Ex Parte Sanadi

Board of Patent Appeals and Interferences

Jul 19, 2004

09883804 (B.P.A.I. Jul. 19, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not precedent of the Board.

Paper No. 17

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

____________

Ex parte ASHOK RAMESH SANADI

____________

Appeal No. 2004-1065
Application No. 09/883,804
____________

ON BRIEF
____________

Before OWENS, JEFFREY T. SMITH and PAWLIKOWSKI, Administrative
Patent Judges.
PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 from the
examiner’s final rejection of claims 32 and 33.1 A copy of each
of the these claims is set forth below:
32. A device for holding specimens in a plurality
of chambers, said device comprising:
a single-piece unitary body;

1 We note that appellant’s Appendix to the brief incorrectly identifies
claims 32 and 33 as claims 1 and 2. We refer to the claims as claims 32 and
33.
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said unitary body having a generally rectangular
planar plate, said plate having a principal surface,
said principal surface having a length and a width;
said plate having a perimeter defined by four
free edges of said plate, said four free edges each
being substantially co-planar with said plate;
said principal surface having a plurality of
openings defined by said plate, said openings forming
an array of columns and rows along said length and
width of said principal surface;
said unitary body further defining a plurality of
hollow tube shaped projections in register with said
openings and extending perpendicularly from said
plate; and
said plurality of openings providing passage into
said hollow tube-shaped protections;
wherein at least some of said hollow tube-shape
projections having closed ends opposite said openings,
said closed ends of said tube-shaped projections being
conical in shape.

33. The device recited in claim 32, wherein each
of said openings in said principal surface is
surrounded by an annular ridge.

The examiner relies upon the following references:
Cooke et al. (Cooke) 3,356,462 Dec. 05, 1967
Kessler 3,785,928 Jan. 15, 1974
Thorne 4,154,795 May 15, 1979
Litt 4,824,230 Apr. 25, 1989

Claim 32 stands rejected under 35 U.S.C. § 103 as being
obvious over Litt in view of Cooke and Thorne.
Claim 33 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Litt in view of Cooke or Thorne and further in
view of Kessler.
On page 3 of the brief, appellant states that the claims
stand together. We, therefore, need only consider claim 32 in
this appeal. 37 CFR § 1.192(c)(7) and (8)(2003).
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OPINION
For the reason set forth in answer, we affirm each of the
rejections. Our comments below are for emphasis only.
On page 4 of brief, appellant argues that the claimed
invention requires a “single-piece unitary body”, and Litt does
not suggest a single-piece unitary body. Hence, the issue is
whether the wells, 14a, 14b, 14c, and 14d, as depicted, for
example, in Figure 2 of Litt, are separate pieces of the
microtiter plate of Litt.
Firstly, we observe that appellant’s specification
indicates that the wells or tubes may be discrete elements
temporarily attached to a tray or plate, or preferably are
formed integrally with a plate. See page 5, lines 10-12.
Hence, it is possible that a “single-piece unitary body” means
multiple pieces that have been bonded together to form a unitary
piece, and does not necessarily mean a single-piece molded
structure, for example.
In response to appellant’s position identified above, the
examiner, on pages 5 and 6 of the answer, fully addresses
appellant’s arguments. We incorporate the examiner’s comments
as our own because we agree with the examiner’s conclusion that
Litt does suggest a single-piece unitary body.
The examiner correctly points out that Litt (column 1,
lines 65-67) characterizes the microtiter plate as “having a
plurality of wells therein”. The examiner also points out that
Litt teaches, at column 2, lines 32-36, that the microtiter
plate is a “multi-well member known as a microtiter plate.” The
noun “member” is singular in form, which suggests a single-piece
unitary body.
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Appellant argues that because Litt discloses that plate 10
has a base 12 from which is supported a matrix-like array of
wells 14 (column 2, lines 49-51), that Litt does not suggest a
single-piece unitary body. Brief, page 4. We are not convinced
by appellant’s argument here. It is not evident how a plate 10
having a base 12 that supports wells cannot be a single-piece
unitary structure. The examiner’s point, that the disclosed
“multi-well member” suggests a single-piece unitary body, is
more convincing to us since the noun “member” is singular in
form.
Therefore, we conclude that we agree with the examiner’s
position that Litt does suggest a single-piece unitary body.
In the paragraph bridging pages 4 and 5 of the brief,
appellant argues that there is no motivation to combine Litt and
Cooke due to the requirement that Litt’s structure has to be
substantially planar in shape in order to be integrated with the
visualization detector. Appellant argues that by changing the
bottom design of the wells, the visualization pattern will not
operate according to its intended purpose. Appellant argues
that incorporation of the conical bottom feature of Cooke into
the apparatus of Litt would render the apparatus of Litt
unsatisfactory for its intended purposes. Brief, page 5.
On page 7 of the answer, the examiner correctly points out
that Litt teaches two different shapes for the well bottoms,
both planar or curved. See column 2, lines 52-54. Hence, we
agree with the examiner’s statement that “this clearly shows
that the shape of the closed bottom is not critical of the
functioning of the plate” of Litt. Answer, page 7.
Beginning on page 6 of the brief, appellant argues that
Thorne asserts that the wells are removable from the tray recess
2. Appellant also argues that Thorne does not disclose a
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single-piece unitary structure. As discussed above, Litt
suggests the feature of a single-piece unitary body. The
examiner relies upon Thorne for teaching shapes of wells, such
as flat, hemispherical, conical, or a combination thereof, and
for teaching that certain shapes of wells are considered
equivalent to each other. Answer, page 4.
With regard to the rejection of claim 33, which
additionally involves the reference of Kessler, although we
stated that we only need consider claim 32 in this appeal, we do
make the following comments. Claim 33 requires that each of the
openings in the principle surface of the plate is surrounded by
an annular ridge. At the bottom of page 6 of the brief,
appellant refers to the same arguments used in connection with
the first rejection in that there is no motivation to combine
Litt with Cooke or Thorne. We disagree for the reasons
discussed above. Appellant also states “there would be no
motivation to further apply the Kessler reference.” Brief, page
6.
On page 8 of the answer, the examiner states that Kessler
teaches wells having curved bottoms and shows an annular ridge
surrounding each of the wells. Appellant does not dispute these
findings made by the examiner.
In view of the above, we therefore affirm each of the
rejections.

Appeal No. 2004-1065
Application No. 09/883,804

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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).

AFFIRMED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)BOARD OF PATENT
) APPEALS AND
JEFFREY T. SMITH ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

BAP/sld
Appeal No. 2004-1065
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