Ex Parte Biwa

Board of Patent Appeals and Interferences

Jan 16, 2007

10442288 (B.P.A.I. Jan. 16, 2007)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SEIDO BIWA
__________

Appeal No. 2006-3010
Application No. 10/442,288
___________

HEARD: December 12, 2006
___________

Before HAIRSTON, DIXON, and SAADAT, Administrative Patent Judges.

HAIRSTON, Administrative Patent Judge.

DECISION

This is an appeal from the final rejection of claims 1 through 7, 9 through
26, 28, 29 and 32 through 35.
The disclosed invention relates to a sample analyzer that marks a container
containing a sample.

Appeal No. 2006-3010
Application No. 10/442,288

2
Claim 34 is illustrative of the claimed invention, and it reads as follows:
34. A sample analyzer comprising:
a conveyer for automatically conveying a sample container containing a
sample;

a marking unit comprising a marker for marking the sample container
conveyed by the conveyer; and

a controller for controlling whether the marker marks the sample container
or not based on sample information.

The reference relied on by the examiner is:
Watson et al. (Watson) 2004/0005245 Jan. 8, 2004
(filed May 9, 2003)

Claims 1 through 7, 9 through 26, 28, 29 a nd 32 through 35 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Watson.
Reference is made to the brief and the answer for the respective positions of
the appellant and the examiner.

Appeal No. 2006-3010
Application No. 10/442,288

3

OPINION
We have carefully considered the entire record before us, and we will
reverse the anticipation rejection of claims 1 through 7, 9 through 26, 28, 29 and
32 through 35.
Anticipation is established when a single prior art reference discloses,
expressly or under the principles of inherency, each and every element of a claimed
invention as well as disclosing structure which is capable of performing the recited
structural limitations. RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d
1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1983).
All of the claims on appeal mark a container that already holds a sample. In
Watson (paragraph 0190), the container (i.e., the secondary tube) is marked with a
label (Figure 10, step H) prior to placing the sample into the container (Figure 10,
step I). Thus, the anticipation rejection1 of claims 1 through 7, 9 through 26, 28,
29 and 32 through 35 is reversed since Watson does not mark a container already
containing a sample.

1 Since an obviousness rejection is not before us on appeal, we will refrain from
offering our opinion as to whether it would have been obvious to the skilled artisan
to reverse steps H and I in Watson.
Appeal No. 2006-3010
Application No. 10/442,288

4
DECISION
The decision of the examiner rejecting claims 1 through 7, 9 through 26, 28,
29 and 32 through 35 under 35 U.S.C. § 102(e) is reversed.
REVERSED

KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )

KWH/pgc

Appeal No. 2006-3010
Application No. 10/442,288

5
Brinks Hofer Gilson & Lione
NBC Tower
NBC Tower, Suite 3600
P.O. Box 10395
Chicago, IL 60610