Ex Parte Å Brassard

Patent Trial and Appeal Board

Feb 28, 2018

13513981 (P.T.A.B. Feb. 28, 2018)

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.
13/513,981 06/05/2012 Lothar A Brassard 683105-14US
CBT0012009US
4442
570 7590 03/02/2018
PANITCH SCHWARZE BELISARIO & NADEL LLP
TWO COMMERCE SQUARE
2001 MARKET STREET, SUITE 2800
EXAMINER
TAVARES, JULIE L
PHILADELPHIA, PA 19103 ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
u sptomail @ panitchlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOTHAR A BRASSARD
Appeal 2017-004698
Application 13/513,981
Technology Center 1700
Before BEVERLY A. FRANKLIN, MONTE T. SQUIRE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant requests our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 12—23 and 25—29. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-004698
Application 13/513,981
STATEMENT OF THE CASE
Claim 12 is illustrative of Appellant’s subject matter on appeal and is
set forth below:
12. A sample vessel matrix comprising a plurality of individual
sample vessels having a form of Tillable wells enclosed by side
walls, wherein the side walls of the individual sample vessels
have a well height greater than a cross-section opening of the
wells, wherein a well length of the individual sample vessels
measured along a side or diameter of the well opening is in a
range of 1 mm to 5 cm, wherein a ratio of the well height of the
individual sample vessels to the well length is from 3 to 7,
wherein each sample vessel has a volumetric capacity of at least
25 ml, and wherein the sample vessel matrix is an injection-
molded part and the side walls of the individual sample vessels
comprise inclined surfaces that are sufficiently oblique to
permit nondestructive removal of the sample vessel matrix from
a mold used to produce the sample vessel matrix by injection
molding.
App. Br. 14 (Claims Appendix).
The Examiner relies on the following prior art references as evidence
of unpatentability:
Nawracala US 6,018,388
US 6,171,780 B1
US 6,241,949 B1
US 2005/0112033 A1
Jan. 25, 2000
Jan. 9, 2001
June 5, 2001
May 26, 2005
Pham
Kane
Zhang
CATALOGUE OF MICROPLATES & MICROPLATE EQUIPMENT,
2
Appeal 2017-004698
Application 13/513,981
THE REJECTIONS
1. Claims 12, 13, 15—18, 23, 25, 26, 28 and 29 are rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Pham in view of
Zhang.
2. Claims 14, 19, and 20 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Pham in view of Zhang, and further
in view of Kane.
3. Claims 21 and 22 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Pham in view of Zhang, and further
in view of Porvair.
4. Claim 27 is rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Pham in view of Zhang, and further in view of
Nawracala.
ANALYSIS
To the extent that Appellant has presented substantive arguments for
the separate patentability of any individual claims on appeal, we will address
them separately consistent with 37 C.F.R. § 41.37(c)(l)(vii).
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner’s findings and conclusion that the subject matter of
Appellant’s claims is unpatentable over the applied art. Accordingly, we
sustain each of the Examiner’s rejections on appeal essentially for the
reasons set forth in the Final Office Action and in the Answer, and affirm.
3
Appeal 2017-004698
Application 13/513,981
Rejections 1—4
Appellant first asserts that the Examiner has not established that the
ratio of well height to well length is a result-effective variable. Appeal Br.
6—7. Appellant argues that neither Pham nor Zhang recognizes the problem
of manufacturing a sample vessel matrix that is an injection molded part
with individual sample vessels having a volumetric capacity of at least 25
ml, and thus could not possibly have taught that the ratio of the well height
to the well length is critical for solving this problem. Appeal Br. 7. This
argument is reiterated in the Reply Brief. Reply Br. 2.
However, Appellant’s argument does not squarely address the
Examiner’s stated position in the record. As explained on page 9 of the
Answer, it is the Examiner’s position that Pham gives general guidance with
respect to a range of dimensions for the well depth and well diameter or
maximal diagonal distance (Pham, col. 12,1. 64 to col. 13,1. 6). See also
Ans. 3. The Examiner asserts that one of ordinary skill in the art using the
general teachings of Pham would have been motivated to make the
necessary selections in order to have a functioning sample vessel matrix, in
order to hold a necessary sample volume dependent upon experiments or
assays to be conducted. In other words, the Examiner’s position is that a
specific configuration is a matter of choice, absent evidence of criticality.1
In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that
the configuration of the claimed disposable plastic nursing container was a
matter of choice which a person of ordinary skill in the art would have found
1 The Examiner finds no evidence of such criticality in the submitted
Declaration as discussed by the Examiner on page 9 of the Answer.
4
Appeal 2017-004698
Application 13/513,981
obvious absent persuasive evidence that the particular configuration of the
claimed container was significant.). We are unpersuaded of error in the
Examiner’s line of reasoning.
Appellant then argues that Pham and Zhang do not teach or suggest a
ratio range of well height to well length of from 3 to 7. Appeal Br. 7—10.
Appellant asserts that the Examiner reaches this conclusion by
arbitrarily selecting values from within the disclosure of Pham to calculate a
ratio of well height to well length that would glean the claimed ratio range of
from 3 to 7. Appeal Br. 7. This argument is reiterated in the Reply Brief.
Reply Br. 3.
Again, however, this argument does not squarely address the
Examiner’s stated positon in the record, as set forth on pages 2—A of the
Answer, and reiterated on page 10 of the Answer. Therein, the Examiner
finds, inter alia, that Pham teaches that the multiwell platform can have a
footprint of any shape or size, substantially similar to the footprint of
existing multi-well platforms in order to be compatible with robotics and
instrumentation. Ans. 10; Pham, col. 10,11. 29-44. The Examiner finds that
Zhang is relied upon for teaching that a well can hold and be designed to
hold 25 ml. The Examiner finds that it would have been obvious for one
skilled in the art to have modified, by routine experimentation and
optimization, the system of Pham to have the claimed well lengths, well
heights, and ratio of from 3 to 7 in order to arrive at a functioning sample
vessel matrix having a sample volume of 25 ml that would hold a necessary
sample volume depending upon the experiments or assay to be run. A
5
Appeal 2017-004698
Application 13/513,981
preponderance of the evidence supports the Examiner’s findings and
reasoning.
Appellant then argues that Pham and Zhang disclose structurally
different devices for performing distinct functions such that the structural
features of Zhang’s device are distinct from that of Pham and the
presently claimed invention, such that the teachings of Zhang cannot provide
any guidance with respect to solving the problem that Appellant sought to
solve. This argument is reiterated on pages 3^4 of the Reply Brief.
However, we are in agreement with the Examiner’s stated position in
the record as set forth on pages 10—11 of the Answer. Therein, the Examiner
explains how the teachings of Zhang are compatible with the disclosure of
Pham. We add that with regard to the argument that Zhang cannot provide
any guidance with respect to solving the problem that Appellant sought to
solve, we note that to render an invention obvious, the prior art does not
have to address the same problem addressed by a patent applicant. See KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007); In re Dillon, 919 F.2d
688, 693 (Fed. Cir. 1990).
In view of the above, we affirm rejection 1. Because Appellant relies
upon similar arguments for Rejections 2-4, was also affirm these rejections
for the same reasons.
DECISION
Each rejection is affirmed.
6
Appeal 2017-004698
Application 13/513,981
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
ORDER
AFFIRMED
7