Ex Parte ChandlerDownload PDFBoard of Patent Appeals and InterferencesFeb 16, 201211401198 (B.P.A.I. Feb. 16, 2012) Copy Citation 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. 11/401,198 04/10/2006 Howard Milne Chandler 054769-9702 4136 30542 7590 02/16/2012 FOLEY & LARDNER LLP P.O. BOX 80278 SAN DIEGO, CA 92138-0278 EXAMINER HANDY, DWAYNE K ART UNIT PAPER NUMBER 1773 MAIL DATE DELIVERY MODE 02/16/2012 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 HOWARD MILNE CHANDLER ________________ Appeal 2010-004155 Application 11/401,198 Technology Center 1700 ________________ Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and KAREN M. HASTINGS, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004155 Application 11/401,198 2 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 1, 3-10 and 12-15. We have jurisdiction under 35 U.S.C. § 6. Appellant’s invention is directed to a method for collecting a fluid sample derived from fecal material. App. Br. 4. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A method for collecting a fluid sample derived from faecal material, comprising (i) prior to obtaining said fluid sample, contacting the faecal material with a fluid to disperse any blood present in or on the faecal material into the fluid, and (ii) subsequently collecting a sample of the fluid, wherein said fluid is toilet bowl water. Appellant, App. Br. 5, requests review of the following rejections from the Examiner’s final office action: I. Claim 1 stands rejected under 35 U.S.C. § 102(b) as anticipated by Ogura (U.S. Patent No. 4,636,474 issued Jan. 13, 1987). II. Claims 3, 4, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as obvious over Ogura in view of Kagaya (EP 0,727,653 A2 published Aug. 21, 1996). III. Claims 5-8, 10, 14, and 15 stand rejected under 35 U.S.C. § 103(a) as obvious over Ogura in view of Fleisher (U.S. Patent No. 4,492,124 issued Jan. 8, 1985). IV. Claim 9 stands rejected under 35 U.S.C. § 103(a) as obvious over Ogura in view of Fleisher. Appeal 2010-004155 Application 11/401,198 3 Rejections I, III and IV The dispositive issue for these rejections is: Did the Examiner err in determining that Ogura describes or suggests a method comprising collecting a sample of the fluid as required by the subject matter of independent claim 1? 1 We answer this question in the affirmative and REVERSE the rejections of claims 1, 3, 4, 9, 12, and 13. The Examiner bears the initial burden of establishing a prima facie case of anticipation or obviousness. Anticipation under 35 U.S.C. § 102 requires that “each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).In this case we agree with Appellant that the plain meaning of the phrase “collecting a fluid sample” requires that a representative portion (i.e., a sample) of the water is collected. (App. Br. 6- 7). Appellant correctly argues that this interpretation is consistent with the examples presented in the Specification wherein a portion of the toilet bowl water was removed (i.e., sampled) using a collecting device (e.g., a brush; see Examples 1 and 2). (Id.). The Examiner responds that the claimed invention does not require “collecting and separating the sample fluid from the toilet bowl water.” 1 We will limit our discussion to independent claim 1. Appeal 2010-004155 Application 11/401,198 4 (Ans. 7). However, the Examiner does not adequately identify where Ogura discloses that the sensor necessarily obtains a portion (i.e. collects a sample ) of the water which is contained in the bowl. The Examiner has not adequately identified where Ogura describes how the sensor (element B) operates. Consequently, on the record before us it is unclear whether element B would operate for example as a thermometer that senses the temperature of water or as an element that takes a portion of the water for running tests. In addition, the Examiner has not directed us to evidence or provided analysis to support a finding that the sensor element of Ogura was the same as that which is required by claim 1, given Appellant’s definition for collecting a fluid sample. The Examiner’s rejection appears to be based on the premise of speculation. This is not the proper standard for an anticipation rejection. Regarding the rejections under § 103, the Examiner relies on Fleisher for describing testing for occult blood by guaiac or immunographic test. (Ans. 5-6). The Examiner does not rely upon Fleisher for describing a sensor that collects a sample. Consequently, Fleisher does not remedy the difference in the sensor of Ogura discussed above. Rejection II 2 The dispositive issue for this rejection is: Did the Examiner err in determining that the combination of Ogura and Kagaya would have led one skilled in the art to a method wherein a brush or brush-like device collects a portion of fecal material for testing as required by the subject matter of claim 3? 2 Appellant does not provide separate arguments for the rejected claims. Consequently we will limit our discussion to claim 3. Appeal 2010-004155 Application 11/401,198 5 We answer this question in the negative and AFFIRM the rejection of claims 5-8, 10, 14, and 15. The Examiner found that Ogura teaches every element of claims 3, 4, 12 and 13 except for physically contacting the fecal material or brushing the fecal material with a brush-like device. The Examiner found that Kagaya teaches a brush or brush-like device for the collection of fecal material for testing. (Ans. 5). The Examiner concluded that it would have been obvious to one of ordinary skill in the art to perform the method of Ogura utilizing a brush, such as described in Kagaya, for directly contacting and collecting a sample of solid fecal matter for testing. (Id.). Appellant argues that combining the brush of Kagaya with the toilet device of Ogura will mean physically contacting the feces which runs against the primary objective of Ogura’s invention. (App. Br. 10) Appellant’s argument is not persuasive because Ogura discloses that the sensor (element B) projects directly into the bowl in order to directly contact urine or feces, or indirectly contact the urine or feces via water which is retained in bowl (a). (Ogura, col. 2, ll. 49-52). Thus, contrary to Appellant’s argument Ogura discloses that the sensor can come in direct contact with the sample to be tested. 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)(v). 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