Ex Parte Wardlaw

Board of Patent Appeals and Interferences

Sep 24, 2004

09255673 (B.P.A.I. Sep. 24, 2004)

The opinion in support of the decision being entered today
was not written for publication and is not
binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEPHEN C. WARDLAW
____________
Appeal No. 2004-1944
Application No. 09/255,673
____________
ON BRIEF
____________
Before GARRIS, WALTZ, and KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 32-47. Claims 1-31, which are all of the
remaining claims pending in this application, have been withdrawn
from further consideration by the examiner as drawn to a non-
elected invention.
BACKGROUND
Appellant's invention relates to a method for testing
biologic fluid samples. An understanding of the invention can be
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Application No. 09/255,673
Page 2
derived from a reading of exemplary claim 32, which is reproduced
below.
32. A method for testing a sample of biologic fluid,
comprising the steps of:
providing a container for holding the sample, said container
having a chamber with a first wall and a transparent second wall,
one or more features operable to enable the testing of the
biologic fluid sample at least one of which is located at a known
spatial location within said chamber, and a label attached to
said container, said label containing information which is used
in the performance of one or more tests, wherein said information
includes said known spatial location of said feature;
providing a reader module that includes a label reader for
reading said label and a field illuminator for selectively
illuminating one or more fields of the sample, each sample field
having a known or ascertainable area;
depositing said sample within said chamber, wherein said
sample quiescently resides in said chamber thereafter during the
testing;
reading said label with said label reader, thereby
communicating to said reader module said information which is
used in the performance of said one or more tests, including said
known spatial location of said feature; and
selectively imaging one or more of said fields of the sample
using said field illuminator, including said field of the sample
in which said feature is disposed at said known spatial location
within said chamber.
The sole prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Merkh et al. (Merkh) 5,281,540 Jan. 25, 1994
Appeal No. 2004-1944
Application No. 09/255,673
Page 3
Claims 32-47 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failure to particularly point
out and distinctly claim that which applicant regards as his
invention. Claims 32-36 and 40-47 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Merkh.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer and to
appellant's briefs for a complete exposition thereof.
DECISION
We reverse the examiner's stated § 112, second paragraph,
rejection and the examiner's § 103(a) rejection as expressed in
the answer. Our reasoning follows.
Rejection under 35 U.S.C. § 112, second paragraph
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have been
interpreted by one of ordinary skill in the art in light of
appellant's specification and the prior art, sets out and
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Application No. 09/255,673
Page 4
circumscribes a particular area with a reasonable degree of
precision and particularity. See In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
Here, the examiner has taken the position that the appealed
claims run afoul of the second paragraph of § 112 because “[i]t
is unclear as to what are the features operable which enable the
testing of the biological fluid samples” (answer, page 3). In
arguing against appellant’s considerable opposition to the
examiner’s stated rejection, the examiner (answer, page 5)
inexplicably states that:
35 U.S.C. § 112, second paragraph, does not permit the
examiner to study the applicant’s disclosure, formulate
a conclusion as to what the examiner regards as the
broadest invention supported by the disclosure, and
then determine whether the claims are broader than the
examiner’s conception of what “the invention” is.
Nonetheless, the examiner, after an apparent review of at
least a portion of appellant’s specification with respect to the
claim language in question, goes on to state, at pages 6 and 7 of
the answer, that:
No specific and clear definition of the “features” are
given. In view of the specification, the myriad
examples of the “features” are so varied and broadly
defined, that it is unreasonable to assume th[at] one
of ordinary skill in the art in reading and
interpretating [sic] the claim language would be able
to pinpoint, with any degree of accuracy, just what the
appellant is intending to precisely claim, and
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Application No. 09/255,673
Page 5
including the metes and bounds of the limitations of
the claim.
However, we find ourselves in agreement with appellant’s
basic position that the examiner has not convincingly explained
why the claim language at issue, as it would have been
interpreted by one of ordinary skill in the art in light of
appellant’s specification and the prior art, fails to set out
and circumscribe a particular area with a reasonable degree of
precision and particularity.
In other words, the examiner has simply not met the initial
burden of establishing why one of ordinary skill in this art
would not be apprised of the scope of the claims. While the
claim limitations concerning the “one or more features” that are
variously worded in the appealed claims as being operable to
enable the testing of the biological fluid sample may be viewed
as relatively broad in scope, breadth does not equate with
indefiniteness. See In re Gardner, 427 F.2d 786, 788, 166 USPQ
138, 140 (CCPA 1970).
Additionally, the examiner’s rejection fails because
appellant’s original application does set forth guidance as to
what is meant by those claim terms. The examiner’s concern about
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Application No. 09/255,673
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“the myriad examples of the ‘features’” that are furnished in the
specification does not prove that the claim language is not
reasonably definite or that the claimed subject matter is not
directed to what applicant regards as the invention.
Consequently, we will not sustain the rejection under 35 U.S.C.
§ 112, second paragraph, on this record.
Rejection under 35 U.S.C. § 103(a)
In a rejection under 35 U.S.C. § 103(a), it is basic that
all limitations recited in a claim must be considered and given
appropriate effect in judging the patentability of that claim
against the prior art. See In re Geerdes, 491 F.2d 1260, 1262-
63, 180 USPQ 789, 791 (CCPA 1974). Here, all of the so rejected
appealed claims are drawn to a method wherein a sample of
biological fluid is deposited in a chamber and quiescently
resides therein during subsequent testing.
Appellant maintains that Merkh describes a method wherein a
biological fluid sample is not quiescently retained in a chamber
during analysis. In support, appellant (brief, pages 13-15)
refers to passages in the Exemplary Mode Of Operation section of
the applied Merkh patent for showing that Merkh programs a
carousel drive interface to provide agitation of containers
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including reaction chambers for containing the deposited
biological fluid samples and thereafter subjects the fluid
samples to other steps including washing and drying.
In rejecting claims 32-36 and 40-47 as being obvious over
Merkh, the examiner asserts that Merkh provides for testing a
fluid sample deposited within a chamber (reaction well labeled
86) and for the quiescent residing of the sample during the
analysis (test). However, the examiner refers to select sections
of the disclosure of Merkh concerned with the apparatus without
addressing the portions of the disclosure of Merkh that relate to
the operation or testing method as relied upon by appellant in
the arguments in the brief. Our review of column 9, lines 50-61
and column 13, lines 38-43 of Merkh, as referred to by the
examiner, reveals that those sections of the applied patent
generally describe the reaction cartridge employed as being one
which includes reaction well portion (86) that contains a test
array (82) and “which is adapted to hold a patient sample and
selected reagents in contact with the test array (82) during a
test” (column 13, lines 41-43). However, the examiner has not
pointed to any teaching of Merkh which indicates that a biologic
fluid sample is quiescently residing in a chamber (well) during
the testing.
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Application No. 09/255,673
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Moreover, we note that the examiner’s attempt to correlate
the teachings of Merkh with the claimed subject matter is further
flawed by the examiner’s position in equating the well (86) of
Merkh with both appellant’s claimed chamber and appellant’s
claimed “features”. See the sentence bridging pages 3 and 4 of
the answer and the following sentence on page 4 of the answer.
Of course, the features referred to in appellant’s claims
represent an additional limitation and not merely a redundant
recitation of the chamber. Accordingly, on this record, the
rejection fails for lack of a sufficient factual basis upon which
to reach a conclusion of obviousness. In re Fine, 837 F.2d 1071,
1073-74, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). It follows that
we reverse the examiner’s stated § 103(a) rejection for failure
to make out a prima facie case of obviousness for substantially
the reasons as set forth above and in the briefs.
CONCLUSION
The decision of the examiner to reject claims 32-47 under
35 U.S.C. § 112, second paragraph, as being indefinite for
failure to particularly point out and distinctly claim that which
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Application No. 09/255,673
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applicant regards as invention and to reject claims 32-36 and
40-47 under 35 U.S.C. § 103(a) as being unpatentable over Merkh
is reversed.
REVERSED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Thomas A. Waltz ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
Peter F. Kratz )
Administrative Patent Judge )
PFK/cam
Appeal No. 2004-1944
Application No. 09/255,673
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Richard D. Getz, Esq.
MCCORMICK, PAULDING & HUBER, LLP
City Place II
185 Asylum Street
Hartford, CT 06103-4102