Ex Parte Mathus et al

Board of Patent Appeals and Interferences

Sep 15, 2005

10056352 (B.P.A.I. Sep. 15, 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written for publication and is not binding precedent of the Board.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
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GREGORY MATHUS, DANIEL J. SEGUIN and VICTOR A. TORTI
_____________
Appeal No. 2005-2350
Application No. 10/056,352
______________
ON BRIEF
_______________
Before THOMAS, JERRY SMITH and SAADAT, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants have appealed to the Board from the examiner’s
final rejection of claims 22 through 36.
Representative claim 22 is reproduced below:
22. A test tube, comprising:
a tube body of unitary construction comprising an
enclosed sidewall and an integral bottom that together
define a tubular container having an open top, wherein said
bottom has an exterior surface upon which machine readable
data is encoded within an opaque coating deposited onto said
exterior surface to uniquely identify said test tube.
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The following references are relied on by the examiner.
Mizobuchi et al. (Mizobuchi) 6,133,342 Oct. 17, 2000
(filed: Jan. 21, 1999)
Moh et al. (Moh) 6,165,594 Dec. 26, 2000
(filed: Jan. 15, 1998)
Wijnschenk et al. (Wijnschenk) 6,270,728 B1 Aug. 7, 2001
(Section 102(e) date: Jan. 29, 1999)
Claims 22 through 36 stand rejected under 35 U.S.C. § 103.
As evidence of obviousness as to claims 22 through 32, the
examiner relies upon Wijnschenk in view of Moh, with the addition
of Mizobuchi as to claims 33 through 36.
Rather than repeat the positions of the appellants and the
examiner, reference is made to the brief and reply brief for
appellants’ positions, and to the answer for the examiner’s
positions.
OPINION
Generally for the reasons set forth by the examiner in the
answer, we sustain the rejections of all claims on appeal under
35 U.S.C. § 103. As indicated at the bottom of page 2 of the
principal brief on appeal, the appellants have indicated that
claims 22 through 36 fall together. Arguments are presented in
the brief only as to independent claim 22 with the patentability
of independent claim 29 urged at page 5 to be dependent upon the
arguments presented as to independent claim 22.
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No arguments are presented as well as to any dependent claim
depending from either independent claim 22 or independent claim
29.
At the outset, we note that appellants have not argued
against the combinability of Wijnschenk and Moh within 35 U.S.C.
§ 103 within the first stated rejection and the addition of
Mizobuchi in the second stated rejection. Therefore, we construe
the absence of the arguments thereto as conceding to the
examiner’s arguments that the applied prior art is properly
combinable within 35 U.S.C. § 103.
We also note initially that the claimed tube body in claim
32 is stated to be of unitary construction and is said to
comprise an enclosed sidewall and an integral bottom together
defining a tubular container having an open top. The claim does
not necessarily recite or require that the entire structure of
the test tube be of one piece construction. The claim appears to
require that the enclosed sidewall and a bottom be made integral
thereto.
We turn first to the arguments in the reply brief where
appellants urge that the proper reading of Wijnschenk reveals
that the carrier part 6 is not the bottom of the container
itself, but it is a separate item attached to the bottom of the
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Application No. 10/056,352
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tubular container of Wijnschenk’s test tube. We disagree with
this approach principally in view of the subsequent discussion
but initially because the bottom of the carrier part 6 in
Wijnschenk’s figure 1 and 2a showings indicate that once this
carrier part 6 is attached or otherwise affixed to the bottom
dome shaped portion 3 of the test tube, the bottom surface area
7/9 becomes the bottom surface of the test tube itself.
Moreover, the claim requires initially that the bottom be
“integrated” with respect to the separately recited enclosed
sidewalls. The term “integral” covers more than a unitary
construction as is made clear in In re Morris, 127 F.3d 1048,
1055, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997). Note also the cases
cited therein. The use of the term integral in claim 22 on
appeal clearly indicates that appellants interpret the claim to
encompass multi-piece integrated structures anyway.
On the other hand, we also do not agree with appellants’ two
major arguments presented in the principal brief on appeal. As
indicated earlier in this opinion, the outside or exterior bottom
surface of the carrier part 6 of Wijnschenk becomes the bottom
surface of the test tube to the extent it is recited in the
independent claims on appeal. It is the exterior surface of the
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integral bottom onto which is placed the coating, which is
plainly evident to the artisan as argued by the examiner in the
answer as well as from the following interpretations of the
reference. We also do not agree with appellants’ related
argument that even assuming for the sake of argument that carrier
part 6 may be fairly construed as a coating, it is submitted that
the carrier part is not deposited onto the bottom surface of the
tubular container 2.
There appears to us to be significant teachings not
appreciated fully by the examiner and appellants in construing
Wijnschenk’s patent. The first appears to be set forth in the
abstract; in column 1, line 59 thorugh column 2, line 30 as well
as the discussion at column 7, lines 5 through 21. These clearly
indicate that there are prior art test tubes onto which is placed
an opaque surface with/onto which is further placed machine
readable indicia causing the indicia to be placed within the
surface of the quoted material on the test tube by means of laser
burning.
The second major teaching in Wijnschenk appears to begin at
column 2, line 30 with respect to a separately attachable carrier
part 6. In contrast to what appears an integral carrier part
6 shown in figures 1 and 2a, Wijnschenk appears to have a
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separately attachable carrier part 16 in figure 2b. Note the
teachings at column 2, lines 30 through 36; column 2, line 50 to
column 3, line 9; the discussion beginning at line 10 of column
3; the separate discussion of the carrier part beginning at line
66 of column 3 through at least column 4, line 12 as well as the
discussion at column 6, lines 4 through 63.
Among the significant teachings in these locations is that
the embodiments in which a separate carrier part is actually
manufactured, it may be separately glued or otherwise stuck or
pressed onto the tubular container of the test tube itself. It
also may be molded separately and then injection molded or
otherwise molded into a unitary structure along with the tubular
nature of the test tube itself. To the artisan, these teachings
would have clearly indicated a unitary structure in which there
is an integral bottom. In all embodiments the integral bottom is
shown and taught to be a flat bottomed portion of an overall test
tube structure like that claimed. Of particular note
additionally is the teaching with respect to figure 7 beginning
at column 7, line 22 through at least line 4 of column 8. The
discussion at the bottom of column 7 beginning at line 64 plainly
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indicates that the separate carrier part 112 in figure 7 may be
directly injected molded onto the bottom 110 of the test tube 100
as well.
Although we recognize that the teachings in part, in the
paragraph bridging columns 2 and 3 of Wijnschenk, indicate that
the laser may burn the machine readable code into the actual
material comprising structure of the carrier part itself, the
additional teachings at column 7, lines 5 through 20 which
indicate that a separate carrier part may utilize a separate
carrier surface. In any event since appellants have not argued
the combinability and teachings of Moh, that reference provides
additional teachings of the use of a separate coating that may be
otherwise deposited in some product-by-process manner onto an
exterior surface of glass-type articles consistent with the test
tubes claimed. Finally, we observe that the flat plate 107 at
the bottom of figure 7 is a separately identifiable part from the
carrier part 110 which the artisan would clearly interpret as a
separate coating that is otherwise deposited on the bottom
surface of the carrier part 112 in that figure. It is within
this flat plate 107 that the machine readable codes are burned in
by laser action. All these teachings are in addition to the
discussion noted earlier beginning at the bottom of column
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1 where at least some measure of prior art test tubes are
provided onto which the optical coating material is directly
applied as a substantially opaque surface to the bottom of the
test tube.
Lastly, we address appellants’ arguments beginning at the
bottom of page 4 of the principal brief on appeal relating to the
prosecution of the parent application from which this is a
continuation, further noting that the prior application was
allowed and issued. The examiner points out at pages 10 and 11
of the answer the present claims on appeal are substantially
broader than those which have been allowed in its parent
application. Because of this, the present claims may be made
subject to an obviousness-type double patenting rejection and the
required filing of a terminal disclaimer to avoid a time wise
extension of subject matter originally filed but allowed in a
broader claim presented subsequently. During examination of
subsequent applications the Director is generally permitted to
cause subsequent applications to be examined to avoid any
mistakes. Furthermore, two wrongs do not make a right. In re
Riddle, 438 F.2d 618, 620, 169 USPQ 45, 47 (CCPA 1971); and
Fessenden v. Coe, 99 F.2d 426, 432, 38 USPQ 516, 521 (D.C. Cir.
1938).
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Lastly, with respect to the case law precedent cited at the
bottom of page 5 of the principal brief on appeal, it is noted
that identical issues are not present in this appeal. As noted
earlier by the examiner, the claims in the present appeal are
substantially broader than those presented and allowed and
issued in the parent application. Even for situations in which
the patent examiner may attempt to invoke the doctrine of Res
Judicata, it does not apply because the issues are different,
namely the nature and scope of the claimed subject matter is
different. All this presents a new record for consideration and
new issues as a result. Note In re Russell, 439 F.2d 1228, 1230,
169 USPQ 426 (CCPA 1971) and In re Herr, 377 F.2d 610, 611, 153
USPQ 548, 549 (CCPA 1967).
In view of the foregoing, the decision of the examiner
rejecting all claims on appeal under 35 U.S.C. § 103 is affirmed.
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Application No. 10/056,352
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
JDT/hh
Appeal No. 2005-2350
Application No. 10/056,352
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