Ex Parte Bartfeld et alDownload PDFPatent Trial and Appeal BoardFeb 23, 201712257134 (P.T.A.B. Feb. 23, 2017) Copy Citation 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. 12/257,134 10/23/2008 Benjamin Bartfeld 3896-083186 (P-7921/1) 6481 32182 7590 02/27/2017 David W. Highet, VP & Chief IP Counsel Becton, Dickinson and Company (The Webb Firm) 1 Becton Drive, MC 110 Franklin Lakes, NJ 07414-1880 EXAMINER KWAK, DEAN P ART UNIT PAPER NUMBER 1798 NOTIFICATION DATE DELIVERY MODE 02/27/2017 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): lorraine_kow alchuk @ bd .com ip_docket @bd.com patents @ webblaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BENJAMIN BARTFELD and C. MARK NEWBY Appeal 2016-002508 Application 12/257,134 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision to finally reject claims 1—11 and 14—19. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2016-002508 Application 12/257,134 Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A container for storing a biological sample, comprising: a housing extending between a first open end and a second end, defining- a container interior; a removable closure for enclosing the first open end; and at least one breakable membrane separating the container interior into at least a first chamber and a second chamber in fluid isolation from the first chamber, wherein the first chamber is open to the first open end of the housing and is adapted to receive a sample holder therein, the breakable membrane breakable to establish fluid communication between the first chamber and the second chamber, wherein the sample holder comprises a closable housing defining an internal cavity for holding a biological sample and a closable member for enclosing the internal cavity, and wherein the container is configured such that the removable closure is capable of enclosing the first open end when the closable member encloses the internal cavity. Appellants (App. Br. 11) request review of the following rejections from the Examiner’s Final Office Action: I. Claims 1—11, 14, 15, and 17—19 rejected under 35 U.S.C. § 102 (b) as anticipated as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Guo (US 2004/0184954 Al, issued September 23,2004). II. Claim 16 rejected under 35 U.S.C. § 103(a) as unpatentable over Guo. 2 Appeal 2016-002508 Application 12/257,134 The Examiner’s Final Action (Final Act. 9—10) also includes the following rejection that was not reproduced in the Appeal Brief by Appellants or withdrawn by the Examiner in the Answer: III. Claims 1—11 and 14—19 provisionally on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1—17 of co-pending Application No. 13/178,014.1 OPINION2 Rejections I and II After review of the respective positions provided by Appellants and the Examiner, we REVERSE the Examiner’s prior art rejections of claims 1—11 and 14—19 under 35 U.S.C. §§ 102(b) and 103(a) for the reasons presented by Appellants and add the following. Independent claims 1 and 19 are both directed to a container for storing a biological sample comprising a breakable membrane separating the container interior into at least a first chamber and a second chamber, the breakable membrane breakable to establish fluid communication between the first chamber and the second chamber. The Examiner rejected independent claims 1 and 19 under 35 U.S.C. §102 (b) as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Guo. We refer to the Examiner’s Final Action for a complete statement of the rejection. Final Act. 3^4. Briefly, the Examiner found Guo’s Figure 8 shows a breakable sealing means 234 rotating with the rotation of reservoir 260 from an open position 1 The rejection was corrected to reflect the cancelation of claim 12. See Claims App’x. 2 We limit our discussion to independent claims 1 and 19. 3 Appeal 2016-002508 Application 12/257,134 (Figure 8, Step 1) to a closed position (Figure 8, Step 2). Final Act. 3; Ans. 10; Guo 123. The Examiner found the stored sample is accessed through the breakable sealing means 234 once it is broken (Figure 8, Step 3). Final Act. 3; Ans. 10; Guo 123. The Examiner determined the rotation of reservoir 260 rotates the breakable sealing means 234 and aligns it with the absorbent member 255 to separate the container interior into at least a first chamber and a second chamber in fluid isolation from the first chamber. Final Act. 3; Ans. 10; Guo 123. Appellants argue the asserted breakable sealing means 234 is located in the top member 230 outside of bottom ring 216 (the asserted first chamber) and is not movable to a position located between the asserted first chamber (bottom ring 216) and the asserted second chamber (reservoir 260) to isolate the asserted chambers from each other as claimed. App. Br. 14; Guo Figures 2, 4A, 4B, 8,123. According to Appellants, the operation of the reservoir 260 between an open and closed position does not place the breakable sealing means 234 in a position where it divides a container interior into a first chamber and a second chamber because the asserted breakable sealing means 234 is provided outside of the fluid path between the two structures 216 and 260. App. Br. 14—15; Guo Figures 2, 8,123. Thus, Appellants argue Guo does not anticipate or render obvious the claimed invention. App. Br. 14—15. We agree with Appellants that Guo does not anticipate the claimed invention for the reasons presented by Appellants. App. Br. 14—15. Our reviewing court has held that a reference must disclose all of the limitations arranged or combined in the same way as recited in the claim to anticipate 4 Appeal 2016-002508 Application 12/257,134 under 35 U.S.C. § 102. NetMoneylN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Guo discloses that reservoir 260 is attached to a reservoir attachment means 236 comprising a reservoir rotation groove 238 that facilitates and guides the rotation of reservoir 260 about the reservoir attachment means 236. Guo Figure 3,150. Guo further discloses the reservoir attachment area 237, to which the reservoir attachment 236 is connected, comprises the breakable sealing means 234. Id. at Figure 2, | 51. Given this disclosure, we agree with Appellants that one skilled in the art would understand the rotation of the reservoir member 260 shown in Figure 8 of Guo would be about the reservoir rotation groove 238 and, thus, the breakable sealing means 234 does not rotate with reservoir 260. App. Br. 14—15. The Examiner directs us to no portion of Guo that discloses the breakable sealing member as being located between the asserted first chamber 216 and second chamber 260 as claimed. Thus, the Examiner has not adequately explained how Guo anticipates the subject matter of independent claims 1 and 19. We also agree with Appellants that the Examiner has not presented an adequate case of obviousness. Id. The Examiner does not adequately explain why one skilled in the art would have modified Guo’s device to place the breakable sealing means between the asserted first chamber 216 and the asserted second chamber 260, particularly since Guo describes the function of breakable sealing means 234 is to facilitate removal of the collected sample once the sealing means is punctured. Guo Figure 8,1 51. The Examiner has not adequately explained how one skilled in the art would have modified Guo’s device to incorporate a breakable sealing member 5 Appeal 2016-002508 Application 12/257,134 located between the asserted first chamber 216 and the asserted second chamber 260. Under these circumstances, we cannot conclude that the Examiner has met the minimum threshold of establishing obviousness under 35 U.S.C. § 103(a). See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly, we reverse the Examiner’s prior art rejections of claims 1—11, 14, 15, and 17—19 under 35 U.S.C. §§ 102(b) and 103(a) and of claim 16 under 35 U.S.C. § 103(a) for the reasons presented by Appellants and given above. Rejection III Claims 1—11 and 14—19 are provisionally on the ground of nonstatutory obviousness-type double patenting as unpatentable over claims 1—17 of co-pending Application 13/178,014. Final Act. 9-10. In view of our reversal of all of the rejections covering claims 1—11 and 14—19, we decline to reach the merits of the obviousness-type double patenting rejection over co-pending Application 13/178,014. Application 13/178,014 has now become now US 9,056,317 B2, issued June 16, 2015. We refer this back to the Examiner to determine the appropriateness of this rejection over the issued patent. See Ex parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential). The Examiner should process the obviousness type double patenting rejection consistent with MPEP § 804 upon return of the present application to the jurisdiction of the Examiner. 6 Appeal 2016-002508 Application 12/257,134 ORDER The Examiner’s prior art rejection of claims 1—11, 14, 15, and 17—19 under 35 U.S.C. § 102 (b) is reversed. The Examiner’s prior art rejections of claims 1—11 and 14—19 under 35 U.S.C. § 103 (a) are reversed. We refer the non-statutory obviousness type double-patenting back to the Examiner to determine the appropriateness of this rejection. REVERSED 7 Copy with citationCopy as parenthetical citation