Ex Parte PRINS et al

Patent Trial and Appeal BoardJan 30, 2019

14646826 (P.T.A.B. Jan. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/646,826 05/22/2015 MENNO WILLEM JOSE PRINS 24737 7590 02/01/2019 PHILIPS INTELLECTUAL PROPERTY & STANDARDS 465 Columbus A venue Suite 340 Valhalla, NY 10595 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. 2012P01136WOUS 2537 EXAMINER HANDY,DWAYNEK ART UNIT PAPER NUMBER 1798 NOTIFICATION DATE DELIVERY MODE 02/01/2019 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): patti. demichele@Philips.com marianne.fox@philips.com katelyn.mulroy@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MENNO WILLEM JOSE PRINS and GODEFRIDUS JOHANNES VERHOECKX 1 (Applicant: Koninklijke Philips N.V.) Appeal2018-003953 Application 14/646,826 Technology Center 1700 Before BEYERL YA. FRANKLIN, DONNA M. PRAISS, and DEBRA L. DENNETT, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant identifies the real party in interest as Koninklijke Philips N.V. App. Br. 2. Appeal2018-003953 Application 14/646,826 Appellant requests our review under 35 U.S.C. Â§ I34(a) of the Examiner's decision rejecting claims 1-12 and 14--16. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). STATEMENT OF THE CASE Claim 1 is illustrative of Appellant's subject matter on appeal and is set forth below: 1. A cartridge for uptake and processing of a medium, comprising: an inlet portion with an inlet via which the medium can be taken up; an assay chamber in which the medium can be processed; and a suction reservoir; wherein the assay chamber and the suction reservoir are connected to the inlet portion to trap a quantity of air in the assay chamber when the medium fills the inlet portion, and wherein the quantity of trapped air in the assay chamber stops the medium in the inlet portion from entering the assay chamber. App. Br. 14 (Claims Appendix) (emphasis added). The Examiner relies on the following prior art references as evidence of unpatentability: Pugia Ahn Battrell US 2004/0241042 Al US 2005/0130292 Al US 2010/0112723 Al 2 Dec. 12, 2004 June 16, 2005 May 6, 2010 Appeal2018-003953 Application 14/646,826 THE REJECTIONS 1. Claims 1-6, 9-12, 14, and 16 are rejected under pre-AIA 35 U.S.C. Â§ 102(b) as being anticipated by Battrell. 2. Claims 7 and 15 are rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Battrell in view of Ahn. 3. Claim 8 is rejected under pre-AIA 35 U.S.C. Â§ 103(a) as being unpatentable over Battrell in view of Pugia. 2 Ans. 6. ANALYSIS Upon consideration of the evidence and each of the respective positions set forth in the record, we find that the preponderance of evidence supports Appellant's position. Accordingly, we reverse each of the Examiner's rejections on appeal essentially for the reasons set forth in the Appeal Brief and the Reply Brief, with the following emphasis. It is the Examiner's position that Battrell anticipates the claimed subject matter, particularly with regard to the claim language regarding "wherein the assay chamber and the suction reservoir are connected to the inlet portion to trap a quantity of air in the assay chamber when the medium fills the inlet portion, and wherein the quantity of trapped air in the assay chamber stops the medium in the inlet portion from entering the assay chamber". Ans. 1--4. On the other hand, it is Appellant's position that the presence of air does not 2 Note that the Final Action indicates the rejection of claim 8 is over Battrell in view of Ahn and refers to a previous Office Action. The Appeal Brief and Reply Brief also refer to Ahn instead of Pugia for this rejection. This is a harmless inconsistency as it is not critical to our analysis and determinations in this decision. 3 Appeal2018-003953 Application 14/646,826 actively stop fluid from entering Battrell' s channel 7, but aids in the transmission of the suction pulse, causing the fluids to start flowing. Appeal Br. 6. We are persuaded by this line of argument as presented throughout the record as there would be no need for Battrell' s capillary stops 21, 22 or 18, 19 if the presence of air actively stops fluid from entering channel 7. We thus reverse Rejection 1. Because the Examiner does not rely upon the additionally applied references (applied in Rejections 2 and 3) to cure this stated deficiency of Battrell, we also reverse Rejections 2 and 3 for the same reasons. Each rejection is reversed. DECISION ORDER REVERSED 4