Ex Parte Hartwich

Patent Trials and Appeals Board

Jun 7, 2019

14358478 - (D) (P.T.A.B. Jun. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/358,478 05/15/2014
21884 7590 06/07/2019
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Gerhard Hartwich
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.
GRAF-048 1889
EXAMINER
CERIONI, DANIEL LEE
ART UNIT PAPER NUMBER
3791
MAIL DATE DELIVERY MODE
06/07/2019 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 PATENT TRIAL AND APPEAL BOARD
Exparte GERHARD HARTWICH 1
Appeal2018-008938
Application 14/358,478
Technology Center 3700
Before JOHN C. KERINS, STEP AN ST AI CO VICI, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gerhard Hartwich ("Appellant") appeals from the Examiner's
rejection of claims 1, 3, 5, and 7. Appeal Br. 3. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We REVERSE.
1 According to Appellant, the real party in interest is Friz Biochem
Gesellschaft Fur Bioanalytik MBH. Appeal Br 1.
Appeal2018-008938
Application 14/358,478
CLAIMED SUBJECT MATTER
Appellant's invention relates to "a swab having a Luer connection."
Spec. ,r 1 (Field of the Invention).
Claim 1 is the sole independent claim and is reproduced below with
emphasis added to a particular limitation discussed in this Decision.
1. A swab system comprising:
a sample tube, having a closed front end and an open rear
end, wherein the sample tube is one continuous piece, and
a swab, wherein the swab comprises an elongated,
tubular swab rod, wherein the swab rod is provided at a front
end of the swab rod with a sample-gathering means and at a
rear end of the swab rod with a gripping piece, wherein the
gripping piece closes the open rear end of the sample tube in an
accurately fitting manner, and the gripping piece is equipped
with a closing cap for covering the gripping piece in a sealed
manner, wherein the gripping piece has an internal taper for a
Luer lock connection and wherein a volume reduction, in a
region of the closed front end of the sample tube is shaped and
configured to receive a sample gathering means at the front end
of the swab rod.
Appeal Br. 12 (Claims App'x.) ( emphasis added).
THE REJECTION2
Claims 1, 3, 5, and 7 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Dodge (US 2009/0012425 Al, published Jan. 8, 2009)
and Sarstedt (DE 10 2009 039 391 Al, published Aug. 31, 2009). Final Act.
3.
2 A final rejection of claims 1, 3, 5, and 7 under 35 U.S.C. § 112(b) (Final
Act. 2-3) was withdrawn in the Answer (Ans. 5---6).
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Appeal2018-008938
Application 14/358,478
a) The Rejection
ANALYSIS
In rejecting claims 1, 3, 5, and 7 as unpatentable over Dodge and
Sarstedt, the Examiner relies on Dodge's Figure 3 to address several of the
claimed limitations. Final Act. 3--4. We reproduce Dodge's Figure 3,
below:
According to the Examiner, Dodge's Figure 3 depicts sample tube 34 with a
front end (to the right) and a rear end (to the left). See id. at 4 (citations
omitted).
The Examiner acknowledges, however, that "Dodge does not
expressly disclose that the sample tube is closed at the front end." Id.
( emphasis added). To satisfy this missing limitation, the Examiner relies on
Sarstedt for "teach[ing] a sample tube that is closed at the front end (as can
be seen in Fig. 1)." Id. (emphasis added). We reproduce Sarstedt's Figure
1, below:
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Appeal2018-008938
Application 14/358,478
i
According to the Examiner, Sarstedt's Figure 1 depicts "a sample tube that is
closed at the front end," which is apparently the bottom of the tube. See id.
In combining Dodge with Sarstedt, the Examiner reasons that it would
have been obvious to a person of ordinary skill in the art "to modify Dodge
such that the sample tube is closed at the front end ... in view of the
teachings of Sarstedt, for the obvious advantage of retaining the sample so
that it may be transported to a lab for further evaluation." Id. at 4--5.
b) Appellant's Argument
Appellant points out that Dodge's "front end" has outlet port 44 that
"is open so that it can be coupled with a sample processing apparatus."
Appeal Br. 8. Appellant argues that a skilled artisan would not have
modified Dodge's "front end" to be closed, as doing so would eliminate
Dodge's outlet port 44, thus preventing the modified device from connecting
with a sample processing apparatus. See id. at 9.
We agree.
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Appeal2018-008938
Application 14/358,478
c) Our Analysis
The issue before us is whether a skilled artisan would have replaced
Dodge's open "front end" with a closed end.
If the proposed modification would render the prior art invention
proposed to be modified unsatisfactory for its intended purpose, there is no
suggestion or motivation to make the proposed modification. In re Gordon,
733 F.2d 900 (Fed. Cir.1984).
In the present case, and as shown above in Dodge's Figure 3, Dodge's
"front end" includes outlet port 44 that may be "coupled with a sample
processing apparatus, [ so that] the fluid and sample are introduced into the
sample processing apparatus through outlet port 44." Dodge ,r 35 ( emphasis
omitted); see also id. at ,r 34 ("Outlet port 44 is configured to be coupled
with a sample processing apparatus") ( emphasis omitted).
We are not persuaded that a skilled artisan would have modified
Dodge's open "front end" to be closed, as the Examiner proposes, as doing
so would have eliminated Dodge's outlet port 44. Indeed, such a
modification would have also eliminated the outlet port's intended function
of connecting to another device for processing the sample.
We further note that the Examiner's Answer addresses a different
application than the one that is subject to this appeal. See Ans. 7-15
(responding to arguments made from another application); see also Reply
Br. 1 ("the Examiner appears to have inserted arguments from a different
application."). As such, Appellant's contentions as to the operation of
Dodge and its outlet port are uncontroverted on the record.
For the above reasons, we do not sustain the rejection of claims 1, 3,
5, and 7 as unpatentable over Dodge and Sarstedt.
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Appeal2018-008938
Application 14/358,478
SUMMARY
The rejection of claims 1, 3, 5, and 7 as unpatentable over Dodge and
Sarstedt is reversed.
REVERSED
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