Ex Parte 6805838 et al

Board of Patent Appeals and Interferences

Sep 3, 2009

90007820 (B.P.A.I. Sep. 3, 2009)

This opinion is not binding precedent of the Board

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BARRY M. TYDINGS
____________________

Appeal 2009-001622
Reexamination Control 90/007,820
Patent 6,805,838
Technology Center 3900
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Decided: September 3, 2009
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Before: RICHARD E. SCHAFER, ROMULO H. DELMENDO and
SALLY G. LANE, Administrative Patent Judges.

SCHAFER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Patentee requests rehearing of an earlier decision affirming an
examiner’s final rejection. Rehearing has been granted, but the requested
relief is DENIED.
MEMORANDUM OPINION
A patentee requesting rehearing of a decision “must state with
particularity the points believed to have been misapprehended or overlooked
by the Board.”1 Patentee urges that the Board misapprehended or overlooked

1 37 CFR § 41.52(a)(1).
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(1) the definition of the relevant art, (2) the declarations of Hipple and
Tydings as persons of ordinary skill in the art in the correctly defined
relevant art and (3) the Hipple and Tydings declarations, particulary their
testimony with respect to unexpected results.2
The examiner rejected the claims on the basis of obviousness-type
double patenting. We affirmed, holding that the claimed subject matter
would have been prima facie obvious from the subject matter of Claims 1-6
of Patent 6,379,620. We also held that the Hipple and Tydings declaration
were insufficient to prove any secondary indicia of obviousness.
Familiarity with our earlier opinion is presumed.
The Definition of the Relevant Art
Patentee argues that the earlier decision “mischaracterized the field
for which a person is to be one of ordinary skill [in the art].”3 He argues that
we overlooked or misapprehended that the relevant field is drug testing cups
and kits, and the person of ordinary skill is a person having technical
knowledge in the overall field of drug testing cups and its components and is
not one who has ordinary skill in capillary action per se.4
Patentee has not identified where in his appeal brief he presented an
argument addressing the definition of the relevant art. We could not have
overlooked or misapprehended an argument that was not made.5
Additionally, we did not limit the level of ordinary skill to one who has
ordinary skill in capillary action per se. We specifically found, as did the
examiner, that the person having ordinary skill in the art would understand
the principles of operation of the urinalysis device and methods claimed in

2 Req. Reh’g at 1.
3 Req. Reh’g at 3.
4 Req. Reh’g at 3-4.
5 Keebler Co. v. Murray Bakery Prods., 866 F.2d 1386, 1388 (Fed. Cir. 1989).
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the 620 patent.6 We also found, as did the examiner, that the person of
ordinary skill in the art would have understood that urine moves through the
wicking material and assay strip by capillary action.7 Thus, we found that
the knowledge possessed by the hypothetical person of ordinary skill in the
art included the knowledge and recognition that the subject matter of Claims
1-6 of the 620 patent operated by capillary action. We premised our obvious
decision, in part, as did the examiner, on that knowledge and recognition.
We did not limit that knowledge to capillary action per se. And, as we noted
in our earlier opinion, patentee’s appeal brief did not challenge the
correctness of the examiner’s findings on the level of ordinary skill in the
art.8 Again we could not have overlooked or misapprehended an argument
that was not made.
The Hipple and Tydings Declarations
Persons of Ordinary Skill in the Art
Patentee argues that we misapprehended or overlooked his argument
that Tydings and Hipple testified as persons of ordinary skill in the art.9 We
did not. We fully addressed this issue on page 12 of our opinion. We there
noted that obviousness is decided from the perspective of the person of
ordinary skill in the art and that such person is a hypothetical person
presumed to have knowledge of all the relevant prior art. Because Hipple
and Tydings can not be hypothetical persons of ordinary skill in the art, we
gave no weight to their testimony on that narrow point. We similarly gave
no weight to their specific legal conclusion that the invention would not

6 Decision at 5, ¶ F.16.
7 Decision at 5, ¶¶ F.18-F.20.
8 Decision at 14.
9 Req. Reh’g at 4-5.
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have been obvious. We did, however, carefully consider and weigh the
remainder of their testimony.10
Unexpected Results and other Secondary Considerations
We noted in our earlier opinion:
Patentee's brief does not explain how the declarations
demonstrate non-obviousness. Rather, the brief merely
points out that the declarations are submitted in support
of patentability and quotes them at length.11
Our earlier opinion also stated that, notwithstanding the lack of guidance
from Patentee, we reviewed the declarations.12 We fully considered each of
the points alleged in the declarations.13 We then addressed each of the
patentability matters that we thought might be implicated by the
declarations.14 We specifically addressed unexpected results, noting that
unexpected results must be established by factual evidence showing a side-
by-side comparison of the closest prior art with the claimed invention.15 We
found that Patentee had not established that the alleged differences resulted
solely from the change of the contact point of the wicking and assay
materials.16
Patentee presents a listing of facts he says we “omitted.”17 Patentee’s
appeal brief never explained how the alleged facts or any of the other alleged
facts demonstrated patentability. It was Patentee’s responsibility to present

10 Decision at 6-9, ¶¶ F.22-F.52 and pp. 12-17.
11 Decision at 12-13.
12 Decision at 13.
13 Decision at 6-9, ¶¶ F.22-F.52.
14 Decision at 12-17.
15 Decision at 14-15.
16 Decision at 15.
17 Req. Reh’g at 2-3.
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an explanation of how the facts established patentability.18 Again, we can
not have misapprehended or overlooked matters that were not argued to us.
Patentee argues that “[s]ince Tydings states the results were
unexpected, that also suffices to meet the burden of [establishing] secondary
considerations . . . .”19 We have again reviewed Patentee’s Appeal Brief and
the Tyding’s declaration and fail to find any statement that results were
unexpected. And, Patentee does not tell us where the statement is to be
found in the declaration. Tydings does say that the cups were superior.
However, superiority alone is not sufficient. The improved or superior
results must be shown to be unexpected.20 Additionally, the declarations do
not establish the “superior” cups were identical to the “inferior” cups except
for the contact point between the wicking material and assay strip. We will
not assume that the contact location was the only difference.
Patentee argues that we overlooked certain facts and jumped to the
conclusion that the subject matter of the claims would have been prima facie
obvious from the subject matter of Claims 1-6 of the 620 patent.21 Patentee
then argues that there was nothing to suggest “the desirability of the claimed
subject matter.”22 However, a specific suggestion in the “art” is not
required. The obviousness 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.”23 What is necessary is “some

18 In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (“After a prima facie case of obviousness has been
established, the burden of going forward shifts to the applicant.”).
19 Req. Reh’g at 9.
20 CMFT, Inc. v. Yieldup Int'l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003).
21 Req. Reh’g at 5.
22 Req. Reh’g at 5.
23 KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
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articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”24 Our earlier opinion provided the necessary
rational underpinnings and reasoning.25
Patentee asserts that we “misapplied the reasonable expectation [of
success] standard.”26 We fully considered the reasonable expectation of
success standard. We found that the person having ordinary skill in the art
would understand that subject matter of the 620 claims and Patentee’s
claimed subject matter utilized capillary action to bring the urine in contact
with the assay strip.27 We then held that the person having ordinary skill in
the art would have expected that capillary action would bring the urine into
contact with the assay strip regardless of the location of the contact point.28
We also held that person of ordinary skill would have expected that the
assay assembly would work to identify drugs of interest as long as the urine
wicked to the assay strip.29 In other words, the person having ordinary skill
in the art would have had a reasonable expectation that that the assay would
work regardless of the location of the contact point. Specifying a contact
point of the assay strip and wicking material where the urine travels in an
upward direction does not patentably distinguish the claimed subject matter
from that of the 620 patent. Therefore, in the absence of adequate proof of
secondary indicia, Patentee’s claimed subject matter is obvious.

24 In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
25 Decision at 9-10.
26 Req. Reh’g at 11-12.
27 Decision at 10.
28 Decision at 10.
29 Decision at 10.
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CONCLUSION
Patentee has not demonstrated that we have misapprehended or
overlooked any relevant points. We have reconsidered our decision but
decline to grant the relief requested.

saw

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