Ex Parte Takada et al

Patent Trial and Appeal Board

Jun 23, 2016

10539231 (P.T.A.B. Jun. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/539,231 06/16/2005
29880 7590 06/27/2016
FOX ROTHSCHILD LLP
PRINCETON PIKE CORPORATE CENTER
997 LENOX DRIVE
BLDG. #3
LAWRENCEVILLE, NJ 08648
FIRST NAMED INVENTOR
Hiroyuki Takada
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.
105321.00036 7138
EXAMINER
MUI, CHRISTINE T
ART UNIT PAPER NUMBER
1797
NOTIFICATION DATE DELIVERY MODE
06/27/2016 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):
ipdocket@foxrothschild.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HIROYUKI TAKADA and ICHIRO TAKAHATA
Appeal2014-004732
Application 10/539,231
Technology Center 1700
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter the "Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from a final decision of the Primary Examiner to reject claims 11-
18, 20-24, and 26.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellants state that the real party in interest is "ARKRA Y, INC."
(Appeal Brief filed November 26, 2013, hereinafter "Br.," 3).
2 Br. 5; Final Office Action entered July 1, 2013, hereinafter "Final Act.," 1.
Appeal2014-004732
Application 10/539,231
BACKGROl.J1'-JD
The subject matter on appeal relates to a cartridge, which may be used
for analyzing a sample such as urine or saliva or as a liquid storage container
for preserving liquids including a sample (Specification, hereinafter "Spec.,"
1, 11. 6-8 and 16, 11. 17-20; Fig. 1 ). The invention is designed to solve a
problem with expensive reagent adhering to a seal or a peripheral portion of
an upper opening of a well by providing grooves in specified areas of the
well surface to counteract the surface tension of the reagent (Spec. 2, 11. 1-
13).
Representative claim 11 is reproduced from page 14 of the Appeal
Brief (Claims App), with the disputed limitations indicated in italicized text:
11. A cartridge comprising:
a receptacle body, including an upper surface; and
a plurality of wells formed in the receptacle body, the
plurality of wells comprising:
at least one storage well, including:
an upper opening flush with the upper surface of
the receptacle body, and a dosed bottom for
containing a liquid, and
at least one reaction well, including:
an upper opening flush with the upper surface of
the receptacle body, and a closed bottom for
providing a reacting field;
the cartridge further comprising:
a desired amount of a liquid contained in the storage
well; and
a closure attached to the upper surface of the receptacle
body for dosing at least the upper opening of the storage well;
wherein the storage well includes an inner surface
provided with a plurality of adhering liquid moving grooves
each extending from the upper opening flush with the upper
surface of the receptacle body to an intermediate position short
of the bottom of the receptacle body for downwardly moving the
liquid which adheres on a peripheral portion of the upper
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Appeal2014-004732
Application 10/539,231
opening of the storage well and on the closure by overcoming a
surface tension of an adhering liquid, the adhering liquid
moving grooves each having a lower end positioned below a
surface of the desired amount of the liquid.
THE REJECTIONS
The Examiner rejected the claims under 35 U.S.C. § 103(a) as
follows:
I. Claims 11-14, 16-18, 20-24,3 and 26 as unpatentable over
Hiramatsu and Jenkins; and
II. Claim 15 as unpatentable over Hiramatsu, Jenkins, and Okubo.
(Ans. 3-9; Final Act. 3-7.)
DISCUSSION
Addressing both rejections together, the Appellants provide common
arguments for all claims on appeal (Br. 10-11). Therefore, we confine our
discussion to claim 11, which we select as representative. Claims 12-18,
20-24, and 26 stand or fall with claim 11. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner found that Hiramatsu describes a cartridge including
every limitation recited in claim 11 except for the specified "plurality of
adhering liquid moving grooves each extending from the upper opening
flush with the upper surface of the receptacle body to an intermediate
3 The Examiner omitted claim 23 from the statement of rejection
(Examiner's Answer entered January 16, 2014, hereinafter "Ans.," 3, 6;
Final Act. 3, 6). The omission, however, appears to have been inadvertent
and was actually harmless because: (i) the Examiner provided a specific
discussion on claim 23 in both the Final Office (Final Act. 6) and the
Examiner's Answer (Ans. 6); and (ii) the Appellants understood claim 23 to
be rejected (Br. 10).
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Appeal2014-004732
Application 10/539,231
position short of the bottom of the receptacle body for downwardly moving
the liquid" as recited in the last clause of the claim (Ans. 3--4). The
Examiner found further, however, that Jenkins describes a storage well with
projections that form surface channels created for the purpose of moving
hydrating liquid (id. at 4--5). The Examiner concluded from these findings
that a person having ordinary skill in the art would have modified the wells
of Hiramatsu's cartridge with the liquid-moving projections described in
Jenkins, thus arriving at a cartridge encompassed by claim 11 (id. at 5, 8-9).
The Appellants contend that the projections or channels described in
Jenkins do not constitute "grooves" as recited in the claims because the term
"groove" is "defined as a long, narrow 'hollow or channel made artificially
in a surface' ... or 'cut or depression in a hard material"' (Br. 10-11)
(internal dictionary citation omitted). The Appellants also contend that
Jenkins describes the projections as projecting upwardly from the floor of
each container and/ or from the end walls and sidewalls in order to confine
material in a tablet receiving recess area and, therefore, teaches away from
grooving into the sidewalls and endwalls in the manner specified in the
claims (id. at 11 ). According to the Appellants, "Jenkins discloses
recirculating gaps as opposed to adhering liquid moving grooves for
downwardly moving liquid" (id.) (underlining omitted).
The Appellants' arguments fail to identify any reversible error in the
Examiner's rejection of claim 11. In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011).
We find no reversible error in the Examiner's findings (Ans. 8-9),
which we adopt as our own, that the storage well structure recited in claim
11 is indistinguishable from the structure suggested by the prior art. Neither
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Appeal2014-004732
Application 10/539,231
claim 11 nor any part of the Specification or Drawings places any limitation
on the shape or configuration of the storage well. Nor is there any limitation
on the dimensions of the grooves. Thus, even if we accept the Appellants'
proffered definition of the term "groove," the claim encompasses storage
wells, which-prior to the formation of grooves in the surface of the wells-
have two different inner diameters for the lower and upper portions (e.g., the
lower portion of the well has a diameter "x" and the upper portion of the
well has a diameter equal to "x + y"). Where the grooves formed in the
upper portion of the well have depths into the well surface equal to "y," the
resulting structure would be indistinguishable from the structure suggested
by the prior art references.
We discern no merit in the Appellants' position that appears to be
based on the belief that the placement of the projections in Jenkins is limited
to the lower part of the well. As correctly found by the Examiner (Ans. 5),
Jenkins teaches that the projections, which can include pyramidal
projections, "may be disposed in any convenient orientation or at any
convenient location with the container" in order to create spaces that "permit
hydrating liquid flow into and through" (col. 4, 1. 40-col. 5, 1. 23; Fig. 3B).
For these reasons, and those given by the Examiner, we uphold the
Examiner's rejection of claim 11.4
4 According to the Appellants (Spec. 2, 1. 20-3, 1. 8), the prior art previously
disclosed surface tension-breaking grooves 93, as shown in the medicine
bottle stopper 90 of Figure 14, as one solution to the same problem
addressed by the Appellants. In the event of continued prosecution, any
obviousness inquiry should consider the relevance or applicability of this
admitted prior art.
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Appeal2014-004732
Application 10/539,231
survnvIARY
The Examiner's decision to reject claims 11-18, 20-24, and 26 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)(l).
AFFIRMED
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