Ex Parte Ogle et al

Patent Trial and Appeal Board

Nov 22, 2016

12561102 (P.T.A.B. Nov. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/561, 102 09/16/2009 Brenda M. Ogle
72088 7590 11/25/2016
WISCONSIN ALUMNI RESEARCH FOUNDATION
C/O BOYLE FREDRICKSON S.C
840 North Plankinton A venue
Milwaukee, WI 53203
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.
1512.320 1652
EXAMINER
KWAK,DEANP
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
11/25/2016 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):
docketing@boylefred.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRENDA M. OGLE, LUIS A. FERNANDEZ,
KEVIN W. ELICEIRI, and MATTHEWS. HANSEN
Appeal2015-005597
Application 12/561,102
Technology Center 1700
Before CHUNG K. PAK, KAREN M. HASTINGS, and
BRIAND. RANGE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-13. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We REVERSE.
1 The Wisconsin Alumni Research Foundation is stated to be the real party in
interest (Br. 3).
Appeal2015-005597
Application 12/561, 102
Claim l is illustrative of the appealed subject matter (emphasis added
to identify disputed limitation):
1. A flow cytometry system comprising:
a pump providing an unconfined volume of liquid subject
to an applied force;
a channel receiving a liquid flow from the pump, the
channel containing the liquid flow along an axis providing a
hydrodynamic focusing of a multicellular aggregate within the
liquid without disruption of intercellular connections of the
multicellular aggregate;
a multiphoton laser scanning microscope positioned to
illuminate multicellular aggregates within the liquid flow and to
record a fluorescence of multiple cells of the multicellular
aggregates isolated to a focal plane through the multicellular
aggregates as the multicellular aggregates reach an analysis
point in the channel; and
a control system executing at least one stored program to
receive data from the multiphoton laser scanning microscope to
provide an output signal providing an assessment of the
multicellular aggregates based on recorded fluorescence from
the multiple cells along the focal plane.
Br. 15 (Claims Appendix).
The Examiner rejected claims 1---6 under 35 U.S.C. § 102(b) as being
anticipated by Ye et al. (WO 2006/034046 A2, published Mar. 30, 2006)
("Ye"). The Examiner also rejected claims 1-9, 12, and 13 under 35 U.S.C.
§ 103 as unpatentable over the combined prior art of Chupp et al. (US
5,939,326, issued Aug. 17, 1999) ("Chupp") and Zarling et al. (US
6,537,829 Bl, issued Mar. 25, 2003) ("Zarling"), and claims 10 and 11 over
the combined prior art of Chupp, Zarling, and Tseng et al. (US
2010/0291584 Al, published Nov. 18, 2010) ("Tseng").
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Appeal2015-005597
Application 12/561, 102
PRt1~CIPLES OF LAW
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification." In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000)). See also In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (scope of the claims in
patent applications is not determined solely on the basis of the claim
language but upon giving claims their broadest reasonable construction in
light of the specification as it would be interpreted by one of ordinary skill in
the art.) (citations omitted); Phillips v. AWHCorp., 415 F.3d 1303, 1315
(Fed. Cir. 2005) ("[T]he specification 'is always highly relevant to the claim
construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term."' (Citation omitted)).
ANALYSIS
The dispute in this case is whether any of the applied prior art teaches
or suggests "a pump" as required in the sole independent claim 1.
Appellants argue that the Examiner has not shown how either Ye or Chupp
discloses this element as required by the disputed claims. A preponderance
of the evidence supports Appellants' position.
Appellants urge that one of ordinary skill in the art would not consider
the syringe pump of Ye (Br. 7-9) nor the piston pump or peristaltic pumps
of Chupp "a pump providing an unconfined volume of liquid" as required by
the claims (Br. 10-12). Appellants state that in light of the Specification,
one of ordinary skill in the art would understand that "a pump providing an
unconfined volume of liquid subject to an applied force" is, e.g., a pipette
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Appeal2015-005597
Application 12/561, 102
fed droplet of fluid subject to pressure supplied by surface tension of the
droplet, acting as surface tension pump (Spec. i-fi-f 18, 20, 50, 51 ("passive
pumping harnesses the higher internal pressure of smaller drops of liquid"),
52, and 58 ("surface tension pumping provides for flow rates consistent with
the preservation of the integrity of the multicellular aggregates"); Figs. 3, 4;
Br. 5 ("A pump (56) provides an unconfined volume of liquid subject to an
applied force"), 8, 9). 2
Contrary to the Examiner's position that the claim language
encompasses the pumps of the applied prior art (Ans. 9, 10), we conclude
that the plain meaning of "an unconfined volume of liquid" requires that the
fluid not be confined to a limited space, such as an unconfined drop of fluid
as described in the Specification. The Examiner has not adequately
explained how one of ordinary skill would have considered Ye' s syringe
pump which forces the fluid through capillary tube 14 to include an
unconfined volume of fluid (Ye i133). Thus, on this record, Ye's syringe
pump falls short of being "a pump providing an unconfined volume of
liquid" as required by the claims when properly interpreted in light of the
Specification. Likewise, the Examiner has not adequately explained how
one of ordinary skill would have considered Chupp's pumps 190 or 232 to
include an unconfined volume of fluid. The Examiner's mere conclusion
that the claim language encompasses these pumps is not sufficient (Ans. 9,
2 While the Specification does not use the phrase "an unconfined volume of
liquid," it does explains how a pipette deposited drop of fluid 56, which
plainly is "an unconfined volume of liquid," acts as a surface tension pump
(e.g., Spec. i-fi-150, 51 Figs. 3, 4). The Specification nonetheless should
provide proper antecedent basis for the claim language. See 37 C.F.R.
1.75(d)(l). We leave it to the Examiner and Appellants to address this issue.
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Appeal2015-005597
Application 12/561, 102
10). Thus, on this record, Ye's syringe pump and Chupp's pumps as
identified by the Examiner each fall short of being a "pump providing an
unconfined volume of liquid subject to an applied force" as required by the
claims when properly interpreted in light of the Specification.
Therefore, we agree with Appellants that the Examiner has taken an
unreasonably broad interpretation of the aforementioned claim limitation
when considered in light of the Specification for the reasons explained in the
Appeal Brief. As such, we cannot sustain the anticipation rejection based on
Ye nor the obviousness rejection based on Chupp as applied to independent
claim 1.
Accordingly, the Examiner's 35 U.S.C. § 102 and 103 rejections are
reversed.
DECISION
The Examiner's decision is reversed.
ORDER
REVERSED
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