Ex Parte Liu et alDownload PDFPatent Trial and Appeal BoardDec 18, 201712325913 (P.T.A.B. Dec. 18, 2017) Copy Citation 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. 12/325,913 12/01/2008 Xuanbin Liu H0019596.99085 2433 92689 7590 HONEYWELL/SLW Patent Services 115 Tabor Road P.O. Box 377 MORRIS PLAINS, NJ 07950 EXAMINER CROW, ROBERT THOMAS ART UNIT PAPER NUMBER 1634 NOTIFICATION DATE DELIVERY MODE 12/20/2017 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): patentservices-us @ honey well, com uspto@slwip.com SLW @blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XUANBIN LIU, ZHEN HONG SUN, WENDY WANG, and TAO PAN Appeal 2017-002298 Application 12/325,9131 Technology Center 1600 Before DONALD E. ADAMS, DEBORAH KATZ, and TIMOTHY G. MAJORS, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134(a) involves claims 25 (Appellants’ July 12, 2016 Response to Notice of Non-Compliant Appeal Brief (“Appellants have cancelled claims 1—24, thereby leaving claim 25 as the sole pending claim”). Examiner entered rejection under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the real party in interest as “Honeywell International Inc.” (Appellants’ February 25, 2016 Appeal Brief (App. Br.) 2.) Appeal 2017-002298 Application 12/325,913 STATEMENT OF THE CASE Appellants’ claim 25 is reproduced below: 25. A microarray reader, comprising: a light source carried by a first supporting stage; a plurality of reaction assemblies; a second supporting stage having a plurality of reaction assembly receiving positions, each position to receive one or more of the reaction assemblies, wherein each reaction assembly includes a reaction chamber and an optical substrate to support a microarray chip, wherein the reaction chamber and the optical substrate encapsulate a buffer solution that makes up a real-time polymerase chain reaction (PCR) microarray reaction system, wherein a refractive index of the optical substrate is higher than the buffer solution, and wherein the optical substrate comprises facets to decrease scattering; an imaging sensor positioned to detect fluorescence emitted from a single microarray chip; and a motion control module to position at least one of the first and second supporting stages to cause a selected microarray chip to receive energy emitted from the light source and to position the imaging sensor to receive fluorescence from that microarray chip: wherein the light source is positioned at an angle relative to the optical substrate to generate total internal reflection of the light from the light source onto a surface of the optical substrate: and wherein the first stage and the imaging sensor are movable and the second stage is fixed. (App. Br. 9 (emphasis added).) 2 Appeal 2017-002298 Application 12/325,913 The claims stand rejected as follows: Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Remacle,2 Main,3 and Numajiri.4 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion that the combination of Remacle, Main, and Numajira makes obvious a microarray reader comprising, inter alia, an optical substrate comprising facets to decrease scattering? ANALYSIS Appellants’ claimed microarray reader comprises, inter alia, an “optical substrate that comprises facets to decrease scattering” (see App. Br. 9). We understand this requirement in Appellants’ claimed invention to mean that an optical substrate comprising facets exhibits decreased scattering relative to an optical substrate that does not comprise facets. Examiner concluded that the combination of Remacle, Main, and Numajiri makes obvious the subject matter of Appellants’ claim 25 (see Ans. 2—8). We adopt Examiner’s findings concerning the scope and content of the prior art (id.). In this regard, Examiner finds that each of Remacle, Main, and Numajiri disclose an optical substrate that comprises facets (see Ans. 4—6. Appellants contend that although each of Remacle, Main, and Numajiri disclose an optical substrate that comprises facets, Remacle, Main, and Numajiri fail to disclose that the facets decrease scattering (see App. Br. 2 Remacle et al., US 2002/0177144 Al, published Nov. 28, 2002. 3 Mian et al., US 2001/0055812 Al, published Dec. 27, 2001. 4Numajiri, US 2006/0127277 Al, published June 15, 2006. 3 Appeal 2017-002298 Application 12/325,913 6—7; see also Reply Br.5 1—2 (“Examiner contends that Ramacle, Main, and Numajiri disclose facets. Appellants responded by pointing out that none of these references discloses the claimed feature of facets that ‘decrease scattering’” and “[sjuffice it to say that [none of Ramacle, Main, and Numajiri] discloses the claimed feature of facets that ‘decrease scattering’”)). We are not persuaded. As Examiner explains, Appellants failed to articulate “how the claimed facets differ from the facets of the prior art. . . [or] how or why the facets of the prior art are unable to function in the [] manner” required by Appellants’ claim 25 (see Ans. 10 (emphasis removed); see also id. at 11— 15). We agree. On this record, Examiner established that the prior art suggests a microarray reader comprising, inter alia, an optical substrate that comprises facets (Ans. 2—8). Further, as Examiner explains, Appellants failed to establish that the prior art facets are structurally distinct or necessarily function differently than the facets required by Appellants’ claim 25. Where [, as here,] the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). We recognize that Appellants disclose that the “facets of the substrate [] may be fine polished” “[t]o decrease the scattering at the optical substrate 5 Appellants’ Reply Brief is not paginated. Therefore, all reference to page numbers of the Reply Brief refer to page numbers as if the Reply Brief was number consecutively beginning with the first page. 4 Appeal 2017-002298 Application 12/325,913 surface” (Spec. 4: 11—12 (emphasis added); see Reply Br. 2). Appellants’ claim 25 does not, however, require fine-polished facets or facets that have been modified in any way over the prior art facets (see App. Br. 9). To the contrary, Appellants’ claim simply requires an optical substrate that comprises facets to decrease scattering (id.). On this record, Appellants failed to establish an evidentiary basis to support a conclusion that the facets of the microarray reader made obvious by the prior art relied upon by Examiner do not perform the same function as is required by Appellants’ claim 25. See In re Swinehart, 439 F.2d at 213. “Attorney’s argument in a brief cannot take the place of evidence.” See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Arguments not made are waived. CONCFUSION OF FAW The preponderance of evidence relied upon by Examiner supports a conclusion of obviousness. The rejection of claim 25 under 35 U.S.C. § 103(a) as unpatentable over the combination of Remacle, Main, and Numajiri affirmed. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 5 Copy with citationCopy as parenthetical citation