Ex Parte Wardlaw

Patent Trial and Appeal Board

Dec 30, 2013

12774445 (P.T.A.B. Dec. 30, 2013)

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

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