Ex Parte Kshirsagar et alDownload PDFPatent Trial and Appeal BoardSep 20, 201713152303 (P.T.A.B. Sep. 20, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/152,303 06/03/2011 Manjiri T. Kshirsagar 66286US004 6598 32692 7590 09/22/2017 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 EXAMINER HENKEL, DANIELLE B ART UNIT PAPER NUMBER 1799 NOTIFICATION DATE DELIVERY MODE 09/22/2017 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): LegalUSDocketing@mmm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MANJIRI T. KSHIRSAGAR, KURT J. HALVERSON, AND JAMES E. AYSTA Appeal 2017-002314 Application 13/152,303 Technology Center 1700 Before JEFFREY B. ROBERTSON, JAMES C. HOUSEL, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-002314 Application 13/152,303 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of pending claims 1—14. (App.Br. 3.) We have jurisdiction pursuant to 35 U.S.C. § 6(b). We REVERSE. The Specification describes a holder device that allows a test sample to be dispensed to a culture plate. (P. 3,11. 5—13.) Claim 1, the only independent claim on appeal, recites (emphasis added): 1. A holder device that allows a user to dispense a test sample from a sampling device to a culture plate, the culture plate including a culture plate base member having a sample zone and a cover sheet having a sample contact portion covering the sample zone, the holder device comprising: (a) a housing, the housing comprising: (i) a base portion having a support surface; (ii) a lower housing portion extending upwards from the support surface, the lower housing portion defining a lower housing interior region and having a front wall, the front wall having an insertion slot defined therein; (iii) an upper housing portion extending upwards from a top surface of the lower housing portion; (iv) a shoulder portion between the upper housing portion and the lower housing portion, the shoulder portion defining a first opening; (v) a guide member portion on an interior surface of the lower housing portion and dimensioned to support the culture plate base member, the guide member being 1 According to the Appellants, the Real Party in Interest is 3M Company and its affiliate 3M Innovative Properties Company. (Appeal Brief filed March 8, 2016, hereinafter “App. Br.,” 2.) 2 Appeal 2017-002314 Application 13/152,303 aligned with the insertion slot and defining an insertion path; and (b) a first cover support member arranged in spaced relation to the insertion slot; thereby to support a portion of the cover sheet, whereby at least a portion of the sample zone is exposed and a user is allowed to dispense a test sample into the sample zone. The Examiner rejected claims 1—14 as follows: I. Claims 1 and 3 under 35 U.S.C. § 102(b) as anticipated by Bolea (WO 2009/009570 A2 published on January 15, 2009, all citations to US 2011/0151501 A1 published on June 23,2011); II. Claim 2 under 35 U.S.C. § 103(a) as obvious over Bolea; and III. Claims 4—14 under 35 U.S.C. § 103(a) as obvious over Bolea in view of Kopfer (U.S. Pat. 4,185,628, issued on January 29, 1980). (Final Rejection mailed April 9, 2015, hereinafter “Final”.) Rejection I The Examiner found that Bolea discloses the holder device claimed in claim 1, including an upper housing portion extending upwards from the lower portion. (Final 2—3.) In the Examiner’s Answer, the Examiner explains that Bolea discloses “an upper housing portion extending upwards from the top surface of the lower portion (see Figure 6 where the housing wall behind the dispenser is shown extending above the platform 33).” (Examiner’s Answer entered October 6, 2016, hereinafter “Ans.” 3.) 3 Appeal 2017-002314 Application 13/152,303 Appellants contend, inter alia, that housing 31 of Bolea does not have an upper housing portion extending from a top surface of a lower housing portion as recited in claim 1. (App. Br. 7.) The dispositive issue in this appeal is: Did the Examiner err in finding that Bolea discloses “an upper housing portion extending upwards from the top surface of the lower portion”? PRINCIPLES OF LAW “Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989). DISCUSSION We agree with Appellants that Bolea fails to disclose that the upper housing portion extends upwards from a top surface of the lower housing portion. 4 Appeal 2017-002314 Application 13/152,303 Figure 6 of Bolea is reproduced below: 30 30 Figure 6 is a perspective view of an automated modular apparatus and system, and in particular, a sample reservoir module 20 and liquid processing module 30, where the liquid processing module includes housing 31 and processing platform 33. (Bolea, Tflf 40, 97—104.) As discussed above, the Examiner identifies the upper housing portion as the portion of housing 31 in Figure 6 extending above processing platform 33 (which the Examiner identifies as the shoulder recited in the claims (Ans. 2—3)). However, as shown in Figure 6 of Bolea above, there is no “upper surface” of a lower housing portion from which an upper housing portion extends as recited in claim 1. Rather, in this arrangement, the “upper housing portion” and the “lower housing portion” are different areas of the same housing wall. Thus, Bolea does not disclose the arrangement of the upper housing portion and lower housing portion recited in claim 1, where the upper housing portion extends from a top surface of the lower housing portion. 5 Appeal 2017-002314 Application 13/152,303 As a result, we reverse the Examiner’s rejection of claim 1 as anticipated by Bolea, as well as the Examiner’s rejection of claim 3, which depends from claim 1. Rejections II and III Claim 2 (Rejection II) and claims 4—14 (Rejection III), depend directly or indirectly from claim 1. For claims 4—14 the Examiner relies on Bolea and additionally cites to Kopfer for disclosing a second sample reservoir with a movable feature. (Final 5—6.) Neither of these rejections remedy the deficiencies identified above with respect to the rejection of claim 1. Accordingly, we reverse the Examiner’s rejections of claims 2, and 4— 14 for similar reasons as discussed above with respect to Rejection I. CONCLUSION The Examiner erred in finding that Bolea discloses “an upper housing portion extending upwards from the top surface of the lower portion” as recited in the claims. ORDER We reverse the Examiner’s decision rejecting claims 1—14. REVERSED 6 Copy with citationCopy as parenthetical citation