Ex Parte Wardlaw

Patent Trial and Appeal Board

Nov 29, 2016

12768062 (P.T.A.B. Nov. 29, 2016)

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.
12/768,062 04/27/2010 Stephen C. Wardlaw 7564-0007-1-1-1-1 4877
50811 7590
0""Shea Getz P.C.
10 Waterside Drive, Suite 205
Farmington, CT 06032
12/01/2016 EXAMINER
TURK, NEIL N
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
12/01/2016 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):
uspto @ osheagetz. com
shenry @ osheagetz. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN C. WARDLAW
Appeal 2015-005691
Application 12/768,062
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL1
Appellant2 filed an appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting, under 35 U.S.C. § 103(a), claims 1, 5, 6, 9, 10, and 22 as
unpatentable over Vermeiden3 in view of Hall,4 and rejecting claim 22 as
1 Our decision refers to Appellant’s Specification filed November 28, 2011
(Spec.), Appellant’s Appeal Brief filed October 29, 2014 (Appeal Br.), the
Examiner’s Answer delivered March 12, 2015 (Ans.), and Appellant’s Reply
Brief filed May 12, 2015 (Reply Br.).
2 Appellant identifies the real party in interest as Abbott Laboratories.
Appeal Br. 3.
3 Vermeiden et al., US 6,551,554 Bl, issued April 22, 2003 (“Vermeiden”).
4 Hall et al., US 4,022,521, issued May 10, 1977 (“Hall”).
Appeal 2015-005691
Application 12/768,062
unpatentable over Vermeiden and Hall and further in view of Smith.5 We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The subject matter on appeal relates to apparatus for enumerating
elements within an anticoagulated human whole blood sample (see, e.g.,
claim 1). Appellant discloses that the apparatus is simple, accurate, and
relatively low in cost for performing blood cell counts, such as counts of red
blood cells and white blood cells. Spec. 1 8. The apparatus includes a first
planar member and a second planar member separated from one another by a
substantially uniform height sized relative to the blood cells so the cells non-
uniformly distribute within a blood sample upon introduction into a
chamber, which is provided between the planar members. Id. at 19. The
planar members may be flexible and separator elements may be disposed
between the planar members. Id. at || 22, 25. Appellant explains that
capillary forces may cause the separator elements or a planar member to
deform so the chamber produced between the planar members assumes an
accurate mean chamber height. Appeal Br. 8. The mean chamber height
results in the non-uniform distribution of white blood cells and red blood
cells within a sample introduced into the chamber. Id.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief.6 The limitations at issue are
italicized.
5 Smith, US 4,950,455, issued August 21, 1990 (“Smith”).
6 Appeal Br. 11.
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Appeal 2015-005691
Application 12/768,062
1. An apparatus for enumerating elements within an
anticoagulated human whole blood sample that includes white
blood cells and red blood cells, comprising:
a chamber defined by a first planar member that is
transparent, a second planar member, and a plurality of separator
elements disposed between the first planar member and the
second planar member, which separator elements are
independent of the first planar member and the second planar
member and each of which has a height, and wherein one of the
first planar member and separator elements are deformable
relative to the other by capillary force in an amount that the
chamber assumes a mean chamber height substantially equal to
a mean separator height; and
one or more sidewalls extending between the first planar
member and the second planar member;
wherein the planar members are separated from one
another by a substantially uniform chamber height of about 4
microns, and the chamber height is such that it causes white
blood cells and the red blood cells within the sample to non-
uniformly distribute within the sample upon introduction into the
chamber.
ANALYSIS
The dispositive issue on appeal is whether Appellant has shown a
reversible error in the Examiner’s finding that Vermeiden discloses a first
planar member that is deformable, as recited in claim 1.
Appellant has persuaded us of such an error.
Appellant contends Vermeiden does not disclose that one of its top
plate 37 and particles 8 are deformable relative to the other by capillary force
in an amount that a chamber assumes a mean chamber height substantially
equal to a mean separator height, as recited in claim 1. Appeal Br. 7.
7 Throughout this Opinion, for clarity, we present labels to elements in
figures in bold font, regardless of their presentation in the original document.
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Appeal 2015-005691
Application 12/768,062
The Examiner finds Vermeiden discloses a first planar member that is
deformable, citing the top plate 3 as deformable relative to the particles 8.
Ans. 3. In response to Appellant’s arguments, the Examiner finds the top
plate 3 of Vermeiden “is made of a material, such as glass, which is
deformable relative to the separator elements 8.” Ans. 6.
As argued by Appellant, these findings are not sufficient to support
the Examiner’s rejection. Reply Br. 1. To the extent the Examiner finds the
top plate 3 is simply deformable, as stated at pages 3 and 6 of the Answer,
claim 1 recites the deformation is “by capillary force.” Claim 1 recites, inter
alia, “wherein one of the first planar member and separator elements are
deformable relative to the other by capillary force in an amount that the
chamber assumes a mean chamber height substantially equal to a mean
separator height.” Claim 1 does not merely require that one of the first
planar member and separator elements is deformable, but that such
deformation occurs by capillary force and in a specified amount. Therefore,
the Examiner’s finding that the top plate 3 is deformable fails to fully
address the recitations of claim 1, and is insufficient to support the
Examiner’s rejection.
Moreover, the Examiner’s findings at page 6 of the Answer that claim
1 does not require an active application of capillary force or an active step of
deformation do not properly consider the scope of claim 1. As stated above,
claim 1 requires one of the first planar member and separator elements to be
“deformable relative to the other by capillary force.” An attempt to parse
the language of claim 1 so as to ignore the requirement that one of the first
planar member or separator elements of claim is deformable by capillary
force is not a proper construction of the recitations of claim 1. While claim
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Appeal 2015-005691
Application 12/768,062
1 does not recite an active step of the application of capillary force, this
claim nonetheless recites a structural property of one of the planar members
and the separator elements that determines how that member or element
functions. It is not proper for the Examiner to ignore any positively recited
structural property of a claim. The reasonable construction of the limitation
at issue here is that one of the first planar member and separator elements is
deformable relative to the other by capillary force.
The Examiner further finds that:
Vermeiden provides to disclose a first planar member 3 that is
made of glass, which is a material that is capable of being
deformed relative to separator elements given an applied amount
of capillary force so as to assume a mean chamber height
substantially equal to a mean separator height (as likewise
disclosed by Vermeiden), in as much as Appellant as claimed.
Id. at 6—7.
To the extent the Examiner finds the top plate 3 of Vermeiden is
capable of being deformed by capillary force, a preponderance of the
evidence in the record does not support this finding. The Examiner provides
no evidence in the record or technical reasoning to support the finding that
the glass top plate 3 would deform by capillary force. Moreover,
Vermeiden’s disclosure relative to the top plate 3 provides no further support
for the Examiner’s findings. Vermeiden discloses:
The top and bottom plate are preferably both made of a material
which transmits UV and/or visible light, preferably glass, and the
top plate should he selected to be as thin as possible in order to
facilitate the examination by means of a microscope.
Vermeiden col. 2,11. 11—15.
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Appeal 2015-005691
Application 12/768,062
Thus, Vermeiden discloses the top plate 3 may be made of glass and is
as thin as possible to facilitate optical examination via a microscope.
However, Vermeiden is silent with regard to making the top plate 3
sufficiently thin so as to be deformable by capillary force.
In view of the above, the disclosure of Vermeiden does not provide a
factual basis to support the Examiner’s finding that Vermeiden discloses one
of a first planar member and separator elements is deformable relative to the
other by capillary force, as recited in claim 1. Therefore, Appellant has
demonstrated a reversible error in the Examiner’s finding that Vermeiden
discloses a first planar member that is deformable by capillary force, as
recited in claim 1.
Claims 5, 6, 9, 10, and 22 depend from claim 1. For the reasons set
forth above, the rejection of claims 1, 5, 6, 9, 10, and 22 under § 103 over
Vermeiden in view of Hall is not supported by the record and is not
sustained.
The remaining § 103 rejection of claim 22 over Vermeiden and Hall
and further in view of Smith suffers from the same deficiencies as the
§103 rejection of claim 1. Although the remaining § 103 rejection includes
Smith as an additional prior art reference, the Examiner does not rely on
Smith to remedy the above-discussed deficiencies in the combination of
Vermeiden and Hall. Therefore, we likewise do not sustain the Examiner’s
§103 rejection of claim 22 over Vermeiden, Hall, and Smith.
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Appeal 2015-005691
Application 12/768,062
DECISION
On the record before us and for the reasons given in Appellant’s
Appeal and Reply Briefs, we reverse the Examiner’s § 103 rejections.
REVERSED
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