John Barich et al.

Patent Trials and Appeals Board

Sep 10, 2019

14056162 - (D) (P.T.A.B. Sep. 10, 2019)

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.
14/056,162 10/17/2013 John Barich 094263-0887046
(099020US)
8304
142801 7590 09/10/2019
Bio-Rad Laboratories, Inc.
Kilpatrick Townsend and Stockton LLP
1100 Peachtree Street, Suite 2800
Mailstop: IP Docketing - 22
Atlanta, GA 30309
EXAMINER
TURK, NEIL N
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
09/10/2019 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN BARICH, RENEE LEMAIRE-ADKINS, DAVID NEAZ,
ARIEL NOTCOVICH, PAUL PATT, RYAN SHORT, STEVEN
SWIHART, EVAN THRUSH, and TREY MARLOWE
____________

Appeal 2019-000066
Application 14/056,162
Technology Center 1700
____________

Before ROMULO H. DELMENDO, RAE LYNN P. GUEST, and
LILAN REN, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
The Applicant1 (“Appellant”) appeals under 35 U.S.C. § 134(a) from
the Primary Examiner’s final decision to reject claims 12–14, 18–25, and
28–34.2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Applicant is listed as “Bio-Rad Laboratories, Inc., LSG – LSG
Division” (Application Data Sheet filed October 17, 2013, 8–9). The real
party in interest is listed as “Bio-Rad Laboratories, Inc.” (Appeal Brief filed
July 3, 2018 (“Appeal Br.”), 3).
2 Appeal Br. 7–11; Reply Brief filed October 2, 2018 (“Reply Br.”), 1–3;
Final Office Action entered April 3, 2018 (“Final Act.”), 3–8; Examiner’s
Answer entered August 3, 2018 (“Ans.”), 3–12.
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I. BACKGROUND
The subject matter on appeal relates to “a method of analyzing a
plurality of analytes detectable by light emission and arranged in a two-
dimensional array” (Specification filed October 17, 2013 (“Spec.”), ¶ 5).
Representative claim 12 is reproduced from the Claims Appendix to the
Appeal Brief, as follows:
12. A method of generating a corrected full image of a
planar matrix supporting a two-dimensional analyte array, the
method comprising:
placing the planar matrix within 5 cm of a detector
comprising one or more moveable solid-state image sensors,
wherein a transparent faceplate is placed between the planar
matrix and the detector, and wherein the transparent faceplate is
deposited on or bonded directly to the solid-state image sensors;
producing a dark signal pattern for the detector;
positioning the image sensor(s) to two or more positions
with respect to the planar matrix and acquiring with the image
sensor(s) at the two or more positions a plurality of measurement
patterns of electrical signals, wherein the electrical signals of the
measurement patterns can be projected or otherwise made visible
or detectable as sub-images of the planar matrix;
measuring a plurality of temperatures at different locations
along the image sensor(s);
determining, using the plurality of measured temperatures,
temperature variations among the different locations along the
image sensor(s);
adjusting the dark signal pattern according to the
temperature variations among the different locations along the
image sensor(s), wherein the adjusting comprises applying a
function characterizing a variation of the dark signal pattern
with temperature;
subtracting the adjusted dark signal pattern from one or
more of the plurality of measurement patterns; and
subsequently assembling the sub-images into a full image
of the planar matrix in accordance with the positions occupied by
the image sensor(s) when the sub-images are acquired, wherein
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said assembling comprises stitching together at least two of the
sub-images.
(Appeal Br. 12 (emphases added)).
II. REJECTION ON APPEAL
Claims 12–14, 18–25, and 28–34 stand rejected under AIA 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement (Ans.
3–12; Final Act. 3–8).
III. DISCUSSION
The Examiner finds that “[t]he written description is inadequate in
providing disclosure to providing an adjusted dark signal pattern and
utilization of such in compensating/eliminating irregularities across the
planar matrix” (Ans. 4). Specifically, the Examiner finds that the written
description in the original disclosure (US 2014/0106989 A1, published Apr.
17, 2014 (“US ’989”), ¶¶ 11, 47 (Spec. ¶¶ 11, 43)) and the Declaration of
Joint Inventor Swihart filed March 6, 2018 (“Swihart Declaration” or
“Swihart Decl.”) do “not provide a showing that one of ordinary skill in the
art would have been apprised of the adjustment of the dark signal pattern
by applying a function characterizing a variation of the dark signal
pattern with temperature” (Ans. 4). According to the Examiner, “the
disclosure is devoid of discussion of the applying of the function so as to
provide an adjustment to the dark signal pattern according to the measured
temperature variations” and that “there is a nexus missing in which
Applicant has failed to show how the correction factor is accomplished”
(id. at 5). Regarding the Swihart Declaration, the Examiner states that it
“merely provides a law of nature [i.e., the Arrhenius equation] which can
most closely relate dark signal pattern to temperature in image sensors” (id.).
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The Appellant contends that the original disclosure (US ’989 ¶ 47;
Spec. ¶ 43) provides sufficient written description and that the “relationship
between dark signal and temperature was well understood by those of
ordinary skill in the art as of the filing date of the present application, as was
affirmed by the March 6, 2018 Declaration by Steve Swihart” (Appeal Br.
7). The Appellant emphasizes that the test for determining compliance with
the written description requirement is whether the original disclosure of the
application relied upon reasonably conveys to one skilled in the relevant art
that the inventors had possession at that time of the later claimed subject
matter (id. at 9).
As the Appellant notes, “the test for sufficiency [of written
description] is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(citation omitted).
Applying this test, we agree with the Appellant that the Examiner’s
rejection is not well-founded. Claim 12, which the Examiner finds to be
insufficiently described in the original disclosure, was introduced by an
Amendment filed with a Request for Continued Examination submitted on
August 1, 2017. But the disclosure, as originally filed, contains the
following:
In some embodiments, the detector defines a planar
detection surface, and the method further includes generating a
dark signal pattern of each sub-image and subtracting the dark
signal pattern from the planar matrix image prior to analyzing the
analytes. In some embodiments, the detector defines a planar
detection surface, and the method further includes measuring
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temperature at selected sites along the planar detection surface
to determine a temperature pattern, generating a dark signal
pattern representative of the temperature pattern, and
subtracting the dark signal pattern from the planar matrix
image.
(Spec. ¶ 11 (emphasis added); see also US ’989 ¶ 11). The original
disclosure further states:
Within each image or sub-image, an amount of dark signal
of a magnitude that is great enough to impair or limit the
sensitivity of the sensor can occur. “Dark signal” is defined as
the response of a photosensitive element in the absence of light.
One source of sensor limitation from dark signal is fundamental
shot noise. Another is fixed pattern noise. For large area sensors,
noise from dark signal can become very large due to the large
size of the sensor array. Physical processes that produce dark
signal usually increase with increasing amounts of material used
in the photosensitive element. The sensitivity of the photosensor
array can be increased significantly by removing fixed pattern
dark noise. This can be achieved by producing a dark signal
pattern for the sensor array and subtracting the dark signal
pattern from the measurement pattern generated by the array.
The dark signal pattern can vary with temperature, time, or
both, and can thus be characterized as a function of these two
variables. For example, a temperature measurement can be
made and the dark current pattern can be adjusted accordingly to
subtract the fixed pattern dark current. The temperature can also
vary between different photosensors within the photosensor
array. To compensate for this, a plurality of temperature
measurements can be taken at different locations within the
photosensor array, i.e., at selected sites along the planar detection
surface formed by the array, to determine temperature variations
along the surface and the resulting temperature pattern. The dark
signal pattern can then be adjusted accordingly.
(Spec. ¶ 43 (emphasis added); see also US ’989 ¶ 47).
Given these descriptions in the disclosure, as originally filed, we do
not discern any basis to find that the subject matter recited in claim 12,
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including the step of “adjusting the dark signal pattern according to the
temperature variations among the different locations along the image
sensor(s), wherein the adjusting comprises applying a function
characterizing a variation of the dark signal pattern with temperature”
(Appeal Br. 12), lacks sufficient descriptive support. The written description
explicitly states that “[t]he dark signal pattern can vary with temperature,
time, or both, and can thus be characterized as a function of these two
variables” (Spec. ¶ 47 (emphasis added)), which is undisputedly known as
following the Arrhenius equation (Swihart Decl. ¶ 7; Ans. 4). The original
disclosure explains that the dark signal pattern can be subtracted from the
measurement pattern generated by the array to increase the sensitivity of the
photosensor array (Spec. ¶ 47). Thus, we find that the original disclosure
contains explicit support for the subject matter now recited in claim 12.
Although the Examiner questions “how the correction factor is
accomplished” (Ans. 5), that issue appears to be more relevant to an inquiry
under the enablement requirement of 35 U.S.C. § 112(a)—i.e., whether
“undue experimentation” would have been required to make and/or use the
invention—not the written description requirement. Consistent with the
Appellant’s position (Reply Br. 2–3), the Examiner does not offer sufficient
evidence or reasoning establishing that a person having ordinary skill in the
art would have been unable to make and/or use the invention without undue
experimentation.3 Cf. Ariad, 593 F.3d at 1349–50 (explaining that even
original claims reciting functional language or a desired result may, in some
circumstances, lack written description result but that “functional claim

3 See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
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language can meet the written description requirement when the art has
established a correlation between structure and function”).
For these reasons, we do not sustain the Examiner’s rejection.
IV. SUMMARY
The rejection under 35 U.S.C. § 112(a), lack of written description, is
not sustained. Therefore, the Examiner’s final decision to reject claims 12–
14, 18–25, and 28–34 is reversed.

REVERSED