Ex Parte Hlavinka et al

Board of Patent Appeals and Interferences

Sep 29, 2005

09985050 (B.P.A.I. Sep. 29, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DENNIS HLAVINKA and THOMAS J. FELT
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Appeal No. 2005-1426
Application No. 09/985,050
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HEARD: September 14, 2005
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Before MCQUADE, CRAWFORD, and BAHR, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
Examiner's final rejection of claims 23 to 34 which are all of the claims pending in
this application. Claims 1 to 22 and claims 50 to 88 have been canceled. Claims 35 to
49 have been deemed allowed.
We reverse.
Appeal No. 2005-1426
Application No. 09/985,050
Page 2
The appellants' invention relates to an apparatus and method for separating
components of blood (specification, p. 1). A copy of the claims under appeal is set
forth in the appendix to the appellant's brief.
The prior art references
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Mulzet 4,708,712 Nov. 24, 1987
Borchardt et al. (Borchardt) 5,858,251 Jan. 12, 1999
Hlavinka 6,053,856 Apr. 25, 2000
The rejections
Claims 23 to 31 and 32 to 34 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Mulzet in view of Borchardt.
Claims 23 and 31 to 34 stand rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 26, 28 and 31 of
Hlavinka in view of Borchardt.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejections, we make reference to the answer
(mailed January 15, 2004) for the examiner's complete reasoning in support of the
rejections, and to the brief (filed October 22, 2003) and reply brief (filed March 15, 2004)
for the appellants' arguments thereagainst.
Appeal No. 2005-1426
Application No. 09/985,050
Page 3
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants' specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
We turn first to the examiner’s rejection of claims 23 to 30 and 32 to 34 under
35 U.S.C. § 103 as being unpatentable over Mulzet in view of Borchardt. We initially
note that the test for obviousness is what the combined teachings of the references
would have suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588,
591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981).
The examiner finds that Mulzet describes the invention as recited in claim 23
except that Mulzet does not describe a trap dam that includes a downstream portion
having a relatively gradual slope. The examiner relies on Borchardt for teaching a trap
dam with a relatively gradual slop at the downstream portion to provide the advantage
of preventing turbulence. The examiner concludes:
. . . it would have been obvious to one of ordinary skill in the art to have
made the dam of Mulzet (‘712) with a downstream portion having a
relatively gradual slope to prevent turbulence [final rejection at page 4].
Appellants argue that neither Mulzet nor Borchardt describes the trap dam
recited in claim 23. In appellants’ view Mulzet describes a trap dam that extends
Appeal No. 2005-1426
Application No. 09/985,050
Page 4
abruptly outward rather than having a gradual slope. In regard to Borchardt, appellants
argue that the trap dam of Borchardt does not extend away from the axis of rotation, nor
trap low density substances as required by claim 23.
We agree with the appellants and thus we will not sustain this rejection as it is
directed to claim 23. The trap dams described in Borchardt and depicted in Figures 11
and 12 are wells in the outer radial wall of the device that face the axis of rotation. In
addition, Borchardt clearly states that these trap dams are disposed to trap heavy
density substances (col. 13, lines 21 to 36). We will likewise not sustain this rejection
as it is directed to claims 24 to 30 and 32 to 34 as these claims depend from claim 23
and thus include the limitations of claim 23 found not described in the cited prior art.
We turn next to the examiner’s rejection of claims 23 and 31 to 34 under the
judicially created doctrine of obvious double patenting as being unpatentable over
claims 26, 28 and 31 of Hlavinka in view of Borchardt. The examiner finding that the
above noted claims of Hlavinka recite all the limitations of claim 23 except the recitation
of a trap dam with a downstream portion having a gradual slop once again relies on
Borchardt for this teaching.
We will not sustain this rejection of claim 23, and claims 31 and 34 dependent
thereon, because as we noted above, Borchardt does not describe a trap dam
extending away from the axis of rotation to trap relatively low density substances which
includes a downstream portion having a relatively gradual slope.
Appeal No. 2005-1426
Application No. 09/985,050
Page 5
The decision of the examiner is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject claims under 35 U.S.C.
§ 103 is reverse.
REVERSED

JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2005-1426
Application No. 09/985,050
Page 6
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