Ex Parte Regan et al

Patent Trial and Appeal Board

Sep 19, 2016

12039069 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/039,069 02/28/2008 John Frederick Regan
24981 7590 09/21/2016
Lawrence Livermore National Security, LLC
LA WREN CE LIVERMORE NA TI ON AL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
IL-11738 6823
EXAMINER
HURST, JONATHAN M
ART UNIT PAPER NUMBER
1799
NOTIFICATION DATE DELIVERY MODE
09/21/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
llnl-docket@llnl.gov
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN FREDERICK REGAN and JAMES MICHAEL BIRCH
Appeal2015-003552
Application 12/039,069
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 5, 8, and 12. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. An automated diagnostic vending machine apparatus
stationed at hospitals, staffed pharmacies or unstaffed locations
for analyzing vials containing specimen samples from users,
producing a disease diagnoses for the users, and communicating
the disease diagnoses to the users, consisting of:
Appeal2015-003552
Application 12/039,069
a diagnostic vending machine body unit, said diagnostic
vending machine body unit stationed at hospitals, staffed
pharmacies or unstaffed locations,
an automated diagnostic instrument in said diagnostic
vending machine body unit for diagnosing diseases that
analyzes the specimen samples in the sample vials and produces
a disease diagnoses for the users,
collection kits containing the specimen samples from the
users in said diagnostic vending machine body unit,
a movable vial acquisition unit in said diagnostic vending
machine body unit that receives the specimen samples from the
users from said collection kits and transfers the sample vials
containing the specimen samples from the users to said
automated diagnostic instrument,
a control in said diagnostic vending machine body unit
that is connected to said movable vial acquisition unit and said
' ' 1 1. ' • • ' ' 1 amomacea magnosnc ms1rumem, ana
a system for communicating the disease diagnoses to the
users located in said diagnostic vending machine body unit
wherein said system for communicating the disease diagnoses
to the users includes a touch-screen monitor.
Appellants (see Appeal Brief, generally) request review of the
following rejections from the Examiner's Final Action:
I. Claims 1and8 rejected under 35 U.S.C. 103(a) as being unpatentable
over Squilla (US 2006/0111620 Al, published May 25, 2006) and Ammann
(US 6,335,166 Bl, issued January 1, 2002).
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Appeal2015-003552
Application 12/039,069
II. Claims 5 and 12 rejected under 35 U.S.C. 103(a) as being
unpatentable over Squilla, Ammann and Bulat (US 6,638,218 B2, issued
October 28, 2003).
ANALYSIS
Prior Art Rejections
Appellants argue claims 1 and 8 in Rejection I and claims 5 and 12 in
Rejection II together. See Appeal Brief, generally. Moreover, Appellants
rely on the same line of argument in addressing both sets of claims.
Accordingly, all appealed claims stand or fall together, and we confine our
discussion to independent claims 1 and 5.
We refer to the Examiner's Final Action for a statement of Rejections
I and II. Final Act. 2-21.
Claims 1 and 5 are directed to automated diagnostic vending machine
apparatuses consisting of specific elements, where claim 5 additionally
requires a pay station.
Appellants do not dispute that the cited art teaches the elements of
claims 1 and 5. App. Br. 16, 34--35. Instead, Appellants argue the cited art
includes many elements in addition to the specific combination of claim
elements of Appellants' claims 1 and 5. Id. According to Appellants,
claims 1 and 5 are drafted with the closed transitional language of
"consisting of," which they argue excludes any element, step, or ingredient
not specified in the claim. Id. at 15, 34. Thus, Appellants argue the claims,
as drafted, are directed to specific combination of elements not found in the
proposed combination of the cited art. Id. at 16, 34--35.
As noted by the Examiner, Squilla provides guidance to one skilled
in the art to customize the automated diagnostic vending machine apparatus
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Application 12/039,069
to meet specific needs based on markets, customs and complexity so as to
exclude components not desired for economic/cost reasons. Ans. 5---6, 8-9;
Squilla i-fi-169-76. That is, Squilla's automated diagnostic vending machine
apparatus does not require all the additional elements as argued by
Appellants. Given the noted disclosure of Squilla, Appellants have not
adequately explained why one skilled in the art would not have been capable
of modifying Squilla' s automated diagnostic vending machine apparatus to
include specific items according to a desired need, such as those claimed by
Appellants. Thus, we are unpersuaded by Appellants' argument that
Squilla' s automated diagnostic vending machine apparatus includes many
elements in addition to the elements of Appellant's claims 1 and 5 for the
reasons given above. App. Br. 16, 35.
We have also fully considered Appellants' arguments with respect to
the secondary references to Ammann and Bulat and find these arguments
unavailing. App. Br. 27-37. The Examiner relied on these references to
teach specific elements such as vials (claims 1 and 5) and pay stations (claim
5) associated with automated diagnostic apparatuses. Final Act. 5, 14;
Ammann col. 1, 1. 15---col. 4 1. 30; Bulat col. 4, 11. 53-56. Appellants'
arguments with respect to these references focus on the additional elements
disclosed by them for their respective automated apparatus and do not
address the Examiner's reasons for combining the teachings of the cited art.
It is well established that nonobviousness cannot be established by attacking
the references individually when the rejection is predicated upon a
combination of prior art disclosures. In re Merck & Co., 800 F .2d 1091,
1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425-26 (CCPA 1981)
("The test for obviousness ... is what the combined teachings of the
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Application 12/039,069
references would have suggested to those of ordinary skill in the art.").
Thus, Appellants' arguments do not point to reversible error in the
Examiner's determination of obviousness.
Accordingly, we sustain the Examiner's prior art rejections under
35 U.S.C. § 103(a) for the reasons presented by the Examiner and given
above.
ORDER
The Examiner's prior art rejection of claims 1, 5, 8, and 12 under
35 U.S.C. § 103(a) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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