Ex Parte Parker

Board of Patent Appeals and Interferences

Feb 14, 2008

09752712 (B.P.A.I. Feb. 14, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES E. PARKER
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Appeal 2008-1195
Application 09/752,712
Technology Center 1700
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Decided: February 14, 2008
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and PETER F. KRATZ,
Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 15, 16, 18, 20, 21, and 23. We have jurisdiction
under 35 U.S.C. § 6.
We REVERSE.
Appellant claims an assaying apparatus for collecting and analyzing a
liquid sample. The apparatus 60 comprises a container 62, a cap 68, an
Appeal 2008-1195
Application 09/752,712

assay strip 70, a wick mounted to the cap and extending into the liquid
sample space of the interior sample chamber of the container, and an annular
bridging wick piece 80 connected between the wick and the assay strip for
conducting the liquid sample from the wick to the assay strip (claim 15;
Figs. 4-5).
Representative claim 15 reads as follows:
15. Assaying apparatus for collecting and analyzing a liquid sample
for an analyte in the liquid sample, the apparatus comprising:

a container having an interior sample chamber with a liquid sample
space, said container having a surface defining an opening in communication
with said interior sample chamber;

a cap adapted to be placed on said container opening for closing said
container opening and sealing said container;

an assay strip disposed in said cap, said assay strip having an assay
region disposed in said cap for indicating the presence or absence of an
analyte in a liquid sample placed in said liquid sample space of said interior
chamber, and said cap including a separator member disposed between said
assay strip and said interior sample chamber for separating said liquid
sample space from said assay region of said assay strip;

a wick mounted to said cap and extending into said liquid sample
space of said interior sample chamber when said cap is placed on said
container, said wick being in fluid communication with said assay strip for
conducting a portion of the liquid sample from said interior chamber to said
assay region of said assay strip; and

an annular bridging wick piece connected between said wick and said
assay strip in fluid communication with said wick and said assay strip and in
immediate contact with said assay strip for conducting the liquid sample
from said wick to said assay strip.

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Appeal 2008-1195
Application 09/752,712

The references set forth below are relied upon by the Examiner as
evidence of obviousness:
Sayles 5,501,837 Mar. 26, 1996
Forsberg 6,168,758 B1 Jan. 2, 2001
Wong 6,627,152 B1 Sep. 30, 2003

All of the claims on appeal are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wong in view of Forsberg and Sayles.
According to the Examiner, "[i]t would have been obvious to one
having ordinary skill in the art to modify Wong in view of Forsberg and
Sayles to provide an 'annular' bridging wick between the main wick and test
strips to aid in drawing fluid from the wicks 3 [sic] by capillary action and
supplying the test strips 5 [sic] with a sample fluid" (Ans. 6).
We cannot sustain this rejection.
The deficiency of the Examiner's obviousness conclusion is that an
annular bridging wick piece would be unnecessary and unworkable in the
context of the assaying apparatus of Wong. This is so for a number of
reasons.
First, the Wong apparatus has no need for any type of bridging wick
piece because liquid sample is carried by receptacle 52 directly to
downwardly extending end portions 122 of test strips 120 (Figs. 4-8; col. 4,
l. 52 – col. 5, l. 20). Second, while wicks having an annular shape are
shown by Forsberg (e.g., perimeter wick 6 in Fig. 2) and Sayles (absorbent
pad 38 in Fig. 1), these annular shapes are occasioned by the radially
extending test strips of Forsberg (test strips 5 in Fig. 2) and
Sayles (reagent strips 32 in Fig. 1). In contrast, Wong’s test strips 120 are
disposed in a linear, juxtaposed arrangement along cavities 84 (Figs. 2, 4).
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Appeal 2008-1195
Application 09/752,712

The Examiner has not established that a bridging wick piece having an
annular shape as shown by Forsberg and Sayles would be capable of
transporting liquid sample to wicks having the linear, juxtaposed
arrangement of Wong.
For these reasons, the applied references provide no suggestion or
reason for combining their teachings in the manner proposed by the
Examiner. We cannot sustain, therefore, the § 103 rejection of all appealed
claims as being unpatentable over Wong in view of Forsberg and Sayles.
The decision of the Examiner is reversed.
REVERSED

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I. MORLEY DRUCKER
FULWIDER PATTON LEE & UTECHT, LLP
6060 CENTER DRIVE, TENTH FLOOR
LOS ANGELES, CA 90045

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