Ex parte Riekkinen et al.

Board of Patent Appeals and Interferences

Jul 19, 2001

08966708 (B.P.A.I. Jul. 19, 2001)

An oral hearing was set and confirmed for July 11, 20011
(see Paper Nos. 27 and 28). Since counsel did not appear at
the hearing to argue the appellants’ case, this appeal is
being decided on brief.
The opinion in support of the decision being
entered today was not written for publication
and is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JARI-PEKKA RIEKKINEN
and JUKKA SAUKKONEN
____________
Appeal No. 2001-0558
Application No. 08/966,708
____________
ON BRIEF1
____________
Before ABRAMS, McQUADE and NASE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Jari-Pekka Riekkinen et al. originally took this appeal
from the final rejection of claims 2 through 10, 22 through
25, 32 and 33. The appellants have since canceled claim 2 and
amended claims 22, 23 and 32. Thus, the appeal now involves
Appeal No. 2001-0558
Application No. 08/966,708
The language in claim 32 relating to the common2
separating wall is somewhat garbled. Based on the underlying
specification, particularly page 1, we understand the
recitation that the reaction vessels have a common separating
wall to mean that any two adjacent reaction vessels in a
multicell cuvette are separated by a common wall. Also, the
recitation in claim 32 that the bonding strip is adherable to
a surface about a mouth of the reaction vessel of the
multicell cuvettes is ambiguous since the multicell cuvettes
have a plurality of reaction vessels with a corresponding
plurality of mouths. Finally, claims 3 and 22 and claims 6
2
claims 3 through 10, 22 through 25, 32 and 33, the only claims
currently pending in the application.
THE INVENTION
The invention relates to a cuvette package which is
defined in representative claim 32 as follows:
32. A handling package of multicell cuvettes, said
package comprising:
a row of multicell cuvettes formed by a plurality of
reaction vessels, said reaction vessels of the multicell
cuvettes being adapted adjacent to each other so that the
vessels have a common separating wall, whereby the multicell
cuvettes may be packed in a contiguous row in which long sides
of abutting multicell cuvettes are placed tightly adjacent to
each other; and
a bonding strip adherable to a surface about a mouth of
the reaction vessel of the multicell cuvettes so as to be
detachable prior to use, said strip serving to join the row of
multicell cuvettes into a contiguous handling package, wherein
said bonding strip has a width smaller than the cross-package
length of the multicell cuvettes. 2
Appeal No. 2001-0558
Application No. 08/966,708
and 23 are duplicates, and the term “the other end” in claim
10 lacks a proper antecedent basis. These matters are
deserving of correction upon return of the application to the
technology center.
3
THE PRIOR ART
The prior art items relied on by the examiner as evidence
of
obviousness are:
Shelton et al. (Shelton) 3,966,042 Jun.
29, 1976
Witty et al. (Witty) 4,675,299 Jun. 23,
1987
Winski 5,269,645 Dec. 14,
1993
The multicell cuvette assembly discussed on page 1, lines 12
through 32, of the appellants’ specification (the admitted
prior art)
THE REJECTIONS
Claims 3 through 8, 22 through 25 and 32 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the
admitted prior art in view of Witty.
Claims 9, 10 and 33 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over the admitted prior art in
view of Witty, Winski and Shelton.
Attention is directed to the appellants’ main and reply
briefs (Paper Nos. 21 and 25) and to the examiner’s answer
Appeal No. 2001-0558
Application No. 08/966,708
4
(Paper No. 22) for the respective positions of the appellants
and the examiner with regard to the merits of these
rejections.
DISCUSSION
Page 1, lines 12 through 32, of the appellants’
specification describes the admitted prior art in the
following words:
For the assay of different liquids, analytic
laboratories employ automatic analyzers in which the
liquids to be assayed are placed in reaction
vessels, designed to perform simultaneously as
cuvettes of high optical quality. Generally, a row
of reaction vessels or single-cell cuvettes may be
combined into a multicell module of reaction
vessels, separated from each other by a vertical
wall and cast into a single-piece row. Herein, the
reaction vessels are adapted side-by-side into an
integral module with a common wall separating any
two adjacent vessels and the long vertical sides of
the multicell cuvettes made straight so that the
multicell cuvettes in turn can be placed side-by-
side into a contiguous row in which the long sides
of the cuvettes are tightly adjacent to each other.
Thus, the cuvettes can be stored in a rectangular
container during transport and other handling. Such
a multicell cuvette design is disclosed in US Pat.
No. 4,690,900. Cuvettes of the above-described type
are easy to handle and give reliable measurement
results.
As conceded by the examiner (see page 3 in the answer),
the package of multicell cuvettes embodied by the admitted
Appeal No. 2001-0558
Application No. 08/966,708
5
prior art does not respond to the limitations in independent
claim 32 relating to the bonding strip.
Witty discloses a self-contained reagent package and
calibration assembly comprising a plurality of reagent package
devices 10 and a reagent standards device 50. Each reagent
package device includes a plurality of wells with open top
ends and a removable protective cover 21 sealed to the top of
the package to close the open top ends of all but one of the
wells. The reagent standards device includes a plurality of
receptacles having open top ends and a removable protective
cover 60 substantially similar to the removable cover 21 for
closing these open top ends.
In proposing to combine the admitted prior art and Witty
to reject claim 32, the examiner submits that
Witty et al suggest providing a strip of bonding
material 60 over a plurality of test tubes 68 to
seal the respective openings to protect the test
cells from contamination and provide a surface for
labeling information. Therefore, it would have been
obvious in view of Witty et al to provide a strip of
protective material to cover the openings of the
cuvettes of the Admitted Prior Art and to assemble
them into one package for shipping. One of ordinary
skill in the . . . art would readily understand
the width of the strip can be decreased as long as
the strip covers the openings of the cuvettes and
would have found it obvious to alter the width of
the strip to anything less than the width of the
Appeal No. 2001-0558
Application No. 08/966,708
6
assembly but more than the width of the holes to
enable the seal to be maintained but save on the
expense of the tape [answer, pages 3 and 4].
Rejections based on 35 U.S.C. § 103(a) must rest on a
factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 177-78 (CCPA 1967). In making such a rejection, the
examiner has the initial duty of supplying the requisite
factual basis and may not, because of doubts that the
invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies
in the factual basis. Id.
To the extent that Witty’s reagent package devices 10
and/or reagent standards device 50 correspond to the multicell
cuvettes of the admitted prior art, each has its own separate
and distinct bonding strip or removable cover 21, 60. There
is simply nothing in Witty’s disclosure of this structure
which would have suggested providing the admitted prior art
multicell cuvettes with a bonding strip serving to join the
row of multicell cuvettes into a contiguous handling package
as recited in claim 32, let alone with such a bonding strip
having a width smaller
Appeal No. 2001-0558
Application No. 08/966,708
7
than the cross-package length of the multicell cuvettes as
also recited in claim 32. Clearly, the examiner has resorted
to hindsight reconstruction to supply the manifest
deficiencies in this prior art combination. Furthermore,
these deficiencies find no cure in Shelton’s disclosure of a
powered fastener tool nail strip and/or Winski’s disclosure of
tacky spacing sheets for a palletizing system.
Hence, we shall not sustain the standing 35 U.S.C. §
103(a) rejection of independent claim 32, and dependent claims
3 through 8 and 22 through 25, as being unpatentable over the
admitted prior art in view of Witty, or the standing 35 U.S.C.
§ 103(a) rejection of dependent claims 9, 10 and 33 as being
unpatentable over the admitted prior art in view of Witty,
Winski and Shelton.
Appeal No. 2001-0558
Application No. 08/966,708
8
SUMMARY
The decision of the examiner to reject claims 3 through
10, 22 through 25, 32 and 33 is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
JPM/gjh
Appeal No. 2001-0558
Application No. 08/966,708
9
BIRCH, STEWART, KOLASCH
and BIRCH
P.O. BOX 747
FALLS CHURCH, VA 22040-0747
GJH
Appeal No. 2001-0558
Application No. 08/966,708
APJ McQUADE
APJ NASE
APJ ABRAMS
REVERSED
3 PERSON CONFERENCE
February 13, 2002