Ex parte KOLB et al.

Board of Patent Appeals and Interferences

Dec 2, 1998

08127304 (B.P.A.I. Dec. 2, 1998)

Application for patent filed September 27, 1993. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ALFRED J. KOLB,
ROY L. MANNS and KENNETH E. NEUMANN
____________
Appeal No. 96-0401
Application No. 08/127,3041
____________
ON BRIEF
____________
Before COHEN, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-8, 10-12, 14-21, 32 and 33. Claims 22-
31 have been withdrawn from consideration under 37 CFR §
1.142(b) as being drawn to a nonelected invention. Claims 9
and 13 have been canceled. The appellants have confined the
appeal to only claims 1-8, 10-12, 14, 15, 32 and 33 (brief, p.
2). Consequently, the appeal is dismissed with respect to
Appeal No. 96-0401
Application No. 08/127,304
claims 16-21. Claims 1-8, 10-12, 14, 15, 32 and 33 remain on
appeal.
We REVERSE.
Appeal No. 96-0401 Page 3
Application No. 08/127,304
BACKGROUND
The appellants' invention relates to a microplate
assembly for use in analyzing samples captured on a filter
medium. An understanding of the invention can be derived from
a reading of exemplary claim 1, which appears in the appendix
to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Freeman 3,649,464 Mar. 14,
1972
Manns 4,948,442 Aug. 14,
1990
(Manns '442)
Manns 5,047,215 Sep. 10,
1991
(Manns '215)
Claims 1-5, 7, 8, 10, 11, 14, 15, 32 and 33 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Manns '442 or Manns '215.
Appeal No. 96-0401 Page 4
Application No. 08/127,304
The appellants describe Figure 4 on page 8 of the2
specification. In accordance with 37 CFR § 1.74, the
appellants should amend the brief description of the drawings
(specification, p. 5) to refer to Figure 4.
Claims 6 and 12 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Manns '442 or Manns '215 in view of
Freeman.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 14, mailed May 16, 1995) and the supplemental examiner's
answer (Paper No. 16, mailed October 13, 1995) for the
examiner's complete reasoning in support of the rejections,
and to the appellants' brief (Paper No. 13, filed April 17,
1995), reply brief (Paper No. 15, filed July 17, 1995) and
supplemental reply brief (Paper No. 17, filed December 4,
1995) for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and2
Appeal No. 96-0401 Page 5
Application No. 08/127,304
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 1-8, 10-12, 14,
15, 32 and 33 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 9 F.2d 1013, 1016, 173 USPQ
560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be
Appeal No. 96-0401 Page 6
Application No. 08/127,304
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based
on
§ 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
With this as background, we turn to the rejection of the
only independent claim on appeal (i.e., claim 1).
The examiner determined (answer, pp. 3-4) that
Appeal No. 96-0401 Page 7
Application No. 08/127,304
[t]he Manns patents both discloses a multiwell test plate
assembly comprising a holding tray (24), a filter medium
(22) received in the holding tray, a collimator (20)
having wells (28), and a carrier plate (26) for
supporting the holding tray. The Manns patents fail to
teach 1) the collimator being removably disposed in the
holding tray and 2) the holding tray being a solid plate
without holes. Even though all the structural parts of
the Manns' assembly are thermally bonded whereby all
parts are integral, it would have been obvious to one of
ordinary skill in the art to make the parts separable . .
. Furthermore, it would have been obvious to one of
ordinary skill in the art to make the holding tray from a
solid plate without holes for the extended storage and
analysis of biological samples.
The appellants argue (brief, pp. 8-14) that the subject
matter of claim 1 would not have been suggested by the
teachings of Manns '442 or Manns '215. We agree for the
reasons set forth below.
We agree with the examiner (answer, p. 6) that the
collimator (20) is initially separable from the holding tray
(24). Accordingly, prior to the thermal bonding of the
collimator (20) to the holding tray (24) it would be
appropriate to characterize the collimator (20) as being
removably disposed within the holding tray (24). However, we
see no evidence, as shown by some objective teaching in the
Appeal No. 96-0401 Page 8
Application No. 08/127,304
We note that the claimed holding tray recited in claim 13
is not readable on Manns' base enclosure 26. While Manns'
base enclosure 26 does have a bottom wall without holes, the
bottom wall of Manns' base enclosure 26 is not adjacent (as
disclosed in the appellants specification adjacent encompasses
either the filter medium abutting the bottom wall of the
holding tray or the filter medium abuts a thin, i.e.,
thickness ranging from 0.005 inches to 0.020 inches, crosstalk
shield which abuts the bottom wall of the holding tray) to the
lower surface of the filter sheet 22 as shown in Figure 5.
prior art or by knowledge generally available to one of
ordinary skill in the art, that would have suggested to one of
ordinary skill in the art at the time the invention was made
to omit the apertures (42) from the holding tray (24).
Instead, it appears to us that the examiner relied on
impermissible hindsight in reaching the determination that it
would have been obvious to one of ordinary skill in the art to
make the holding tray from a solid plate without holes for the
extended storage and analysis of biological samples.
Since all the limitations are not taught or suggested by3
the applied prior art, we will not sustain the 35 U.S.C. § 103
Appeal No. 96-0401 Page 9
Application No. 08/127,304
We have also reviewed the Freeman reference additionally4
applied in the rejection of dependent claims 6 and 12 but find
nothing therein which makes up for the deficiencies of Manns
'442 and Manns '215 discussed above regarding claim 1.
rejection of independent claim 1, and of dependent claims 2-8,
10-12, 14, 15, 32 and 33. 4
Appeal No. 96-0401 Page 10
Application No. 08/127,304
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-8, 10-12, 14, 15, 32 and 33 under 35 U.S.C. § 103 is
reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JVN/gjh
Appeal No. 96-0401 Page 11
Application No. 08/127,304
STEPHEN G. RUDISILL
ARNOLD, WHITE & DURKEE
P.O. BOX 4433
HOUSTON, TX 77210
APPEAL NO. 96-0401 - JUDGE NASE
APPLICATION NO. 08/127,304
APJ NASE
APJ STAAB
APJ COHEN
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 04 Nov 98
FINAL TYPED: