Ex Parte Rueeck et al

Patent Trial and Appeal Board

Oct 24, 2017

13498707 (P.T.A.B. Oct. 24, 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.
13/498,707 06/12/2012 Gabriel Rueeck TS/HAH 1206 US-PAT 7499
97053 7590 10/26/2017
Hach Company
Attention Legal - Patent and Trademark Department
5600 Lindbergh Drive PO Box 389
Loveland, CO 80539
EXAMINER
GAKH, YELENA G
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
10/26/2017 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):
uspto@hach.com
taschulz@hach.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GABRIEL RUEECK, HELGA GUTHMANN,
JOHANNES BERSSEN, MICHAEL ZIEDRICH, CARSTEN SCHULZ,
CLEMENS HANSCHKE, FLORENS ENGEL,
DIETMAR ZANGENBERG, MARKUS LENHARD, and
THOMAS COEPER
Appeal 2016-008305
Application 13/498,7071
Technology Center 1700
Before MICHAEL P. COLAIANNI, AVELYN M. ROSS, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejection adverse to the patentability of claims 10 and 14—17.
We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.
1 Appellants identify the real party in interest as Hach Lange GmbH. App.
Br. 2.
Appeal 2016-008305
Application 13/498,707
BACKGROUND
The subject matter on appeal is directed to a system for
photometrically analyzing liquid samples. Spec. 2.
Claim 10 is illustrative, is taken from the Claims Appendix of the
Appeal Brief, and appears below with key limitations italicized:
10. A liquid analysis system for a photometric determination of an
analyte in a liquid sample, the liquid analysis system consisting of.
an analyzer comprising,
a photometer,
an RFID parameter reading device, and
a 2D bar code reading device,
the 2D bar code reading device being provided separately
from the RFID parameter reading device; and
a cuvette package comprising
an RFID parameter transponder which stores a batch
identification and batch-specific reagent data, and
a plurality of test cuvettes of one batch, each test cuvette
comprising a reagent and a 2D bar code comprising the batch
identification, the 2D bar code being configured to be read by the
2D bar code reading device,
wherein,
the batch identification assigns a cuvette to the cuvette package
and to the batch-specific reagent data.
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Morris US 2005/0205673 A1 Sept. 22,2005
Dussi US 2009/0124015 A1 May 14,2009
STATEMENT OF THE CASE
All claims on appeal are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dussi in view of Morris. Ans. 3—5.
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Regarding independent claim 10, the Examiner finds that Dussi
teaches all the recited elements, except for the limitation requiring each test
cuvette to comprise a reagent and a bar code thereon. Id. at 4. The
Examiner relies on the teachings of Morris and the level of the skilled artisan
to remedy these deficiencies. Id. The Examiner concludes that it would
have been obvious to the skilled artisan to combine the teachings of Dussi
and Morris to arrive at the claimed subject matter “because it would have
been easier to transfer reagents into the spectrophotometer directly in the
reagent cuvettes, rather than to transfer them from the reagent containers.”
Id. The Examiner also concludes that it would have been obvious to
substitute Morris’ cuvettes containing simplified individual RFID tags with
the recited 2D barcode identifiers because such barcode identifiers were
conventional in the art at the time of the invention, and because they were
considered to be interchangeable with, and have the same function as, RFID
tags. Id. Regarding independent method claims 16 and 17, the Examiner
determines that the recited method steps are inherent in the system disclosed
in Dussi and Morris. Id. at 5.
Appellants present separate arguments for independent claims 10, 16,
and 17. Thus, we need only focus on these claims. Claims not argued
separately stand or fall accordingly. 37 C.F.R. § 41.37(c)(l)(iv).
OPINION
Claim 10
We have reviewed Appellants’ arguments and are not persuaded that
Appellants have identified reversible error. In re Jung, 637 F.3d 1356,
1365—66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellants to identify the alleged error in the Examiner’s
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rejection). Therefore, we sustain the rejection of claim 10 based on the
findings of fact, conclusions of law, and rebuttals to arguments expressed by
the Examiner in the Final Office Action, Advisory Action, and in the
Answer. We add the following comments for emphasis and completeness.
We share the Examiner’s view (Ans. 7) that several of Appellants’
arguments against the rejection of this claim attack the separate teachings of
the references and do not address the rejection as a whole. App. Br. 11—15.
It is well-settled, however, that “[n]on-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. . . . [The reference] must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Accordingly, all such arguments that solely focus on the individual reference
teachings fail to persuade us of reversible error.
Appellants’ arguments (App. Br. 8—9, 11—12, 14) suggesting that
claim 10 is “closed” so as to exclude Dussi’s subassemblies are also not
persuasive of reversible error. While the recited system may only consist of
“an analyzer” and “a cuvette package,” each of the “analyzer” and “cuvette
package” limitations recites “comprising” and are, therefore, individually
open to additional, un-recited elements. “‘Comprising’ is a term of art used
in claim language which means that the named elements are essential, but
other elements may be added and still form a construct within the scope of
the claim.” Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir.
1997).
Appellants’ contentions (App. Br. 13—16) that the recited reagent is
distinct from that disclosed in the prior art are likewise unpersuasive. In this
regard, we agree with the Examiner’s determination (Ans. 7), undisputed by
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Appellants (Reply Br. generally) that “it would have been obvious for any
routineer in the art to have any reagents in the Dussi-[Morris] system.”
Moreover, as correctly observed by the Examiner (Ans. 7), the claims do not
limit the reagent to only those which change color when reacted with a
specific analyte, nor do they exclude biological reagents.
Appellants’ arguments regarding the lack of disclosure in the prior art
regarding a barcode comprising batch identification information (App. Br.
8—9, 12—15) also are not well taken. Specifically, Appellants note that
“‘[b]atch identification’ relates both the assignment of a test cuvette to a
certain batch and the type of cuvette test, i.e., the analyte to be determined or
the reagent contained in the test cuvette for that purpose.” App. Br. 13,
citing Spec. 111. Regarding the particular reagent contained in the cuvette,
however, Morris expressly teaches that “information regarding the contents
of the tubes ... is stored in an RFID tag either affixed to or embedded into
each of the tubes 300 or . . . into the tube carrier 400.” Morris 149.
Regarding the assignment of a cuvette to a certain batch, Appellants urge
that Morris’ “simplified RFID then only provides row and column
information for the tube’s position in the tube carrier 400.” App. Br. 14
(emphasis added), citing Morris 147. Appellants do not explain, however,
how identifying a cuvette’s exact position within a batch of cuvettes does
not “assign a cuvette to the cuvette package” as claimed. Moreover, Morris’
disclosure relied on by Appellants merely exemplifies row and column
information for associating a particular tube 300 to the tube carrier 400.
Morris 147 (“the tube bears a simplified RFID tag or optical indicia that
provides, for example, row and column information for the tube’s position in
the tube carrier 400” (emphasis added)). Such disclosure in Morris does not
limit the type of information that can be used to associate the individual
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tubes 300 to the carrier 400 housing a “batch” of tubes. Therefore,
Appellants have not identified reversible error in the Examiner’s well-
reasoned determination (Ans. 4—5) that it would have been obvious to use
conventional 2D barcodes, known to be interchangeable with RFID tags, on
individual cuvettes to store the recited batch identification data thereon, so
that the individual cuvettes could be associated with a particular batch.
Furthermore, even if we determined that the specific batch
identification data recited in claim 10 (i.e., assignment of a cuvette to 1) the
cuvette package, and 2) the batch-specific reagent data) would not have been
obvious in view of Dussi and Morris, this data appears to be non-functional
descriptive material because it does not reconfigure the liquid analysis
system to perform a different function than that disclosed in the prior art. In
other words, there is no evidence that the batch identification is functionally
related to the liquid analysis system because the system photometrically
determines an analyte in a liquid sample regardless of the specific reagent
data or particular package to which an individual cuvette is assigned.
Therefore, because the informational content of the data (i.e., the “batch
identification”) is not positively recited as being used to change or affect any
function of the liquid analysis system within the broad scope of claim 10,
such informational content is non-functional descriptive material and is
entitled to no weight in the patentability analysis. See Ex parte Nehls, 88
USPQ2d 1883, 1889 (BPAI 2008) (precedential) (“[T]he nature of the
information being manipulated does not lend patentability to an otherwise
unpatentable computer-implemented product or process.”); Ex parte
Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative) (“[Non­
functional descriptive material cannot lend patentability to an invention that
would have otherwise been anticipated by the prior art.”), affd, 191 Fed.
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App’x 959 (Fed. Cir. 2006) (Rule 36); Ex parte Curry, 84 USPQ2d 1272,
1274 (BPAI 2005) (informative) (“Nonfunctional descriptive material
cannot render nonobvious an invention that would have otherwise been
obvious.”), aff’d, No. 06-1003 (Fed. Cir. 2006) (Rule 36); see also MPEP
§2111.05(111).
Finally, we observe that Appellants’ arguments presented in the Reply
Brief (Reply Br. 3—6) are untimely. Specifically, Appellants present
arguments against the Examiner’s proposed combinations and substitutions
of Dussi’s system with the teachings of Morris including: 1) the replacement
of Dussi’s reagent container with a test cuvette containing the reagent, 2) the
attachment of an RFID to the batch, and 3) the addition of a 2D bar code to
each cuvette, and assert that such substitutions “would not be ‘obvious for
any routineer in the art’ as” proposed by the Examiner. Reply Br. 3. Rather,
Appellants urge that the proffered changes “would render Dussi
unsatisfactory for its intended purpose” and “would change Dussi’ principle
of operation.” Id. We determine, however, Appellants had the opportunity
to make such arguments in their Appeal Brief because each of these
combinations and substitutions were identified by the Examiner in either the
Final Office Action or the Advisory Action. Final Act. 5—6; Adv. Act. 2.
Appellants, however, failed to timely present the specific arguments
identified on pages 3—6 of the Reply Brief in response to the contested
findings and determinations. We, therefore, decline to consider such
arguments because Appellants have not explained why these arguments
could not have been raised in their Appeal Brief. 37 C.F.R. § 41.37(c)(l)(iv)
(“Except as provided for in §§ 41.41, 41.47, and 41.52, any arguments or
authorities not included in the appeal brief will be refused consideration by
the Board for purposes of the present appeal.”); see also Ex parte Borden, 93
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USPQ2d 1473, 1477 (BPAI 2010) (Informative) (explaining that under the
previous rules, which are similar to the current rules, “the reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.”).
Moreover, we observe that, even if Appellants’ arguments were
timely presented, they would be unpersuasive of reversible error. For
example, Appellants’ contention (Reply Br. 5) regarding Dussi’s containers
being used “more than once, i.e., for more than one analysis” and that the
Examiner’s proffered substitution would render “the Dussi system no longer
being able to run multiple tests with the same sample” and “unable to use
one reagent for more than one test sample” lacks support in Dussi. Contrary
to Appellants’ argument, Dussi’s system may contain “one or more vessels
for one or more reagents” and “defines a test” to employ such one or more
reagents. Dussi 113 (emphasis added). Dussi’s system, therefore, is not
limited to using multiple containers to be used in the performance of
multiple tests. “It is well settled that a prior art reference is relevant for all
that it teaches to those of ordinary skill in the art.” In re Fritch, 972 F.2d
1260, 1264 (Fed. Cir. 1992) (emphasis added).
Thus, we sustain the rejection of claim 10 for the reasons expressed
by the Examiner and above. The rejection of claims 14 and 15, not
separately argued, is likewise sustained for the same reasons.
Claims 16 and 17
Regarding method claims 16 and 17, the Examiner finds that “the
method steps are inherent to the disclosed combined analysis system.” Final
Act. 6; Ans. 5.
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Appellants contend, however, that “Dussi. . . teaches numerous
additional method steps such as retrieving the contents of a first tag (step
102), checking to determine whether it holds a new protocol (step 104) etc.
which are specifically excluded by the use of the ‘consisting of transitional
phrase.” App. Br. 14. Although the Examiner does address whether the
system claim (claim 10) is closed (Ans. 8), the Examiner fails to respond
with any specificity to Appellants’ argument regarding method claims 16
and 17. Ans. 6—8.
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“|T]n order to rely on inherency to establish the existence of a claim
limitation in the prior art in an obviousness analysis^] the limitation at issue
necessarily must be present, or the natural result of the combination of
elements explicitly disclosed by the prior art.” PAR Pharm., Inc. v. TWI
Pharms, Inc., 773 F.3d 1186, 1195—96 (Fed. Cir. 2014). To properly rely on
the doctrine of inherency in a rejection, “the Examiner must provide a basis
in fact and/or technical reasoning to reasonably support the determination
that the allegedly inherent characteristic necessarily flows from the teachings
of the applied prior art.” Ex Parte Levy, 17 USPQ2d 1461, 1464 (BPAI
1990). Once the Examiner so provides, the burden then shifts to the patent
applicant to demonstrate otherwise. See In re Best, 562 F.2d 1252, 1255
(CCPA 1977).
Applying these concepts to the instant case, the Examiner provides no
such basis in fact and/or technical reasoning to reasonably support the
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inherency of the claimed methods.2 Rather, the Examiner asserts that the
method steps are inherent and merely provides two paragraphs copied from
Dussi for support. Such conclusory assertions do not evince that the recited
methods are inherent in Dussi’s disclosure. This is particularly true in view
of Appellants’ correct observation that method claims 16 and 17 recite the
transitional phrase “consisting of,” thus limiting the number of steps to only
those steps recited. On this record, the Examiner fails to explain how the
combined disclosure of Dussi and Morris render such methods inherent and,
therefore, obvious in view of the disclosed system.
It follows that we reverse the Examiner’s rejection of these claims.
SUMMARY
The Examiner’s decision to reject claims 10, 14, and 15 is affirmed.
The Examiner’s decision to reject claims 16 and 17 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART
2 Our reviewing court has recognized the appropriateness of determining that
later-claimed method steps may be inherent in the prior art based on the
earlier disclosure of a product that is the natural result of the claimed
method. See In re King, 801 F.2d 1324 (Fed. Cir. 1986). We recognize that
the particular factual scenario in King dealt with inherency with respect to an
anticipation rejection. We do not, however, understand King to exclude
situations such as the one here where the underlying rejection is based on
obviousness.
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