Ex Parte Ostgaard et al

Board of Patent Appeals and Interferences

Sep 23, 2010

09156952 (B.P.A.I. Sep. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROY A. OSTGAARD, EDWARD J. O’CONNELL,
and MARK J. LICARI
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Appeal 2010-001956
Application 09/156,952
Technology Center 1700
________________

Before TERRY J. OWENS, PETER F. KRATZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-8, 10, and 12-26.1 We have jurisdiction under
35 U.S.C. § 6(b).

1 No rejection of claim 27, which is the only other pending claim, is before
us. The rejection of claim 27 in the final rejection (mailed Jan. 1, 2005, p. 3)
is not maintained in the Examiner’s Answer (Ans. 3, 5).
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The Invention
The Appellants claim a sample vial. Claim 1 is illustrative:
1. A sample vial for use in an automated test apparatus, the sample vial
comprising:

a body comprising an outer surface, an open end, a closed end, and at
lease one anti-rotation lug about said body outer surface, the anti-rotation lug
comprising a generally flat, lower-most surface extending radially outwardly
from said body outer surface along a plane perpendicular to said body outer
surface, the lowermost surface located closer to the open end than to the closed
end;

a cap releasably engagable with said body, said cap comprising an outer
surface and a torque pattern on said cap outer surface, said torque pattern
comprising a plurality of radially disposed ribs; and

a seal disposed between said body and said cap so as to be capable of
forming a substantially fluid-tight seal therebetween,

wherein the lower-most surface is accessible when the cap is engaged
with the body for reacting against proximate structure of the automated test
apparatus when installed therein to facilitate at least one of automated removal
and installation of the cap.

The References
Moore 5,855,289 Jan. 5, 1999
(filed Apr. 25, 1997)
Brodner 5,894,733 Apr. 20, 1999
(filed Jan. 7, 1998)
The Rejection
Claims 1-8, 10, and 12-26 stand rejected under 35 U.S.C. § 103 over
Brodner in view of Moore.

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OPINION
We affirm the rejection for the reasons given in the Opinion in the
Board’s previous Decision in this case (mailed Oct. 22, 2003), which we
incorporate herein, and the reasons which follow.
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that Brodner would have rendered prima facie obvious, to one
of ordinary skill in the art, an anti-rotation lug comprising a generally flat
lowermost surface extending radially outwardly from a sample vial body
outer surface along a plane perpendicular to the body outer surface?
Findings of Fact
The findings of fact are set forth in the Board’s previous Opinion
(pp. 3-5).
Analysis
Claim 1 is the sole independent claim in both the previous appeal and
this appeal. In the previous appeal claim 1 required “an anti-rotation lug
comprising a generally flat, longitudinally disposed surface extending
radially outwardly from said body outer surface, the longitudinally disposed
surface comprising a lowermost edge that is substantially perpendicular to
said body outer surface”. In the present appeal claim 1 requires “an
anti-rotation lug comprising a generally flat, lower-most surface extending
radially outwardly from said body outer surface along a plane perpendicular
to said body outer surface”.
The Appellants argue that “even assuming that Brodner and Moore
can be combined, there is a significant element not disclosed in the resulting
vial – i.e., a lug having a generally flat, lower-most surface that extends
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radially outwardly from the outer body surface of the vial along a plane
perpendicular to the body outer surface” (Br. 5).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000). For written descriptive support for the
claim limitation “a generally flat, lower-most surface extending radially
outwardly from said body outer surface along a plane perpendicular to said
body outer surface” the Appellants rely solely upon their Figure 5 (Br. 4).
The Appellants present a blowup of that figure with a horizontal line, which
represents a plane, drawn through the bottom of the lug (18) perpendicular to
the vial body (12) outer surface (Br. 6; Reply Br. 1-2). A blowup of the
Appellants’ Figure 5 without the horizontal line, however, shows that the
bottom of the lug (18) is curved, first downwardly away from the vial
body (12) outer surface and then upwardly. Hence, the broadest reasonable
interpretation of the Appellants’ claim limitation “a generally flat, lower-
most surface extending radially outwardly from said body outer surface
along a plane perpendicular to said body outer surface” in view of the
Appellants’ disclosure includes some deviation of the plane from
perpendicularity.
The Appellants argue that the ridges on the left side of Brodner’s
Figure 4 are tapered (Reply Br. 10-11). The Appellants present a blowup of
Brodner’s Figure 2 which shows a lug having a tapered lower surface
(Br. 8).
The ridges in Brodner’s figures appear to have been drawn in by hand.
Most appear tapered but in Figure 4 the lower right edge of the left lug
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appears to be flat and the lower left edge of the right lug appears to be nearly
flat. As pointed out in the previous Board Opinion (p. 5) Brodner does not
disclose that the lower edges of the ridges are tapered or indicate that they
should be tapered. Brodner would have led one of ordinary skill in the art,
through no more than ordinary creativity, to configure the lower edges of the
ridges as they are illustrated in the reference, i.e., tapered, nearly flat or flat.
See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an
obviousness determination one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ”). The
flat or nearly flat lower edges of the ridges would fall within the Appellants’
claim limitation “a generally flat, lower-most surface extending radially
outwardly from said body outer surface along a plane perpendicular to said
body outer surface” as construed above.
Nor does the Appellants’ Specification indicate that the lower surfaces
of the lugs should be flat. The Appellants’ Specification states that “other
suitable materials, dimensions, and configurations for the body, the cap, the
ribs, the lugs, the fluid level indicia, and other features of the sample vial
will be apparent to those skilled in the art, those disclosed being provided as
examples only” (Spec. 14:14-16). The disclosure that the lug can have other
configurations does not support the Appellants’ argument that there is
criticality to the lower surface of the lug (18) in the Appellants’ Figure 5
being flat, i.e., that the flat lower surface ensures that the vial (10) will not
penetrate too deeply into the bores (52, 62), thereby causing the vial (10) to
jam, or axially translate to an improper position when in the vial sleeve (64)
(Reply Br. 5). That argument also is not supported by the remainder of the
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Appellants’ Specification and appears to be applicable also to lugs having
lower surfaces that are somewhat tapered.
The Appellants argue that the lower surfaces of Brodner’s sleeve
ridges (56) must be tapered to prevent them from abutting against the
uppermost surfaces of the tray ridges (68) when attempting to slide the
sleeve structure (12) into the aperture (62) of the tray (16) (Reply Br. 8-12).
The Appellants argue that axial alignment between Brodner’s sleeve
ridges (56) and tray ridges (68) naturally occurs as the beveled edges of the
sleeve ridges (56) slide against the beveled uppermost surfaces of the tray
ridges (68) (Reply Br. 12-13).2
Brodner teaches that the ridges (56) of the sleeve structure (12) are
placed into pressing engagement against or between the ridges (68) in the
tray (16)’s apertures (62) (col. 3, ll. 37-41). For the sleeve structure (12)’s
ridges to be placed in pressing engagement between the ridges (68) in the
tray (16)’s apertures (62) each sleeve structure (12)’s ridge must be aligned
with a space between the ridges (68) in the tray (16)’s apertures (62),
regardless of whether the lower surfaces of the sleeve structure (12)’s ridges
are flat or tapered. Brodner does not indicate that such alignment requires
tapered ridges and the Appellants have provided no evidence that tapered
ridges would be required.3
The Appellants state that they do not understand the statement in the
previous Board Opinion (p. 6) that if anything, Brodner’s teaching that the

2 The Appellants do not point out where Brodner discloses that the
uppermost surfaces of the tray ridges (68) are beveled.
3 The Appellants have merely provided unsupported attorney argument that
flat lower ridge surfaces would make alignment more difficult (Reply
Br. 11-12).
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ridges produce a locking type action (col. 3, ll. 38-40) would have led one of
ordinary skill in the art to make the edges of the ridges perpendicular to the
outer surfaces of the sleeve and tray to maximize the locking action (Reply
Br. 13). The Appellants argue that it is the longitudinal surfaces of the
ridges, not the edges that provide the locking action. See id.
The possible increased locking action provided by ridges that are
rectangular rather than having tapered ends would be due to the slightly
increased ridge surface area provided by the rectangular shape.
Conclusion of Law
The Appellants have not indicated reversible error in the Examiner’s
determination that Brodner would have rendered prima facie obvious, to one
of ordinary skill in the art, an anti-rotation lug comprising a generally flat
lowermost surface extending radially outwardly from a sample vial body
outer surface along a plane perpendicular to the body outer surface.
DECISION/ORDER
The rejection of claims 1-8, 10, and 12-26 under 35 U.S.C. § 103 over
Brodner in view of Moore is affirmed.
It is ordered that the Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

sld
Appeal 2010-001956
Application 09/156,952

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