Ex Parte Wu et al

Board of Patent Appeals and Interferences

Jul 18, 2008

10890540 (B.P.A.I. Jul. 18, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YUCHANG WU, FEI GAO, and HUIYAN GUO
____________

Appeal 2008-2761
Application 10/890,540
Technology Center 1700
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Decided: July 18, 2008
____________

Before PETER F. KRATZ, ROMULO H. DELMENDO, and
JEFFREY T. SMITH, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
all pending claims (claims 1 and 3-21). (Final Office Action entered June
30, 2006). We have jurisdiction under 35 U.S.C. § 6(b).
Appellants’ invention relates to a device for collecting, storing, and
applying fluid samples to an analysis device to test “for the presence of
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analyte[s], especially for drugs of abuse, antibodies, antigens and biological
moieties such as steroids and glucose.” (Spec. 2, ll. 3-4). The device
includes an absorbent member to collect a liquid sample, a flexible sample
container, an assembly for expelling the sample from the device, and a cap.
(Id. 3, ll. 3-6). After a sample is collected, the absorbent member and
sample are placed in the container. To apply samples to an analysis device
the container is held in an inverted position, and the flexible container is
pressed inwards, which “causes expression of a portion of the sample from
the assembly.” (Id. 3, ll. 9-10).
Representative claims 1, 3, and 5 read as follows:
1. A device, for collecting fluids, storing and applying the fluid
to a test device, comprising:
a. a sample collector comprising a support member
having first and second ends, an absorbent member
configured to collect a liquid sample attached to
the first end of the support and a flange attached to
the second end of the support;
b. a sample container having upper and lower
portions, wherein the lower portion is flexible;
c. an assembly fluidly configured to expel the
expressed sample from the device; and
d. a cap.

3. The device of claim 1, wherein said absorbent member
further comprises a foam.

5. The device of claim 1, wherein said absorbent member is
treated with a solution that stimulates salivation in a
subject from which the sample is to be collected.

The prior art references relied upon by the Examiner to reject
the claims on appeal are:

Karakawa U.S. 5,543,115 Aug. 6, 1996
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Aronowitz U.S. 2001/0008614 A1 Jul. 19, 2001

The following rejections are before us for review:
Claims 1, 6, and 8-21 are rejected under 35 U.S.C. § 102(b) as
anticipated by Karakawa.
Claims 3-5 and 7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Karakawa and
Aronowitz.
Claims 1 and 3-21 are rejected under the judicially created
doctrine of obviousness-type double patenting over claims 1-24 of
Application 10/855,155, now United States Patent 7,114,403.
We AFFIRM.
ISSUES
Have Appellants shown reversible error in the Examiner’s factual
findings that the subject matter of claims 1, 6, and 8-21 is anticipated by
Karakawa?
Have Appellants shown that the Examiner reversibly erred in
determining that the subject matter of claims 3-5 and 7 would have
been obvious to one of ordinary skill in the art over the combined
teachings of Karakawa and Aronowitz?

FINDINGS OF FACT
1. Appellants’ Specification indicates that “absorbent member” means “a
structure that sucks up, internalizes, or becomes saturated.” (Br. 8, ll. 1-3;
Spec. 9, ll. 6-7, 29-30; 12, ll. 20-22).
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2. The ordinary dictionary meaning of “absorb” is “to suck up or take
up,” which Appellants acknowledge is consistent with the use of the term
“absorbent member” in their Specification. (Merriam-Webster’s Online
Dictionary, http://www.merriam-webster.com/dictionary/absorb, cited by
Appellants; Br. 8, l. 25 through 9, l. 4).
3. Karakawa discloses a sample collector having a grooved absorbent
member at one end of a support member, a flange at the opposite end of the
support member, a sample container with a flexible portion, an assembly to
expel expressed sample from the device, and a cap. (Col. 3, ll. 1-40).
4. Appellants’ Specification states that saliva is an example of a liquid
sample. (Spec. 11, ll. 21-22).
5. Karakawa discloses a device where the grooved sample collector
takes up various types of samples, “includ[ing] biological samples, food
samples, waste samples or soil samples,” and particularly discloses saliva as
an example of biological samples. (Col. 4, ll. 45-50).
6. Aronowitz discloses a sample collection system including a collector
for sampling saliva including an absorbent foam sponge treated with a
salivating agent to enhance salivation in a test subject. (¶¶ 0014, 0017,
0072).

PRINCIPLES OF LAW
“When the applicant states [in his or her specification] the meaning
that the claim terms are intended to have, the claims are examined with that
meaning . . . .” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
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“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007) (quoting 35 U.S.C. § 103(a)).
“[A] finding that the prior art as a whole suggests the desirability of a
particular combination need not be supported by a finding that the prior art
suggests that the combination claimed by the patent applicant is the
preferred, or most desirable, combination.” In re Fulton, 391 F.3d 1195,
1200 (Fed. Cir. 2004).

ANALYSIS
Anticipation Rejections of Claims 1, 6, and 8-21 in View of Karakawa
Appellants argue claims 1, 6, and 8-21 together. (App. Br. 6, l. 1
through 9, l. 10). Accordingly, we select claim 1 as representative and
confine our discussion to this claim. The remaining claims 6 and 8-21 stand
or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2006).
The Examiner found that Karakawa discloses every limitation of
claims 1, 6, and 8-21. (Ans. 3, l. 8 through 5, l. 4; FF 3). Appellants argue
that Karakawa cannot anticipate the claims because “Karakawa fails to
disclose a support member having ‘an absorbent member configured to
collect a liquid sample.’” (Br. 6, ll. 12-13).
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We first look to establish the meaning of an “absorbent member,” in
the context of Appellants’ invention. Appellants assert that their
Specification provides guidance, and argue that “in the context of the
specification, it is seen that at multiple locations the term ‘absorbent
member’ indicates a structure that sucks up, internalizes, or becomes
saturated with the liquid sample.” (Br. 8, ll. 1-3; FF 1). Moreover,
Appellants assert that their relied upon dictionary definition of “absorbent”
is consistent with the meaning from their Specification, stating that “even
reliance strictly on a dictionary definition necessarily leads one to the same
conclusion. Merriam-Webster’s Online Dictionary defines ‘absorbent’ as
‘able to absorb,’[] and ‘absorb’ as ‘to suck up or take up.’” (Id. 8, l. 27
through 9, l. 1; FF 2).
Having established Appellants’ definition of an “absorbent member,”
we now turn to the prior art. The dispositive question is whether the
grooved member disclosed by Karakawa is encompassed in the claimed
feature of an “absorbent member configured to collect a liquid sample.”
Appellants assert that the “appropriate meaning of ‘absorbent member,’ as
used in the specification, excludes a solid stick with grooves, as disclosed by
Karakawa, since these feature [sic] of the disclosed device cannot ‘absorb’ a
liquid sample.” (Id. 8, ll. 12-14). Furthermore, Appellants argue that
because “the device of Karakawa is configured to collect a solid sample,”
and the “[s]olid or semi-solid sample becomes lodged within the channels
between the grooves . . . the sample collector disclosed by Karakawa does
not have an absorbent member and is not configured for collecting a liquid
sample.” (Id. 6, ll. 12-19). We find Appellants’ arguments unpersuasive.
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Significantly, Appellants establish that saliva is an example of a liquid
sample. (FF 4). Karakawa’s disclosure of collecting saliva with its grooved
collector establishes that the prior art device is “configured to collect a liquid
sample.” (FF 5; Claim 1).
Additionally, the collector disclosed by Karakawa is an “absorbent
member” because it functions fully in accord with Appellants’ “absorbent
member,” in the context of the broadest reasonable construction consistent
with Appellants’ Specification and the ordinary meaning of the term
“absorb.” (FF 1, 2, 4, 5). The Examiner recognizes this, finding that the
grooves of Karakawa’s collection member “allow a liquid sample to be
absorbed between the grooves, by capillary action . . . caused by the
interactions of a liquid with the walls of a thin tube or groove which causes
the liquid to suck up or take up into the thin tube or groove. The capillary
effect is a function of the ability of the liquid to wet a particular material.”
(Ans. 9, ll. 11-15). Thus, the collection member’s grooves take up a liquid
sample (i.e., saliva) when the collector is soaked (i.e., thoroughly wetted) by
the sample. Furthermore, the collector body internalizes the collected
sample by capturing the sample within the grooves, thereby having the
sample extend within the collector body. Thus, Karakawa’s grooved
collector is an “absorbent member,” as the term is used by Appellants.
Appellants also contend that “[s]ince ‘absorption’ requires interaction
with the sample, and since Karakawa expressly excludes such interaction, it
is clear that Karakawa does not disclose a device featuring an ‘absorbent
member.’” (Br. 8, ll. 21-23). Appellants’ argument fails to carry merit.
Karakawa states that “[t]he sample collecting means 2 and the
sealable cap 4 may be made from any rigid or semi-rigid material, such as
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natural or synthetic polymers,” which “do not interact with the sample and
are able to maintain their shape.” (Emphasis added; col. 4, ll. 1-5). But
Karakawa also discloses that the sample collector has grooves that “provide
a convenient method of obtaining a fixed volume of sample,” (col. 3, ll. 45-
46), and that the grooved sample collector is inserted into a sample to collect
a sample within the grooves (col. 5, ll. 46-50). Therefore, while one of
ordinary skill in the art would have understood that Karakawa’s collecting
means 2 and sealable cap 4 may be made with a material that does not
“interact” with the sample and maintains its shape, it expressly teaches that
such a collector sucks up or takes up the sample (i.e., absorb), which is all
that is required by appealed claim 1. Here, Appellants have not directed us
to any evidence or provided any persuasive argument demonstrating that
appealed claim 1 excludes the avoidance of interaction as described in
Karakawa. In other words, Appellants have not proven that the interaction
by absorption and the action of “interact” as that term is used in Karakawa
are the same.
In view of this record, we find that the Examiner’s finding that
Karakawa discloses an “absorbent member” is consistent with the meaning
of “absorbent” as used in Appellants’ Specification, as well as with its
ordinary dictionary meaning. In re Zletz, 893 F.2d at 321 (“When the
applicant states the meaning that the claim terms are intended to have, the
claims are examined with that meaning . . . .”). In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997) (“[I]t would be unreasonable for the PTO to
ignore any interpretive guidance afforded by the applicant’s written
description . . . .”). For these reasons, we find that Appellants have failed to
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show that the Examiner reversibly erred in finding that Karakawa anticipates
claim 1.
In view of Appellants’ reliance on the same arguments for
patentability for claims 6 and 8-21, as discussed with respect to claim 1, we
also find that Appellants have not shown that the Examiner reversibly erred
in finding claims 6 and 8-21 anticipated by Karakawa.

Obviousness Rejections of Claims 3-5 and 7 in View of Karakawa and
Aronowitz
Appellants do not submit separate arguments for the claims, arguing
claims 3-5 and 7 together. (Br. 9, l. 11 through 12, l. 11). We address their
arguments accordingly. 37 C.F.R. § 41.37(c)(1)(vii).
Appellants do not contest the Examiner’s finding that the combined
teachings of Karakawa and Aronowitz disclose every claim limitation. (Br.
9, l. 11 through 12; FF 3, 6). Rather, Appellants argue that substituting the
open cell polymer foam as taught by Aronowitz for the grooved collector of
Karakawa would cause Karakawa’s device to “become unsatisfactory for its
intended purpose of collecting solid or semi-solid samples, since such
samples do not adhere to the open cell polymer foam of Aronowitz in assay
quantities.” (Id. 11, ll. 5-7). Moreover, Appellants assert that modifying
Karakawa with Aronowitz “would change the principle of operation of
Karakawa, from a principle of adhering the sample to the outside of a
sample stick, to a principle of absorbing the sample within a polymer foam
member.” (Id. 12, 1-3). We do not find Appellants’ arguments to be
persuasive to show the Examiner erred in his obviousness determination.
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Karakawa discloses a device for sampling various materials,
“includ[ing] biological samples, food samples, waste samples or soil
samples,” and particularly discloses sampling saliva. (FF 5). One of
ordinary skill in the art concerned with sampling saliva would look to
Karakawa and other prior art that collects saliva samples. Aronowitz
discloses a device for collecting saliva, including a foam sponge treated with
a solution that stimulates salivation in test subjects. (FF 6). This device is
said to “provide[s] analyte concentrations from saliva that have been
unachievable heretofore.” (¶ 0015). Therefore, the prior art would have
suggested to one of ordinary skill in the art to successfully combine the
teachings of Karakawa and Aronowitz to collect saliva with high analyte
concentrations from test subjects. An argument that relies solely on the fact
that combining the prior art may benefit only some of the disclosed uses of
Karakawa’s device is not persuasive to show that the prior art teaches away
from the claimed invention. In re Fulton, 391 F.3d at 1201. (“The prior
art’s mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives because such disclosure does
not criticize, discredit, or otherwise discourage the solution claimed.”).
Here, Appellants do not point to any persuasive evidence that discourages
the use of a foam sponge treated with saliva stimulant, or that its use would
be ineffective in collecting saliva.
Moreover, the obviousness of the combined teachings of Karakawa
and Aronowitz would have been apparent to one of ordinary skill in the art
because there would have been an expectation that Aronowitz’s foam
sponge saliva collector would continue to function in the same way to
collect saliva, after substitution in the Karakawa saliva collection device.
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KSR, 127 S. Ct. at 1740 (“[W]hen a patent claims a structure already known
in the prior art that is altered by mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result.”). Appellants have not submitted any persuasive evidence that the
modification of Karakawa with the teachings of Aronowitz would be beyond
the skill of one of ordinary skill in the art. For these reasons, we find that
Appellants have not shown that the Examiner reversibly erred in rejecting
claims 3-5 and 7.

Provisional Double Patenting Rejections of Claims 1 and 3-21 in View of
Application 10/855,155
Appellants have not submitted arguments contesting the Examiner’s
double patenting rejection of claims 1 and 3-21. Instead, Appellants state
that:
In the Reply mailed April 6, 2006 the Applicant agreed to
submit a terminal disclaimer in the present case if the clams in
co-pending U.S. Application No. 10/855,155 are allowed before
the claims in the present case, and if the claims in both cases are
allowed or otherwise allowable in their present form.
(Br. 5, ll. 20-23).
A conditional offer to file a terminal disclaimer cannot
overcome a double patenting rejection. In view of Appellants’ lack of
arguments contesting the Examiner’s double patenting rejection, we
uphold the Examiner’s double patenting rejection of claims 1 and 3-
21.

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CONCLUSION
Appellants have failed to show that the Examiner reversibly erred in
finding claims 1, 6, and 8-21 anticipated by Karakawa.
Appellants have failed to show that the Examiner reversibly erred in
concluding that one of ordinary skill in the art would have found the subject
matter of claims 3-5 and 7 obvious over Karakawa and Aronowitz.
Appellants have also failed to show error in the Examiner’s rejection of
claims 1 and 3-21 under the judicially created doctrine of obviousness-type
double patenting over claims 1-24 of Application 10/855,155, now United
States Patent 7,114,403. 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)(iv).

AFFIRMED

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