Ex Parte Liu et al

Patent Trial and Appeal Board

Dec 18, 2017

12325913 (P.T.A.B. Dec. 18, 2017)

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).)
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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.
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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.
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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
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