Ex Parte Minton

Board of Patent Appeals and Interferences

Feb 1, 2011

11112671 (B.P.A.I. Feb. 1, 2011)

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.
11/112,671 04/21/2005 Kenneth L. Minton 1250.0040 7489
152 7590 02/01/2011
CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP
601 SW Second Avenue
Suite 1600
PORTLAND, OR 97204-3157
EXAMINER
HOBBS, MICHAEL L
ART UNIT PAPER NUMBER
1775
MAIL DATE DELIVERY MODE
02/01/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH L. MINTON
____________

Appeal 2010-000873
Application 11/112,671
Technology Center 1700
____________

Before CHUNG K. PAK, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2010-000873
Application 11/112,671

2
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision2 finally rejecting claims 1-4 and 8-13, the only claims pending in
the Application.3 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1, the sole independent claim, is representative of the invention
and is reproduced below from the Claims Appendix to the Appeal Brief:
1. A lockable cell growth chamber comprising
(a) a circular dish supported on a circular base, said dish
having a bottom plate and a bottom cylindrical side wall, and
(b) a circular lid having a top plate and a top cylindrical
side wall, said lid sized so as to fit over the bottom cylindrical
side wall of said dish
wherein said base and said lid are provided with locking
means for securing said base and lid in locking engagement,
said locking means comprising at least two pairs of locking
members, each of said pairs of locking members comprising (i)
a docking member having a notch and a ramp, and (ii) a tab
sized and shaped so as to be slidably and compressionably
engagable with said notch of said docking member, and
wherein said docking member includes a platform that is
substantially at right angles to said ramp, said top cylindrical
side wall includes a stop adjacent each tab, and said stop is
located and shaped so as to engage one side of said docking
member when said tab is within said notch.

2 Final Office Action mailed Dec. 10, 2008 (“Final”).
3 Appeal Brief filed Mar. 9, 2009 (“Br.”).
Appeal 2010-000873
Application 11/112,671

3
Appellant requests review of the following grounds of rejection
(Br. 3):
1. claims 1-4 and 8-12 under 35 U.S.C. § 103(a) as unpatentable
over Labarthe4 in view of Kutz5 (Ans.6 3-5); and
2. claim 13 under 35 U.S.C. § 103(a) as unpatentable over
Labarthe in view of Kutz and further in view of Lattuada7 (Ans. 5-6).
Appellant’s arguments in support of patentability as to all rejected
claims are based on limitations found in independent claim 1. (See
generally, Br. 3-5.) Specifically, Appellant raises the following issue for our
consideration:
Did the Examiner fail to properly identify motivation for combining
Labarthe and Kutz to achieve the locking means recited in appealed claim 1?
We answer this question in the affirmative.
Labarthe discloses a culture dish comprising a lid 5 securable to a
base 1 by locking means movable between opening (Fig. 4), depositing (Fig.
3), and spreading (Fig. 2) positions. The base includes a rib 10 interrupted
by a notch 11, and stops 14, 17 positioned beneath and above the notch,
respectively. (Col. 2, ll. 59-61; col. 2, l. 67-col. 3, l. 4.) The lid 5 includes
offset, raised studs 12, 16. (Col. 3, ll. 6-8.) Transfer between the opening,
depositing, and spreading positions is achieved by moving the studs 12, 16
into and out of engagement with the rib 10 using the stops 14, 17, and notch
11. (See col. 3, ll. 6-40.) Inadvertent movement is avoided because transfer

4 US 5,348,885 issued Sept. 20, 1994.
5 US 5,328,046 issued Jul. 12, 1994.
6 Examiner’s Answer mailed May 28, 2009.
7 US 4,709,819 issued Dec. 1, 1987.
Appeal 2010-000873
Application 11/112,671

4
between positions requires separate translational and rotational movements
of the lid 5 with respect to the base 1. (See col. 3, ll. 19-40; col. 1, ll. 36-39.)
Kutz discloses a self-locking, tamper evident package for the shipping
and storing of electronic components. (Abstract.) The package includes a
lid 18 and base 10 which can be engaged by corresponding threads. (Col. 3,
ll. 42-45.) Lid 18 includes ramps 23 which engage breakaway tabs 25 on the
base 10. (Col. 3, ll. 38-39, 64-66.) The tabs 25 are broken and permanently
disabled when the lid 18 is disengaged from the base 10 for the first time to
provide a visible indication that the package has been opened. (Col. 4, ll.
60-61; col. 2, ll. 58-62.)
The Examiner made the following findings:
Labarthe’s rib 10 and notches 11 correspond to Appellant’s claimed
docking member, but concedes that “Labarthe is . . . silent regarding the
platform being at a right angle to the ramp.” (Final 3; Ans. 3-4.) Labarthe’s
studs 12 correspond to Appellant’s claimed tabs, but concedes that
“Labarthe is silent regarding the tab being compressionably engagable with
the notch.” (Id.) Kutz discloses a tab 25 which flexes and is, therefore,
“compressionably engagable” with a notch (presumably ramp 23) on the lid.
(Final 3; Ans. 4.) The tab 25 “includes a slanted side (28) or ramp that
terminates in an outwardly extended lip (29) or platform.” (Id.)
Based on the aforementioned findings, the Examiner determined
since [Kutz’s] structure for holding the lid was known at the
time of the invention, one of ordinary skill in the art could have
easily substituted the structure of Kutz into the lid of Labarthe.
. . . [I]t would be obvious to one of ordinary skill in the art to
employ the lip and slanted side as suggested by Kutz in order to
secure the lid of a Petri dish to the bottom member of Labarthe.
The suggestion for doing so at the time would have been in
Appeal 2010-000873
Application 11/112,671

5
order to prevent accidental removal of the Petri dish lid during
transit.
(Final 4, Ans. 4)
At the outset, we note that it is unclear to us precisely how the
Examiner proposes to modify Labarthe’s culture dish. We cannot determine
whether the Examiner’s position is that the ordinary artisan would have been
motivated to replace Labarthe’s arrangement (studs 12, 16, rib 10, stops 14,
17, and notch 11) in its entirety, or that the ordinary artisan would have been
motivated to replace or modify only one or two of these components with
Kutz’s tab 25. It is also unclear how the Examiner’s proposed modification
of Labarthe in view of Kutz would result in a pair of locking members
comprising both a docking member and a tab as claimed in appealed claim
1. The Examiner found that Kutz’s tab 25 includes the features of both
Appellant’s claimed docking member and tab, i.e., that Kutz’s tab includes a
platform, a ramp and a notch (features associated with the “docking
member”) and is “compressionably engagable” (a feature of the tab). (See
Final 3-4; Ans. 4.)
While we recognize that “[t]he test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference,” In re Keller, 642 F.2d 413, 425 (CCPA
1981), the Examiner must still establish that the combined teachings of the
references would have resulted in the invention as claimed, cf. Ball Aerosol
& Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed.
Cir. 2009) (“[T]he analysis that ‘should be made explicit’ refers not to the
teachings in the prior art of a motivation to combine, but to the court’s
analysis.”). See also, In re Vaidyanathan, No. 2009-1404, 2010 WL
Appeal 2010-000873
Application 11/112,671

6
2000682, at *9 (Fed. Cir. May 19, 2010) (non-precedential) (“KSR did not
free the PTO’s examination process from explaining its reasoning. In
making an obviousness rejection, the examiner should not rely on
conclusory statements that a particular feature of the invention would have
been obvious or was well known. Instead, the examiner should elaborate,
discussing the evidence or reasoning that leads the examiner to such a
conclusion.”)
Even assuming the Examiner’s proposed combination would have
resulted in a docking member and a tab as claimed, we are in agreement with
Appellant that the ordinary artisan would not have had any reason or
motivation to modify Labarthe’s culture dish to include Kutz’s tab 25
because there is no evidence that the desired transfers between opening,
depositing, and spreading positions in Labarthe’s culture dish would still be
possible. As observed by Appellant, Labarthe uses an arrangement of studs
12, 16, a rib 10, stops 14, 17, and a notch 11 to allow the lid and base to be
locked and unlocked as needed. (See Br. 4.) Once Kutz’s container is
opened, the locking mechanism (tabs 25 and ramps 23) no longer functions.
(See id.) The Examiner directs us to col. 4, ll. 60-63 of Kutz’s disclosure as
evidence that Labarthe’s container would still “be fully capable of being
locked, removed and then re-locked.” (Ans. 6.) The relied-upon portion of
Kutz indicates that the lid 18 may be reattached to the base 10 by the
corresponding threads. (See citations to Kutz supra p. 4.) However, these
threads are not part of the “structure of Kutz” which the Examiner proposes
substituting into Labarthe’s lid (see Final 4; Ans. 4).
In sum, Appellant has persuaded us that the Examiner failed to
properly identify an appropriate reason or motivation for combining
Appeal 2010-000873
Application 11/112,671

7
Labarthe and Kutz to achieve the locking means recited in appealed claim 1.
Accordingly, we do not sustain the Examiner’s rejections of claims 1-4 and
8-13.

REVERSED

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SUITE 1600
PORTLAND, OR 97204-3157