Ex Parte Tokunaga

Patent Trial and Appeal Board

Jun 22, 2017

13051445 (P.T.A.B. Jun. 22, 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.
13/051,445 03/18/2011 Kazutoshi TOKUNAGA Q121677 4565
23373 7590 06/26/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
WRIGHT, PATRICIA KATHRYN
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
06/26/2017 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAZUTOSHI TOKUNAGA
Appeal 2016-004562
Application 13/051,4451
Technology Center 1700
Before CHUNG K. PAK, PETER F. KRATZ, and DEBRA L. DENNETT,
Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 5—8, 10, 21, and 24—29. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Applicant, Sysmex Corporation is the real party in
interest. Appeal Br. 2.
2 In our Opinion, we refer to the Final Action emailed on February 18, 2015
(“Final Act.”); the Appeal Brief filed September 30, 2015 (“Appeal Br.); the
Examiner’s (corrected) Answer emailed on March 23, 2016 (“Ans.”), and
the Reply Brief filed March 25, 2016 (“Reply Br.”).
Appeal 2016-004562
Application 13/051,445
The claims are directed to a sample analyzer for analyzing a sample
using a reagent in a reagent container. Claim 24, reproduced below with
disputed term pertinent to our Opinion emphasized, is illustrative of the
claimed subject matter:
24. A sample analyzer for analyzing a sample using a reagent
in a reagent container comprising:
a first reagent container holding unit configured to hold a
first reagent container attached with a first electronic tag
recorded with reagent information regarding a reagent;
a second reagent container holding unit configured to
hold a second reagent container attached with a second
electronic tag recorded with reagent information regarding a
reagent;
a reagent information reading unit which comprises an
antenna portion configured to emit a electric wave to the first
electronic tag and the second electronic tag and to receive a
response electric wave from the first electronic tag and the
second electronic tag, and which reads the reagent information
recorded in the first electronic tag and the reagent information
recorded in the second electronic tag based on the response
electric wave received by the antenna portion from the first
electronic tag and the second electronic tag;
a control unit configured to control the reagent
information reading unit,
a detector configured to measure a component contained
in a measurement sample
prepared from the sample and at least one of the first
reagent and the second reagent; and
a drive unit configured to move the first reagent container
holding unit and the second reagent container holding unit,
wherein the first reagent container holding unit holds a
plurality of first reagent containers and is formed to a
substantially circular shape in plan view;
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Appeal 2016-004562
Application 13/051,445
wherein the second reagent container holding unit holds a
plurality of second reagent containers, and is formed to a
substantially circular shape on an inner peripheral side of the
first reagent container holding unit when seen in plan view;
wherein the antenna portion is arranged on an outer
peripheral side of the first reagent container holding unit;
wherein the drive unit is configured to move the first
reagent container holding unit to locate the first electronic tag
of the first reagent container at a position facing the antenna
portion when the read target is the first electronic tag;
wherein the drive unit is configured to move the first
reagent container holding unit so as to locate a gap between the
first reagent containers held adjacently each other at a position
facing the antenna portion and to move the second reagent
container holding unit so as to locate the second electronic tag
of the second reagent container at a position facing the antenna
portion when the read target is the second electronic tag, and
wherein the antenna portion is attached to a housing of
the first reagent holding unit.
Appeal Br. 20-22 (Claims App’x).
The Examiner relies on the following prior art in rejecting the claims
REFERENCES
on appeal:
Schuermann
Watari
Imai
US 5,500,651
US 2004/0258565 A1
US 2009/0134978 A1
Mar. 19, 1996
Dec. 23, 2004
May 28, 2009
Koichi
(herein after
“Olympus”)
JP 2008-261753 Oct. 30, 2008
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Appeal 2016-004562
Application 13/051,445
REJECTIONS
In the Final Action, the Examiner rejected claim 24 under 35 U.S.C.
§ 103(a) as obvious over Olympus in view of Watari, and claims 1, 5—8, 10,
21, and 25—29 as obvious over Olympus in view of Watari and Schuermann.
Final Act. 2, 6. In the Answer, the Examiner revised the rejections to add
Imai as prior art against all pending claims and designate the rejections
under 35 U.S.C. § 103(a) as new grounds, rejecting claim 24 over Olympus
in view of Watari and Imai, and claims 1, 5—8, 10, 21, and 25—29 over
Olympus in view of Watari, Imai, and Schuermann. Ans. 2, 7.
OPINION
The Examiner rejects independent claim 24 as obvious over Olympus
in view of Watari, both with and without Imai. Final Act. 2; see also Ans. 2.
The Examiner rejects independent claim 1 as obvious over Olympus in view
of Watari and Schuermann, both with and without Imai. Final Act. 6; see
also Ans. 7. Claim 24 is the broadest pending claim; all of the claims,
including independent claim 1, require at least all elements of claim 24.
Appeal Br. 17—24 (Claims App’x).
Appellant does not present separate arguments specifically directed to
independent claim 1 or the dependent claims under rejection. Id. at 15.
Therefore, these claims will stand or fall with claim 24. 37 C.F.R. § 41.37
(c)(l)(iv).
The Examiner finds that Olympus teaches almost all of the limitations
of claim 24. Final Act. 2—5; see also Ans. 2-4. The Examiner
acknowledges that Olympus teaches the use of a barcode reader and
barcodes, and does not explicitly disclose the use of an antenna and
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Appeal 2016-004562
Application 13/051,445
electronic tags. Final Act. 4; see also Ans. 5. The Examiner determines that
use of an antenna and electronic tags are well known in the art, citing Watari
in the Final Action, as well as Imai in the Answer. See Final Act. 4; see also
Ans. 5.
Appellant argues, inter alia, that claim 24 is patentable over Olympus
in view of Watari because the combined references do not teach or suggest
that the antenna portion is attached to a housing of the first reagent holding
unit. Appeal Br. 11. Appellant also argues that Imai does not make up for
this deficiency. Reply Br. 4—5.
The Examiner finds that the barcode label reader (39, 85) of Olympus
corresponds to the antenna portion of claim 24, and that the reader is close to
the housing of the first reagent container holding unit, but not attached to it.
Final Act. 6. The Examiner concludes that it would have been obvious to
one of ordinary skill in the art at the time of the invention to have attached
the reader to the housing of the first container holding unit in the interest of
space savings or stability, as such “mere rearrangement of parts, without any
new or unexpected results” is within the ambit of the skilled artisan. Id.
(citing In reJapikse, 181 F.2d 1019 (CCPA 1950) and In re Kuhle, 526 F.2d
553, (CCPA 1975)).
Appellant argues that the Examiner fails to explain how the holdings
of In re Japikse or In re Kuhle apply to claim 24. Appeal Br. 11—12.
Therefore, according to Appellant, the Examiner relies on a per se rule of
obviousness, basing the rejection on “mere conclusory statements.” Id. at 12
(citing KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 417—418 (2007)).
In Japikse, shifting the location of a starter switch with no change in
operation of the prior art device was upheld as non-inventive. Japikse, 181
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Appeal 2016-004562
Application 13/051,445
F.2d at 1023. In Kuhle, the use of claimed metallic wrapping was “obvious
as a matter of design choice” when it “solve[d] no stated problem” and
“presented] no novel or unexpected result” over the metallic connection
used in the prior art. Kuhle, 526 F.2d at 555. However, “[tjhe mere fact that
a worker in the art could rearrange the parts of the reference device to meet
the terms of the claims on appeal is not by itself sufficient to support a
finding of obviousness. The prior art roust provide a motivation or reason
for the worker in the art, without the benefit: of appellant’s specification, to
make the necessary changes in the reference device.” Ex parte Chicago
Rawhide Mfg. Co., 223 USPQ 351, 353 (BPAI 1984). In the instant case,
the Examiner does not present evidence to support the conclusion that an
ordinarily skilled artisan would have had motivation to make the necessary
changes to Olympus without reference to Appellant’s Specification.
“[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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Even assuming that the Examiner is correct in substituting the RFID
reader/writer of Watari for the barcode label reader of Olympus, the
Examiner does not support that attaching an antenna portion to a housing of
the first reagent holding unit is merely rearrangement of parts with no novel
or unexpected result, and solves no stated problem. In the Specification, the
antenna is located at a cutout in the housing with a predetermined distance of
the side walls arranged in a circular ring shape configuring the housing, and
the cutout in the housing is stopped with a resin portion. Spec. 131. The
antenna must be capable of reading the electronic tags in the reagent
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Appeal 2016-004562
Application 13/051,445
containers in both the first and second reagent holding units. Id. ^ 6. Claim
24 requires that the antenna portion is configured to emit and receive electric
wave signals from electronic tags associated with a reagent container of each
of the first and second reagent holding units and wherein the antenna portion
is attached to a housing of the first reagent container holding unit.
Appellant’s disclosure demonstrates that attaching an antenna to the housing
of the first reagent holding unit, as claimed, is not merely relocating
Olympus’ barcode label reader, which is only “close” to the housing of the
first reagent container holding unit (see Final Action 6).
Nor does it appear to be a case of common sense to locate an antenna
on the housing of the first reagent holding unit, as a factual foundation based
on anything other than hindsight is missing. See In re Van Os, 844 F.3d
1359 (Fed. Cir. 2017) (Obviousness findings “grounded in ‘common
sense’ must contain explicit and clear reasoning providing some rational
underpinning why common sense compels a finding of obviousness.”)
(citation omitted); see also Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355,
1362 (Fed. Cir. 2016) (“[RJeferences to ‘common sense’ . . . cannot be
used as a wholesale substitute for reasoned analysis and evidentiary
support.”); Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013) (“In
recognizing the role of common knowledge and common sense, we
have emphasized the importance of a factual foundation to support a
party’s claim about what one of ordinary skill in the relevant art would have
known.”).
On the record before us, the Examiner has not established by a
preponderance of the evidence that one of ordinary skill in the art would
have been prompted to modify Olympus’ apparatus including a reagent
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Application 13/051,445
container barcode label reader to incorporate/substitute an electronic (RFID)
tag reader and, when so doing, locate the antenna portion of the electronic
tag reader as proposed. Accordingly, we do not sustain the rejection of
claim 24. Because all remaining claims also require location of the antenna
on a housing of the first reagent holding unit, we also do not sustain the
rejections of claims 1, 5—8, 10, 21, and 25—29.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 5—8, 10,
21, and 24—29 is reversed.
REVERSED
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