Inguran, LLC - [2015] APO 64

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Inguran, LLC [2015] APO 64

Patent Application: 2013202635

Title:Apparatus and methods for high throughput sperm sorting

Patent Applicant:                   Inguran, LLC
Delegate:  Xavier Gisz
Decision Date:  30 September 2015
Hearing Date:  9 September 2015

Catchwords: PATENTS - examiner objection – inventive step – claim 1 contains a feature not disclosed in the prior art document – this feature provides an inventive step over the prior art – the claims are found inventive

Representation: Patent applicant: Andrew Fox of counsel for AJ Park

IP AUSTRALIA
AUSTRALIAN PATENT OFFICE
Patent Application: 2013202635

Title:Apparatus and methods for high throughput sperm sorting

Patent Applicant: Inguran, LLC
Date of Decision: 30 September 2015
DECISION
The claims as proposed to be amended in the letter of 9 July 2015 are considered inventive in light of US 2012/0202237 A1 (SEDOGLAVICH et al) when read in light of common general knowledge.
There is currently a postponement of acceptance in place on this application. This is the only impediment to the application being accepted. If the postponement of acceptance is withdrawn before the final acceptance date of 10 October 2015 then the application will be accepted.
REASONS FOR DECISION
Background

Patent application number 2013202635 (the Application) is a convention application filed on 5 April 2013 by Inguran, LLC (the Applicant). The Application claims priority from US13/830,316, US13/830,365, US13/830,333 and PCT/US2013/031706, all filed on 14 March 2013.
The Application has been the subject of six examination reports. The outstanding objections raised by the examiner relate only to the question of whether the alleged invention involves an inventive step.
The matter was heard in Canberra on 9 September 2015.
The application
In general terms, the Application relates to a microfluidic chip which allows the sorting of sperm by illuminating the sperm with light, measuring forward and side light emissions (fluorescence), and diverting the sperm according to the light emissions.
The claims
The specification as most recently proposed to be amended on 9 July 2015 ends with 19 claims; 1 independent claim and 18 appended claims. Claim 1 is reproduced below:
1. A method of sorting sperm comprising the steps of:
flowing sperm through a plurality of flow channels in a microfluidic chip;
orienting sperm within the plurality of flow channels flowing the oriented sperm through an inspection region in each of the flow channels;
interrogating sperm at the inspection region to determine sperm characteristics, wherein interrogated sperm emit a forward fluorescence in a forward direction and emit a side fluorescence in a direction perpendicular to the forward direction;
generating a first signal with a forward fluorescence detector in response to emitted electromagnetic radiation of sperm at the inspection region in the forward direction;
reflecting at least a portion of the emitted side fluorescence in a direction parallel with the forward fluorescence with a reflective element associated with each flow channel, wherein the reflective element is embedded within the microfluidic chip;
generating a second signal with a side fluorescence detector in response to the reflected side fluorescence;
differentiating…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

AGLC: Inguran, LLC [2015] APO 64
Case: [2015] APO 64
Decision Date: 30 September 2015

CaseChat Overview and Summary

Inguran, LLC, the applicant, filed a patent application for a method of sorting sperm using a microfluidic chip, with claims including features such as multiple flow channels, embedded mirrors to redirect side fluorescence, and flow channel transitions for sperm orientation. The Australian Patent Office (IPO) raised objections primarily concerning the inventive step of the claims, particularly the use of embedded mirrors in the microfluidic chip. The applicant contested these objections, arguing that the use of mirrors was a novel configuration providing unexpected technical advantages. The matter was heard by the IPO on 9 September 2015.

The primary legal issues revolved around whether the claimed invention involved an inventive step over the prior art, specifically US patent application US 2012/0202237 A1 (SEDOGLAVICH et al). The Applicant argued that the combination of features in their invention, including the use of embedded mirrors to redirect side fluorescence in a parallel direction to forward fluorescence, provided a technical advantage not present in the prior art. The examiner maintained that embedding mirrors in microfluidic chips was common general knowledge and thus would not confer an inventive step.

The delegate considered the problem-solution approach to inventive step, determining that the person skilled in the art would have expertise in cell separation and microfluidics. The invention aimed to overcome the damaging effects of existing sperm sorting methods. The delegate examined the combination of features in the claims and assessed whether these features would be obvious to a person skilled in the art. While the delegate agreed with the examiner that embedding mirrors in microfluidic chips was common general knowledge, the specific configuration used in the Applicant's invention – redirecting side fluorescence to be parallel with forward fluorescence – was not a matter of routine and thus provided an inventive step. This configuration enabled a more compact and potentially cheaper device, supporting the conclusion of inventiveness.

The delegate concluded that the claims, as proposed to be amended in the letter of 9 July 2015, were inventive in light of the prior art and common general knowledge. The decision departed from the examiner's narrow focus on the use of mirrors, instead considering the combination of features as a whole. The only remaining impediment to acceptance of the application was the postponement of acceptance, which could be withdrawn before the final acceptance date of 10 October 2015 to allow acceptance of the application.

Orders