Ex Parte Ross et al

Board of Patent Appeals and Interferences

Dec 29, 2009

10246898 (B.P.A.I. Dec. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte AMELIA A. ROSS and STEVE BERNSTEIN
__________

Appeal 2009-002659
Application 10/246,898
Technology Center 1600
__________

Decided: December 29, 2009
__________

Before DEMETRA J. MILLS, MELANIE L. McCOLLUM, and
STEPHEN WALSH, Administrative Patent Judges.

Opinion filed by the Board by Administrative Patent Judge MILLS.

Concurring Opinion filed by Administrative Patent Judge McCOLLUM.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).

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STATEMENT OF CASE
The following claims are representative.
1. A device for isolating and identifying a target cell from a cellular
mixture, said device comprising:
a solid substantially planar surface having a bioactive coating applied
on a top open planar region of said solid substantially planar surface; and,
at least one bifunctional compound capable of binding to said target
cell and to said bioactive coating; and
a delivery conduit mounted on said solid substantially planar surface
and communicating said bifunctional compound with said bioactive coating
on said open planar region of said solid substantially planar surface;
said delivery conduit mounted on said solid substantially planar
surface so as to form an unsealed space between said delivery conduit and
said solid substantially planar surface, said unsealed space having a
predetermined height and said space allowing flow of said bifunctional
compound to travel beyond said delivery conduit across said substantially
planar surface over said bioactive coating on said substantially planar
surface.

2. The device of claim 1 further comprising a binder molecule conjugated
with a visual indicator probe.

3. The device of claim 1 wherein said bioactive coating is selected from the
group consisting of avidin, streptavidin, avidin derivatives, streptavidin
derivatives, and blends thereof.

7. The device of claim 1 wherein said delivery conduit includes a capillary
annulus in spaced relationship with said solid substantially planar surface.

8. The device of claim 7 further comprising a fluid absorbing media
surrounding said capillary annulus.

9. The device of claim 8 further comprising a specimen chamber in
communication with said capillary annulus.

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Cited References
Rogers et al. US 4,043,292 Aug. 23, 1977
Carrico, Jr. et al. US 5,419,279 May 30, 1995
Tseung et al. US 5,439,649 Aug. 8, 1995
Tom-Moy et al. US 6,235,488 B1 May 22, 2001
Oberhardt US 6,251,615 B1 Jun. 26, 2001
Peltier US 6,627,158 B1 Sep. 30, 2003
Loeffler et al. US 6,673,620 B1 Jan. 6, 2004

Grounds of Rejection
1. Claims 1-8, 10, 11, and 30-35 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Carrico in view of Loeffler, Peltier, Oberhardt, and
Tom-Moy.
2. Claims 1-7, 9, 10, 30, and 32-35 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Carrico in view of Tseung, Oberhardt and Tom-
Moy.
3. Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Carrico in view of Loeffler, Peltier, Oberhardt, Tom-Moy and Rogers.

Rejection 1
1. Claims 1-8, 10, 11, and 30-35 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Carrico in view of Loeffler, Peltier, Oberhardt, and
Tom-Moy.

ISSUE
The Examiner argues that the pending claims are unpatentable over
Carrico in view of Loeffler, Peltier, Oberhardt, and Tom-Moy.
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Appellants contend that the combination of references is inappropriate
because the sealing of the chamber is essential to the operation of the cell
deposition devices of Carrico and Loeffler. Appellants argue that the
modification of Carrico and Loeffler with the chamber of Peltier is
implausible because Carrico and Loeffler would fail to operate for their
intended utility.
The issue is: Have Appellants demonstrated error in the Examiner’s
prima facie case of obviousness showing lack of motivation to combine the
cited references?

FINDINGS OF FACT
1. The Examiner finds that
Carrico Jr., et al. teaches a device for depositing and
staining cytological material on a microscope slide (see entire
document, particularly Fig. 1). The device comprises a solid
substantially planar surface (microscope slide, reference
element 24 in Fig. 1) having a bioactive coating (poly-L-lysine)
applied on top of an open planar region of surface (column 4,
lin4s [sic] 6-23) and a tube (reference element 10 in Fig. 1)
mountable on the surface. The device of Carrico Jr., et al. can
be used for cell preparation with the advantage of avoiding
overlapping of the cells and distorted morphology compared to
the existing cell preparation method using centrifugation
(column 1, lines 49-54). In addition, the device of Carrico, Jr. et
al. can be further used to perform staining assays following
immobilization of the cells on the slide surface (column 4, lines
34-44).

(Ans. 5-6.)

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2. The Examiner finds that
Carrico, Jr. et al. fails to teach a device, further comprising a
bifunctional compound capable of binding to a target cell and to
the bioactive coating and wherein said delivery conduit
mountable on said solid substantially planar surface so as to
form a space between said delivery conduit and said solid
substantially planar surface, said space having a predetermined
height and said space allowing flow of said bifunctional
compound between said delivery conduit and said substantially
planar surface over said bioactive coating on said substantially
planar surface.

(Ans. 6.)
3. The Examiner finds that
Loeffler et al. teaches an instrument that is capable of
performing incubations of small volumes of reagents on the
surface of a microscope slide (see entire document). A variety
of assays are typically carried out on the surface of a
microscopic slide. During theses assays, it is important to
spread the reagent over the slide surface without evaporation
(column 1, lines 51-60). The instrument of Loeffler et al.
includes a reagent passageway (delivery conduit, reference
elements 19, 14 and 23 in Fig. 6), which forms a space (3/1000
inch = 7.62 μm, column 7, lines 23-26 and Fig. 7) between the
reagent passageway and the microscope slide in order to spread
reagent evenly on the treatment area without entrapped air
bubbles. Further, the reagent passageway of Loeffler et al.
allows use of minimal reagent volume to cover the treatment
area of the slide surface and prevents evaporation even when
heated (column 2, lines 1-10).

(Id. at 6-7.)
4. Loeffler et al. “teaches a method of using a vacuum to draw the reagent
through from one fluid port and exit out the other end to facilitate the
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spreading of the reagent within the treatment area (Fig. 12), wherein the
space between the delivery conduit and the surface of a microscope slide is
sealed (Fig. 7).” (Ans. 7.)
5. “Loeffler et al. fails to teach that the space between the delivery conduit
and the surface of a microscope slide is unsealed.” (Id.)
6. The Examiner finds that Peltier teaches a device for depositing cells on
an analytical plate (solid planar surface) including a receptor chamber 5
(delivery conduit) placed above (mounted on) the analytical plate 1 having a
cell deposition zone whose bottom is open (space) and an absorbent material
(reference element 7 in the Figure) surrounding the reaction chamber/area
(Abstract), which facilitates homogenous deposition of cells and reagents
(column 2, lines 1-49). The cells are deposited and fixed with a cell fixative.
(Col. 1, ll. 11-16.) (Ans. 8.)
7. The reception chamber of Peltier has an open bottom, gap or space.
(Claims 6 and 9.)
8. Peltier does not teach avidin biotin as the cell deposition agent.
9. Tom-Moy relates to devices which provide for selective binding of
chemical species to a substrate. The device includes a measurement surface
having a ligand binding layer or coating on the surface. (Col. 1, ll. 10-17
and col. 2, ll. 12-19; Figures 2 and 3.)
10. Tom-Moy discloses that the measurement surface includes a ligand
binding compound such as avidin-biotin. (Col. 2, ll. 38-47.)
11. Oberhardt teaches that it is well known to separate and deposit cells
using a particular capture species, such as to affix antibody to the capture
zone using a biotinylated antibody to bind avidin. (Col. 19, ll. 38-65.)
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12. The Examiner finds that:
[I]t would have been obvious to one of ordinary skill in the art
at the time of the invention to employ an absorbent material
surrounding the treatment surface area in place of a vacuum
pump with a sealed delivery conduit around the treatment
surface area of Carrico . . . in view of Loeffler et al. in order to
facilitates homogenous deposition of cells and reagents to the
treatment area of the planar surface. The advantage of facilitates
homogenous deposition of cells and reagents to the treatment
area of the planar surface without the use of external
vacuum/pump system for fluid flow within the treatment area
provides the motivation to substitute the vacuum pump with a
sealed delivery conduit around the treatment surface area of
Carrico . . . in view of Loeffler et al. with the absorbent
material of Peltier with a reasonable expectation of success.

(Ans. 10.)

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).

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“[W]hen a prima facie case is made, the burden shifts to the applicant
to come forward with evidence and/or argument supporting patentability.” In
re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002). Rebuttal evidence is
“merely a ‘showing of facts supporting the opposite conclusion.’” In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
If when combined, the references “would produce a seemingly
inoperative device,” then they teach away from their combination. In re
Sponnoble, 405 F.2d 578, 587 (CCPA 1969); see also, In re Gordon, 733
F.2d 900, 902 (Fed. Cir. 1984) (finding no suggestion to modify a prior art
device where the modification would render the device inoperable for its
intended purpose).

ANALYSIS
Appellants contend that the sealing of the chamber is essential to the
operation of the cell deposition devices of Carrico and Loeffler. (App. Br.
10-11.) Appellants argue that the modification of Carrico and Loeffler with
the chamber of Peltier is implausible because Carrico and Loeffler would
fail to operate for their intended utility. (App. Br. 10-11.)
The Examiner argues that:
Although the delivery conduit device of Loeffler et al. employs
a sealed chamber to provide pressure-induced (vacuum) fluid
flow, one of ordinary skilled in the art at the time of the
invention would have been motivated to employ an absorbent
material surrounding the treatment surface area (unsealed
delivery conduit) as taught by Peltier in place of a vacuum
pump with a sealed delivery conduit around the treatment
surface area as taught by Carrico, Jr. et al. in view of Loeffler et
al. in order to facilitates homogenous deposition of cells and
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reagents to the treatment area of the planar surface. The
advantage of facilitating homogenous deposition of cells and
reagents to the treatment area of the planar surface without the
use of external vacuum/pump system for fluid flow within the
treatment area provides the motivation to substitute the vacuum
pump with a sealed delivery conduit around the treatment
surface area of Carrico, Jr. et al. in view of Loeffler et al. with
the absorbent material of Peltier with a reasonable expectation
of success.

(Ans. 20.)

We are convinced by Appellants’ arguments and do not agree with the
Examiner’s fact finding. More particularly, Appellants argue that:
The functional utility of Carrico, Jr. et al., is its ability to
allow a cell collection to be stained using standard staining
methods with the cell delivery conduit still in place while
preventing undesirable “floating” of cells from one sample slide
to another sample slide. See Column 4, lines 23-33. This
functional utility is a direct result of the presence of a seal (O-
Ring 22) insofar as the seal both: (1) securely holds the slide in
place relative to the delivery conduit (tube 10) during the
depositing and staining of the material on the slide surface
(Column 3, line 63-65); and (2) prevents leakage of liquid at the
interface of the slide surface and the bottom of the tube
(Column 4, lines 15-18).
An absorbent material (e.g., a blotting paper) as in Peltier
would not securely hold a slide in place relative to the delivery
conduit and would not prevent leakage between a slide and a
delivery tube because, respectively, an absorbent material has
little structural integrity (especially when wet) and would not
prevent the absorbed media from leaking from around its edges.
Hence, it is clear that an absorbent material would simply
outright defeat the functional utility of Carrico, Jr. et al.
…. The functional utility of Loeffler et al. is its ability to
perform incubations of small volumes of reagents on the
surface of a microscope slide. Column 1, lines 16-18. This
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functional utility is directly related to the presence of a seal
insofar as sealing of the reagent in a confined cavity, or
“chamber” prevents evaporation even with heating of small
amounts of reagent during an incubation period. Column 3,
lines 10-16.
An absorbent material (e.g., a blotting paper) as in Peltier
would not prevent evaporation within the confined cavity of the
since it would not prevent the absorbed media from leaking
around its edges and exposing it to ambient air. Hence, as with
Carrico, Jr. et al., it is clear an absorbent material completely
defeats the functional utility of Loeffler et al. as well.
. . . .The use of an absorbent material in either Carrico,
Jr. et al. or in Loeffler et al. does, in fact, defeat the functional
utility of these two devices.

(Reply Br. 2-3.)
We further agree with Appellants that removing the seal of Loeffler
and replacing it with the absorbent material of Peltier would break the seal
and would make it “impossible to create a vacuum within the changer of the
Loeffler et al. device.” (App. Br. 9-10.)
Thus, we agree with Appellants that the modification of the devices of
Carrico and Loeffler with the absorbent material and space of Peltier would
render the devices of Carrico and Loeffler inoperable for their intended
purpose.

CONCLUSION OF LAW
Appellants have demonstrated error in the Examiner’s prima facie
case of obviousness. Rejection 1 is reversed.

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Rejection 2
2. Claims 1-7, 9, 10, 30, and 32-35 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Carrico in view of Tseung, Oberhardt and Tom-
Moy.
FINDINGS OF FACT
13. The Examiner finds that
Carrico Jr., et al. teaches a device for depositing and
staining cytological material on a microscope slide (Fig. 1). The
device comprises a solid substantially planar surface
(microscope slide, reference element 24 in Fig. 1) having a
bioactive coating (poly-L-lysine) applied on top of an open
planar region of surface (column 4, lin4s [sic] 6-23) and a tube
(reference element 10 in Fig. 1) mountable on the surface. The
device of Carrico Jr., et al. can be used for cell preparation with
the advantage of avoiding overlapping of the cells and distorted
morphology compared to the existing cell preparation method
using centrifugation (column 1, lines 49-54). In addition, the
device of Carrico, Jr. et al. can be further used to perform
staining assays following immobilization of the cells on the
slide surface (column 4, lines 34-44).

(Ans. 12.)
14. The Examiner finds that:
Carrico, Jr. et al. fails to teach a device, further comprising a
bifunctional compound capable of binding to a target cell and to
the bioactive coating and a delivery conduit mountable on said
solid substantially planar surface so as to form an unsealed
space between said delivery conduit and said solid substantially
planar surface, said space having a predetermined height and
said space allowing flow of said bifunctional compound
between said delivery conduit and said substantially planar
surface over said bioactive coating on said substantially planar
surface.

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(Id.)
15. The Examiner finds that:
Tseung et al. teaches an automated staining apparatus,
which includes reagent application tip (reference element 90,
delivery conduit) positioned (mounted) on top of a surface of
microscope slides (Fig. 3). The automated staining apparatus of
Tseung et al. is readily programmable to allow automated
staining of individual microscope slides with different
techniques without operator intervention in a single operation
and uses staining reagents efficiently with a minimum of waste
and without extraneous steps (column 2, lines 27-35).

(Id. at 12-13.)

16. Tseung fails to teach a bifunctional reagent.
17. “With respect to claim 7, Tseung et al. et al. [sic] teaches a delivery
conduit, which includes a capillary annulus in spaced relation with the
planar surface (Fig. 5A).” (Ans. 13.)
18. The Examiner finds that
[I]t would have been obvious to one of ordinary skill in the art
at the time of the invention to employ a delivery conduit
mounted on a solid substantially planar surface forming an
unsealed space between said delivery conduit and said solid
substantially planar surface as taught by Tseung et al. over the
treatment surface area of the microscope slide (solid
substantially planar surface) in the device of Carrico, Jr. et al.,
in order to introduce reagents efficiently with a minimum of
waste and without extraneous steps. The advantages of allowing
automated staining of individual microscope slides with
different techniques without operator intervention in a single
operation and using staining reagents efficiently with a
minimum of waste and without extraneous steps provide the
motivation to combine the teachings of Carrico, Jr. et al. and
Tseung et al. with a reasonable expectation of success. In
addition, it would have been obvious to one of ordinary skill in
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the art at the time of the invention to use the coating method
using avidin as the bioactive coat on a solid surface followed by
a biotinylated antibody (bifunctional compound), which is
capable of binding to a target cell and the bioactive coating of
avidin, as taught by Oberhardt in the device of Carrico, Jr. et al.
in view of Tseung et al. in order to immobilize a target cell
using avidin-biotin chemistry as avidin and biotin bind tightly
to one another, which provide stronger adhesive force to keep
the cells in place during subsequent processing of the cells. The
advantage of using potential binding sites for antigenic species
(target cells), which are amplified as a single molecule of avidin
has four biotin binding sites, and high binding affinity and
specificity of biotin-avidin as taught by Tom-Moy et al.
provides the motivation to combine the teachings of Carrico, Jr.
et al. in view of Tseung et al. and Oberhardt with a reasonable
expectation of success as the biotinylated antibodies, which are
capable of binding to a specific target cells, allow identification
and characterization of specific populations of cells in a sample.

(Ans. 14-15.)

ISSUE
The Examiner finds that Carrico
[F]ails to teach a device, further comprising a bifunctional
compound capable of binding to a target cell and to the
bioactive coating and a delivery conduit mountable on said
solid substantially planar surface so as to form an unsealed
space between said delivery conduit and said solid substantially
planar surface, said space having a predetermined height and
said space allowing flow of said bifunctional compound
between said delivery conduit and said substantially planar
surface over said bioactive coating on said substantially planar
surface.

(Id. at 12.)

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However, the Examiner finds that:
Tseung et al. teaches an automated staining apparatus,
which includes reagent application tip (reference element 90,
delivery conduit) positioned (mounted) on top of a surface of
microscope slides (Fig. 3). The automated staining apparatus of
Tseung et al. is readily programmable to allow automated
staining of individual microscope slides with different
techniques without operator intervention in a single operation
and uses staining reagents efficiently with a minimum of waste
and without extraneous steps (column 2, lines 27-35).

(Ans. 12-13.)

Appellants contend that Carrico teaches away from the unsealed space
of claim 1 and argues that the combination of Carrico with Tseung would
render Carrico useless for its intended purpose. (App. Br. 13-14.)
The issue is: Have Appellants demonstrated error in the Examiner’s
prima facie case of obviousness?

ANALYSIS
Appellants contend that Carrico teaches away from the unsealed space
of claim 1 and argues that the combination of Carrico with Tseung would
render Carrico useless for its intended purpose. (App. Br. 13-14.)
We do not find the Examiner’s argument that it would have been
obvious to employ a delivery conduit mounted on a solid substantially planar
surface forming an unsealed space between said delivery conduit and said
solid substantially planar surface as taught by Tseung over the treatment
surface area of the microscope slide (solid substantially planar surface) in
the device of Carrico, Jr., in order to introduce reagents efficiently with a
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minimum of waste and without extraneous steps, sufficiently addresses
Appellants’ argument regarding the inoperably of Carrico for its intended
purpose, as discussed herein.
For the reasons given with respect to Rejection 1 herein, we reverse
this rejection.

CONCLUSION OF LAW
Appellants have demonstrated error in the Examiner’s prima facie
case of obviousness. In view of the above, Rejection 2 is reversed.

3. Claim 9 is rejected over Carrico in view of Loeffler, Peltier, Oberhardt,
Tom-Moy and Rogers.

FINDINGS OF FACT
19. The Examiner finds that:
Carrico, Jr. et al. in view of Loeffler et al., Oberhardt,
and Tom-Moy et al. teaches a device as discussed above (see
item 9 above). Furthermore, the device of Carrico, Jr. et al. is
best suited for use on an automated cytological specimen
analyzer system since the configuration of the base plate makes
it suitable for arrangement in a plurality (column 4, lines 34-
40). Thus, the depositing of the cytological material and the
subsequent staining can be done automatically on a large
number of samples without human intervention (column 4, lines
41-44).

(Ans. 16.)

20. “Carrico, Jr. et al. in view of Oberhardt and Tom-Moy et
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al. fails to teach device, further comprising a specimen chamber in
communication with the capillary annulus.” (Id.)
21. “Rogers et al. teaches an automatic staining apparatus for staining
biological specimen with a reagent dispenser comprising compartments
containing various reagents necessary for staining (column 2, line 64-
column 3, line 5 and Fig. 2).” (Id.)
22. The Examiner finds that:
[I]t would have been obvious to one of ordinary skill in the art
at the time of the invention to employ the automatic staining
apparatus equipped with a reagent dispenser comprising
compartments containing various reagents for biological
staining as taught by Rogers et al. since the device of Carrico,
Jr. et al. in view of Loeffler et al., Oberhardt, and Tom-Moy et
al. is best suited for use on an automated cytological specimen
analyzer system, which allows automation of depositing of the
cytological material and the subsequent staining on a large scale
without human intervention.

(Id. at 17.)

ISSUE
The Examiner finds that:
[I]t would have been obvious to one of ordinary skill in the art
at the time of the invention to employ the automatic staining
apparatus equipped with a reagent dispenser comprising
compartments containing various reagents for biological
staining as taught by Rogers et al. since the device of Carrico,
Jr. et al. in view of Loeffler et al., Oberhardt, and Tom-Moy et
al. is best suited for use on an automated cytological specimen
analyzer system, which allows automation of depositing of the
cytological material and the subsequent staining on a large scale
without human intervention.
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(Id.)
Appellants argue that claim 9 stands or falls with claim 1. (App. Br.
16.)
The issue is: Have Appellants demonstrated error in the Examiner’s
prima facie case of obviousness showing lack of motivation to combine the
cited references?

ANALYSIS
As Appellants have indicated that claim 9 stands or falls with claim 1,
Rejection 3 is reversed for the reasons given for claim 1 herein.

CONCLUSION OF LAW
Appellants have demonstrated error in the Examiner’s prima facie
case of obviousness. The rejection is reversed.

SUMMARY
The obviousness rejections are reversed.

REVERSED

cdc
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McCOLLUM, Administrative Patent Judge, concurring.

I concur with the decision to reverse the rejections of record.

Carrico in view of Loeffler, Peltier, and other references
Claims 1-8, 10, 11, and 30-35 stand rejected under 35 U.S.C. § 103(a)
as obvious over Carrico in view of Loeffler, Peltier, Oberhardt, and Tom-
Moy (Ans. 5). Claim 9 stands rejected under 35 U.S.C. § 103(a) as obvious
over Carrico in view of Loeffler, Peltier, Oberhardt, Tom-Moy, and Rogers
(id. at 16).
The majority concludes that “modification of the devices of Carrico
and Loeffler with the absorbent material and space of Peltier would render
the devices of Carrico and Loeffler inoperable for their intended purpose”
(Majority Opinion 10). I do not agree with the majority’s analysis.
However, I do agree that the Examiner has failed to set forth a prima facie
case of obviousness. I therefore concur in result.
ISSUE
Did the Examiner err in combining Carrico with Loeffler and Peltier?
FINDINGS OF FACT
23. Carrico discloses that an apparatus is known in the art that
“includes a cylindrical sample chamber with a microscope slide abutting one
end of the sample chamber,” but that a disadvantage of this “device is that
the slides must be removed from the assembly in order for the cells to be
stained using standard staining methods,” creating “a risk that some cells
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from one patient’s slide may become dislodged and float over to and adhere
to a different patient’s slide” (Carrico, col. 1, ll. 25-65).
24. Thus, Carrico discloses “an apparatus for depositing and
staining cytological material on a microscope slide” (id. at col. 2, ll. 5-6
(emphasis added)).
25. In particular, Carrico discloses a device including “a sealing
member 22, which in a preferred embodiment, is an O-ring or similar device,
disposed at the bottom end of the tube 10 where the tube abuts the surface of
the microscope slide” (id. at col. 3, ll. 3-6).
26. Carrico also discloses that the “downward force exerted by the
tube 10 on the microscope slide through O-ring 22 is sufficient to securely
hold the slide in place in recessed area 29 during the depositing and staining
of the cytological material on the slide surface” (id. at col. 3, ll. 61-65
(emphasis added)).
27. In addition, Carrico discloses that the “O-ring 22 prevents any
leakage of liquid at the interface of the slide surface and the bottom end of
the tube 10” (id. at col. 4, ll. 15-18).
28. Carrico also discloses that its apparatus “permits the cell
collection to be stained using standard staining methods with the tube 10 still
in place on the slide, thereby preventing the undesirable ‘floating’ of cells
from one sample slide to another sample slide” (id. at col. 4, ll. 23-28).
29. Peltier discloses:
A device for depositing cells on an analytical plate includ[ing] a
reception chamber which is to be placed above the analytical
plate and whose bottom is open, and a material for absorbing a
fixative in a cell suspension in the reception chamber[, t]he
absorbent material ha[ving] a hole therein whose interior wall
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forms an extension of the reception chamber that defines a gap
between the reception chamber and the analytical plate through
which the cell fixative is absorbed.
(Peltier, Abstract.)
30. In particular, Peltier discloses that the bottom of the reception
chamber “is located at a distance from the analytical plate 1 and is in liquid
communication with a material for absorbing the cell fixative for the purpose
of absorbing the latter progressively and enabling the cells to be deposited
homogenously on the cell deposition zone of the plate” (id. at col. 2, ll. 13-
18).
31. Peltier does not disclose that its device can be used for staining
the cells with the reception chamber still in place on the plate.
PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citation omitted).
A proposed modification or combination of the prior art that would
change the basic principles under which the prior art invention was designed
to operate weighs against a conclusion of prima facie obviousness. In re
Ratti, 270 F.2d 810, 813 (CCPA 1959).
ANALYSIS
Peltier discloses a device that is similar to the device of claim 1.
However, rather than providing a rationale for why one of ordinary skill in
the art would have modified Peltier’s device to include, for example, a
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bioactive coating on its analytical plate, the Examiner argues that it would
have been obvious to modify Carrico based on Loeffler and to further
modify the resulting device based on Peltier, as well as other references
(Ans. 5-11). By the time the Examiner has finished, it is not clear what
aspects of the invention are being retained from Carrico other than the
bioactive coating. In so doing, I find that the Examiner has changed the
basic principles of operation of Carrico such that the proposed modification
would not have been obvious.
In particular, Carrico discloses a device for depositing and staining
cytological material on a microscope slide, while “preventing the
undesirable ‘floating’ of cells” (Findings of Fact (FF) 24 & 28). In order to
achieve this function, Carrico discloses a device having a sealing
member 22, such as an O-ring (FF 25). Carrico discloses that this sealing
member securely holds the slide in place during depositing and staining of
the cytological material and prevents leakage of liquid (FF 26-27). Carrico
does not disclose or suggest that its intended function can be achieved
without forming a seal. I find that eliminating the seal would change the
basic principles under which Carrico’s device was designed to operate.
Peltier discloses a “device for depositing cells on an analytical plate”
(FF 29). In particular, Peltier discloses a device including a reception
chamber having a bottom that “is located at a distance from the analytical
plate 1 and is in liquid communication with a material for absorbing the cell
fixative for the purpose of absorbing the latter progressively and enabling
the cells to be deposited homogenously on the cell deposition zone of the
plate” (FF 29-30). Peltier does not disclose or suggest that its device can
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also be used to stain cells with the reception chamber still in place on the
plate (FF 31). Thus, I do not agree that one of ordinary skill in the art would
have modified Carrico’s device to replace its sealing member with Peltier’s
absorbent material.
CONCLUSION
I conclude that the Examiner erred in combining Carrico with Loeffler
and Peltier. I therefore concur with the decision to reverse the rejection of
claims 1-8, 10, 11, and 30-35 under 35 U.S.C. § 103(a) as obvious over
Carrico in view of Loeffler, Peltier, Oberhardt, and Tom-Moy and the
rejection of claim 9 under 35 U.S.C. § 103(a) as obvious over Carrico in
view of Loeffler, Peltier, Oberhardt, Tom-Moy, and Rogers.

Carrico in view of Tseung and other references
Claims 1-7, 9, 10, 30, and 32-35 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Carrico in view of Tseung, Oberhardt, and Tom-
Moy (Ans. 11-12). In rejecting the claims on this basis, the Examiner finds
that it would have been obvious to “replac[e] the delivery conduit (tube) of
Carrico . . . with the delivery conduit apparatus of Tseung” (Ans. 26). I
agree with the majority that replacing Carrico’s delivery conduit with
Tseung’s delivery conduit apparatus would render Carrico’s device
inoperable for its intended purpose. I therefore concur with the decision to
reverse the rejection of claims 1-7, 9, 10, 30, and 32-35 under 35 U.S.C.
§ 103(a) as obvious over Carrico in view of Tseung, Oberhardt, and Tom-
Moy.
CONCURRING
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INSKEEP INTELLECTUAL PROPERTY GROUP, INC
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SUITE 200
TORRANCE CA 90504

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