Ex Parte Miyake et al

Board of Patent Appeals and Interferences

Feb 14, 2003

09136070 (B.P.A.I. Feb. 14, 2003)

1 The claims on appeal are presented as amended in the after final response filed November 2,
2000. The Examiner has entered the amendment to the claims in the record. (Paper no. 7).
2 According to Appellants, Brief, page 2, pending claims 2 to 6, 8 to 14 and 21 to 25 have been
withdrawn from consideration by the Examiner as being directed to a non elected invention.
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex Parte RYO MIYAKE, AKIRA KOIDE,
TAKEO TAKAGI, TAKAO TERAYAMA,
YASUSHI NOMURA and HIROSHI MITSUMAKI
_______________
Appeal No. 2002-0230
Application 09/136,070
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HEARD: January 16, 2003
_______________
Before GARRIS, OWENS and JEFFREY T. SMITH, Administrative Patent Judge.
JEFFREY T. SMITH, Administrative Patent Judge.
Decision on appeal under 35 U.S.C. § 134
Applicants appeal the decision of the Primary Examiner’s refusal to allow
claims 1, 7, 15 to 20.1, 2 We have jurisdiction under 35 U.S.C. § 134.
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Application No. 09/136,070
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THE INVENTION
The Appellants’ claimed invention relates to a chemical analyzing apparatus
incorporating a reagent supply mechanism. Conventionally, in automatic chemical
analyzing apparatus, reagents are discharged by a piston integrally incorporated with
the side wall of the reagent container. (Paragraph bridging Specification pages 2-3).
Appellants have found that the conventional chemical analyzing apparatus have
several drawbacks including loss of reagent, cleaning the apparatus requires a large
volume of washing liquid which is difficult to remove from the nozzle, and errors in
measured values due to wash liquid remaining in the nozzle. (Specification, page 4).
According to Appellants, the claimed invention is said to overcome the above
disadvantages. (Specification, page 9). Claim 1 which is representative of the
invention is reproduced below:
1. A chemically analyzing apparatus comprising:
a reaction container holder for holding a plurality of reaction containers,
and for moving said plurality of reaction containers to predetermined
positions;
a plurality of reagent containers containing reagents therein, each of said
plurality of reagent containers having a connection hole provided in a
bottom surface;
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a reagent container holder for holding said plurality of reagent
containers;
a measuring part for measuring physical properties of said sample; and
a liquid feed mechanism having a fluid introduction part connected to
said connection hole provided in the bottom surface of each of said
plurality of reagent containers.
CITED REFERENCES
As evidence of unpatentability, the Examiner relies on the following
references:
Rokugawa 4,844,868 Jul. 04, 1989
Ushikubo 5,424,036 Jun. 13, 1995
Zengerle et al. (Zengerle) 5,529,465 Jun. 25, 1996
The Examiner rejected claims 1, 7, 15 to 18 and 20 under 35 U.S.C. § 103(a) as
obvious over the combination of Rokugawa and Zengerle. The Examiner also
rejected claim 19 under 35 U.S.C. § 103(a) as obvious over the combination of
Rokugawa and Zengerle as applied to claim 15 further combined with Ushikubo.
(Answer, pp. 4-5).
Appeal No. 2002-0230
Application No. 09/136,070
3 In rendering this decision, we have considered Appellants arguments presented in the Brief, filed
March 5, 2001, and Reply Brief, filed July 23, 2001.
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OPINION3
Upon careful review of the respective positions advanced by Appellants and
the Examiner, we find ourselves in agreement with Appellants’ position in that the
Examiner has failed to carry the burden of establishing a prima facie case of
obviousness. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ 785, 787-88 (Fed. Cir.
1984). Accordingly, we will not sustain the examiner's rejection. We will limit our
discussion to claim 1, the sole independent claim.
Rokugawa describes a chemical analyzing apparatus incorporating a reagent
supply mechanism. The apparatus includes two reagent distribution mechanisms (30)
and (40) each has a rotary table 64 driven by drive motor (62). Secured to each rotary
table (64) are a plurality of reagent distributors (68) for distributing different reagents.
(Col. 4, ll. 9-11; Fig. 6). Each reagent distributor (68) includes reagent phial (70)
containing reagent 66 and pump (72) for withdrawing reagent (66) from the reagent
phial (70). (Col. 4, ll. 11-14; Fig. 4). Pump (72) has check valve (76) secured to the
wall of reagent phial (70), cylindrical member (78) secured to and extending upright
from check valve (76) and nozzle (32) secured to and extending downward from
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check valve (76). (Col. 4, ll. 16-20; Fig. 4). Rokugawa discloses each of the reagent
phial (70) is secured to the top of its respective second rotary table (64), and nozzle
(32) of each pump (72) is positioned outside the edge of its respective second rotary
table (64). (Col. 4, ll. 49-53; Fig. 1). The reagent phial does not have a connection
hole in the bottom or a fluid introduction part connected to the bottom of the reagent
phial.
Claim 1 requires a plurality of reagent containers having a connection hole
provided in a bottom surface and a liquid feed mechanism having a fluid introduction
part connected to the connection hole in the bottom surface of each of the reagent
containers. The Examiner has not adequately explained why there is motivation to
move the connection hole from the side of the reagent container of Rokugawa. It
would not have been obvious to place a connection hole in the bottom of the reagent
phial (70), as proposed by the Examiner, because Rokugawa expressly discloses the
reagent phial (70) is secured to the top of its respective rotary table (64).
Consequently, the modification proposed by the Examiner would require the redesign
of the reagent distribution mechanism including phial (70) and the rotary table (64) to
which it is secured. The Examiner cited Zengerle for teaching an electrostatically
driven diaphragm pump. This reference does not solve the deficiencies of Rokugawa
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identified above. The mere fact that the prior art could be modified as proposed by
the Examiner is not sufficient to establish a prima facie case of obviousness. See In
re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
We agree with Appellants that the Examiner’s conclusion that it would have
been obvious to move the location of the connection hole to the bottom of the reagent
container of Rokugawa is unsupported by any teaching in the prior art. (Brief, p. 5).
The Examiner asserts “[i]t would have been obvious to one having ordinary skill in
the art at the time the invention was made to have locate the connection hole at the
bottom of the reagent container in order to allow the reagent to be dispensed under the
force of gravity, thereby eliminating the need for extra pressure head.” (Answer,
paragraph bridging pages 4 -5). Additionally, the Examiner asserts “the location at
the bottom-most surface of the reagent container ensures that the entire reagent is
removed.” (Answer, p. 6). The record indicates that the motivation relied upon by
the Examiner for moving the location of the connection hole comes from the
Appellants’ description of their invention in the specification, pages 16-18, rather
than coming from the applied prior art and that, therefore, the Examiner used
impermissible hindsight in rejecting the claims. See W.L. Gore & Associates v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983); In re
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Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960). Consequently, the
Examiner’s rejection of claims 1, 7, 15 to 18 and 20 is reversed.
The Examiner contends “the conclusion of obviousness is not based on
hindsight reconstruction but rather basic scientific principles of fluid dynamics and
gravitation forces. It is notoriously well known within the dispensing art that such a
location of a fluid connection hole at the lowest point on the container takes
advantage of the additional effects of gravity upon the volume of the fluid.”
(Answer, pp. 6-7). Rokugawa expressly discloses the reagent phial (70) is secured to
the top of its respective rotary table (64). The reagent phial (70) is positioned so that
the pump (72) has check valve (76) secured to the lower wall of reagent phial (70).
There is no indication that the “effects of gravity upon the volume of the fluid” would
provide a benefit that would have warranted the redesign of Rokugawa’s reagent
distribution mechanism that includes a pump for dispensing the reagent.
The Examiner added the teachings of the Ushikubo reference to the
combination of Rokugawa and Zengerle, as applied to claim 15, to reject the subject
matter of claim 19. We reverse this rejection because Ushikubo does not solve the
deficiencies of Rokugawa discussed above.
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CONCLUSION
The rejection of claims 1, 7, 15 to 18 and 20 under 35 U.S.C. § 103(a) as
obvious over the combination of Rokugawa and Zengerle is reversed. The rejection
of claim 19 under 35 U.S.C. § 103(a) as obvious over the combination of Rokugawa
and Zengerle as applied to claim 15 further combined with Ushikubo is reversed.
REVERSED
TERRY J. OWENS )
Administrative Patent Judge )
) BOARD OF PATENT
)
) APPEALS AND
)
JEFFREY T. SMITH ) INTERFERENCES
Administrative Patent Judge )
)
JTS/kis
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BRADLEY R. GARRIS, Administrative Patent Judge, dissenting.
I respectfully dissent from the majority’s decision to reverse the prior art
rejections advanced by the examiner on this appeal.
I share the examiner’s conclusion that it would have been obvious for one with
ordinary skill in this art to reposition the connection hole of Rokugawa’s reagent
container from its existing location at a sidewall surface to a new location at the
bottom surface of the container as required by appealed independent claim 1.
According to the majority, “[t]he Examiner has not adequately explained why there is
motivation to move the connection from the side of the reagent container of
Rokugawa.” Slip Op., page 5. This is incorrect.
The examiner has advanced two separate rationales in support of her
determination that an artisan with ordinary skill would have been motivated to
reposition Rokugawa’s connection hole in the manner discussed above. In her first
rationale, the examiner urges that an artisan would have been motivated to reposition
patentee’s connection hole in order “to allow the reagent to be dispensed under the
force of gravity [i.e., the additional gravity force at a bottom versus sidewall location
due to the greater mass of reagent thereabove].” Answer, page 6. As her second
rationale in support of motivation, the examiner states that, “[a]dditionally, the
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location at the bottom-most surface of the reagent container ensures that the entire
reagent is removed, providing a more cost-effective dispensing means.” Id.
It is the position of the majority that “the motivation relied upon by the
Examiner for moving the location of the connection hole comes from the Appellants’
description of their invention in the specification, pages 16-18, rather than coming
from the applied prior art and that, therefore, the Examiner used impermissible
hindsight in rejecting the claims.” Slip Op., page 6. I agree with the examiner,
however, that her motivation rationale and consequent obviousness conclusion are not
based on hindsight “but rather basic scientific principles of fluid dynamics and
gravitation forces.” Answer, page 6. In this regard, it is the examiner’s express
finding that “[i]t is notoriously well known within the dispensing art that such a
location of a fluid connection hole at the lowest point on the container takes
advantage of the additional effects of gravity upon the volume of the fluid.” Id., at
pages 6-7. Particularly in light of this finding, the examiner concludes that “[o]ne
skilled in the art would have recognized that modifying the location of a connection
hole of Rokugawa would allow the fluid to be discharged with less pressure being
applied, thereby increasing the overall efficiency of the pump with no additional
working parts needed.” Id., at page 7.
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Application No. 09/136,070
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Significantly, on the record of this appeal, the appellants have not challenged
the examiner’s above noted finding even though they had a clear opportunity to do so
when they filed a reply brief in response to the examiner’s answer. This is
understandable since the applied prior art in general and Rokugawa in particular
evince that one having an ordinary level of skill in this art at the time the appellants’
invention was made would be thoroughly familiar with the “basic scientific principles
of fluid dynamics and gravitation forces” upon which the examiner’s motivation
rationale and obviousness conclusion are based.
Under the circumstances, it is appropriate to regard the examiner’s above noted
factual finding as correct, especially since it has not been challenged or traversed by
the appellants on the record of this appeal. See In re Ahlert, 424 F.2d 1088, 1091-92,
165 USPQ 418, 420-21 (CCPA 1970). Also see the Manual of Patent Examining
Procedure (MPEP) § 2144.03 (8th ed., Aug. 2001). For this reason, and because the
examiner’s finding supports her motivation rationale and obviousness conclusion, I
believe the majority to be in error in determining that “the Examiner used
impermissible hindsight in rejecting the claims.” Slip Op. at page 6.
In addition to the foregoing, it is noteworthy that, on the record before us, the
appellants have not acknowledged much less critiqued the examiner’s aforenoted
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second rationale notwithstanding their clear opportunity to do so in filing their
previously mentioned reply brief. Because the appellants themselves have not even
alleged the presence of error in the examiner’s second rationale, it is inappropriate for
the majority to consider this rationale as failing to establish a prima facie case of
obviousness.
For the reasons set forth above and in the answer, I believe the examiner has
established a prima facie case of obviousness within the meaning of 35 U.S.C. § 103
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with respect to at least appealed claim 1. I express no view concerning the other
argued claims on appeal since the obviousness versus nonobviousness of these claims
has not been separately addressed by the majority.
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
BRG:tdl
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