Ex Parte Buechler et al

Board of Patent Appeals and Interferences

Mar 17, 2009

10153423 (B.P.A.I. Mar. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH F. BUECHLER
and RICHARD ROGER BATT
____________

Appeal 2009-0645
Application 10/153,423
Technology Center 1700
____________

Decided:1 March 17, 2009
____________

Before CHUNG K. PAK, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 2, 4-6, 48-56. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The invention relates to filtering device. Claims 1 are 51 are
illustrative:
1. A device comprising: a filter capable of separating particulate
matter from liquid matter in a fluid sample, and a means for region specific
compression of the filter, wherein said filter is composed of a single filter
layer and said filter is not compressed in all regions.

51. A device for filtering blood samples comprising:

a filter that retains or retards red blood cells in said blood sample to
allow plasma to separate from blood and pass through the filter, wherein said
filter is composed of a single filter layer and said filter is compressed in one
or more regions, but is not compressed in all regions.

Appellants request review of the Examiner’s rejection of:
A. claims 1, 2, and 5 under 35 U.S.C. § 102(b) as anticipated by Cargill
(US 1,986,957, issued Jan. 8, 1935); and
B. claims 1-6 and 48-56 under 35 U.S.C. § 103(a) as unpatentable over
de Castro (US 5,139,685, issued Aug. 18, 1992) in view of Nakajima
(US 4,968,425, issued Nov. 6, 1990). 2

2 The Examiner lists claims 55 and 56 as rejected, but states in the Answer
that “Appellant’s [sic, s'] remarks were convincing with respect to claims
55-56” and indicates that these claims would be allowable if rewritten in
independent form (Ans. 9). However, the status of these claims as either
rejected or allowable does not change the outcome in this case. As the
claims are listed in the rejection, we list them as rejected.
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II. ANTICIPATION
Issue
With regard to the anticipation rejection, the dispositive issue is:
Have Appellants established that the Examiner reversibly erred by failing to
properly construe the means-plus-function limitation “means for region
specific compression of the filter?”
We answer in the affirmative.
Findings of Fact
The following Findings of Fact (FF) are relevant to deciding the
anticipation issue on appeal:
1. The Examiner finds that “[t]he spring ring structures (17, 29) [of
Cargill] have been read on the claimed ‘means for region specific
compression of the filter . . .” (Ans. 3).
2. The Examiner does not state on the record what structure disclosed in
the Appellants’ Specification corresponds to the “means for region
specific compression of the filter.”
3. The Specification describes structures for region specific
compression of the filter at pages 15-18. The structures are identified
as compression structures 22 in the Figures.
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4. Figure 2 exemplifies one embodiment of the compression structure.
Figures 2A and 2B are reproduced below:

Figure 2A is a top view of base 10. Figure 2C is a cross section of the
assembled device.
5. Appellants’ figures depict compression structures 22 as a ridge or
stepped up region within filter cavity 12 that compresses a portion of
the filter 20 when the lid 18 is bonded to the base (Appellants’ Figs.
2-5).
6. As seen in Figures 2-5, the location and extent of the compression
structure 22 may vary, but the structure is in every embodiment a
raised portion within the filter cavity 12 of base 10 (Appellants’ Fig.
2-5).
7. Cargill describes a filter holder constructed of a single piece of
resilient material such as a spring wire (Cargill, col. 1, ll. 16-18; see
also Figs. 2-4 depicting spring wires with rings 17 and 29). The
spring wire presses filter cloth into uniform contact with the wall of
the upper portion of a coffee bowl (Cargill, col. 1, ll. 19-22).
8. Figures 1 and 2 of Cargill are reproduced below:

Figure 1 depicts a glass coffee brewing apparatus showing a filter 15 held
in position by the ring 17 of the filter holder. Figure 2 is a perspective
view of the filter holder.
9. Rings 17 and 29 are not raised portions within a cavity of a base
member (Compare Appellants’ Fig. 2C with Cargill’s Figs 1-4).
10. The Examiner does not make any finding that rings 17 and 29 are
“equivalents” within the meaning of 35 U.S.C. §112, ¶ 6 (Ans. 3 and
6-7).
Principles of Law
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). To determine whether a
prior art reference anticipates, it is necessary to first determine the scope of
the claim. See Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir. 1997)
(“Implicit in our review of the Board’s anticipation analysis is that the claim
must first have been correctly construed to define the scope and meaning of
each contested limitation.”).
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During 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." In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). However, use of “means” in a
claim limitation creates a presumption that 35 U.S.C. § 112, ¶ 6 applies.
TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed. Cir. 2008).
35 U.S.C. § 112, ¶ 6, requires the examiner "look to the specification and
interpret that language in light of the corresponding structure, material, or
acts described therein, and equivalents thereof, to the extent that the
specification provides such disclosure." In re Donaldson Co., 16 F.3d 1189,
1193 (Fed. Cir. 1994) (en banc).
A prior art structure that is not the same as the corresponding structure
disclosed in the specification, may only meet the requirements of the
claimed “means” where the prior art structure is an “equivalent” to the
structure disclosed in the specification. Where an examiner makes no
finding that such a prior art structure is an “equivalent,” the rejection is
deficient. See In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (vacating an
anticipation rejection because the disclosed and prior art structures were not
identical and the Board made no finding that the prior art structure was
structurally equivalent to the corresponding structure of the specification).
Analysis
The Examiner has not adequately explained how the claim limitation
“means for region specific compression of the filter” is being interpreted (FF
1-2, and 10) even though Appellants have clearly put the issue before the
Examiner (Br. 7-10; Reply Br. 4-5). As pointed out by Appellants, the
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limitation is in means-plus-function form and must be interpreted as
mandated by 35 U.S.C. § 112, ¶ 6. Without any particular articulated
findings and conclusions on the record on this matter in the Answer it is
difficult for us to review the question of whether the Examiner has properly
applied the law of 35 U.S.C. § 112, ¶ 6 to the facts of this case.
As argued by Appellants, the Specification reasonably conveys that
compression member 22, shown in Figures 2-5 as a raised portion within the
filter cavity 12 of the base 10, corresponds to the “means for region specific
compression of the filter” as required by claim 1 (FF 3-6). Cargill does not
disclose or depict such a raised portion in a filter cavity on a base (FF 7-9).
The Examiner finds that Cargill’s rings 17 and 29 “read on” the
claimed means (FF 1), but because rings 17 and 29 do not correspond in
structure to Appellants’ disclosed compression structure 22, a finding that
the rings 17 and 29 are “equivalents” is necessary for a finding of
anticipation. However, the Examiner provides no finding of equivalency
much less reasoning supporting a finding of equivalency. Such reasoning
was required here because, on its face, the rings of 17 and 29 are of
substantially different structure than the structure corresponding to the
means of the claim, i.e., the raised portions within filter cavities
(compression structures 22) described in Appellants’ Specification. We
cannot say that the Examiner has adequately supported the finding of
anticipation.
Conclusion
Appellants have established that the Examiner reversibly erred by
failing to properly construe the means-plus-function limitation “means for
region specific compression of the filter.”
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We do not sustain the rejection of claims 1, 2, and 5 under 35 U.S.C.
§ 102(b) as anticipated by Cargill.

III. OBVIOUSNESS
Issues
With regard to the obviousness rejection, the dispositive issue with
regard to independent claim 1 is: Have Appellants established that the
Examiner reversibly erred in finding a suggestion within Nakajima for
incorporating a “means for region specific compression of the filter” into the
blood separation filter assembly of de Castro?
We answer in the affirmative.
With regard to the rejection of the other independent claim, claim 51,
the dispositive issue is: Have Appellants established that the Examiner
reversibly erred in finding that de Castro teaches compressing the filter layer
between bottom surface 42 and a cover 44 (Ans. 4) and finding a reason to
use a single layer filter?
We answer this question in the negative.
Findings of Fact
The following Findings of Fact (FF) are relevant for deciding the
obviousness issues:
11. De Castro is directed to filter assemblies used to separate fluids from
particulate matter and particularly to separate blood plasma from
whole blood (de Castro, col. 1, ll. 7-11).
12. The filter assembly addresses the need to test blood samples for
drugs and health conditions quickly in urgent medical emergency
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situations at the site of the emergency (de Castro, col. 1, ll. 17-47; col.
2, ll. 12-15; and col. 2, ll. 26-32).
13. The filter needs to remove red blood cells without removing the
small molecules, such as glucose and lipids (e.g., cholesterol), or large
molecules, such as enzymes (e.g., Lactate dehydrogenase) from the
plasma to be tested (de Castro, col. 2, ll. 32-41).
14. De Castro’s device compresses glass fiber filter material to achieve
fast yet complete filtration (de Castro, col. 2, ll. 42-61).
15. Figure 14 and Figure 15 of de Castro illustrate the device and how it
compresses the filter. These Figures are reproduced below:

Figure 14 depicts a sectional view of the uncompressed filter assembly
15 within a well structure. Figure 15 depicts the placement of a cover
member 73 to compress the filter assembly 15 (de Castro, col. 3, ll. 43-46
and col. 5, ll. 11-18).
16. Because the cover member (shown as 73 in Figs. 14 and 15) does not
cover all regions of the filter, it does not compress the filter in all
regions.
17. De Castro discloses that the filtration is as effective when the
filtering layer comprises multiple layers instead of one layer,
suggesting that a single layer can be used (de Castro, col. 2, ll. 62-65).
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18. The filter assembly of Figure 14 has only one filter layer 26, the
other layer (layer 28) is a reagent impregnated layer (de Castro, col. 5,
ll. 11-13).
19. Nakajima is directed to “[a] filter body of a fiber of depth layer
type.” (Nakajima, col. 1, l. 10).
20. The depth layer type filters disclosed by Nakajima are for removing
impurities from fluids such as oil. The oil enters the filter at the outer
periphery of a cylindrical filter, flows through a lower density layer to
a higher density layer, and exits the filter through a central conduit
axially running through the center of the cylinder (Nakajima, col. 1, ll.
20-45 and col. 2, ll. 40-68).
21. Figures 1 and 4 of Nakajima depict the depth layer type filter of
Nakajima’s invention and are reproduced below:

Figure 1 is a perspective view of a filter body 2 variably compressed by
holding plates 8.
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Figure 4 is a perspective view of a filter body 42 formed by alternately
laminating many filter elements 46 in three different directions
(Nakajima, col. 3, ll. 37-46).
Principles of Law
When the combination of prior art elements the examiner combines to
meet the requirements of a claim involves more than just the simple
substitution of one known element for another, a determination of
obviousness must weigh a number of factors to determine if there is an
apparent reason to combine. As stated in KSR:
Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the
effects of demands known to the design
community or present in the marketplace; and the
background knowledge possessed by a person
having ordinary skill in the art, all in order to
determine whether there was an apparent reason to
combine the known elements in the fashion
claimed by the patent at issue.
KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-41 (2007).
The test is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588,
591 (Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
analysis should take into account the amount of reconstruction and redesign
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required of the prior art devices as well as changes in the basic principles of
operation required to arrive at the claimed structure in finding whether there
is a suggestion in the prior art to make the combination. In re Ratti, 270
F.2d 810, 813 (CCPA 1959); see also KSR, 127 S. Ct. at 1740 (stating that
“if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill”).
The Examiner should also take into account the problems addressed
by the prior art references. See KSR, 127 S. Ct. at 1742 (“One of the ways in
which a patent's subject matter can be proved obvious is by noting that there
existed at the time of invention a known problem for which there was an
obvious solution encompassed by the patent's claims.”).
A reference may be relied upon for all that it would have reasonably
suggested to one having ordinary skill in the art, including non-preferred
embodiments. Merck & Co v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir.
1989).
Analysis
Claim 1
Claim 1, as we determined above, requires a structure corresponding
to the compression structure 22, i.e., a raised portion on the base holding the
filter, or an “equivalent thereof.” There is no dispute that de Castro does not
disclose the required compression structure or an equivalent thereof; the
Examiner relies upon Nakajima for such a teaching (Ans. 4-5).
De Castro is directed to a filter device which filters a small amount of
blood to obtain plasma for medical tests (FF 11-12). Nakajima, on the other
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hand, is directed to a cylindrical filter for removing impurities from volumes
of fluid such as oil so large that clogging of the filter with the impurities
poses a problem (FF 18-21). The Examiner finds that Nakajima would have
suggested modifying the filter of de Castro to gain the advantage of “being
able to separate a large amount of sample with the least possibility of
clogging. However, the filter of de Castro is used to filter small volumes of
blood rather than large amounts of oil. The Examiner has not established
that clogging, the problem addressed by Nakajima’s filter, is a problem in
the small volume blood sample filtering device of de Castro.
Even if an ordinary artisan would seek to solve a clogging problem in
the de Castro device, it is not clear that Nakajima would provide the
requisite suggestion to compress only some of the regions of de Castro’s
filter assembly using a compression structure 22 or equivalent thereof. The
depth type filter of Nakajima operates in an entirely different manner than
the filter device of de Castro. Nakajima’s filter is cylindrical with the fluid
entering through the very large surface area of the outer surface and exiting
through the central axial conduit (FF 19). De Castro’s filter is a small planar
filter within a well and the blood enters on one side of the planar filter and
exits the other side. The Examiner has not accounted for the substantial
differences between the designs and operation of the two prior art devices.
Such evidence or sufficient technical reasoning was required to support the
rejection in this case.
Claim 51
Claim 51 stands on different footing. Claim 51 does not require a
“means for region specific compression of the filter.” Claim 51 is directed
to a device including a filter composed of a single filter layer. Instead of the
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means clause of claim 1, claim 51 includes the functional statement that
“said filter is compressed in one or more regions, but is not compressed in
all regions.” Claim 51 does not require any structure for compressing the
filter.
The Examiner finds that de Castro describes compressing filter layers
between a bottom surface (42) and a cover (44) to compress the layers (Ans.
4). Figures 14 and 15 are illustrative of the device structure. As seen in
these figures, the cover (shown as 73) and the base (shown as 72) do not
extend over the entire surface of the filter. The cover and base, therefore,
compress the filter only in the regions in which they contact the filter. We
determine that de Castro’s cover and base structure result in a device in
which “said filter is compressed in one or more regions, but is not
compressed in all regions” as recited in claim 51.
The Examiner further finds that de Castro is silent as to the claimed
single layer filter, but that the use of one piece construction would have been
a matter of obvious engineering choice (Ans. 4). De Castro supports this
determination because de Castro, in fact, suggests that a single layer filter
can be used (FF 17-18).
With respect to claim 51, we determine that de Castro alone provides
sufficient evidence to support the Examiner’s determination of obviousness.
Nakajima is not required to support the rejection. The Examiner’s
error, if any, was not fully contemplating the breath of the claim, an error
which in this case was not a reversible error given that Appellants have not
convinced us of error in the Examiner’s findings that support the
obviousness of the claim as correctly interpreted.

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Conclusion
With regard to claim 1, Appellants have established that the Examiner
reversibly erred in finding a suggestion within Nakajima for incorporating
the “means” of claim 1 into the blood separation filter assembly of de
Castro.
With regard to claim 51, Appellants have not established that the
Examiner reversibly erred in finding that de Castro teaches compressing the
filter layer between bottom surface 42 and a cover 44 (Ans. 4) and finding
a reason to use a single layer filter and, therefore, Appellants have not
established that the Examiner reversibly erred in concluding that the prior art
rendered the subject matter of claim 51 obvious.
We do not sustain the rejection of claims 1-6 and 48-50 under
35 U.S.C. § 103(a) as unpatentable over de Castro in view of Nakajima.
However, we do sustain the rejection of claims 51-56 on those grounds.

VII. DECISION
The decision of the Examiner is affirmed-in-part.
AFFIRMED-IN-PART

cam

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