Grace Bio-Labs, Inc.

Patent Trials and Appeals Board

Dec 2, 2021

2020006601 (P.T.A.B. Dec. 2, 2021)

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.
14/162,608 01/23/2014 Jennipher Lyn Grudzien GBL12301 9658
145572 7590 12/02/2021
MCCOY RUSSELL LLP
1410 NW JOHNSON STREET, SUITE 201
PORTLAND, OR 97209
EXAMINER
TURK, NEIL N
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
12/02/2021 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):
usptomail@mccrus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JENNIPHER LYN GRUDZIEN,
MICHAEL ALBERT SHULTZ, FLORIAN GENE BELL,
and CHARLES M. MCGRATH
____________

Appeal 2020-006601
Application 14/162,608
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS,
and GEORGE C. BEST, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–4, 21. We have jurisdiction over the Appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 “Appellant” refers to the “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Grace Bio-Labs, Inc. as the real party in interest (Appeal
Br. 3).
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CLAIMED SUBJECT MATTER
Claim 1 reproduced below is representative (emphasis added on main
disputed limitation):
1. A microarray imaging system, comprising:
a microarray;
a dichroic beam splitter;
a light source including a diode laser positioned to provide
laser light to the microarray via the dichroic beam splitter;
a digital optical receiver for receiving light from the light
source and generating images; and
a processor having instructions stored in memory for
acquiring, processing, and
storing images generated by the digital optical receiver;
wherein the dichroic beam splitter is the only beam splitter
in the system.
(Appeal Br. 36, Claims Appendix).
Independent claims 19 and 28 are no longer rejected, as the Examiner
withdrew the only rejection of these claims (Ans. 10).
REFERENCES
The Examiner relied upon the following prior art:
Name Reference Date
Stern US 2006/0253035 Al Nov. 9, 2006
Vo-Dinh US 6,743,581 Bl Jun.1,2004
Heffelfinger US 5,863,504 Jan. 26, 1999
Corson US 2005/0191756 Al Sep. 1, 2005
Burow US 2002/0090320 Al Jul. 11, 2002
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REJECTIONS ON APPEAL
Claims 1, 2, 6, 9, 11–13, 22, 24, and 252 are rejected under 35 U.S.C.
§ 102 as being unpatentable over Stern (Non-Final Act. 5).
Claims 3 and 4 are rejected under 35 U.S.C. § 103 as being
unpatentable over Stern and Vo-Dinh (Final Act. 8).
Claims 8, 11–13, and 23 are rejected under 35 U.S.C. § 103 as being
unpatentable over Stern, Heffelfinger, Corson, and Vo-Dinh (Final Act. 8).
Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over
Stern, Heffelfinger, and Burow (Final Act. 11).
OPINION
The § 102 rejection
We have reviewed Appellant’s arguments for patentability of claim 1.
However, we determine that a preponderance of the evidence supports the
Examiner’s finding that the claimed subject matter of representative claim 1
is anticipated within the meaning of § 102 in view of Stern. Accordingly,
we will sustain the Examiner’s rejection of claim 1 and those claims not
argued separately therefrom.
We add the following for emphasis.
Appellant’s main argument is that Stern does not describe, within the
meaning of § 102, “wherein the dichroic beam splitter is the only beam
splitter in the system” as recited in independent claim 1.
We agree with Appellant that the claim language limits the system to
one beam splitter, notwithstanding the “comprising” in the first line of the

2 This rejection was withdrawn with respect to claim 26 (Ans. 13, 17).
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claim (Appeal Br. 12–13; Reply Br. 2). However, the Examiner also relies
upon paragraph 112 of Stern for a teaching of only one beam splitter in the
system, since Stern discloses that there can be a single embodiment of
source 420 (Stern 112; Ans. 15–16).
While Appellant argues that Stern’s teaching does not explicitly or
necessarily eliminate one of the two beam splitters, Appellant also admits
that it is “not probable” that two beam splitters would remain (Reply Br. 3).
A preponderance of the evidence supports the Examiner’s position
that one of ordinary skill in the art would have readily recognized or inferred
that the system described in Stern is indeed encompassed by the claim
language in dispute (Ans. 15–16). In re Preda, 401 F.2d 825, 826 (CCPA
1968) (In determining whether a reference anticipates the subject matter
recited in a claim, “it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.”); cf. In re Schaumann,
572 F.2d 312, 317 (CCPA 1978) (to anticipate, a reference must identify
something falling within the claimed subject matter with sufficient
specificity to constitute a description thereof within the purview of § 102).
Thus, a preponderance of the evidence supports the Examiner’s
position that one of ordinary skill in the art would have at once envisaged or
inferred from Stern’s disclosure that a system as recited in independent
claim 1 is indeed described therein.
We agree with Appellant that claims 11–13, 24 and 25 require that the
processor includes the instructions recited therein (in other words, these
instructions are de facto programmed instructions for the processor, or
otherwise are structural features of the claims), and thus we reverse the
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Examiner’s § 102 rejection of these claims (Ans. 16–17, the Examiner
agrees if these were structural features the claims would be allowable).
The § 103 rejections
Upon consideration of the evidence in this Appeal and each of
Appellant’s contentions as set forth in the Appeal Brief, as well as the Reply
Brief, we determine that Appellant has not demonstrated reversible error in
the Examiner’s § 103 rejections of claims 3, 4 and 10 (Ans. 3–10). In re
Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s
long-held practice of requiring Appellants to identify the alleged error in the
Examiner’s rejection). We sustain the Examiner’s § 103 rejections of claims
3, 4 and 10 for the reasons expressed by the Examiner in the Final Office
Action and the Answer.
However, we reverse the Examiner’s §103 rejection with respect to
claims 8, 11–13 and 23 for essentially the reasons set out by Appellant
(Appeal Br. 29–34; Reply Br. 6–7).
We add the following for emphasis.
In assessing whether a claim to a combination of prior art elements or
steps would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418.
With respect to claims 3 and 4, Appellant argues that Stern teaches
immobilization is “inconsequential” (Appeal Br. 17), such that one would
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have no reason to use Vo-Dinh’s immobilization on a nitrocellulose
substrate (Appeal Br. 17–19; Reply Br. 5-6).
Appellant’s arguments are not persuasive of error in the Examiner’s
rejection of claims 3 and 4 because they fail to adequately consider the
applied prior art of Stern and Vo-Dinh as a whole, and the inferences that
one of ordinary skill would have drawn therefrom, and thus do not
adequately address the Examiner’s obviousness position (see, e.g., Ans. 17–
18).
As pointed out by the Examiner, one of ordinary skill in the art would
have readily inferred that immobilization of the biological material to be
examined was indeed an option from Stern’s disclosure (Ans. 17; Stern ¶ 6).
It is well established that a prior art reference must be considered in its
entirety, i.e., as a whole, when determining if it would lead one of ordinary
skill in the art away from the claimed invention. W.L. Gore & Assoc. v.
Garlock, Inc., 721 F.2d 1540, 1550 (Fed. Cir. 1983); In re Harris, 409 F.3d
1339, 1341 (Fed. Cir. 2005) (whether a reference teaches away from a
claimed invention is a question of fact). Thus, an artisan of ordinary skill
would have weighed the known advantages and disadvantages of
immobilization on a nitrocellulose surface/substrate, as these are known
alternatives. “The fact that the motivating benefit comes at the expense of
another benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”
Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir.
2000). Also, cf. In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (“[J]ust
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because better alternatives exist in the prior art does not mean that an
inferior combination is inapt for obviousness purposes.”).
Thus, Appellant’s arguments do not persuade us of reversible error in
the Examiner’s determination that one of ordinary skill would have been
motivated to use a nitrocellulose microarray surface/substrate as exemplified
in Vo-Dinh for the microarray of Stern. KSR, 550 U.S. at 418; see also id. at
421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”); Ball Aerosol & Specialty Container, Inc. v. Limited
Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (explaining that under the
flexible inquiry set forth by the Supreme Court, the PTO must take account
of the “inferences and creative steps,” as well as routine steps, that an
ordinary artisan would employ).
With regard to dependent claim 10, Appellant merely relies upon the
arguments made with respect to claim 1 (Appeal Br. 35), which, as discussed
previously, we found unpersuasive.
Accordingly, we sustain the § 103 rejections of claims 3, 4, and 10 on
appeal.
We reverse the Examiner’s § 103 rejection of claims 8, 11–13, and 23.
DECISION
The Examiner’s § 102 rejection is affirmed as to claims 1, 2, 6, 9, and
22 and reversed as to claims 11–13, 24, and 25.
The Examiner’s § 103 rejections of claims 3, 4, and 10 are affirmed.
The Examiner’s § 103 rejection of claims 8, 11–13, and 23 is
reversed.
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In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 6, 9, 11–
13, 22, 24, 25
102 Stern 1, 2, 6, 9, 22 11–13, 24, 25
3, 4 103 Stern, Vo-Dinh 3, 4
8, 11–13, 23 103 Stern, Heffelfinger,
Corson, Vo-Dinh
8, 11–13, 23
10 103 Stern, Heffelfinger,
Burow
10
Overall
Outcome
1–4, 6, 9, 10,
22
8, 11–13,
23–25
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this Appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED-IN-PART