Ex Parte Halpern et al

Patent Trial and Appeal Board

Jun 24, 2016

12778710 (P.T.A.B. Jun. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121778,710 05/12/2010
2101 7590 06/28/2016
Sunstein Kann Murphy & Timbers LLP
125 SUMMER STREET
BOSTON, MA 02110-1618
FIRST NAMED INVENTOR
Lise N. Halpern
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
161 l/A59 6959
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
06/28/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
usptomail@sunsteinlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LISE E. HALPEM, TIM COSTELLO,
and JONATHAN WHITE
Appeal2014-002085
Application 12/778,7101
Technology Center 3700
Before JOSEPH A. FISCHETTI, BART A. GERSTENBLITH, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
GERSTENBLITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lise E. Halpern et al. ("Appellants") appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1 and 4--20.2 We have
jurisdiction under 35 U.S.C. § 6(b).
1 Appellants identify "Haemonetics Corporation" as the real party in interest.
Appeal Br. 4.
2 Claims 2 and 3 were cancelled prior to this appeal. Appeal Br. 6.
Claims 21-25 were withdrawn pursuant to Appellants' non-election of those
claims in the Response filed November 22, 2011.
Appeal2014-002085
Application 12/778,710
Claimed Subject Matter
Claims 1, 5, and 15 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter, and is reproduced below.
1. A system for facilitating collecting donated blood, the
system comprising:
a plurality of kits, each kit comprising a closed container
having a computer-readable representation of data including a
unique identification of the kit, the container having disposed
therewithin:
at least one sealed test tube, devoid of any blood
product, having a computer-readable representation of data
including the unique identification of the kit and an expiration
date of the test tube; and
a release sheet substrate having a plurality of
adhesive labels releasably attached thereto, each of the plurality
of adhesive labels having a computer-readable representation of
data including the unique identification of the kit; and
a computerized database storing, for each kit:
the unique identification of the kit; and
information that associates the unique
identification of the kit with the expiration date of the test tube
in the kit having the earliest expiration date.
Appeal Br. 29 (Claims App.).
Rejections
Appellants seek review of the following rejections:
I. Claims 1 and 4--20 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement;
II. Claims 1 and 4--203 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite;
3 The rejection heading identifies "[c]laims 14-20" as rejected under this
ground. Final Act. 4 (mailed Dec. 19, 2012). The heading appears to be a
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Appeal2014-002085
Application 12/778,710
Ill. Claims 1, 4, 5, 7-9, 14, and 16-20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Knapp (US 2009/0291449 Al, pub. Nov. 26,
2009);
IV. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Knapp and Zylberberg (US 2009/0209933, pub. Aug. 20, 2009); and
V. Claims 10-13 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Knapp and Bennett (EP 0832689 A2, pub. Apr. 1, 1998).
SUMMARY OF DECISION
We REVERSE.
ANALYSIS
Rejection I
Claim 1 recites "at least one sealed test tube, devoid of any blood
product." Appeal Br. 29 (Claims App.). Independent claim 5 recites the
same limitation and independent claim 15 recites a substantially identical
limitation. Id. at 30-32. The Examiner finds that the "specification does not
provide for such a limitation" and that the phrase "devoid of any blood
product" is new matter. Final Act. 2--4 (mailed Dec. 19, 2012).
Appellants argue that the claims refer to a blood collection kit, and
that before a blood collection kit is used to collect blood, a test tube of the
kit would have been devoid of any blood product. Appeal Br. 11.
typographical error because the body of the rejection specifically identifies
independent claims 1, 5, and 15 and dependent claims 2--4, 6-14, 16-20 as
rejected. Id.; see Appeal Br. 15, 17 (recognizing that the rejection applies to
claims 1 and 4--20).
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Appeal2014-002085
Application 12/778,710
Appellants point to paragraph 3 64 of the Specification, which describes a kit
that includes several "sealed evacuated test tubes." Id. at 12.
In response, the Examiner explains that a negative limitation must
have basis in the original disclosure and that the mere absence of a positive
recitation is not a basis for an exclusion. Ans. 2. In particular, the Examiner
interprets Appellants' argument to be that "the lack of a blood product is
implied." Id. at 3. The Examiner points to paragraph four of Appellants'
Specification, which states "blood samples are drawn and introduced into
one or more small sealed evacuated test tubes," in support of finding that
"the tubes contain blood." Id. (citing Spec. i-f 4).
The Examiner's rejection ignores the term "evacuated" in Appellants'
Specification. Paragraph 30 of Appellants' Specification describes the
contents of one embodiment of a kit, illustrated in Figure 1. The description
states that the kit includes "several pre-labeled sealed evacuated test tubes"
and Figure 1 shows empty test tubes. Spec. i-f 30. Although the Examiner
correctly finds that blood may be introduced into the sealed evacuated test
tubes, Appellants' Specification and Figure 1 provide support for the phrase
"devoid of any blood product," as recited in independent claims 1, 5, and 15,
and we find that one of ordinary skill in the art would understand from this
disclosure that Appellants had possession of a test tube "devoid of any blood
product." Accordingly, we do not sustain the rejection.
4 Appellant's citation appears to refer to the U.S. Patent Application
Publication of the present application (US 2011/0281346 Al). Paragraph 36
of the published application corresponds to paragraph 30, respectively, of
the Specification as filed. Our citations are to the Specification as filed.
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Appeal2014-002085
Application 12/778,710
Rejection II
Claims 1, 5, and 15 also recite "at least one sealed test tube ... having
a computer-readable representation of data including ... an expiration date
of the test tube." Appeal Br. 29-30, 32 (Claims App.). The Examiner finds
this recitation to "contradict" an earlier statement made by Appellants that
"the expiration date is not indicia" in a response filed June 5, 2012, and,
thus, results in a failure by Appellants to particularly point out and distinctly
claim the subject matter that Appellants regard as the invention. Final
Act. 4.
Appellants provide a detailed explanation of their arguments and the
claim language to which the arguments were directed on pages 15-1 7 of the
Appeal Brief. In short, Appellants' earlier statements were made in relation
to a previous version of the claims that did not recite a computer-readable
representation of data including an expiration date. Appeal Br. 15.
Appellants' position is consistent with the record.
Additionally, regardless of Appellants' argument directed to an earlier
version of the claims, the meaning of the disputed limitation is not unclear.
Accordingly, we do not sustain the rejection.
Rejection III
The Examiner determines that Knapp would have rendered the subject
matter of claims 1, 4, 5, 7-9, 14, and 16-20 obvious to one of ordinary skill
in the art at the time the invention was made. Final Act. 5-10. Regarding
claims 1 and 5, the Examiner finds Knapp discloses a test tube having a
computer-readable representation of data and finds "the test tube would have
an expiration date" since "it is well known that specimens expire and that
expired specimens present a threat to the user and therefore expiration dates
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Appeal2014-002085
Application 12/778,710
are routinely identified." Id. at 5. Additionally, the Examiner finds that
Knapp discloses "the unique identification of the kit is associated, in the
computerized database, with at least the earliest of the expiration date of
each of the at least one test tube (associated with a computer in
paragraphs 44, 52; the above intended use is able to be performed)." Id. at 6.
Appellants raise several arguments in response to this rejection,
including that Knapp does not disclose or suggest "a computerized database
storing, for each kit: the unique identification of the kit; and information that
associates the unique identification of the kit with the expiration date of the
test tube having the earliest expiration date." Appeal Br. 21.
Knapp expressly teaches "computerized" record keeping through the
use of computer-readable identifiers such as bar codes. Knapp i-f 52. Knapp,
however, does not teach or suggest information associating the unique
identification of the kit with the expiration date of the test tube having the
earliest expiration date, and the Examiner does not find that such association
would have been obvious. The Examiner's finding that "the above intended
use is able to be performed" is unclear in that we are unable to tell what
claim language the Examiner considers as reciting an intended use that "is
able to be performed." Final Act. 6. The Examiner's response to
Appellants' argument does not appear to address this particular issue,
focusing instead on what data may be provided by a bar code. See, e.g.,
Ans. 5. Accordingly, we do not sustain the rejection.
Rejection IV
The Examiner determines that the combination of Knapp and
Zylberberg would have rendered the subject matter of claim 6 obvious to
one of ordinary skill in the art at the time of the invention. Final Act. 10-11.
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Application 12/778,710
Claim 6 depends from claim 5, and the Examiner does not rely upon
Zylberberg as disclosing the limitation missing from Knapp that we
discussed in the context of Rejection III. Accordingly, for the reasons we
discussed in the context of Rejection III, we do not sustain Rejection IV.
Rejection V
The Examiner determines that the combination of Knapp and Bennett
would have rendered the subject matter of claims 10-13 and 15 obvious to
one of ordinary skill in the art at the time of the invention. Final Act. 11-15.
Claim 15 is similar to claims 1 and 5, at least because it recites "a
computerized database storing, for each kit ... the expiration date of the
blood collection container having the earliest expiration date." Appeal
Br. 32, Claims App. The Examiner makes the same finding for claim 15 that
we discussed above with respect to the similar limitation of claims 1 and 5.
See Final Act. 11-12. Accordingly, for the reasons we discussed with
respect to Rejection III; we do not sustain Rejection V.
DECISION
We reverse the Examiner's decision rejecting claims 1 and 4--20 under
35 U.S.C. § 112, first paragraph.
We reverse the Examiner's decision rejecting claims 1 and 4--20 under
35 U.S.C. § 112, second paragraph.
We reverse the Examiner's decision rejecting claims 1 and 4--20 under
35 U.S.C. § 103(a).
REVERSED
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