Ex Parte Chandler

Board of Patent Appeals and Interferences

Feb 16, 2012

11401198 (B.P.A.I. Feb. 16, 2012)

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).

AFFIRMED-IN-PART

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