F.3d 1376, 1380-81 (Fed. Cir. 2011) (discussing Microprocessor
Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir.
2008)). As described in the Specification, "controller 82 is mainly a
microcomputer, and includes a CPU, ROivI, RAivI and the like."
Specification i-f 26. Thus, in order to satisfy the "controller configured to
monitor detection results" limitation, the prior art must be capable of
operating in the manner described in limitations (a) and (b). Because the
Examiner also provides reasoning why a person of ordinary skill in the art
would have been led to configure Matsuyama's controller to function as
claimed in limitations (a) and (b ), however, we have affirmed the rejections.
SUMMARY
We affirm the rejections of claims 1-12, 14, 15, 18-20, and 22-25.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
5
Appeal2014-005978
Application 11/03 6,518
AFFIRMED
6