Ex Parte Ostgaard et al

Patent Trial and Appeal Board

Jul 18, 2013

12465032 (P.T.A.B. Jul. 18, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/465,032 05/13/2009 Roy A. Ostgaard 11.012011 CON2 2763
41696 7590 07/18/2013
VISTA IP LAW GROUP LLP
12930 Saratoga Avenue
Suite D-2
Saratoga, CA 95070
EXAMINER
SIEFKE, SAMUEL P
ART UNIT PAPER NUMBER
1779
MAIL DATE DELIVERY MODE
07/18/2013 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 PATENT TRIAL AND APPEAL
BOARD
____________

Ex parte ROY A. OSTGAARD and THEODORE S. GEISELMAN
____________

Appeal 2012-003700
Application 12/465,032
Technology Center 1700
____________

Before ANDREW HAROLD METZ, ROMULO H. DELMENDO, and
JAMES C. HOUSEL, Administrative Patent Judges.

METZ, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 8 through 14, which are all the claims remaining in
the application. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.

Appeal 2012-003700
Application 12/465,032

2
THE INVENTION
Claim 8 is believed to be adequately representative of the appealed
subject matter and is reproduced below for a more facile understanding of
the claimed invention.
8. A method for collecting particles of interest from each of a plurality
of sample vials, comprising the steps of:

(a) loading a plurality of sample vials containing particles of interest
suspended in respective fluid samples into respective locations
within a loading station;
(b) removing an individual first sample vial from its respective
location in the loading station;
(c) transferring the individual first sample vial to a specimen
collection apparatus;
(d) collecting particles of interest from the individual first sample vial;
(e) returning the individual first sample vial to its respective location
in the loading station; and
(f) repeating steps (b) through (e) for each remaining sample vial of
the plurality to collect respective particles of interest until all of the
sample vials have been processed.

The reference of record that is being relied on by the Examiner as
evidence of anticipation and evidence of obviousness is:
Kanamori et al. (Kanamori) 5,209,903 May 11, 1993

THE REJECTIONS
Claims 8 through 11 stand rejected as being unpatentable under 35
U.S.C. § 102(b) as the subject matter claimed therein is described by
Kanamori.
Claims 12 through 14 stand rejected as being unpatentable
under 35 U.S.C. § 103(a) as the claimed subject matter would have been
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Application 12/465,032

3
obvious at the time Appellants made their invention from the disclosure of
Kanamori.
OPINION
The Examiner has rejected claims 8 through 11 as being “anticipated”
by Kanamori. “Anticipation” is a term of art that means the subject matter
claimed by Appellants is described in the prior art. As correctly observed by
Appellants in their Brief, a claim is “anticipated”, that is described, only if
each and every limitation in Appellants’ claim is described, either expressly
or inherently, in the prior art relied on to reject the claim. We agree with
Appellants’ argument that in formulating his rejection the Examiner has not
directed our attention to where in Kanamori step “(c)” of claim 8 is
described. Specifically, step “(c)” of claim 8 requires, after removing a
single sample vial from the rack containing all the sample vials (step “(b)”),
that single sample vial is transferred to a sample collection apparatus where,
in the next step in the claimed process, particles of interest are collected
from the selected single sample vial and the single, previously selected
sample vial returned to its respective location. In Kanamori’s process a
sample rack carrying more than one test tube, which may or may not be
sealed, is transported via conveyor to various analytical testing stations
where, at each station, an individual sample is removed from the test tube for
analysis while the test tube remains in the rack with all the other samples.
The Examiner addresses Appellants’ argument regarding step “(c)” of
the claimed process on page 6 of his Answer wherein the Examiner opines
Kanamori moves a first individual sample vial from the
conveyor belt 50 to the smear generator station where samples
are collected and then a smear is generated on a slide. The
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Application 12/465,032

4
movement of an individual sample occurs when only one
sample vial is presented in the tray that moves along the main
conveyor.

Nevertheless, the Examiner has not directed us to where in Kanamori’s
disclosure the description on which the Examiner relies to formulate his
rejection may be found. Indeed, we find no such disclosure. Rather,
Kanamori describes a process in which a sample rack containing more than
one sample container is moved along a conveyor to various analytical
stations, including a blood smear generator. Blood is removed from a sample
container while in the rack by dropper or needle and the blood drop
transferred to a slide for smearing. The Examiner has also failed to explain
what constitutes the “specimen collection” apparatus in Kanamori
corresponding to that limitation in step “(c)” of claim 8. Accordingly,
Kanamori cannot be said to “describe”, in the sense of 35 U.S.C. § 102(b),
the process of claim 8 and we reverse the Examiner’s rejection on the
ground that Kanamori describes the subject matter claimed by Appellants.
The Examiner’s rejection of claims 12 through 14 under 35 U.S.C. §
103 is also founded on the disclosure of Kanamori alone. In explaining his
rejection the Examiner’s only stated rationale for his rejection is that
Kanamori “does not teach removing the caps from the vials to take a
sample” and then concludes removing caps would have been obvious
Answer, p. 6. Nevertheless, as we have held with respect to the Examiner’s
rejection under Section 102(b), Kanamori does not teach or suggest
removing a single vial from the loading station and subsequently transferring
a single selected vial to a specimen collection apparatus. Additionally,
Kanamori discloses that the sample containers may be sealed with a rubber
Appeal 2012-003700
Application 12/465,032

5
stopper or they may be unsealed. A sample from the container may be drawn
by piercing the rubber stopper or by drawing the sample for analysis by
conventional means if the sample container is unsealed. Nothing in
Kanamori teaches or suggests removing and then replacing the caps on the
sample vials. For all the above reasons, the Examiner has failed to explain
why the subject matter claimed by Appellants would have been obvious to
the hypothetical person of ordinary skill in the art at the time Appellants
made their invention in light of the differences between the disclosure of the
process described in Kanamori and the process claimed in claims 12 through
14.

The decision of the Examiner is reversed.
REVERSED
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