Ex Parte Wasson et al

Patent Trial and Appeal Board

Aug 31, 2017

14157343 (P.T.A.B. Aug. 31, 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.
14/157,343 01/16/2014 James Wasson 2017.203 6362
107075 7590
Theranos, Inc.
1701 Page Mill Rd
Palo Alto, CA 94304
09/05/2017 EXAMINER
BOWERS, NATHAN ANDREW
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
docketing @ theranos. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES WASSON, JOHN KENT FRANKOVICH,
ELIZABETH A. HOLMES, TIMOTHY SMITH, MICHAEL CHEN, and
DANIEL YOUNG
(Applicant: THERANOS, INC.)
Appeal 2016-005368
Application 14/157,343
Technology Center 1700
Before JAMES C. HOUSEL, GEORGE C. BEST, and
MONTE T. SQUIRE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner’s decision rejecting, under 35 U.S.C. § 103(a), claims 19—23, 31—
1 Our decision refers to the Specification (Spec.) filed January 16, 2014, the
Examiner’s Final Office Action dated January 9, 2015, Appellants’ Appeal
Brief (Appeal Br.) filed November 6, 2015, the Examiner’s Answer (Ans.)
dated February 26, 2016, and Appellants’ Reply Brief (Reply Br.) filed April
26, 2016.
2 According to Appellants, the real party in interest is Theranos, Inc. Appeal
Br. 2.
Appeal 2016-005368
Application 14/157,343
33, 36, 37, 39, 41, 42, and 44 as unpatentable over Schulte in view of Bargh,
and claims 34, 35, 38, 40, and 43 as unpatentable over this combination
adding additional references. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The invention relates to a method of transporting components within a
sample analyzing device comprising providing a plurality of pipette heads,
wherein each head has a pipette nozzle configured to connect with a
removable tip, engaging a sample processing component using at least one
pipette head, and transporting the sample processing component using the at
least one pipette head. Spec. 1120.
Claim 19, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
19. A method for transporting a sample processing component in a
sample processing device, the method comprising:
engaging the sample processing component with at least a first
nozzle and a second nozzle of a fluid handling apparatus, the fluid
handling apparatus comprising at least a first pipette head and a
second pipette head, the first pipette head comprising the first nozzle
and the second pipette head comprising the second nozzle, and
wherein the sample processing component is at a first location in the
device prior to being engaged by the first and second nozzle; and
transporting by the fluid handling apparatus the engaged sample
processing component to a second location in the device.
The remaining independent claim 31 similarly recites a method
requiring first and second nozzles engaging a cuvette, followed by
transporting the engaged cuvette.
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Appeal 2016-005368
Application 14/157,343
ANALYSIS
The Examiner finds Schulte discloses a method for transporting
sample processing component 14 in a sample processing device 10, wherein
sample processing component 14 is engaged with a first nozzle 28 having
first pipette head 47 for receiving first pipette 60. Final Act. 3. In addition,
the Examiner finds Schulte discloses lifting sample processing component
14 by inserting first nozzle 28, followed by lifting and shaking. Id. The
Examiner further finds, thereafter, that sample processing component 14
may then be returned to its original location or “moved to a new location.”
Id. The Examiner acknowledges that Schulte fails to teach a second nozzle
for facilitating transport of a multi-well sample processing component.3 Id.
To provide this feature, the Examiner finds Bargh teaches a sample
processing component 1 comprising at least first and second nozzles having
first and second pipette tips 32 that are associated with first and second wells
of sample processing component or microtiter plate 42. Id. at 4. The
Examiner concludes that it would have been obvious to modify Schulte to
include a plurality of nozzles and pipette heads to enable processing of a
multi-well plate having a plurality of reaction locations as taught by Bargh.
Id. The Examiner determines that such a modification is a mere prima facie
obvious duplication of parts resulting in a predictable improvement to
Schulte’s method. Id. (citing MPEP § 2144.04).
Appellants argue that neither Schulte nor Bargh teach engaging a
single sample processing component at a first location with at least two
nozzles of a fluid handling apparatus and transporting the engaged
3 We note claim 19 does not require that the sample processing component
be “multi-well.”
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Appeal 2016-005368
Application 14/157,343
component to a second location. Appeal Br. 5. Instead, Appellants contend
Schulte is directed to causing vortices in a test tube, wherein a single test
tube handling assembly is provided such that the test tube gripping means
engages with a single test tube. Id. at 6. Further, although Bargh teaches a
pipetting device having an array of pipette tips which may be associated
with the wells of a microtiter plate, Appellants contend that Bargh fails to
teach the pipetting device directly engaging or transporting the microtiter
plate. Id.
Appellants further argue that Schulte teaches engaging only a single
test tube because of the problem associated with sealing multiple test tubes
prior to swinging and rotating to provide the desired vortex mixing. Appeal
Br. 10-11. Because a multi-well plate would likely be unsealed, Appellants
contend that Schulte teaches against its use. Id. at 11. Appellants urge that,
given the lack of any teaching in Schulte and Bargh of engaging and
transporting a single sample processing component with at least two nozzles
of a fluid handling apparatus, the Examiner’s relied on improper hindsight in
formulating the obviousness rejection of independent claims 19 and 31. Id.
at 9, 12.
Moreover, Appellants argue that the Examiner’s proposed
modification to Schulte in view of Bargh would render Schulte
unsatisfactory for its intended purpose. Appeal Br. 12—18. Specifically,
Appellants contend that the addition of a second nozzle to engage a multi­
well plate would interfere with the function of Schulte’s first nozzle which
rotates about axis 16 and swings about point 24. Id. at 13. As to the
Examiner’s position that modifying Schulte with a second nozzle engaging
the sample processing component represents a mere obvious duplication of
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Appeal 2016-005368
Application 14/157,343
parts, Appellants argue that the addition of a second nozzle and pipette head
in Schulte still would not provide for engaging a single sample processing
component with the first and second nozzles or transporting the component
engaged by the nozzles. Id. at 18. Appellants urge that any such duplication
would merely provide a second test tube handling assembly to independently
engage with a second test tube for vortex mixing. Id. at 18—20.
Appellants’ arguments are persuasive of reversible error in the
Examiner’s rejection. The Examiner fails to direct our attention to any
evidence on this record, other than Appellants’ own Specification, that
teaches or suggests engaging a single sample processing component with at
least two nozzles of a fluid handling apparatus and transporting the
component while so engaged. As Appellants contend, Bargh does not teach
use of plural nozzles engage and transporting the microtiter plate. “To
imbue one of ordinary skill in the art with knowledge of the invention . . . ,
when no prior art reference or references of record convey or suggest that
knowledge, is to fall victim to the insidious effect of a hindsight syndrome
wherein that which only the inventor taught is used against its teacher.”
W.L. Gore &Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, (Fed. Cir.
1983).
Further, the Examiner has not shown that modifying Schulte to
duplicate the test tube handling assembly would result in the methods of
claims 19 and 31. To the contrary, we are persuaded that duplicating
Schulte’s assembly would merely provide the ability to vortex mix plural
test tubes simultaneously, but would not provide the ability to engage a
single microtiter plate with plural nozzles for transport. As Appellants
argue, duplicating Schulte’s assembly in an attempt to arrive at the invention
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Appeal 2016-005368
Application 14/157,343
would render Schulte unsatisfactory for its intended purpose because it is not
clear how two nozzles could be rotated about their own axes 16 while
engaged with a single microtiter plate, much less swung around their own
points 24 also while engaged with the single microtiter plate. There is no
suggestion or motivation to make a proposed modification if doing so would
render the prior art invention being modified unsatisfactory for its intended
purpose. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984); see also DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed.
Cir. 2009) (“[T]he ‘predictable result’ discussed in [KSR] refers not only to
the expectation that prior art elements are capable of being physically
combined, but also that the combination would have worked for its intended
purpose.” (citation omitted)).
We, therefore, do not sustain the Examiner’s obviousness rejection of
claims 19—23, 31—33, 36, 37, 39, 41, 42, and 44 over Schulte in view of
Bargh. The Examiner does not rely on the tertiary references to remedy the
above noted deficiencies in the combination of Schulte and Bargh.
Accordingly, we likewise do not sustain the Examiner’s obviousness
rejections of claims 34, 35, 38, 40, and 43.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 19—23 and 31—44 under 35 U.S.C. § 103(a) as unpatentable is
reversed.
REVERSED
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