Ex Parte Schenk

Patent Trial and Appeal Board

Feb 25, 2016

12312345 (P.T.A.B. Feb. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/312,345 10/02/2009
45018 7590 02/29/2016
GERALD K WHITE & ASSOCIATES, P,C
13414 W. Oakwood Ct.
Suite 100
Homer Glen, IL 60491-8154
FIRST NAMED INVENTOR
Roland Schenk
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.
2620-16-PCT 9992
EXAMINER
TURK,NEILN
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
02/29/2016 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):
gkwpatlaw@aol.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROLAND SCHENK
Appeal2014-004176
Application 12/312,345
Technology Center 1700
Before ROMULO H. DELMENDO, GEORGE C. BEST, and
MONTE T. SQUIRE, Administrative Patent Judges.
SQUIRE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals the Examiner's final rejection of claims 1--4, 6-12,
16 and 17. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 Appellant identifies DiaSys Technologies s.a.r.l. as the real party in
interest. Br. 1.
Appeal2014-004176
Application 12/312,345
The Claimed Invention
Appellant's disclosure relates to a reagent carousel having
interchangeable liquid reagent containers of different sizes, wherein the
reagent carousel has a substantially circular base and compartments arranged
radially for receiving the containers and the reagent containers comprise a
substantially circular sector-shaped, trapezoidal or triangular container
bottom, a container top, and container sidewalls. Br. 5, 24; Spec. 1:5-15;
Figs. 1, 2, 4, 5.
Independent claim 1 is representative of the claims on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief (Br. 24--
25):
1. A reagent carousel (20) including various interchangeable
liquid reagent containers of different sizes, said reagent carousel
having a substantially circular carousel base surface (21) and
compartments (22) arranged radially on said carousel base
surface for receiving reagent containers (10), wherein said
compartments are defined by radially extending separating walls
(25) from which projections (27) for engagement or abutment
with a positioning groove (16, 16') or a positioning abutment
surface (16") of said reagent containers (10) extend into the
interior of a respective compartment in the form of vertically
arranged pins or vertical bars, wherein said reagent containers
are directly fitted and fixed into said compartments (22) of said
reagent carousel in a stable position without any adaptor, wherein
said reagent containers ( 10) comprise a substantially circular
sector-shaped, trapezoidal or triangular container bottom (11 ),
and container top (14), and container side walls (12, 12') which
extend substantially vertically from said container bottom (11) to
said container top ( 14) and which converge towards each other
from a container rear wall (13) to a container front side (13'),
wherein the said container top (14) has at least one closable
container opening (15), characterized in that provided at at least
one container side wall (12, 12') is at least one positioning groove
(16, 16') or positioning abutment surface (16") which starts from
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the container bottom and extends vertically in the direction of the
container top (14) for engagement or abutment with the
projections (27) on the separating walls (25) of the reagent
carousel, and wherein said various interchangeable liquid
reagent containers are selected from the group consisting of
single-chamber liquid containers which extend over an entire
compartment of said reagent carousel, single-chamber liquid
containers which extend between a projection and a radially
outer or radially inner boundary of a compartment of said reagent
carousel, two-chamber liquid containers which extend over an
entire compartment of said reagent carousel, and two-chamber
liquid containers which extend between a projection and a
radially outer or inner boundary of a compartment of said reagent
carousel wherein at least one of said liquid reagent containers is
a two-chamber liquid container which extends between a
projection and a radially outer or inner boundary of a
compartment.
The References
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Brown, Jr.
Jordan
Fechtner
Goodale
Riekkinen et al.
us 3,194,426
us 4,849, 177
us 4,970,053
us 5,985,218
EP 0678747 Al
(hereinafter "Riekkinen")
3
Jul. 13, 1965
Jul. 18, 1989
Nov. 13, 1990
Nov. 16, 1999
Oct. 25, 1995
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Application 12/312,345
The Rejections
On appeal, the Examiner maintains2 the following rejections:
1. Claims 1-3, 6-8, 11 and 123 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Jordan in view of Riekkinen.
2. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jordan in view of Riekkinen as applied to claims 1-3, 6-
8, 11 and 12, and in further view of Brown, Jr.
3. Claims 9, 10, 16, and 17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Jordan in view of Riekkinen as applied to
claims 1-3, 6-8, 11 and 12, and in further view of Goodale and Fechtner.
OPINION4
1. Rejection of Claims 1-3, 6--8, 11and12 under
35 U.S.C. § 103(a) over Jordan in view of Riekkinen
Appellant argues claims 1-3, 6-8, 11 and 12 as a group. We,
therefore, select claim 1 as representative of this group, and the remaining
claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2013). The
Examiner finds the combination of Jordan and Riekkinen discloses all the
limitations of claim 1. Ans. 2---6.
2 The Examiner has withdrawn the rejection of claims 1--4, 6-12, 16 and 17
under 35 U.S.C. § 112, i-f 1 for failure to comply with the written description
requirement. Ans. 9.
3 We have corrected the Examiner's summary statement of the rejection at
page 2 of the Answer to accurately identify the claims subject to this
rejection and to reflect Appellant's cancellation of claim 5 in the
Amendment filed December 26, 2012. Br. 3.
4 We affirm the Examiner's rejections for the reasons set forth in the
Answer, which we adopt as our own. Nevertheless, we highlight and address
specific findings and arguments for emphasis as follows.
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Application 12/312,345
The Examiner finds Jordan discloses a reagent test pack and reagent
carousel 70 including interchangeable liquid reagent containers 50 of
different sizes. Ans. 3 (citing Jordan Abstract, Figs. 3---6, col. 6, 11. 16-57).
The Examiner further finds Jordan discloses the reagent carousel having a
substantially circular carousel base 30 and a plurality of radially arranged
compartments, wherein the compartments are defined by radially extending
separating walls 26 with projections 22 for engagement or abutment with a
positioning abutment surface of the reagent containers, as recited in claim 1.
Id. (citing Jordan Figs. 1, 2, 6, 9). The Examiner also finds Jordan discloses
the reagent containers 50 having a substantially circular sector-shaped
container bottom, a container top 52 and container side walls 54 and 58a--g,
which extend substantially vertically from the container bottom to the
container top and converge towards each other from a container rear wall 56
to a container front side 51. Id. at 3--4 (citing Jordan Figs. 3-6).
The Examiner finds that Jordan specifically discloses all of claim 1 's
limitations, except the limitation that the projections are "in the form of
vertically arranged pins or vertical bars." Id. at 6. The Examiner, however,
relies on Riekkinen for disclosing that limitation. Id. In particular, the
Examiner finds Riekkinen discloses reagent containers held on a reagent
carousel in which the reagent containers 4 are retained in the carousel 2 by
way of protrusions 10 in the form of vertical bars. Id. (citing Riekkinen col.
2, 1. 50-col. 3, 1. 5; Fig. 1 ).
The Examiner concludes it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify Jordan to
provide protrusions in the form of vertical bars such as taught by Riekkinen
as an obvious alternative to horizontal protrusions in order to securely retain
the reagent containers. Id. at 6. The Examiner finds that one of ordinary
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skill would have had a reasonable expectation of success in modifying the
Jordan's device as such. Id.
Appellant argues that the Examiner erred by finding that Jordan
discloses "the claimed invention except for the use of vertically arranged
pins or vertical bars." Br. 10. In particular, Appellant argues that Jordan
does not disclose the "without any adaptor" limitation of claim 1 because the
device Jordan discloses requires using a "vial carrier as an adaptor for
fixedly mounting the vials in the carousel" and discloses that "an adaptor is
necessary" to utilize the device. Id. (citing Jordan Figs. 4, 6, 7). Appellant
further argues that, in contrast to Jordan's disclosure, "the claimed invention
is novel because the claimed liquid reagent containers can be stably fitted
and fixed to the carousel without any adaptor" (id. at 11) and because
"Jordan does not describe reagent carriers to be fixedly fitted directly into
the reagent carousel" (id. at 14 ).
We are not persuaded by Appellant's argument. Appellant's
argument mischaracterizes Jordan's teachings and, in particular,
mischaracterizes Jordan's disclosure regarding item 50 of Figures 3---6.
Contrary to Appellant's argument and as the Examiner found (Ans. 10), item
50 is not disclosed by Jordan as an adaptor for mounting liquid containers.
Instead, as found by the Examiner (id. at 3, 10), item 50 corresponds to the
"liquid reagent containers" recited in claim 1. Jordan Figs. 3---6; col. 6, 11.
16-57. That is, as the Examiner found (Final Act. 11), item 50 of Jordan
reads on the claimed reagent container because it includes all of the
positively recited structural elements of the claims. Further, as the Examiner
found (Ans. 10), Jordan specifically discloses that item 50 is fitted and fixed
into the reagent carousel 70' s compartments in a stable position without any
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Application 12/312,345
adaptor, as claimed. Jordan Figs. 1, 2; col. 6, 11. 23-32. We find that the
Examiner's factual findings in this regard are well-supported by the record.
That Jordan denotes item 50 as a "vial carrier" is not persuasive
because in comparing a prior art reference to the claimed invention, the
important comparison is of the substance of the claim, under its broadest
reasonable interpretation in light of the Specification, and the substance of
the relied-upon disclosure in the prior art reference. In re Gleave, 560 F .3d
1331, 1334 (Fed. Cir. 2009) (holding that a reference does not have to
satisfy an ipsissimis verbis test to disclose a claimed element).
Here, considering the substance of claim 1 's limitations under the
broadest reasonable interpretation in light of the Specification, and the
substance of Jordan's disclosure regarding item 50, we discern no reversible
error in the Examiner's rationale and finding that item 50 corresponds to and
discloses the liquid reagent containers of claim 1. Appellant's
characterization of item 50 "as an adaptor for fixedly mounting the vials in
the carousel" (Br. 10) is insufficient to rebut the Examiner's findings in this
regard. Appellant fails to sufficiently identify evidence-whether in Jordan
or elsewhere in the record-that teaches, suggests, or refers to item 50 as an
adaptor or that otherwise adequately supports Appellant's argument.
Moreover, Appellant's assertion that "[t]hose skilled in the art
understand that an adaptor is a device that converts the attributes of a device
or system to that of an otherwise incompatible device or system," without
more, is insufficient to establish reversible error in the Examiner's findings
in this regard. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Appellant argues that the "vial carrier 50 of Jordan does not
correspond to the reagent container because all of the Jordan vial carriers do
not have a rooftop." Br. 12. We are not persuaded by this argument. First,
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Jordan's teachings are not limited to the disclosures in its examples, as
Appellant's argument suggests. See In re Mills, 470 F.2d 649, 651 (CCPA
1972) ("[A] reference is not limited to the disclosure of specific working
examples."). Whether certain of Jordan's examples all have roof tops or not
is of no moment because Jordan's teachings are not limited to those
examples.
Second, as the Examiner found (Ans. 3--4, 11; Final Act. 11) and
contrary to Appellant's argument, Jordan does disclose reagent containers 50
having a "container top," i.e., item 52 of Jordan, inasmuch as claimed by
Appellant. See Jordan Figs. 3---6. Appellant's argument that the term
container top corresponds to an "everyday" German term meaning container
roof top is unpersuasive. Appellant does not identify sufficient evidence in
the claim language or Specification to import a "roof top" limitation into the
claims. As the Examiner notes (Ans. 11), the term rooftop does not appear
in any of the claims. There is also no discussion or mention of the terms
roof or roof top in the Specification. That Figures 1-3 of the Specification
depict reagent containers having what Appellant characterizes as a roof top,
without more, is insufficient to read that limitation into the claims.
Appellant's argument (Br. 12-13) that Jordan does not disclose the
container top limitation because Jordan's item 40 are "vials" and item 50 are
"vial carriers" and not reagent containers, is unpersuasive. As previously
discussed above, the Examiner's finding that item 50 corresponds to and
discloses the claimed liquid reagent containers is well-supported by the
record. Moreover, as the Examiner found (Ans. 3) and Appellant does not
challenge, Jordan specifically discloses a "reagent pack" that "comprises in
combination a vial carrier 50 and a plurality of reagent-containing vials 40."
Jordan col. 3, 11. 49-51; Abstract. Jordan also explicitly teaches that the
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vials 40 may be formed integrally with the vial carrier 50. Id. at col. 5, 11. 8-
11. Additionally, as noted by the Examiner (Final Act. 11 ), the claims do
not require any such comparison between the claimed reagent containers and
the vials being placed into the carrier of Jordan. In light of Jordan's
teachings in this regard, we do not discern reversible error in the Examiner's
finding that Jordan discloses claim 1 's container top limitation.
Appellant argues that the vial carriers of Jordan are not reagent
containers because Jordan does not disclose two-chamber liquid containers.
Br. at 13. We are not persuaded by this argument. As the Examiner found
(Ans. 3, 11-12; Final Act. 3--4), item 50 discloses the claimed liquid reagent
containers, including two-chamber liquid reagent containers as claimed.
Jordan Figs. 3---6; col. 6, 11. 16-57. In particular, as found by the Examiner
(Ans. 12; Final Act. 3--4, 11-12), Jordan discloses various interchangeable
liquid reagent containers 50 of different sizes and teaches that they are fully
capable of receiving reagent via wells 58a--g, including being fully capable
of rece1vmg two different liquids. Jordan Figs. 3-6. As the Examiner
further found (Final Act. 4), the three-well-sized reagent containers Jordan
discloses correspond to the claim 1 's two-chamber liquid containers. Jordan
Figs. 1---6; col. 6, 11. 16-57.
Appellant's argument that "all reagent carriers disclosed by Jordan are
single-reagent containers," (Br. 13) without more, is insufficient to rebut the
Examiner's findings in this regard. Appellant fails cite or provide sufficient
evidence to support it. In re De Blauwe, 736 F.2d at 705. Additionally,
Appellant's argument that the "claimed two-chamber reagent container
advantageously permits receiving two different liquids in two separate
chambers of the one container" (Br. 13) is unpersuasive. See Ex parte
Obiaya, 227 USPQ 58, 60 (BP AI 1985) ("The fact that appellant has
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Application 12/312,345
recognized another advantage which would flow naturally from following
the suggestion of the prior art cannot be the basis for patentability when the
difference would otherwise [have been] obvious.").
Appellant argues Jordan does not disclose all of claim 1 's limitations
because the dividing walls 26 of the reagent carousel of Jordan does not
have "projections extending into the interior of the compartment in the form
of vertically arranged pins or vertical bars." Id. at 13. Appellant's argument
is misplaced because the Examiner relies on the combination of Jordan and
Riekkinen for teaching that limitation-and not on Jordan's disclosure
alone. Indeed, as the Examiner found (Ans. 6, 12), Riekkinen discloses
reagent containers held on a reagent carousel in which the reagent containers
4 are retained in the carousel 2 by way of protrusions 10 in the form of
vertical bars. Riekkinen col. 2, 1. 50-col. 3, 1. 5; Fig. 1. Appellant does not
provide sufficient evidence to rebut the Examiner's findings in this regard.
Appellant argues the Examiner erred by failing to sufficiently explain
"the motivation for the proposed modification" or present "a significant
reason or need for the modification." Br. 14. We do not find this argument
persuasive. Based on the record before us, we find that the Examiner's
factual findings regarding the teachings of Jordan and Riekkinen and
rationale for why one of ordinary skill would have combined the teachings
of the cited prior art references to arrive at Appellant's claimed invention are
well-supported by the record and based upon sound technical reasoning. As
the Examiner concluded (Ans. 6, 12), it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify Jordan to
provide protrusions in the form of vertical bars such as taught by Riekkinen
as an obvious alternative to horizontal protrusions in order to securely retain
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the reagent containers. Jordan Figs. 1, 2; col. 6, 11. 7-19; Riekkinen col. 2,
1. 50-col. 3, 1. 5; Fig. 1.
Appellant's argument that "further explanation is needed to support
the modification" and that the Examiner must "provide a significant reason
or need for the modification" (Br. 14) without more, does not sufficiently
rebut or establish reversible error with respect to the Examiner's findings in
this regard. In re De Blauwe, 736 F.2d at 705. Moreover, that the
Examiner's reason for combining these references is not the same as
Appellant's reason for combining them is insufficient to establish reversible
error. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining
that any need or problem known in the art can provide a reason for
combining the elements in the manner claimed).
Appellant argues that one of ordinary skill in the art would not have
found it obvious to modify the device of Jordan as proposed by the
Examiner because of the "complexity and uncertain advantage in making the
proposed combination." Br. 15. Further, Appellant argues the Examiner
erred in the obviousness analysis and conclusion by not "considering and
giving patentable weight to the formidable advantages associated with the
claimed invention." Id. Appellant also argues that the combination of
Jordan and Riekkinen does not establish a prima facie case of obviousness
because Riekkinen does not teach or disclose the "enumerated differences of
the claimed invention from Jordan, except for the use of vertically arranged
pins or vertical bars." Id. at 16.
We do not find Appellant's arguments persuasive. As previously
discussed above, the Examiner's obviousness conclusion and finding that the
combination of Jordan and Riekkinen teaches all the limitations of claim 1
(Ans. 6, 12) are well-supported by the record and based on sound technical
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reasoning. Jordan Figs. 1---6; col. 6, 11. 7-57; Riekkinen col. 2, 1. 50-col. 3, 1.
5; Fig. 1. Appellant fails to identify evidence sufficient to establish
reversible error in the Examiner's obvious analysis and findings in this
regard. Appellant also does not provide evidence of any secondary
considerations of nonobviousness sufficient to rebut the Examiner's
conclusion and factual findings in this regard. Appellant's listing of alleged
"advantages associated with the claimed invention" at pages 15 and 16 of
the Appeal Brief, without more, is insufficient to weigh in favor of
nonobviousness. Moreover, the fact that Appellant has recognized other
alleged "uncertain advantage[s]" or "enumerated differences" (Br. 16) which
would flow naturally from following the suggestion of the prior art cannot
be the basis for patentability when the differences would otherwise have
been obvious. Ex parte Obiaya, 227 USPQ at 60.
Accordingly, we affirm the Examiner's rejection of claims 1-3, 6-8,
11 and 12 under 35 U.S.C. § 103(a) as unpatentable over Jordan in view of
Riekkinen.
2. Rejection of Claims 3 and 4 under 35 U.S.C. § 103(a) over Jordan in
view of Riekkinen as applied to claims 1-3, 6---8, 11 and 12,
and in further view of Brown, Jr.
Because Appellant argues claims 3 and 4 as a group, we select claim 4
as representative of this group. Claim 3, therefore, stands or falls with claim
4. 37 C.F.R. § 41.37(c)(l)(iv) (2013). Claim 4 depends from claim 2, which
depends from claim 1, and adds the limitation: "wherein said reagent
containers have the positioning grooves ( 16, 16') provided at both container
side walls (12, 12') arranged at a different spacing from the container rear
wall (13)." Br. 26.
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The Examiner finds the combination of Jordan and Riekkinen as
applied to claim 1 discloses all the limitations of claim 4, except that the
positioning groove or positioning abutment surfaces are differently spaced
from the container rear wall. Ans. 6. The Examiner relies on Brown, Jr. for
disclosing that limitation. Id. at 7. In particular, the Examiner finds Brown,
Jr. discloses laterally interlocked containers in which both sidewalls 31, 32
of the container are provided with positioning abutment surfaces 40 and 41,
respectively, for engaging with respective grooves provided on a connecting
item. Id. The Examiner further finds Brown Jr. discloses that the dowels
40, 41 are centered on the center line, or may be offset. Id. (citing Brown,
Jr. col. 2, 11. 59-72; Fig. 3).
The Examiner concludes it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify Jordan and
Riekkinen to have positioning abutment surfaces that are either equally
spaced or offset, i.e., with different spacing, from the rear wall such as
taught by Brown, Jr. to provide suitable structural arrangements of
positioning abutment surfaces on the reagent container to be engaged with
projections of the compartment in Jordan. Ans. 7. The Examiner finds that
one of ordinary skill would have had a reasonable expectation of success in
making such modification for the same desired purpose of securely affixing
the reagent containers within the compartments. Id.
Appellant argues the combination of Jordan and Riekkinen teaches
away from the adaptor-free nature of the claimed invention because the
carousel configuration of Jordan requires the use of vial carriers as adaptors
allowing stable placement of liquid reagent containers in the carousel. Br.
17-18.
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We are not persuaded by Appellant's argument. Appellant's
argument rests on the argument Appellant previously presented above for
claim 1, i.e., that "Jordan requires the use of vial carriers as adaptors." Br.
17-18 (emphasis added). As the Examiner found, however, and as
previously explained above, Jordan does not disclose vial carriers as
adaptors for placing liquid reagent containers in the carousel. Moreover,
Appellant's conclusory statement that "the combination of Jordan and
Riekkinen teaches away from the adaptor-free nature of the claimed
invention" (id. at 1 7-18) is not supported by sufficient evidence to
adequately rebut the Examiner's findings in this regard. Cf DyStar
Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir.
2006) ("We will not read into a reference a teaching away ... where no such
language exists").
Appellant argues that Brown, Jr. does not compensate for the above-
identified differences in the reagent container of Jordan and Riekkinen
because "Brown, Jr. describes reagent containers that are fittingly connected
to other reagent containers for the purpose of bundling such containers" and
it "does not mention or contemplate a reagent carousel in which various
interchangeable liquid reagent containers of different sizes may be used or
the stable fitting of reagent containers into a carousel without an adaptor."
Br. 18-19. Appellant further argues that the claimed reagent carousel and
that of Jordan and Riekkinen are "so different in structure" that it would not
have been obvious to modify Jordan's device to correspond to the claimed
device. Id. at 19.
We are not persuaded by Appellant's arguments. Appellant does not
provide an adequate technical explanation or sufficient evidence to support
them. Further, as the Examiner found (Ans. 7), Brown, Jr. discloses laterally
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interlocked containers in which both sidewalls 31, 32 of the container are
provided with positioning abutment surfaces 40 and 41, respectively, for
engaging with respective grooves provided on a connecting item, and that
the dowels 40, 41 are centered on the center line, or may be offset. Brown,
Jr. col. 2, 11. 59-72; Fig. 3. The fact that Appellant disagrees with the
Examiner's findings regarding Brown, Jr. 's teachings, without more, is
insufficient to establish reversible error in the Examiner's factual findings
and legal conclusions in this regard.
Accordingly, we affirm the Examiner's rejection of claims 3 and 4
under 35 U.S.C. § 103(a) as unpatentable over Jordan in view ofRiekkinen
as applied to claims 1-3, 6-8, 11 and 12, and in further view of Brown, Jr.
3. Rejection of Claims 9, 10, 16, and 17 under 35 U.S.C. § 103(a) over
Jordan in view of Riekkinen as applied to Claims 1-3, 6--8, 11 and 12,
and in further view of Goodale and Fechtner
Appellant argues claims 9, 10, 16, and 17 as a group. We, therefore,
select claim 9 as representative of this group, and claims l 0, 16, and 17
stand or fall with claim 9. 37 C.F.R. § 41.37(c)(l)(iv) (2013). Claim 9
depends from claim 7, which depends from claim 1 and adds the limitation:
"wherein said [] reagent containers have precisely two separate chambers
(20, 20') with a ratio of the internal volumes of 3 to 5: 1." Br. 26. The
Examiner finds that the combination of Jordan, Riekkinen, Goodale, and
Fechtner discloses all the limitations of claim 9. Ans. 7. The Examiner
concludes it would have been obvious to a person of ordinary skill in the art
at the time of the invention to combine the teachings of the cited prior art
references to arrive at Appellant's claimed invention. Id. at 8-9.
Appellant argues that "none of the four references disclose adaptor-
free two-chamber liquid reagent containers in combination with single-
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chamber containers." Br. 20 (emphasis added). Appellant further argues the
addition of Fechtner does not compensate for the above-identified
differences in the reagent container of Jordan or Jordan taken in view of
Goodale because "Fechtner contains no disclosure related to such above-
identified differences." Id. at 21.
We are not persuaded by Appellant's argument. First, Appellant
argues the references individually, rather than addressing the combined
teachings of the prior art as a whole. One cannot show non-obviousness by
attacking references individually where the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413, 425 (CCPA
1981) ("[T]he test [for obviousness] is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.").
Thus, Appellant's argument as to what each reference fails to teach
individually is not persuasive. Second, Appellant's argument, once again,
rests on the same "adaptor-free" argument Appellant previously presented
above for claim 1. We, therefore, find this argument unpersuasive and
insufficient to establish reversible error for the reasons found by the
Examiner and previously discussed above for claim 1.
Third, considering the combined teachings of the prior art as a whole,
we find the Examiner's finding that the combination of Jordan, Riekkinen,
Goodale, and Fechtner discloses all the limitations of claim 9 and rationale
for why one of ordinary skill would have combined these references to
arrive at Appellant's claimed invention are well-supported by the record and
based upon sound technical reasoning. Jordan Figs. 1---6; col. 6, 11. 7-57; col.
4, 11. 65---67; Riekkinen col. 2, 1. 50-col. 3, 1. 5; Fig. 1; Goodale Abstract;
cols. 1--4; Figs. 1--4; Fechtner Abstract; col. 4, 11. 1---62; Fig. 2. Appellant
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fails to provide evidence sufficient to rebut the Examiner's factual findings
and legal conclusions in this regard.
Accordingly, we affirm the Examiner's rejection of claims 9, 10, 16,
and 17 under 35 U.S.C. § 103(a) as unpatentable over Jordan in view of
Riekkinen as applied to claims 1-3, 6-8, 11 and 12, and in further view of
Goodale and Fechtner.
DECISION/ORDER
The Examiner's rejections of claims 1--4, 6-12, 16 and 17 under
35 U.S.C. § 103(a) are affirmed.
It is ordered that the Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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