Ex Parte Nishikawa et al

Patent Trial and Appeal BoardOct 4, 2017

13630436 (P.T.A.B. Oct. 4, 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. 13/630,436 09/28/2012 Ken NISHIKAWA 11333/541 3586 757 7590 10/05/2017 BGL P.O. BOX 10395 CHICAGO, IL 60610 EXAMINER WHATLEY, BENJAMIN R ART UNIT PAPER NUMBER 1798 MAIL DATE DELIVERY MODE 10/05/2017 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 KEN NISHIKAWA, KONOBU KIMURA, and YUICHI HAMADA ____________ Appeal 2017-000029 Application 13/630,436 Technology Center 1700 ____________ Before MARK NAGUMO, CHRISTOPHER C. KENNEDY, and JULIA HEANEY, Administrative Patent Judges. HEANEY, Administrative Patent Judge. DECISION ON APPEAL1 Appellant2 requests review pursuant to 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1, 2, 5, 7, 8, 11–15, 18, and 19 of Application 13/630,436. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 This Decision refers to the Specification filed Sept. 28, 2012, as amended June 19, 2014 and Jan. 9, 2015 (“Spec.”), Final Action dated Nov. 17, 2015 (“Final Act.”), Appeal Brief dated Mar. 31, 2016 (“Br.”), and Examiner’s Answer dated July 25, 2016 (“Ans.”), and Reply Brief dated Sept. 22, 2016 (“Reply Br.”). 2 Appellant is the Applicant, Sysmex Corporation, which is also identified as the real party in interest. Br. 2. Appeal 2017-000029 Application 13/630,436 2 BACKGROUND The subject matter on appeal relates to a sample processing apparatus, such as a blood cell counting apparatus or urine analyzer. Spec. ¶ 3. The Specification describes that a conventional sample processing apparatus carries out a washing operation, using consumable goods such as washing fluid and reagent, during startup. Spec. ¶ 4. Conventionally, if a consumable good runs out during the startup operation, the startup operation is interrupted and cannot be resumed until restock of the consumable, thus delaying the start of sample processing. Spec. ¶ 5. The claimed invention seeks to avoid that delay by determining, in response to a stop instruction, if the remaining amount of the consumable good is insufficient for completing the washing operation of the next startup operation, and if so, placing the shutdown operation on hold and outputting a message prompting replacement of the consumable good prior to a complete stop of the apparatus. Spec. ¶ 7; App. Br. 3. Claim 1, the sole independent claim, is reproduced below with italics indicating the limitations argued in the Appeal Brief: 1. A sample processing apparatus comprising: a sample processing unit that processes a sample; a control unit that accepts a stop instruction to stop the operation of the sample processing unit and places the sample processing unit in a stopped state, wherein the control unit performs a shutdown operation of the sample processing unit in response to the stop instruction; an input unit; and an output unit; wherein the control unit comprises a processor and a computer readable medium and is configured to perform operations, the operations comprising Appeal 2017-000029 Application 13/630,436 3 receiving, by the input unit, input of setting information which enables an automatic startup and selects a startup schedule, wherein the automatic startup causes the sample processing unit to automatically perform a washing operation of the sample processing unit with consumable good as a startup operation when the selected startup schedule is reached, and wherein the operations further comprising: receiving and storing the setting information; in response to accepting the stop instruction, reading out with the processor the stored setting information from the computer readable medium; determining whether or not the automatic startup is set based on the setting information; determining a remaining amount of the consumable good at the time of accepting the stop instruction; upon determination that the automatic startup is set, determining whether the remaining amount of the consumable good is greater than, or equal to the usage amount of the consumable good needed for the next startup operation of the sample processing unit; upon determination that the remaining amount of the consumable good is insufficient for completing the washing operation of the next startup operation, controlling the control unit to place the shutdown operation of the sample processing unit on hold and controlling the output unit to output a message prompting the replacement of the consumable good, prior to a complete stop of the operation of the sample processing unit; and upon determination that the remaining amount of the consumable good is sufficient for completing the washing operation of the next startup operation, controlling performance of the shutdown operation. App. Br. 17–18, Claims Appx. Appeal 2017-000029 Application 13/630,436 4 THE REJECTIONS The Examiner maintains the following rejections on appeal: 1. Claims 1, 2, 5, 7, 8, 11–13, 18, and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Shibata,3 Wakamiya,4 and Clinton.5 Ans. 3. 2. Claims 14 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Shibata, Wakamiya, Clinton, and Yamato.6 Ans. 16. DISCUSSION Appellant argues claim 1 and does not present separate argument for any dependent claims. Br. 15. Dependent claims therefore stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Having considered Appellant’s arguments in light of this appeal record, we are not persuaded that Appellant identifies reversible error. Accordingly, we affirm the rejections for the reasons set forth in the Final Action and Examiner’s Answer, which we adopt as our own. We add the following primarily for emphasis. Appellant argues that none of the references, alone or in combination, teach the features recited in the italicized text of claim 1, above. In particular, Appellant argues that Wakamiya’s status bar B3, upon which the Examiner relies for teaching display of a message prompting replacement of 3 US 2010/0108101 A1; May 6, 2010 (“Shibata”). 4 US 2008/0279048 A1; Nov. 13, 2008 (“Wakamiya”). 5 US 2011/0022331 A1; Jan. 27, 2011(“Clinton”). 6 US 2011/0053277 A1; Mar. 3, 2011 (“Yamato”). Appeal 2017-000029 Application 13/630,436 5 a consumable good in response to a stop instruction upon activation of shutdown button R22 (Final Act. 6–7), displays the storage stock state regardless of activation of shutdown button R22 and therefore does not teach “determining a remaining amount of the consumable good at the time of accepting the stop instruction” as recited in claim 1. App. Br. 6–7, 11. In contrast, Appellant argues, Wakamiya’s status bar B3 displays the stock state of consumable goods in connection with its teaching of a maintenance schedule for measuring device 2. Id. Appellant’s argument is not persuasive of reversible error. Wakamiya’s teaching that the stock state of consumable goods is displayed in connection with a maintenance schedule does not negate the fact that the status also is displayed at the time a user activates the shutdown button R22. Thus, the Examiner’s finding that Wakamiya determines the remaining amount of consumable goods at the time of a stop instruction is reasonable. Further, the Examiner’s rationale that it would have been obvious to a person of ordinary skill in the art to use Wakamiya’s status bar to inform a user to restock the goods prior to the start of the next automated process, to ensure that the process is not interrupted by depletion of the consumable goods (Final Act. 9–10; Ans. 21), is sufficient to support the determination of obviousness. The claimed process is further automating an already automated process, like a transit system that alerts a commuter at the start of a journey that her train pass has insufficient funds to complete the journey and must be refilled with additional funds, in order to avoid an emergency refill mid-journey. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 at 418 (2007) (“the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court Appeal 2017-000029 Application 13/630,436 6 can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Appellant further argues that there would have been no reason to modify Shibata in light of the teachings of Wakamiya and Clinton, because Shibata teaches away from putting a shutdown operation on hold to perform other operations, and because modification of Shibata’s shutdown operation would go beyond a routine modification and thus discourage a person of ordinary skill in the art from modifying Shibata. App. Br. 8–9 (citing Shibata Fig. 13). Appellant’s argument is not persuasive of reversible error because nothing in Shibata’s shutdown algorithm (Shibata ¶¶ 100–102) discourages its modification, including placing it on hold. Further, Appellant’s argument is not supported by any credible evidence that modifying Shibata would go beyond a routine modification for a person of ordinary skill in the art. Moreover, as the Examiner explains (Ans. 22–23), the rejection is not based on an intended use rationale, and therefore the rationales of the Board decisions upon which Appellant relies are inapplicable. Finally, Appellant’s argument that the Examiner improperly applied hindsight is not persuasive of reversible error. The Examiner articulates reasoning having rational underpinning for the proposed modification of Shibata, which demonstrates that the modification is not based on impermissible hindsight. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). SUMMARY We affirm the rejections of claims 1, 2, 5, 7, 8, 11–15, 18, and 19. 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