Ex Parte WardlawDownload PDFPatent Trial and Appeal BoardDec 30, 201312774445 (P.T.A.B. Dec. 30, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/774,445 05/05/2010 Stephen C. Wardlaw 7564-0007WOUS-1 8009 50811 7590 12/31/2013 O''Shea Getz P.C. 1500 MAIN ST. SUITE 912 SPRINGFIELD, MA 01115 EXAMINER HAMMOND, CHARLES ART UNIT PAPER NUMBER 1773 MAIL DATE DELIVERY MODE 12/31/2013 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte STEPHEN C. WARDLAW ____________ Appeal 2012-005142 Application 12/774,445 Technology Center 1700 ____________ Before KAREN M. HASTINGS, JAMES C. HOUSEL, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 2, and 5. Claims 3 and 4 are allowed (Ans. 3). We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. The Examiner maintains, and Appellant appeals, the following rejections under 35 U.S.C. § 103(a): Appeal 2012-005142 Application 12/774,445 2 1) claims 1 and 2 as unpatentable over Austin (U.S. Patent No. 6,632,652 B1, issued Oct. 14, 2003) and Smith (U.S. Patent No. 4,950,455, issued Aug. 21, 1990); and 2) claim 5 as unpatentable over the combined prior art of Austin, Smith, and Bachalo (U.S. Patent No. 4,329,054, issued May 11, 1982). Appellant focuses the arguments on independent method claim 1 (Br. 5-12). Appellant does not separately argue dependent claim 2 or separately rejected dependent claim 5 (Br. 12). Upon consideration of the evidence and each of Appellant’s contentions, we find that the preponderance of evidence on this record supports the Examiner’s conclusion that the subject matter of Appellant’s claim 1 is unpatentable over the combined prior art of Austin and Smith. Accordingly, we sustain each of the Examiner’s rejections of claims 1, 2, and 5 on appeal for the reasons set forth in the Answer, which we incorporate herein by reference. We provide the following for emphasis only. The main issue on appeal for claim 1 turns on the broadest reasonable interpretation of the claim language, and whether the planar members of Austin’s apparatus for sorting microstructures would “be drawn toward one another by capillary force” as recited. While the Examiner has set forth a broad interpretation of the claim language (Ans. 8-10), Appellant has not pointed to any definitions in his Specification or otherwise clearly explained why the Examiner’s interpretation is unreasonable. The Examiner’s reasonable position that the Appeal 2012-005142 Application 12/774,445 3 first and second planar members of Austin would be drawn by capillary forces towards one another, because the materials of the apparatus and sizes of the bunkers are similar or overlapping to those disclosed in Appellant’s Specification, has not been adequately refuted by Appellant (Ans. 9; no responsive brief has been filed). ORDER The rejection of claims 1, 2, and 5 under 35 U.S.C. § 103 (a) is affirmed. TIME PERIOD FOR RESPONSE 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 cam Copy with citationCopy as parenthetical citation