Ex Parte SEGAWA et al

Patent Trial and Appeal BoardApr 6, 2016

12037619 (P.T.A.B. Apr. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/037,619 02/26/2008 23628 7590 04/08/2016 WOLF GREENFIELD & SACKS, P.C. 600 ATLANTIC A VENUE BOSTON, MA 02210-2206 FIRST NAMED INVENTOR YujiSEGAWA 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. Sl459.72000USOO 4175 EXAMINER HOBBS, MICHAEL L ART UNIT PAPER NUMBER 1799 NOTIFICATION DATE DELIVERY MODE 04/08/2016 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): Patents_eOfficeAction@WolfGreenfield.com WGS_eOfficeAction@WolfGreenfield.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUJI SEGAWA, TASUKU YOTORIY AMA, AKIO YASUDA, NORIYUKI KISHI!, MA YUMI SHIONO, TAKURO YAMAMOTO and TOMOTERU ABE Appeal2014-006786 Application 12/037,619 Technology Center 1700 Before PETER F. KRATZ, KAREN M. HASTINGS, and N. WHITNEY WILSON, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. Â§ 134 of the Examiner's decision rejecting claims 1-11. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b). We REVERSE. 1 Appellants identify the real party of interest as "Sony Corporation." Appeal Brief filed January 21, 2014 ("App. Br.) 3. Appeal2014-006786 Application 12/037,619 Claims 1-11 are appealed. Claims 1 is the sole independent claim and is illustrative of the claimed subject matter (emphasis added): 1. A nucleic acid amplifier for carrying out a nucleic acid amplification reaction, the amplifier comprising: a plurality of wells configured to carry out the nucleic acid amplification reaction; a heating unit provided for every well; an optical unit for irradiating excitation light of a specified wavelength to each of said wells; and a fluorescence detection unit provided for every well, each fluorescence detection unit configured to provide a detection result to the respective heating unit, wherein the respective heating unit is configured to control the temperature of the nucleic acid amplification reaction in one of the plurality of wells based on at least the detection result from the fluorescence detection unit. App. Br. 16 The Examiner maintains, and the Appellants appeal, the following rejections: I. Claims 1--4, 6, and 8-11 are rejected under 35 U.S.C. Â§ 102(b) as anticipated by Joseph et al., (U.S. 2006/0073491 Al, pub. Apr. 6, 2006); II. Claims 1--4, 6, and 8-11 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Joseph in view of Kwasnoski et al., (U.S. Patent No. 6,423,948 Bl, issued July 23, 2002); 2 Appeal2014-006786 Application 12/037,619 III. Claim 5 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combined prior art of Joseph and Bryant (U.S. Patent No. 6,504,226 Bl, issued Jan. 7, 2003) or, alternatively, Joseph, Kwasnoski, and Bryant; and IV. Claim 7 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combined prior art of Joseph and Heimberg et al., (U.S. 2006/0228268 Al, pub. Oct. 12, 2006) or, in the alternative, Joseph, Kwasnoski, and Heimberg. (Non-Final Rejection dated July 1, 2013 ("Non-Final Rej.") 4--14; Examiner's Answer dated March 27, 2014 ("Ans.") 2-3.) ISSUE Did the Examiner reversibly err in finding that Joseph's device for performing/monitoring chemical reactions is identically structured to the "nucleic acid amplifier" as recited in claim 1 such that the device includes a heating unit in a well configured to control reaction temperature based on a detection result from a fluorescent detection unit in the well? We decide this issue in the affirmative. ANALYSIS After review of the respective positions provided by Appellants and the Examiner, we agree with Appellants that the Examiner has not met the burden of establishing anticipation in this case for the reasons stated by Appellants in their Briefs. Moreover, we agree with the Appellants that the obviousness rejections are not well founded and that the Examiner has committed reversible error. We add the following for emphasis. 3 Appeal2014-006786 Application 12/037,619 The Examiner dismisses the claim limitation "configured to" as language that does not add any structure to the "respective heating unit" elements of claim 1 and that it is instead "an intended use of the claimed device" (Non-Final Rej. 4 and 5; Ans. 4). We disagree. Although it is well established that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, see, e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997), in order to satisfy the functional limitations in an apparatus claim, however, the prior art apparatus must be capable of performing the claimed function. Id. at 1478. As such, to be capable of performing the functional limitations in claim 1, the heating unit must possess the necessary structure, hardware or software, to function as claimed. That is, the heating unit must be setup in such a fashion that it can control the chemical reaction's temperature in a well based upon a detection result from the respective well' s fluorescence detection unit. The Examiner failed to indicate where in Joseph this structural limitation of claim 1 is disclosed and instead states that it is drawn to an intended use of the device (Ans. 5---6). A preponderance of the evidence supports Appellants' position that Joseph discloses temperature control based on a temperature sensor and does not suggest its device having a heating unit and a fluorescent detection unit in each well configured to control reaction temperature in accordance with claim 1 (App. Br. 8-9; Reply Br. 7). With respect to the obviousness rejections, we find these rejections do not render claim 1 obvious in that they lack a rational underpinning for combining the teachings of the cited prior art. The Examiner indeed de facto 4 Appeal2014-006786 Application 12/037,619 admits that the heating and diode units in Joseph are not configured or structured to function as recited in claim 1 (Non-Final Rej. 10). The Examiner argues, nevertheless, that it would have been obvious for one skilled in the art to modify Joseph "to employ a computer to control the heater and analyze the optical signal from the wells" (Non-Final Rej. 10). However, the Examiner does not rely upon any reasoning for this statement as to why one of ordinary skill in the art would have been motivated to have configured Joseph's chip device to function as claimed. KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 411 (2007) ("[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art."); "'Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."' Id. at 410 (quoting In re Kahn, 441F.3d977, 988 (CA Fed. 2006). The Examiner's analysis with respect to the rejection over Joseph and Kwasnoski appears to be based upon a finding that Joseph discloses its device comprising diodes and heaters and that one can modify this device to include Kwasnoski's controller, connected to both heating coils and an optical assembly device, to control heating within each of Joseph's well based on a signal sent from the optical assembly (Non-Final Rej. 10-11; Ans. 7-8). Kwasnoski, however, does not teach or suggest using a fluorescence detection result from the wells to control temperature as recited in claim 1 (App. Br. 13; Reply Br. 9). As Appellants' point out: The combination of Joseph and Kwasnoski would require changing the principle of operation for both of these references, making their combination insufficient to render independent 5 Appeal2014-006786 Application 12/037,619 claim 1 obvious. Specifically, both Joseph and Kwasnoski would have to be modified to use a fluorescence detection results from the wells (which is not disclosed in either reference) to control the temperature rather than using the heat measured at the heating element distinct from the wells (which is the temperature control method of both Joseph and Kwasnoski). (Reply Br. 9-10; see also App. Br. 12-13). A preponderance of the evidence supports Appellants' arguments that the nucleic acid amplifier requires structure that is not disclosed in Joseph so as to perform the functions recited in claim 1 (App. Br. 14--15; Reply Br. 9- 11). The Examiner does not rely upon the references additionally applied for claims 5 and 7 (Rejections III and IV) to remedy these deficiencies. As the Examiner has not established that Joseph's apparatus is structurally identical to the claimed apparatus, and furthermore has not established that it would have been obvious to modify Joseph based on Kwasnoski so as to result in the claimed invention, we reverse Rejections I to IV. ORDER REVERSED 6