Ex Parte Beer

Board of Patent Appeals and Interferences

Jul 1, 2011

11652879 (B.P.A.I. Jul. 1, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/652,879 01/11/2007 Neil Reginald Beer IL-11753 4957
24981 7590 07/01/2011
Lawrence Livermore National Security, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
EXAMINER
KINGAN, TIMOTHY G
ART UNIT PAPER NUMBER
1772
MAIL DATE DELIVERY MODE
07/01/2011 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 NEIL REGINALD BEER
____________________

Appeal 2010-003432
Application 11/652,879
Technology Center 1700
____________________

Before BRADLEY R. GARRIS, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1 through 24. We have jurisdiction
pursuant to 35 U.S.C. § 6.
We AFFIRM.

STATEMENT OF THE CASE
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The subject matter on appeal is directed to a multi-well cover
penetration apparatus. Claim 1 is illustrative:
1. A multi-well cover penetration apparatus for
analyzing a sample contained in individual sample wells of a
multi-well sample plate having a multiplicity of individual
sample wells, wherein there is a cover over the multi-well
sample plate and the individual sample wells, the apparatus
adapted for penetrating a cover over the multi-well sample plate
containing the multiplicity of individual sample wells,
comprising:
an array of rectangular or circular well cutting heads
adapted to be positioned over the multi-well sample plate and
over the cover over the multi-well sample plate,
a multiplicity of cutters extending from said array, said
multiplicity of cutters adapted to be positioned over the multi-
well sample plate, over the cover over the multi-well sample
plate, and over the individual sample wells, and
a robot, said array connected to said robot wherein said
robot moves said array and cutters so that said cutters penetrate
the cover over the multi-well sample plate providing access to
the individual sample wells.
The rejections on appeal are as follows:
1) Claims 1-4 and 13-16 are rejected under 35 U.S.C. § 102(b) as
anticipated by Molecular Biotechnology (New Products for Molecular
Biology, 19 MOLECULAR BIOTECHNOLOGY 223 (2001)) as evidenced by
Thermo Scientific Catalog (THERMO SCIENTIFIC, AMPLIFICATION AND
EXPRESSION 726 (no date available)) and ABgene Catalog (ABGENE,
ABGENE LIFE SCIENCES PRODUCT RANGE 161 (2004));
2) Claims 1-4 and 13-16 are rejected under 35 U.S.C. § 102(b) as
anticipated by ABgene Catalog;
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3) Claims 5 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Molecular Biotechnology as evidenced by Thermo
Scientific Catalog and ABgene Catalog, and further in view of Barbera-
Guillem (US 2002/0172621 A1, published Nov. 21, 2002);
4) Claims 6-9 and 18-21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Molecular Biotechnology as evidenced by Thermo
Scientific Catalog and ABgene Catalog, and further in view of Conrad (US
H1960 H, published Jun. 5, 2001);
5) Claims 10-12 and 22-24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Molecular Biotechnology as evidenced by Thermo
Scientific Catalog and ABgene Catalog, and further in view of Bullard (US
6,077,378, issued Jun. 20, 2000);
6) Claims 5 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the ABgene Catalog, and further in view of Barbera-
Guillem;
7) Claims 6-9 and 18-21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the ABgene Catalog, and further in view of Conrad; and
8) Claims 10-12 and 22-24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the ABgene Catalog, and further in view of Bullard.

Rejection (2)
With respect to rejection (2), Appellant’s arguments focus on features
recited in claims 1 and 13. Accordingly, we address Appellant’s arguments
with respect to these claims only. See 37 C.F.R. § 41.37(c)(1)(vii).

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ISSUE
Did the Examiner reversibly err in determining that ABgene Catalog
teaches the cutters required by claims 1 and 13 within the meaning of
§ 102(b)? We decide this issue in the negative.

PRINCIPLES OF LAW, ANALYSIS, AND CONCLUSION
Appellant argues that ABgene Catalog does not teach the cutters
required by claims 1 and 13. (App. Br. 40-41). Specifically, Appellant
argues that ABgene Catalog’s piercer is not a cutter because when a piercer
is withdrawn from the seal, the seal closes, but when the cutter is withdrawn
from the seal, the seal remains open. Id.
Appellant also argues that the Specification and drawings define the
claimed cutters. (Reply Br. 16-19). Specifically, Appellant argues that
Figures 4 and 5 and paragraphs [0034] and [0036] show that the term
“cutters” must be interpreted to be a tool having cutting heads formed from
conical tips 307 and cross shaped cutting blades 309. Id.
In addition, Appellant argues that ABgene Catalog would not have
suggested the claimed cutter because ABgene Catalog is completely silent
about the problem solved by Appellant. (Reply Br. 19).
It is well settled that “[d]uring examination, ‘claims . . . are to be
given their broadest reasonable interpretation consistent with the
specification, and . . . claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
In applying this legal principle, we determine that the term “cutters”
refers to tools that are capable of penetrating an object such as tools having
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tapered ends and/or points. See, e.g., pages 560 and 562 of Webster’s Third
New World International Dictionary (G. & C. Merriam Webster, 1971)
(cutter defined as “a machine, machine part, or tool that cuts” and cut
defined as “to penetrate with or as if with an edged instrument”). This
interpretation is consistent with Appellant’s disclosure since, in reference to
our above discussion, Appellant’s Figures 4 and 5 illustrate a tool having
cutting heads formed from conical tips 307 (i.e., tapered points) and cross
shaped cutting blades 309 (i.e., blades having tapered ends).
In light of our claim construction of the term “cutters”, we agree with
the Examiner’s determination that ABgene Catalog’s pins correspond to the
claimed cutters since ABgene Catalog’s pins have tapered ends. (See Ans.
4; see also AB Gene Catalog p. 162, AB-1126, AB-1045, and AB-1125).
In addition, we note that Appellant has not directed us to any
definition or disclaimer in the Specification that the cutters required by the
claims exclude pins having a tapered ends. Absent claim language carrying
a narrow meaning, we limit the claim based on the Specification when it
expressly disclaims the broader definition. In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004).
With respect to Appellant’s argument that ABgene Catalog does not
teach the cutters required by claims 1 and 13 because the seal closes when
ABgene Catalog’s piercer is withdrawn from the seal, we note that the
function argued by Appellant (i.e., the cutters are capable of forming an
opening that remains open when the cutter is withdrawn from the seal) is not
claimed.
With respect to Appellant’s argument that ABgene Catalog would not
have suggested the claimed cutter because it does not teach Appellant’s
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problem, Appellant’s argument is without persuasive merit because, in
reference to our above discussion, the Examiner’s position is based on
ABgene Catalog teaching the cutters required by the claims and not on
modifying ABgene Catalog’s apparatus as argued by Appellant. The
Examiner’s rejection is based on ABgene Catalog anticipating the claimed
subject matter.
Accordingly, we sustain the Examiner’s rejection (2).

Rejections (6), (7) and (8)
With respect to rejections (6), (7), and (8), Appellant repeats
arguments made in connection with the rejection of independent claims 1
and 13 in rejection (1). (App. Br. 40-59). Thus, we find these arguments to
be unpersuasive for the reasons given above.
With respect to rejection (7), Appellant additionally argues that
Conrad does not mention any structure that would correspond to the term
“cutter.” (Reply Br. 24). Appellant’s argument is without persuasive merit
because, in reference to our above discussion, the Examiner’s position relies
on ABgene Catalog to teach this disputed claim feature and not on Conrad as
argued by Appellant. Accordingly, Appellant’s argument is without
persuasive merit.
With respect to rejection (8), Appellant for the first time in the Reply
Brief presents arguments that that Bullard and ABGene Catlog are from
entirely different arts and that there would be no reason to employ Bullard’s
X-shaped blades as Catalog’s piercer. (Reply Br. 31).
Appellant, however, has not presented an explanation establishing a
showing of good cause why these new arguments were not presented in the
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Appeal Brief. Any new argument not timely presented in the Appeal Brief
will not be considered when filed in a Reply Brief, absent a showing of good
cause explaining why the argument could not have been presented in the
Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474-77 (BPAI 2010)
(informative).
Since Appellant has failed to provide such a showing, we will not
consider the new arguments in the Reply Brief.
Accordingly, we sustain the Examiner’s rejections (6), (7), and (8).

Rejections (1), (3), (4), and (5)
Since the Examiner relies upon, inter alia, the same references in
making rejections (1), (3), (4), and (5) as the Examiner did in rejections (2),
(6), (7), and (8), we sustain rejections (1), (3), (4), and (5) for the reasons
given above.
With respect to Appellant’s argument (App. Br. 18 and 19) that
Molecular Biotechnology and Thermo Scientific Catalog do not provide an
enabling disclosure, it is well settled that prior art under § 102 must
sufficiently describe the claimed invention to have placed the public in
possession of the claimed invention before the date of the invention.1 See In
re Donohue, 766 F.2d 531, 533, 534 (Fed. Cir. 1985). In addition, such
possession is effected if one of ordinary skill in the art could have combined

1 With regard to the § 103 rejections (3), (4) and (5), we note that whether
the Molecular Biotechnology reference or Thermo Scientific Catalog is
enabled is not dispositive. Symbol Techs. Inc. v. Opticon Inc., 935 F.2d
1569, 1578 (Fed. Cir. 1991) (explaining “a non-enabling reference may
qualify as prior art for the purpose of determining obviousness under 35
U.S.C. § 103.”).
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the publication’s description of the invention with his own knowledge to
make the claimed invention. Id.
In our case, the Examiner relies on Molecular Biotechnology’s A.S.P.
50 device to correspond to the claimed apparatus. (Ans. 3 and 4). In this
regard, the Examiner refers to, inter alia, ABGene Catalog as evidence to
show that the public was in possession of the A.S.P. 50 device before the
date of Appellant’s invention. In reference to our above discussion, the
ABGene Catalog shows photographs of the A.S.P. 50 device as well as
close-up photographs of the pin heads. (AB Gene Catalog, pp. 162 and
163).
In addition, we note that Appellant does not provide any evidence
showing that any of the A.S.P. 50 devices disclosed by the references are
different.
Since the public was in possession of the A.S.P. 50 device prior to the
date of Appellant’s invention, we agree with the Examiner that Molecular
Biotechnology provides an enabling disclosure for its A.S.P. 50 device.
Accordingly, Appellant’s argument is without persuasive merit.
In addition, Appellant’s argument (App. Br. 18 and 19) that Thermo
Scientific Catalog is not available as prior art because the reference is
undated is unpersuasive. It is well settled that that a reference that is not
available as prior art may be cited as evidence to show a state of fact. See In
re Wilson, 311 F.2d 266, 268-269 (CCPA 1962). In the instant case, the
Examiner properly relies on Thermo Scientific Catalog as factual evidence
to show that the A.S.P. 50 device taught by Molecular Biotechnology has
pin heads.
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In addition, with respect to Appellant’s argument that Thermo
Scientific Catalog does not provide an enabling disclosure, in reference to
our above discussion, since the public was in possession of the A.S.P. 50
device before the date of Appellant’s invention, we agree with the Examiner
that Thermo Scientific Catalog provides an enabling disclosure.

ORDER
The Examiner’s decision is affirmed.

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)(1).

AFFIRMED

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