Ex Parte LaStella

Board of Patent Appeals and Interferences

Apr 27, 2010

11137817 (B.P.A.I. Apr. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VINCENT P. LASTELLA
____________

Appeal 2009-011914
Application 11/137,817
Technology Center 1700
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Decided: April 28, 2010
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Before EDWARD C. KIMLIN, TERRY J. OWENS, and
PETER F. KRATZ, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, and 5-12. We
have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:

1. A collection device not having a reagent impregnated sheet and for
use only in connection with off-device testing of collected samples, the
device consisting essentially of:
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Application 11/137,817

a first panel having multiple apertures defining wells for receiving
samples and forming a first exterior surface of the device;

a second panel opposite the first panel and forming a second exterior
surface of the device; and

a removable tab, the removable tab being at least partially defined by
perforations and integrally formed as being a portion of the second
panel and forming a part of the second exterior surface and accessible
from an exterior of the device, the tab having a first portion and a
second portion;

wherein the first portion is aligned with at least one of the apertures
on the first panel and constructed such that depositing the sample through
the at least one aperture causes the sample to be directly deposited on the
first portion of the tab to be made available for use in an off-device testing
procedure which is performed once the removable tab is removed from the
testing device; and

wherein the second portion is not aligned with any of the apertures on
the first panel and is constructed such that depositing the sample through any
of the apertures on the first panel does not deposit the sample on the second
portion, the second portion comprising a sample-free grasping area for
removing the tab.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 5):
Levine 4,367,750 Jan. 11, 1983
Hemmati 5,747,351 May 05, 1998
Cleator 5,948,687 Sep. 07, 1999

Appellant’s claimed invention is directed to a device for collecting
samples and a method of collecting a sample with such a device. The device
has first and second panels opposite to each other and a removable tab that is
integrally formed as a portion of the second panel and as part of the exterior
surface of the second panel. The first panel has multiple apertures that
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define wells for receiving the samples, and a first portion of the tab is
aligned with at least one of the apertures for receiving a sample deposited
through the aperture. A second portion of the tab is not aligned with any of
the apertures such that it remains sample-free for grasping and removing the
tab.
The appealed claims stand rejected under 35 U.S.C. § 103(a) as
follows:
(a) claims 1, 5, 6, 10 and 11 over Levine taken alone, or in
view of Hemmati or Cleator,
(b) claims 1, 5, 6, 10 and 11 over Cleator and
(c) claims 7-9 over Cleator.
We have thoroughly reviewed the respective positions advanced by
Appellant and the Examiner. In so doing, we agree with Appellant that the
Examiner has not established a prima facie case of obviousness for the
claimed subject matter in view of the applied prior art. Accordingly, we will
not sustain the Examiner’s rejections.
We consider first the § 103 rejection over Levine, taken alone, or in
view of Hemmati or Cleator. According to the Examiner, adhesive layer 12
of Levine corresponds to the claimed first panel, and it seems that the
Examiner cites sheet 4 and closure member 20 of Levine as corresponding to
the claimed removable tab. However, as pointed out by Appellant, the
appealed claims require that the first panel forms an exterior of the device,
and layer 12 of Levine is interior to exterior surface 4. Also, Appellant
correctly points out that “the first panel of claim 1 has multiple apertures
defining wells for receiving samples, whereas adhesive layer [12] has only a
single window (13)” (Reply Br. 9, second para.). Also, contrary to the
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Examiner’s position that it would have been obvious to modify adhesive
layer 12 of Levine to have a plurality of apertures, we concur with
Appellant’s reasoning that
[o]ne of ordinary skill would not modify the adhesive layer
(12) to include multiple apertures to control the amount of
sample because the separate and distinct upper layer (4) of
Levine already provides this (and other) functions and . . .
exposing the adhesive layer (12) is inconsistent with the
intended use and operation of the Levine device

(Reply Br. 9, third para.).
In addition, we further agree with Appellant that neither upper layer
(4) nor closure member (20) of Levine meets the requirement for the
claimed removable tab. Appellant’s removable tab is aligned with at least
one of the apertures of the first panel, and is constructed such that depositing
a sample through the aperture causes it to be directly deposited on the first
portion of the tab that is made available for use in an off-device testing
procedure. On the other hand, Levine’s closure member (20) is not aligned
with window (13), and, therefore, is not constructed such that depositing the
sample through the window (13) causes it to be directly deposited on the
first portion of the tab. While the Examiner’s response makes the statement
that “[t]his issue has been addressed in the above new grounds of rejection”
(Ans. 7, second para.), we agree with Appellant that their argument has not
been refuted by the Examiner in the rejection or elsewhere. Furthermore, we
find no factual basis for the Examiner’s statement that “pressing down on
tab (20) would contact the fecal sample on pad (10) and have the capability
to transfer the sample” (Ans. 9, first para.). We concur with Appellant that
[t]he closure member (20) is not ‘aligned with at least one of
the apertures on the first panel’ or ‘constructed such that
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depositing the sample through the at least one aperture
causes the sample to be directly deposited on the first portion
of the tab’ as recited in the claims

(Reply Br. 12, second para.).
Appellant also properly points out that layer (4) of Levine cannot read
on the claimed removable tab since the tab is claimed as “formed as being a
portion of the second panel”, and the Examiner designates bottom sheet (14)
as the second panel. Clearly, layer (4) of Levine cannot be the removable
tab and also be a portion of the second panel if the Examiner considers sheet
(14) of the reference to be the second panel.
Neither Hemmati nor Cleator remedies the deficiencies of Levine set
forth above.
We now turn to the § 103 rejections over Cleator. The Examiner
refers to Figures 3A-3C of Cleator and considers panels 4 and 6 of the
reference to correspond to the claimed first and second panels, respectively.
The Examiner also finds correspondence between the reference removable,
perforated portion (48) of sheet (9) and Appellant’s removable tab. Again,
we agree with Appellant that the Examiner’s reasoning is faulty.
While perforated portion (48) of Cleator is removable, we concur with
Appellant that portion (48)
does not contain ‘a second portion which is not aligned with
any of the apertures on the first panel and is constructed such
that depositing the sample through any of the apertures on
the first panel does not deposit the sample on the second
portion,’ as required by the claim

(App. Br. 16, second para.). As pointed out by Appellant, “portion (48) is
directly and entirely underneath the aperture (10) and, as such, is entirely
covered with the specimen” whereas “[t]he claimed ‘second portion’ of the
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removable tab explicitly is sample-free” (id.). Although the Examiner
responds that “portion (48) is aligned with the apertures and there are
adjacent areas of sheet (9) that are not aligned with the aperture” (Ans.,
sentence bridging 7-8), sheet (9) does not qualify as a removable tab. Also,
we find no merit in the Examiner’s rationale that sheet (9) of Cleator is
integrally formed with second panel 6 and is part of its exterior surface.
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner’s rejections.

REVERSED

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