Ex Parte Baldwin et al

Board of Patent Appeals and Interferences

Apr 4, 2011

10636888 (B.P.A.I. Apr. 4, 2011)

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.
10/636,888 08/07/2003 Dene Baldwin 5112.P0001US 1127
23474 7590 04/05/2011
FLYNN THIEL BOUTELL & TANIS, P.C.
2026 RAMBLING ROAD
KALAMAZOO, MI 49008-1631
EXAMINER
TURK, NEIL N
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
04/05/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DENE BALDWIN, AHMED JEHANLI, and
CHRISTOPHER WILLIAM HAND
____________

Appeal 2010-001795
Application 10/636,888
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision1 finally rejecting claims 1-4, 7, 8, 10-15, 17-23, 25, and 32.2
Claims 5 and 6 are also pending and stand objected to as depending from
rejected claims. (App. Br. 12.) We have jurisdiction under 35 U.S.C.
§ 6(b).

1 Final Office Action mailed Apr. 29, 2008 (“Final”); see Examiner’s
Answer mailed Jun. 8, 2009 (“Ans.”) supra note 4.
2 Appeal Brief filed Apr. 7, 2009 (“App. Br.”).
Appeal 2010-001795
Application 10/636,888

2
We REVERSE.
Claims 1, 3, and 10 are representative of the invention and are
reproduced below from the Claims Appendix to the Appeal Brief:
1. Apparatus for the collection and testing of oral, or other fluids,
comprising a collection device and a test cartridge wherein:

the collection device comprises

(a) absorbing means for absorbing fluid,

(b) a collapsible cover within which the absorbing means is
housed, and

(c) a fluid adequacy indicator in fluid communication with said
absorbing means to receive said fluid absorbed by said absorbing means
which said indicator detects the fluid absorbed by said absorbing means
disposed in said collapsible cover for signaling when the absorbing means
has absorbed a predetermined volume of fluid; and

the test cartridge comprises

(a) a collection chamber which allows insertion of the collection
device into the test cartridge,

(b) a test strip in fluid communication with said collection chamber
for testing fluid for the presence of analytes, and

(c) a locating structure which locates the collection device at a fixed
location relative to the test cartridge within the collection chamber, in which
location said collapsible cover is held in a compressed state by said locating
structure such that the absorbing means has undergone a controlled degree of
compression which transfers a predetermined volume of fluid from the
absorbing means to the test strip.

3. Apparatus according to claim 1, wherein the depth of the
collection chamber is shorter than the uncompressed length of the
Appeal 2010-001795
Application 10/636,888

3
collapsible cover such that the absorbing means cannot be fully inserted into
the collection chamber without being at least partially compressed.

10. Apparatus according to claim 1, wherein the collapsible cover is
a deformable material which is durable and flexible to sustain chewing for
collection of said fluid while said collapsible cover maintains an
uncompressed state when not being chewed.

Appellants request review of the following grounds of rejection (App.
Br. 5-6)3:
1. claim 3 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement (Ans. 4);
2. claim 10 under 35 U.S.C. § 112, second paragraph, as indefinite
(Ans. 54);
3. claims 1, 2, 4, 7, 10, 17, 18, 20-22, and 32 under 35 U.S.C.
§ 103(a) as unpatentable over Niedbala5 in view of Bachand6 and Sun7 (Ans.
6-8);
4. claim 8 under 35 U.S.C. § 103(a) as unpatentable over Niedbala
in view of Bachand and Sun as applied to claim 1, and further in view of
Thieme8 (Ans. 8-9);

3 As explained by the Examiner (Ans. 2), the objections to the Specification
and claim 10 are not matters appealable to the Board. 37 C.F.R. § 41.31(c)
(2009).
4 See also, Ans. 3 (withdrawing the rejection of claims 1-8, 11-15, 17-23, 25,
and 32 under 35 U.S.C. § 112, second paragraph.).
5 US 2003/0064526 A1, pub. Apr. 03, 2003.
6 US 6,489,172 B1, issued Dec. 03, 2002.
7 US 6,372,516 B1, issued Apr. 16, 2002.
8 US 5,479,937, issued Jan. 02, 1996.
Appeal 2010-001795
Application 10/636,888

4
5. claim 11 under 35 U.S.C. § 103(a) as unpatentable over
Niedbala in view of Bachand and Sun as applied to claim 1, and further in
view of O’Brien9 (Ans. 9);
6. claim 12 under 35 U.S.C. § 103(a) as unpatentable over
Niedbala in view of Bachand and Sun as applied to claim 1, and further in
view of Fleming10 (Ans. 9-10);
7. claims 12-1511 under 35 U.S.C. § 103(a) as unpatentable over
Niedbala in view of Bachand and Sun as applied to claim 1, and further in
view of Yamamoto12 (Ans. 10-12); and
8. claims 19, 23, and 25 under 35 U.S.C. § 103(a) as unpatentable
over Niedbala in view of Bachand and Sun as applied to claim 1, and further
in view of Seymour13 (Ans. 12-13).
Rejection of claim 3 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement

The Examiner contends “the recitation of claim 3 appears to be most
closely related to lines 5-16, page 8 and lines 4-7, page 12 of the
specification. However, neither recitation provides support for claim 3's
recitation.” (Ans. 4.) Appellants rely, inter alia, on the following disclosure
for written descriptive support (see App. Br. 13):
[T]he absorbent pad is attached to one end of the chassis and is
the same length as the collapsible tube so that the collapsible
tube cannot be compressed without also compressing the

9 US 4,580,577, issued Apr. 08, 1986.
10 US 6,365,417 B1, issued Apr. 02, 2002.
11 Both the Examiner and Appellants erroneously identify canceled claim 16
as subject to this ground of rejection.
12 US 4,846,583, issued Jul. 11, 1989.
13 US 5,268,148, issued Dec. 07, 1993.
Appeal 2010-001795
Application 10/636,888

5
absorbent pad. In this embodiment, the depth of the collection
chamber is shorter than the uncompressed length of the
collapsible tube and absorbent pad so that the collapsible tube
and absorbent pad cannot be fully inserted into the collection
chamber without being at least partially compressed. The
absorbent pad and collapsible tube are compressed, squeezing
out a predetermined volume of the absorbed oral fluid. The
compression is controlled by restricting the amount by which
the absorbent pad can be compressed.

(Spec. 5:6-15 (emphasis added).)
The test for determining compliance with the written description
requirement of 35 U.S.C. § 112, first paragraph, is whether the disclosure of
the application as originally filed “reasonably conveys to the artisan that the
inventor had possession at that time of the later claimed subjected matter,”
rather than the presence or absence of literal support in the specification for
the claim language. Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d
1570, 1575 (Fed. Cir. 1983) (quoting In re Kaslow, 707 F.2d 1366, 1375
(Fed. Cir. 1983)).
The Examiner has not explained why the above-quoted language on
page 5 of the Specification fails to provide written descriptive support for
claim 3. (See Ans. 13-14 (only explaining why Specification pages 8 and 12
do not provide written descriptive support).) Appellants, however, have
persuasively argued that the Specification as originally filed conveys with
reasonable clarity to those skilled in the art that, as of the filing date,
Appellants were in possession of the invention recited in claim 3. (Compare
Spec. 5 (italicized language) supra with claim 3.) Accordingly, we do not
sustain the rejection of claim 3 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Appeal 2010-001795
Application 10/636,888

6

Rejection of claim 10 under 35 U.S.C. § 112,
second paragraph, as indefinite
The Examiner contends “[t]he term ‘sufficiently durable to sustain
chewing’ in claim 10 is a relative term which renders the claim indefinite,”
noting that “[t]he term . . . is not defined by the claim, [and] the specification
does not provide a standard for ascertaining the requisite degree.” (Ans. 5.)
As described in the Specification, oral fluid is collected in the
claimed apparatus in the following manner:
The donor holds the collection device 10 by the protective cap
18 and inserts the open end of the collapsible tube 16 into the
mouth. If the oral fluid production rate of the donor is too low
to enable an adequate volume of oral fluid to be collected in a
convenient time, the donor can chew the end of the collapsible
tube 16. This action causes a physiological response of
stimulating the saliva glands of the donor thereby increasing the
oral fluid production rate.

(Spec. 17:27-33.) The Specification includes the following description of
the structure of the collapsible cover:
[C]ollapsible tube 16 is of ovular cross section, and is made
from a durable, flexible and non-toxic material. The walls of
the collapsible tube 16 are corrugated with the direction of
the corrugations lying perpendicular or transverse to the
length of the collapsible tube 16, allowing the collapsible
tube 16 to be compressed in the lengthways direction.

(Spec. 10:31-11:1.) “The collapsible tube 16, is preferably constructed from
a material sufficiently durable to allow the donor to chew the end without
significant degradation of its structure.” (Spec. 11:7-9.) “The collapsible
tube also provides rigidity to facilitate the insertion into the test cartridge
and compression of the absorbent pad.” (Spec. 4:25-26.) “The . . .
Appeal 2010-001795
Application 10/636,888

7
collapsible tube 16 . . . [is] formed from a suitable plastics material by
injection moulding.” (Spec. 11:23-24.)
A claim is considered indefinite if it does not reasonably apprise those
skilled in the art of its scope. Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927
F.2d 1200, 1217 (Fed. Cir. 1991); see also, In re Moore, 439 F.2d 1232,
1235 (CCPA 1971) (“[T]he definiteness of the language employed must be
analyzed—not in a vacuum, but always in light of the teachings of the prior
art and of the particular application disclosure as it would be interpreted by
one possessing the ordinary level of skill in the pertinent art.”).
The above-quoted language from the Specification supports
Appellants’ contention that one of ordinary skill in the art would understand
the claimed material as one “which is durable and flexible to both: 1) sustain
chewing which the skilled artisan would understand allows for deformation
and flexing in response to chewing; and 2) restore itself to an uncompressed
state when not being chewed” (App. Br. 16). We are further in agreement
with Appellants that the ordinary artisan would have been familiar with
available plastic materials and would have readily understood which of these
materials was contemplated by the inventors. (See App. Br. 16-19.)
In sum, we determine that one of ordinary skill in the art would have
been reasonably apprised of the scope of claim 10. Therefore, we do not
sustain the rejection of claim 10 under 35 U.S.C. § 112, second paragraph,
as indefinite.
Rejections under 35 U.S.C. § 103(a)
Appellants’ traversal of the rejections under 35 U.S.C. § 103(a) (see
grounds of rejection 3-8 supra pp. 3-4) is based on their contention that the
prior art fails to teach or suggest limitations common to independent claims
Appeal 2010-001795
Application 10/636,888

8
1 and 32. (See generally, App. Br. 25-34.) As Appellants do not present
separate arguments in support of patentability of the dependent claims, these
claims stand or fall with claim 1 or claim 32.
Appellants raise several arguments in support of patentability of
claims 1 and 32. We focus on the following issue which we identify as
dispositive of the appeal:
Did the Examiner reversibly err in determining that Niedbala’s
apparatus, as modified to include Bachand’s cover (expresser 12) includes “a
locating structure which locates the collection device at a fixed location
relative to the test cartridge within the collection chamber, in which location
said collapsible cover is held in a compressed state by said locating
structure,” as recited in appealed claims 1 and 32?
The Examiner concedes that Niedbala fails to disclose a collapsible
cover for housing the absorbing means as required by claims 1 and 32.
(Ans. 7.) The Examiner relies on Bachand for a disclosure of a collapsible
cover (expresser 12) for housing an absorbing means (foam swab 17). (Ans.
7.) Bachand discloses that drops of fluid may be extracted from the
absorbing means (17) by a user manually applying pressure to the cover
(12). (Bachand, col. 4, ll. 40-43.) The Examiner determines “[i]t would
have been obvious to modify the Niedbala device to include a collapsible
cover around the absorbent pad such as taught by Bachand in order to
provide the absorbent pad with protection while also having an opening to
expel fluid therefrom.” (Ans. 8.)
Appellants argue the Examiner’s proposed combination would not
include a locating structure as claimed. Appellants assert, more specifically,
that the Examiner has not explained how Niedbala’s ledges 176 and ridge
Appeal 2010-001795
Application 10/636,888

9
177, relied on by the Examiner for a teaching of the claimed “locating
structure,” would hold Bachand’s cover in a compressed state as required by
claims 1 and 32. (App. Br. 33.)
The Examiner responds
Niedbala discloses the locating structure within the insertion
are [sic] of the test cartridge where such “locating” arises to
express the fluid from the sponge to the well of the test
cartridge. . . . Appellant’s argument to the actual
compressing of the cover is not given patentable weight as
Appellant has not claimed a method involving an active step
of compressing.

(Ans. 22.)
As correctly argued by Appellants, functional recitations in an
apparatus claim are given weight in that the corresponding prior art
structures must possess the capability of performing the recited function.
See Intel Corp. v. U.S. Int'l Trade Comm'n, 946 F.2d 821, 832 (Fed. Cir.
1991). We are in agreement with Appellants that the Examiner has failed to
identify a locating structure as claimed which is capable of holding a
collapsible cover in Niedbala’s device in a compressed state as recited in
claims 1 and 32.
Accordingly, we do not sustain the rejections of claims 1, 2, 4, 7, 8,
10-15, 17-23, 25, and 32 under 35 U.S.C. § 103(a).

The Examiner’s decision to reject claims 1-4, 7, 8, 10-15, 17-23, 25,
and 32 is reversed.
REVERSED

ssl