Ex Parte Verschuren et al

Patent Trial and Appeal BoardFeb 19, 2019

14687180 (P.T.A.B. Feb. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/687,180 04/15/2015 Coen Adrianus Verschuren 145572 7590 02/19/2019 MCCOY RUSSELL LLP 806 SW BROADWAY SUITE 600 PORTLAND, OR 97205-3335 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. DTS l 8305PCTUSDIV 1 6386 EXAMINER TURK,NEILN ART UNIT PAPER NUMBER 1798 MAIL DATE DELIVERY MODE 02/19/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte COEN ADRIANUS VERSCHUREN, DOMINIQUE MARIA BRULS, ALBERT HENDRIK JAN IMMINK, FEMKE KARINA DE THEIJE E/V WIJGERGANGS, THEA VAN DER WIJK, ALEXANDER MARC VAN DER LEE, and JOHANNES JOSEPH HUBERTINA BARBARA SCHLEIPEN Appeal2018-005190 Application 14/687, 180 1 Technology Center 1700 Before KAREN M. HASTINGS, JAMES C. HOUSEL, and JEFFREY R. SNAY, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's decision rejecting claims 1 and 3-14. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Appellant is the Applicant, KONINKLIJKE PHILIPS N.V., which, according to the Appeal Brief, is the real party in interest (Appeal Br. 3). Appeal2018-005190 Application 14/687, 180 Independent claim 1 below is illustrative of the subject matter on appeal ( emphasis and some indentation added): 1. A carrier for a sample to be investigated, the carrier being positioned proximate a light source that is configured to emit an input light beam, said carrier comprising a sample chamber with a transparent inspection wall that has on an interior side a binding swface and on an exterior side at least one optical structure, wherein the at least one optical structure is configured to direct the input light beam that is received from outside the carrier to enter the inspection wall wherein the input light beam is totally internally reflected in an investigation region at the binding surface, and the optical structure is configured to direct an output light beam and/or fluorescence light emitted by target components at the binding surface to leave the inspection wall through the at least one optical structure. The Examiner maintains the following rejections: 2 (a) claims 1 and 3-14 under 35 U.S.C. Â§ 102(b) as being anticipated by Stewart (US 4,857,273, issued Aug. 15, 1989); and (b) claim 14 under 35 U.S.C. Â§ 103(a) as being unpatentable over Stewart in view of Ewart et al. (US 5,922,537, issued July 13, 1999) ("Ewart"). ANALYSIS Anticipation Rejection over Stewart Claims 1 and 3-14 are rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Stewart. 2 We refer to the Specification filed Apr. 15, 2015 ("Spec."), the Appeal Brief filed Oct. 25, 2017 ("Appeal Br."), the Examiner's Answer dated Feb. 22, 2018 ("Ans."), and the Reply Brief filed Apr. 23, 2018 ("Reply Br."). 2 Appeal2018-005190 Application 14/687, 180 Appellant's principle argument on appeal is that Stewart does not disclose at least one optical structure "on an exterior side" of a transparent inspection wall of a sample chamber, as recited in claim 1 (Appeal Br. 5-8; Reply Br. 5-7). Specifically, Appellant asserts that Stewart's first and second optical prisms 3, 5 are not on the exterior side of Stewart's waveguide 1 (i.e., transparent inspection wall) "under the well-known meaning of these terms in the art" and the waveguide 1 "is specifically planar and does not include the optical structure on the exterior side of the waveguide" (Appeal Br. 6-8). The Examiner finds Stewart discloses a carrier including a sample chamber 11 with a transparent inspection wall (i.e., Stewart's waveguide 1) having on its interior side a binding surface (i.e., Stewart's coating 7) and on its exterior side at least one optical structure (i.e., Stewart's prisms 3, 5) that are configured to direct an input light beam and an output light beam, as recited in claim 1 (Ans. 3--4). Figure 1 of Stewart is reproduced below. .-, .. 11 ' s "ii ' .5 Figure 1 is a cross-sectional view of a known biosensor. 3 Appeal2018-005190 Application 14/687, 180 Stewart discloses a known biosensor in which light from a source S is directed into a waveguide 1 via a first coupling prism 3, propagated through the waveguide 1 via multiple total internal reflections, and exits the waveguide 1 via a second couple prism 5 so the light is directed to a detector D (Stewart 2: 13-18). Stewart discloses that a sensitized organic coating 7 is on one side of the waveguide 1 so that the coating is 7 exposed to a sample liquid 9 (id. at 2: 18-24). According to Stewart, light is totally reflected within the waveguide 1 but a portion propagates as an evanescent wave in the coating 7, with the evanescent wave interacting with any species in the coating 7, which in turns modifies the absorption and phase shift of the light beam (id. at 2:29-32, 2:59-62). The Examiner explains that Stewart's Figure 1 shows the prisms 3, 5 are on an exterior side of the waveguide 1 and Appellant has not provided a structural distinction between the claimed carrier and Stewart (Ans. 8). The record before us (e.g., Appellant's arguments, the Examiner findings, and Stewart's disclosure) demonstrates that the Examiner has the better position. Claim 1 does not include recitations to further limit the scope of "on an exterior side" and Appellant does not direct our attention to a definition for this language. For instance, Appellant argues at page 6 of the Reply Brief that the language "on an exterior side" of the transparent inspection wall in claim 1 "involves the optical structure being a part of the inspection wall" and Stewart's prisms 3, 5 are not part of a transparent inspection wall. However, Appellant cites no support for such a definition in claim 1 itself or in Appellant's disclosure. Instead, the broadest reasonable interpretation of at least one optical structure "on an exterior side" of a transparent inspection wall would encompass Stewart's structure, which includes prisms 3, 5 4 Appeal2018-005190 Application 14/687, 180 adjacent to and, as depicted in Figure 1, in contact with a waveguide 1, the latter of which the Examiner finds to be a transparent inspection wall (Ans. 3). Appellant's argument that Stewart's Figure 2 depicts a partially transmissive light reflecting layer 15 between the prisms 3, 5 and waveguide 1 (Appeal Br. 7) is also unpersuasive. As explained by the Examiner (Ans. 10), Stewart's Figure 1 is cited in the anticipation rejection of claim 1, not Figure 2 (see Ans. 3--4 ). Appellant also contends Stewart's prisms 3, 5 are not an optical structure configured to direct input light and direct output light, as recited in claim 1, because the output light must exit the waveguide 1 to reach the second prism 5 and because prism 3 receives the input beam while prism 5 receives the output light beam (Appeal Br. 8-9; Reply Br. 6-7). These arguments are also unpersuasive. As explained by the Examiner (Ans. 10), claim 1 recites "at least one optical structure," which encompasses more than one optical structure, such as Stewart's prisms 3, 5. Further, there is no limitation in claim 1 requiring a single optical structure to be configured to perform both of the input and output light direction functions. Instead, claim 1 recites "the optical structure" is configured to perform these functions, which refers to the "at least one optical structure." Therefore, claim 1 itself permits multiple optical structures to be configured to perform the input and output light direction functions. The Examiner finds Stewart's prisms 3, 5 perform these functions (Ans. 9) and this finding is supported by Stewart, which discloses that light is directed into the waveguide 1 by the first coupling prism 3 and the light exits the waveguide 1 via the second couple prism 5, not via the waveguide 1 (Stewart 2:13-18). 5 Appeal2018-005190 Application 14/687, 180 As a result, Appellant's arguments do not identify a reversible error in the Examiner's rejection of claim 1 over Stewart. Appellant does not argue claims 3-14 separately from claim 1 (Appeal Br. 5-9). For the reasons discussed above and those set forth in the Examiner's Answer, we sustain the Examiner'sÂ§ 102 rejection of claims 1 and 3-14 over Stewart. Obviousness Rejection over Stewart and Ewart Claim 14 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Stewart in view of Ewart. As an initial matter, the Examiner notes that claim 14 is also rejected underÂ§ 102 over Stewart (Ans. 11; see id. at 5). Appellant does not dispute the rejection of claim 14 under Â§ 102 over Stewart other than by virtue of its dependence from argued claim 1. Appellant argues Ewart does not disclose the limitations of claim 1 (Appeal Br. 9-11; Reply Br. 8-9). As discussed above with regard to the Â§ 102 rejection of claim 1, there are no deficiencies with Stewart that require curing by Ewart. Appellant also argues Ewart does not disclose the limitations of claim 14 because: the cited portions of Ewart are completely silent with respect to the label particles being configured to scatter or absorb evanescent light which will be missing in an output light beam. Ewart does not teach that light that is scattered or absorbed by the label particles will specifically be missing in an output light beam whatsoever. Appeal Br. 11. These "separate" arguments amount to no more than a recitation of the additional limitations of the dependent claim and a generic 6 Appeal2018-005190 Application 14/687, 180 denial that the references teach or suggest the additional limitations or cure the deficiencies of the principal reference. We and our reviewing court have long held that such "argument" does not merit separate consideration. See, e.g., In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). Nonetheless, the Examiner maintains that Ewart discloses the limitations of claim 14 (Ans. 7, 11). The Examiner's position is supported by the evidence because Ewart discloses the use of phosphorescent microparticles or nanoparticles that covalently attach to analyte molecules or their chemical analogs and that an optical waveguide allows source light evanescent wave excitation of the phosphorescent particles (Ewart 17:32- 50). For the reasons discussed above and those set forth in the Examiner's Answer, we sustain the Examiner'sÂ§ 103(a) rejection of claim 14 over Stewart and Ewart. DECISION The Examiner's rejection of claims 1 and 3-14 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7