Raj Rajagopal et al.

Patent Trials and Appeals Board

Nov 19, 2019

15105448 - (D) (P.T.A.B. Nov. 19, 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.
15/105,448 06/16/2016 Raj Rajagopal 74451US004 9871
32692 7590 11/19/2019
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
MUI, CHRISTINE T
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
11/19/2019 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAJ RAJAGOPAL, KURT J. HALVERSON,
SHAWN C. DODDS, and
RAMASUBRAMANI KUDUVA RAMAN THANUMOORTHY
____________

Appeal 2019–002918
Application 15/105,448
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, MONTÉ T. SQUIRE, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–22.1,2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies 3M Company and 3M Innovative
Properties Company as the real parties in interest. Appeal Brief filed August
14, 2018 (“Appeal Br.”) at 2.
2 Final Office Action entered March 14, 2018 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Claim 1, the sole pending independent claim, illustrates the subject
matter on appeal, and is reproduced below with contested subject matter
italicized:
1. A sample detection container adapted to contain and
concentrate a sample for detection of an analyte of interest, if
present, the container comprising:
an open end configured to receive a sample;
a closed end that includes a microcavity, the microcavity
including a top opening, a base, and a longitudinal axis that is
normal with respect to a transverse cross-section of the
microcavity, the microcavity configured to provide capillary
forces to retain a sample of interest; and
a wall that extends to the microcavity,
wherein at least a portion of the wall located adjacent
the top opening of the microcavity has a slope that is oriented at
an effective angle  with respect to the longitudinal axis of the
microcavity, wherein the effective angle a is greater than 45
degrees and less than 90 degrees, and
wherein at least the portion of the wall located adjacent
the top opening of the microcavity that is oriented at the
effective angle  has a length of at least 5 times a transverse
dimension of the top opening of the microcavity.

Appeal Br. 9 (Claims Appendix) (emphasis and spacing added).
REJECTIONS
The Examiner maintains the rejection of claims 1–22 under 35 U.S.C.
§ 102(a)(2) as anticipated by, or alternatively under 35 U.S.C. § 103 as
unpatentable over, Rajagopal (WO 2013/003309 Al, published January 3,
2013) in the Examiner’s Answer entered December 27, 2018 (“Ans.”).

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FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejection of
claims 1–22 under 35 U.S.C. § 102(a)(2), and rejection of claims 1–22 under
35 U.S.C. § 103, for the reasons set forth in the Appeal Brief and below.
Claim 1 requires the recited sample detection container to comprise,
in part, a closed end that includes a microcavity having a top opening, and a
wall that extends to the microcavity, at least a portion of which is located
adjacent the top opening of the microcavity.
The Examiner finds that Rajagopal discloses sample detection
container 102 comprising a closed end that includes a microcavity created by
housing 132 of filter 112. Final Act. 5 (citing Rajagopal 17, ll. 15–16, 23, ll.
11–14, Figs. 1 and 2). The Examiner finds that Rajagopal discloses that the
microcavity has a top opening, and “filter 112 is . . . the closed end and base
of the microcavity.” Final Act. 5 (citing Rajagopal 23, ll. 11–14, Fig. 1).
The Examiner finds that Rajagopal discloses “slanted wall edge at second
end 116,” which the Examiner determines is “a wall that extends to the
microcavity” and includes at least a portion located adjacent the top opening
of the microcavity. Final Act. 5 (citing Rajagopal Figs. 1, 2, and 5).
Appellant argues that the space created by Rajagopal’s housing 132
and filter 112 is not a “microcavity” as this term is defined in Appellant’s
Specification. Appeal Br. 3–4 (citing Spec. 17, ll. 10–25). In response, the
Examiner indicates in the Answer that “[t]he Examiner has taken the
position to define the claimed microcavity as the recesses formed in the
filter, []filter 112 is considered to be the closed end and base of the
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microcavity created by housing 132 of filter.” Ans. 13 (citing Rajagopal 23,
ll. 11–14, and Figs. 1 and 4).
On the record before us, however, for reasons expressed by Appellant
(Appeal Br. 3–7) and discussed below, the Examiner does not provide a
sufficient factual basis to establish that Rajagopal discloses or would have
suggested a sample detection container comprising a closed end that
includes a microcavity having a top opening, and a wall that extends to the
microcavity, at least a portion of which is located adjacent the top opening
of the microcavity, as required by claim 1.
Rajagopal discloses a method for isolating and detecting an analyte of
interest from a sample using a combination of filtration and centrifugation.
Rajagopal 6, ll. 32–34. More specifically, Rajagopal discloses filtering a
sample to retain an analyte present in the sample on a filter, orienting the
filter to face microstructured recesses, adding a diluent to the filter, and
centrifuging the filter to force the analyte into the microstructured recesses.
Rajagopal 6, l. 34–7, l. 2. Rajagopal discloses analyzing the microstructured
recesses to detect and/or quantify the analyte. Rajagopal 7, ll. 7–8.
Rajagopal discloses multiple-component detection system 100 for
carrying out this method, which includes first container 102 and second
container 104. Rajagopal 17, ll. 15–17, Figs. 1, 2, and 3. Rajagopal
discloses that first container 102 comprises receptacle portion 106 and filter
portion 108. Rajagopal 18, ll. 27–31, Figs. 1 and 2. Rajagopal discloses that
receptacle portion 106 includes first open end 114 and second end 116
removably coupled through filter connection assembly 120 to filter portion
108. Rajagopal 20, ll. 9–12, 18–19, Fig. 1. Rajagopal discloses that filter
portion 108 includes filter housing 132 containing filter 112 having first side
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113. Rajagopal 18, ll. 27–31, 21, ll. 14–15, 23, ll. 9–10, and Fig. 1.
Rajagopal discloses isolating an analyte from a sample by adding the
sample to open end 114 of receptacle portion 106, from which the sample
passes through filter 112. Rajagopal 20, ll. 9–12. Rajagopal discloses that
filter 112 separates the sample into filtrand 151, which is retained on first
side 113 of filter 112, and a filtrate, which passes through filter 112.
Rajagopal 19, ll. 10–15, 23, ll. 9–12. Rajagopal discloses removing filter
portion 108 from receptable portion 106 of first container 102, adding a
diluent to filter portion 108, and coupling filter portion 108 to detection
portion 110 to form second container 104. Rajagopal 19, ll. 10–13, 28, ll.
19–21, and Fig. 3. Rajagopal discloses that detection portion 110 includes
microstructured recesses 136, and discloses inverting and centrifuging
second container 104 toward detection portion 110 to cause a sediment of
filtrand 151 to move into recesses 136. Rajagopal 17, ll. 18–19, 19, ll. 13–
15, 28, ll. 28–34, and Figs. 4 and 5.
As discussed above, the Examiner determines that “recesses” formed
in filter 112 correspond to the microcavity recited in claim 1, while also
determining that filter 112 is “the closed end and base of the microcavity
created by housing 132 of filter.” Final Act. 5. These two positions taken
by the Examiner are somewhat contradictory, and it is unclear which
structure or combination of structures disclosed in Rajagopal the Examiner
actually relies on as corresponding to the microcavity recited in claim 1. It
is not apparent how recesses formed in filter 112, to the extent any such
recesses exist (as discussed below), can constitute the microcavity, while at
the same time, the microcavity can be formed by filter housing 132 where
filter 112 constitutes the base of the microcavity.
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Notably, as Appellant points out (Reply Br. 2), the Examiner does not
identify any disclosure in Rajagopal indicating that filter 112 actually
includes recesses. Rather, as discussed above, Rajagopal discloses that
detection portion 110 of second container 104 includes microstructured
recesses 136 into which filtrand 151 is collected from filter 112 by
centrifuging second container 104.
Furthermore, even if filter housing 132 forms a microcavity having
filter 112 as a base as the Examiner asserts, the Examiner’s finding that
Rajagopal discloses a wall having at least a portion located adjacent the top
opening of such a microcavity is based on an unreasonably broad
interpretation of “adjacent.” As discussed above, the Examiner finds that
Rajagopal discloses “slanted wall edge at second end 116” of receptacle
portion 106, which the Examiner determines is a wall that extends to the
microcavity and includes at least a portion located adjacent the top opening
of the microcavity. Final Act. 5 (citing Rajagopal Figs. 1, 2, and 5).
As Appellant points out, however, the Specification explicitly states
that the phrase “‘located adjacent the top opening of the microcavity’ refers
to the wall 138 (or a portion thereof) extending right up to the top opening
144 of the microcavity 136 (as shown), or to a location that is less than 1
time (ideally, less than 0.5X, or less than 0.25X) a transverse dimension—
i.e., a representative x,y dimension, as described above—of the microcavity
136.” Appeal Br. 4 (citing Spec. 26, ll. 12–16, (which refers to Appellant’s
Figures 1–3)) (emphasis added). Appellant argues that Figures 1 and 2 of
Rajagopal show that second end 116 “is far away from filter portion 108 that
includes filter 112,” and Figure 5 shows that second end 116 is “more than
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1 times a transverse dimension of a microcavity from filter portion 108 that
includes filter 112.” Appeal Br. 5.
In response to Appellant’s arguments, despite the explicit definition of
“located adjacent the top opening of the microcavity” set forth in
Appellant’s Specification, the Examiner determines in the Answer that
“[u]sing the broadest reasonable interpretation of ‘adjacent’ the term is
considered to be ‘not distant or nearby.’ Adjacent does not necessarily mean
sharing a border or in intimate contact, but also may include interpretations
of being in close proximity.” Ans. 14.
It is well-settled, however, that “[w]hen a patentee explicitly defines a
claim term in the patent specification, the patentee’s definition controls.”
Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1380 (Fed. Cir.
2009). And “[w]hen the specification ‘makes clear that the invention does
not include a particular feature, that feature is deemed to be outside the reach
of the claims of the patent, even though the language of the claims, read
without reference to the specification, might be considered broad enough to
encompass the feature in question.’” Microsoft Corp. v. Multi-Tech Sys.,
Inc., 357 F.3d 1340, 1347 (Fed. Cir. 2004) (quoting SciMed Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1341 (Fed. Cir. 2001)).
The Examiner’s interpretation of “adjacent” as “not distant or nearby”
and “being in close proximity” is inconsistent with the explicit definition of
“located adjacent the top opening of the microcavity” provided in
Appellant’s Specification. Consequently, the Examiner’s interpretation of
“adjacent” does not constitute a broadest reasonable interpretation of this
term as it used in the phrase “located adjacent the top opening of the
microcavity” recited in claim 1. In re Baker Hughes, Inc., 215 F.3d 1297,
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1303 (Fed. Cir. 2000) (the PTO cannot adopt a construction that is “beyond
that which was reasonable in light of the totality of the written description”
in the Specification); In re Zletz, 893 F.2d 319, 321–22 (Fed. Cir. 1989)
(“During patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow. When the applicant states the
meaning that the claim terms are intended to have, the claims are examined
with that meaning, in order to achieve a complete exploration of the
applicant’s invention and its relation to the prior art.”).
Figures 1, 2, and 5 of Rajagopal show that second end 116 of
receptacle portion 106 is joined to filter housing 132 containing filter 112
through filter connection assembly 120. In other words, intervening filter
connection assembly 120 separates second end 116 from filter housing 132
containing filter 112. Contrary to the Examiner’s assertions, second end
116, therefore, does not extend right up to—or is not “adjacent”—the top
opening of the asserted “microcavity” formed by filter housing 132 having
filter 112 as a base, or the asserted “microcavity” comprised of recesses
formed in the filter.
Consequently, on the record before us, the Examiner does not provide
a sufficient factual basis to establish that Rajagopal discloses, or would have
suggested, a sample detection container including a microcavity having a top
opening, and a wall that extends to the microcavity, at least a portion of
which is located adjacent the top opening of the microcavity, as required by
claim 1. We, accordingly, do not sustain the Examiner’s rejection of claim
1, and claims 2–22, which each depend from claim 1, under 35 U.S.C.
§ 102(a)(2) as anticipated by Rajagopal. Nor do we sustain the Examiner’s
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rejection of claim 1, and claims 2–22, which each depend from claim 1,
under 35 U.S.C. § 103 as unpatentable over Rajagopal.

CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–22 102(a)(2) Rajagopal 1–22
1–22 103 Rajagopal 1–22
Overall
Outcome
1–22

REVERSED