Ex Parte Ogura

Board of Patent Appeals and Interferences

Jun 19, 2008

09373585 (B.P.A.I. Jun. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte NOBUHIKO OGURA
__________

Appeal 2008-24541
Application 09/373,585
Technology Center 1600
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DECIDED: June 19, 2008
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Before TONI R. SCHEINER, DEMETRA J. MILLS, and LORA M. GREEN,
Administrative Patent Judges.

SCHEINER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 6, 7, and 21-33, all the claims remaining in the application. The
claims stand rejected as anticipated by, and obvious over the prior art. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Heard June 10, 2008.
Appeal 2008-2454
Application 09/373,585

BACKGROUND
The present invention is directed to “an apparatus for manufacturing a
test piece comprising a strip-like substrate bearing thereon numbers of
known specific binding agents which are different from each other and are
arranged in a line at predetermined intervals” (Spec. 6: 11-15).
STATEMENT OF THE CASE
I. Claims 6, 7, 21, 22, 25-29, and 31-33 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Stimpson (U.S. Patent 6,037,186, issued
March 14, 2000).
II. Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Stimpson and Shuminov (U.S. Patent 5,808,554, issued
September 15, 1998).
III. Claim 30 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Stimpson, Shuminov, and Biedermann (U.S. Patent 4,881,439, issued
November 21, 1989).

Claim 6 is representative, and reads as follows:
6. An apparatus for manufacturing a test piece for use in biological
analysis of a sample organism comprising a strip-like substrate bearing
thereon numbers of known specific binding agents which are different from
each other and are arranged in a line at predetermined intervals in the
longitudinal direction of the strip-like substrate, the apparatus comprising:
a plurality of applicators arranged at predetermined interval in a first
direction relative to a sheet-like substrate each of said plurality of applicators
respectively operable to apply one of the plurality of known specific binding
agents on the sheet-like substrate,
a conveyor which conveys the plurality of applicators or the sheet-like
substrate relative to each other in a second direction which is substantially
perpendicular to the first direction while the applicators apply the plurality
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Appeal 2008-2454
Application 09/373,585

of known specific binding agents in lines which extend in the second
direction and are arranged at predetermined intervals in the first direction,
and
a cutting means which cuts the sheet-like substrate bearing thereon the
plurality of specific binding agents in the first direction into a plurality of
strips.

FINDINGS OF FACT (FF)
The Invention
1. The apparatus of claim 6 essentially comprises a plurality of reagent
applicators, a conveyor, and a cutting means. The conveyor conveys the
applicators or a sheet-like substrate in a direction identified in the claim as a
“second direction,” while the applicators deposit a plurality of specific binding
reagents onto the sheet-like substrate. Because the applicators are arranged at
intervals along a “first direction” perpendicular to the second direction, discrete
lines of deposited specific binding reagents extend in the second direction - i.e.,
parallel to each other, and parallel to the direction of conveyance. Finally, the
cutting means cuts a plurality of strips from the sheet like substrate in the first
direction, i.e., perpendicular to the direction of conveyance.
Stimpson
2. Stimpson describes “[a]n automated device to apply . . . [a] multitude of
reagents to a 21.5 foot sheet . . . assembled from an X-Y-Z table . . . fitted with
a reagent dispenser, a step motor controlled take up spool and an adjustable
drag pay-out spool” (Stimpson, col. 8, ll. 32-36). Thus, Stimpson describes an
apparatus comprising a plurality of reagent applicators and a conveyor.
3. A sheet of membrane is “mounted on the pay-out spool, fed through
guides on the X-Y-Z table surface and attached to the take-up spool. The X-Y-
Z table is used to pick up reagents from . . . micro-titer plates using a
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Appeal 2008-2454
Application 09/373,585

dispensing device . . . [and lines are drawn] across the sheet of membrane”
(Stimpson, col. 8, ll. 36-41). That is, the lines are drawn on the membrane in a
direction perpendicular to the direction of conveyance.
4. A partially assembled roll, showing reagent lines 230, is depicted in
Figure 2C, reproduced immediately below:

Figure 2C “is a schematic view of the process where by the reagent
impregnated sheet 200 is rolled about a cylindrical support 240 to form a spiral
wound structure of multiple layers” (Stimpson, col. 6, ll. 59-62). The direction
of conveyance is along the Y axis, while the lines of reagents lie along the Z
axis, i.e., perpendicular to the direction of conveyance.
5. The roll is cut in a direction parallel to the direction of conveyance to
form individual spiral shaped arrays, with the impregnated agent exposed on
the freshly cut edges of the spirals (Stimpson, col. 5, ll. 9-39), as shown in
Figure 2D, reproduced immediately below:
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Figure 2D “shows an end view of an array cut from the roll of FIG. 2C after
rolling is complete and the structure is bound with a sheath 260. The array is a
spiral structure of multiple layers of sheet material 210” (Stimpson, col. 6, ll.
64-67).
6. Thus, Stimpson’s reagent dispenser lays down discrete lines of reagents
across the sheet of membrane, i.e., perpendicular to the direction of
conveyance, and the Examiner has not pointed to any evidence that establishes
that Stimpson’s dispenser is capable of laying down reagents in lines parallel to
the direction of conveyance. Similarly, Stimpson’s cutting means cuts slabs
from the assembled books or rods in a direction parallel to the direction of
conveyance, and the Examiner has not pointed to any evidence that Stimpson’s
cutting means is capable of cutting in a direction perpendicular to the direction
of conveyance.

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Appeal 2008-2454
Application 09/373,585

DISCUSSION
Anticipation
The Examiner rejected claims 6, 7, 21, 22, 25-29, and 31-33 as
anticipated by Stimpson.
Appellant contends that Stimpson’s “reagent is applied in a direction
perpendicular to a longitudinal direction of the 21.5 foot sheet, as seen in
Fig. 2C, and . . . not in lines in the longitudinal direction of the strip-like
substrate” and “there is no indication that . . . [Stimpson’s] applicators would
apply a reagent in the longitudinal direction of the strip-like substrate” (App.
Br. 15-16).
Similarly, Appellant argues that “there is no indication that the razor
of Stimpson cuts a sheet-like substrate in a first direction into a plurality of
strips” (App. Br. 16), i.e., there is no indication that Stimpson’s razor can cut
in a direction perpendicular to the direction of conveyance.
To anticipate, every element and limitation of the claimed invention
must be found in a single prior art reference, arranged as in the claim.
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001).
As discussed above, the claimed apparatus deposits specific binding
reagents on a sheet-like substrate in lines parallel to the direction of
conveyance, and cuts a plurality of strips from the sheet-like substrate in a
direction perpendicular to the direction of conveyance (FF 1). Stimpson’s
apparatus, on the other hand, deposits specific binding reagents on a sheet-like
substrate in lines perpendicular to the direction of conveyance, and cuts a
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plurality of spiral arrays from the rolled-up sheet-like substrate in a direction
parallel to the direction of conveyance (FF 3, 5).
Thus, the Examiner has not established that the elements of Stimpson’s
apparatus, i.e., reagent applicators, conveyor, and cutter, are arranged as in the
claimed invention, or that Stimpson’s apparatus is capable of performing as
required by the claims (FF 6). Accordingly, the rejection of claims 6, 7, 21, 22,
25-29, and 31-33 under 35 U.S.C. § 102(e) as anticipated by Stimpson is
reversed.
Obviousness
The Examiner rejected claims 23 and 24 as unpatentable over Stimpson
and Shuminov, and claim 30 as unpatentable over Stimpson, Shuminov and
Biedermann.
Stimpson is relied on as in the anticipation rejection of claims 6, 7, 21,
22, 25-29, and 31-33. As discussed above, the Examiner has not established
that the elements of Stimpson’s apparatus are arranged as in the claimed
apparatus, or that Stimpson’s apparatus is capable of performing as required by
the claims. Neither Shuminov nor Biedermann cures this underlying
deficiency.
Accordingly, the rejection of claims 23 and 24, and the rejection of
claim 30 as obvious over the prior art are reversed.
SUMMARY
The rejection of claims 6, 7, 21, 22, 25-29, and 31-33 under 35 U.S.C.
§ 102(e) as anticipated by Stimpson is reversed.
The rejection of claims 23 and 24 under 35 U.S.C. § 103(a) as
unpatentable over Stimpson and Shuminov is reversed.
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The rejection of claim 30 under 35 U.S.C. § 103(a) as unpatentable
over Stimpson, Shuminov, and Biedermann is reversed.

REVERSED

clj

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