Ex Parte Eggers

Board of Patent Appeals and Interferences

Dec 29, 2008

10007355 (B.P.A.I. Dec. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MITCHELL D. EGGERS
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Appeal 2008-2172
Application 10/007,355
Technology Center 1700
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Decided: December 29, 2008
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Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
KAREN M. HASTINGS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 1 through 40 and 58 through 69 in the
Office Action mailed December 8, 2005 (Office Action). 35 U.S.C.
§§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2006).
We affirm the decision of the Primary Examiner.

Appeal 2008-2172
Application 10/007,355
Claim 1 illustrates Appellant’s invention of a sample carrier, and is
representative of the claims on appeal:
1. A sample carrier comprising:
a structural array; and
a plurality of discrete sample nodes; each of said plurality of discrete
sample nodes being removably attached to said structural array at a
respective attachment point and comprising a sample support medium
operative to carry a discrete sample in desiccated form.
The Examiner relies upon the evidence in these references (Ans. 3): 1
Milosavijevic WO 01/31333 A1 May 3, 2001
Hogan WO 01/31317 A1 May 3, 2001
Appellant requests review of the ground of rejection under 35 U.S.C.
§ 102(e) advanced on appeal by the Examiner:
claims 1 through 40 and 58 through 69 as anticipated by Milosavijevic; and
claims 1 through 14, 20 through 35, 58 through 66, and 69 as anticipated by
Hogan. App. Br. 5; Ans. 4 and 5.
The Examiner also advances the following grounds of rejection on
appeal:
claims 1 through 40 and 58 through 69 provisionally rejected under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over the specified claims of co-pending Applications
10/005,529, 10/150,770, and 10/150,771 (Ans. 2); and
claims 15 through 19, 36 through 40, 67, and 68 under 35 U.S.C. § 103(a)
over Hogan (Ans. 6).
The dispositive issue in this appeal with respect to the grounds of
rejection under § 102(e) is whether Appellant has established that neither

1 We consider these documents: Appeal Brief filed June 4, 2007;
Examiner’s Answer mailed August 17, 2007; and Response To Order
Requiring Additional Briefing By Appellant filed September 19, 2008.
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Application 10/007,355
Milosavijevic nor Hogan describe to one skilled in this art an embodiment of
a sample carrier comprising at least, among other things, “discreet sample
nodes being removably attached to said structural array at a respective
attachment point” as claimed.
We determine the plain language of representative independent claim
1 specifies a sample carrier comprising at least, among other things, “a
plurality of discrete sample nodes” each of which is “removably attached to”
a “structural array at a respective attachment point.” Accordingly, each
sample node is a separate entity and is separately attached at a specific
location in removable manner to any manner of structural array, as Appellant
contends. Br., e.g., 6-9, citing Spec., e.g., 28:1-30 and 31:24 to 32:11, and
Figs. 4A and 5A-C.
We find Milosavijevic would have disclosed to one of ordinary skill
in this art a method for requesting genomics services from a provider over
the internet wherein the service provider applies, among other things, DNA
samples stored on cards in a DNA Repository to microarrays containing
identified genomic sequences. Milosavijevic, e.g., Abstract and 16:1 to
18:27. “[A]utomated equipment such as robotics may be used to selected
and obtain the corresponding DNA sample and provide the sample to the
microarray for interrogation.” Milosavijevic 18:6-10. “A microarray
consists of an array of test sites formed on a suitable structure.”
Milosavijevic 16:21-22; see 16:22-23 and Fig. 5. “A sample containing an
unknown candidate molecule, such as a DNA molecule . . . is hybridized to
the microarray containing the capture probe.” Milosavijevic 16:24-26.
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Appeal 2008-2172
Application 10/007,355
We find Hogan would have disclosed to one of ordinary skill in this
art a retrieval system using robotics to retrieve DNA specimens from a
repository and punching or otherwise removing small samples, such as a
pellet, from each specimen, and depositing the sample in one well of a
multiwell tray for processing. Hogan, e.g., abstract, 1:20 to 2:29, 3:22-25,
and Fig. 1. Hogan illustrates with an embodiment in which “a slide 22
includes a flexible substrate 24 on which a biological specimen 26 has been
deposited,” wherein “flexible substrate 24 is contained in a relatively rigid
frame 27.” Hogan 3:26 to 4:18 and Fig. 2. “[T]he flexible substrate 24 may
be sized to provide a number of pellets,” such that “a slide may be punched
up to a number of times.” Hogan 6:4-10 and Figs. 3-5. “As shown in FIGS.
2 and 4, the sample contains outlines for illustrative purposes only of 96
circular pellets 100,” and [o]bviously, each pellet may be differently sized or
shaped depending on the shape of the tip 42 of the punch head.” Hogan
6:10-12 and Figs. 2-5.
The Examiner takes the positions that“[t]he claimed nodes . . . read on
the sample applied to the substrate (24) and the claimed array on the taught
multi-well tray,” as stated with respect to Hogan, and that each of the
references “teach punching out a dried biological sample from a discrete
portion of the sheet” containing the sample. Ans. 4 and 8.
We agree with Appellant that, contrary to the Examiner’s position, the
tested sample is not “discrete” until it is removed from the sample card, at
which point the tested sample is not “removably attached” to a “structural
array.” Br. 6-9. Accordingly, as a matter of fact, each and every limitation
of the claimed sample carrier encompassed by representative independent
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Appeal 2008-2172
Application 10/007,355
claim 1, arranged as required therein, does not read on embodiments
described in Milosavijevic and in Hogan. See, e.g., In re Schreiber, 128
F.3d 1473, 1477 (Fed. Cir. 1997), and cases cited therein;
In re Spada, 911 F.2d 705, 707 (Fed. Cir. 1990).
Accordingly, Appellant has established that neither Milosavijevic nor
Hogan describe to one skilled in this art an embodiment of a sample carrier
falling within representative claim 1. In the absence of a prima facie case of
anticipation, we reverse each of the grounds of rejection under 35 U.S.C. §
102(e).
We summarily affirm the provisional ground of rejection of claims
1 through 40 and 58 through 69 under the judicially created doctrine of
obviousness-type double patenting, and the ground of rejection of claims
15 through 19, 36 through 40, 67, and 68 under 35 U.S.C. § 103(a) over
Hogan. Each of these grounds of rejection was advanced on appeal by the
Examiner and Appellant did not request review of either of these grounds
(see above p. 2). See Manual of Patent Examining Procedure § 1205.02 (8th
ed., Rev. 3, August 2005) (“If a ground of rejection stated by the examiner is
not addressed in the appellant’s brief, that ground of rejection will be
summarily sustained by the Board.”).
The Primary Examiner’s decision is affirmed.
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Appeal 2008-2172
Application 10/007,355

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)(iv).
AFFIRMED

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