Ex Parte Trammel et alDownload PDFPatent Trial and Appeal BoardSep 10, 201512267683 (P.T.A.B. Sep. 10, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/267,683 11/10/2008 Harold W. Trammel II P-5752D1 (102-640 DIV) 6697 112113 7590 09/10/2015 Hoffmann & Baron, LLP 6900 Jericho Turnpike Syosset, NY 11791 EXAMINER BEISNER, WILLIAM H ART UNIT PAPER NUMBER 1799 MAIL DATE DELIVERY MODE 09/10/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HAROLD W. TRAMMEL, II and JOHN P. HALL ____________ Appeal 2013-009804 Application 12/267,683 Technology Center 1700 ____________ Before CHARLES F. WARREN, GEORGE C. BEST, and ELIZABETH M. ROESEL, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the decision of the Primary Examiner rejecting claims 19 and 23 under 35 U.S.C. § 103(a) as unpatentable over Banes (US 5,593,891, Jan. 14, 1997) in view of Lyman (US 6,790,655 B2, published Mar. 6, 2003 as US 2003/0044971 A1) and rejecting claims 19–23 as unpatentable over Banes and Lyman in view of Farrell (US 4,940,158, July 10, 1990). Final Action 3–6. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The Appeal Brief states that the Real Party in Interest is Corning, Incorporated. App. Br. 2. Appeal 2013-009804 Application 12/267,683 2 STATEMENT OF THE CASE The claimed subject matter relates to culture plates or dishes with a splash guard for preventing inadvertent spilling of fluid from the culture plate or dish. Spec. ¶ 1. Such culture plates or dishes are used for culturing cells, bacteria, or other biological materials. Id. ¶ 2. Claim 19 is representative of the subject matter on appeal is reproduced below: 19. A culture dish assembly comprising: a culture dish having a polygonal bottom wall and a side wall enclosure extending up from said bottom wall, said side wall enclosure having a plurality of substantially planar panels and non-planar corners connecting adjacent panels, said side wall enclosure including a top edge spaced from said bottom wall, at least portions of said side wall enclosure flaring outwardly at locations spaced from said bottom wall; and a splash guard having a frame-shaped top wall, at least a portion of said splash guard being nested in said side wall enclosure of said culture dish at locations spaced upwardly from said bottom wall of said culture dish, at least one lift element being formed on said splash guard to facilitate separation of said splash guard from said culture dish. App. Br. 12 (claim 19). ANALYSIS Appellants’ arguments are directed to independent claim 19 only. No separate argument is presented concerning any of dependent claims 20–23. App. Br. 2–9. As a consequence, claims 20–23 stand or fall with claim 19, and we confine our discussion to claim 19. The Examiner finds that Banes discloses a culture dish assembly comprising all elements of claim 19, except for a polygonal shape and a lift element. Final Action 3–5. The Examiner finds that these features are disclosed by Lyman and concludes that it would have been obvious to Appeal 2013-009804 Application 12/267,683 3 modify the culture dish assembly of Banes to incorporate the polygonal shape and lift element of Lyman to provide known and expected results, including providing an art-recognized alternative shape and facilitating removal of the splash guard from the culture dish. Id. Appellants argue that the combination of Banes and Lyman is improper because Lyman expressly criticizes Banes’ design, including a feature (seals 140, 146 in Figures 34, 36 of Banes) that is relied upon by the Examiner to support the rejections. App. Br. 5–8 (quoting Lyman 2:4–20). Appellants additionally argue that there is no basis to modify Banes’ circular shape, which Banes relies upon to provide a particular function (exerting force against the inner surface of a container). Id. at 8 (citing Banes 8:2–14). Upon consideration of the evidence presented in this Appeal and each of Appellants’ arguments, we are not persuaded that Appellants identify reversible error, and we determine that a preponderance of evidence supports the Examiner’s conclusion that the appealed claims are unpatentable over the applied prior art. We sustain the rejection of the appealed claims based on the Examiner’s findings of fact, conclusions of law, and rebuttals to Appellants’ arguments, as expressed in the Final Action and the Answer. We add the following for emphasis. As support for their argument that Lyman expressly criticizes Banes, Appellants rely on the following passage from Lyman: Some current designs of standard height [culture plates] incorporate a beveled baffle or inner rim at the top edge or along the inside of the sidewall of a culture plate, such as described in U.S. Pat. No. 5,593,891 issued to Albert J. Banes. Having its advantages, this second approach, however, can create other problems with contamination from capillary wicking of the liquid media and cells into inaccessible recesses of the plate. A molded baffle or frame that is attached with a Appeal 2013-009804 Application 12/267,683 4 seal to the base plate would be subject to viscous media seepage into the seal. Any cells in the media trapped between the baffle and plate would die and contaminate potentially the entire culture. Additionally, mechanically affixing or welding a non- removable frame of plastic to the inner rim of a culture plate will likely restrict access to cells for microscopic viewing or during harvesting. Moreover, these types of design likely have associated manufacturing difficulties due to their rather complex shapes. Lyman 2:4–20. Lyman acknowledges that Banes’ beveled baffle or inner rim advantageously addresses the problem of liquids splashing out of the plate, id. at 1:65–2:7, but asserts that Banes’ solution can create other problems, id. at 2:7–20. Appellants contend that the foregoing passage teaches away from the combination of Banes and Lyman. App. Br. 5–8. “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The degree of teaching away depends on the facts. Id. “When prior art contains apparently conflicting references, the Board must weigh each reference for its power to suggest solutions to an artisan of ordinary skill” and, in so doing, “consider the degree to which one reference might accurately discredit another.” In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991). The teachings of a reference that arguably teaches away from a claimed feature must be weighed alongside the teachings of a cited reference that teaches the propriety of employing that feature. Para-Ordnance Mfg., Inc. v. SGS Imps. Int’l, Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995). Applying the foregoing precedent to the current record, we must weigh Lyman’s criticism of Banes alongside its affirmative teachings and Appeal 2013-009804 Application 12/267,683 5 consider the degree to which Banes’ teachings are discredited by Lyman. Although Lyman states that Banes’ splash guard design “can create . . . problems” that lead to contamination of the contents of the culture dish, Banes teaches the opposite: that the disclosed splash guard prevents contamination. Banes 5:33–45; see also 5:66–6:2. In fact, Lyman acknowledges that Banes’ design has advantages. Lyman 2:7–10. We are not persuaded that Lyman’s criticism of Banes would be perceived by one of ordinary skill in the art as precluding consideration of the teachings of Banes, alongside those of Lyman. Appellants argue that Lyman teaches away from Banes’ design, but they do not address the degree of teaching away or the level of ordinary skill in the art. Nor do they weigh Lyman’s teachings alongside Banes. We are therefore not persuaded that the Examiner errs in concluding that, despite Lyman’s criticism of Banes, one of ordinary skill in the art would recognize that the device of Banes would not be inoperable and would work for its intended purpose. Ans. 2. We are also not persuaded that the problems identified by Lyman would be insurmountable by one of ordinary skill in the art by applying the teachings of Banes and Lyman, along with simple design adjustments that would be within the level of skill possessed by the ordinarily skilled artisan. For example, Lyman teaches that the problem of “inaccessible recesses” can be overcome by providing a splash guard flange at an angle of 90–135 degrees relative to the sidewall, rather than a baffle that extends inwardly and downwardly at an angle to the sidewall, as disclosed in Banes. Lyman Fig. 5, 2:63–67, 3:49–52, 4:22–29. Further, Lyman teaches that the problem of “seepage into the seal” can be overcome by providing a hermetic seal that keeps fluids from migrating or wicking to the outside, but still allows the Appeal 2013-009804 Application 12/267,683 6 splash guard to be removed from the culture dish. Id. 3:30–37, 4:17–19, 4:50–61. We are also not persuaded by Appellants’ argument regarding modification of Banes’ circular shape. As correctly noted by the Examiner, Banes’ discussion regarding desirability of a circular shape, Banes 8:2–14; App. Br. 8, pertains to a different embodiment than is relied upon to reject the claims. Ans. 4 (explaining that the cited disclosure in Banes pertains to only to extruded baffles). Appellants do not respond to the Examiner’s explanation and provide no evidence or argument sufficient to persuade us that one of ordinary skill in the art would not adopt a polygonal, e.g., square or rectangular, shape for the culture dish disclosed in Banes, consistent with Lyman’s teaching that such shapes are “typical” for culture dishes or plates. 1:23–27. Accordingly, on this record, we are not persuaded that Appellants’ arguments and evidence are sufficient to outweigh the evidence of obviousness relied upon by the Examiner. CONCLUSION OF LAW AND DECISION The decision of the Examiner rejecting claims 19–23 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)(1). AFFIRMED KRH Copy with citationCopy as parenthetical citation