Ex Parte Xiao

Board of Patent Appeals and Interferences

Mar 15, 2011

11108978 (B.P.A.I. Mar. 15, 2011)

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.
11/108,978 04/19/2005 Guangqing Xiao 102-578 (P-6002) 8360
32752 7590 03/15/2011
David W. Highet, VP & Chief IP Counsel
Becton, Dickinson and Company
(Hoffman & Baron)
1 Becton Drive, MC 110
Franklin Lakes, NJ 07417-1880
EXAMINER
SINGH, ANOOP KUMAR
ART UNIT PAPER NUMBER
1632
MAIL DATE DELIVERY MODE
03/15/2011 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 GUANGQING XIAO
__________

Appeal 2010-009965
Application 11/108,978
Technology Center 1600
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON REQUEST FOR RECONSIDERATION1
Guangqing Xiao (Appellant) requests reconsideration of the Decision
on Appeal mailed December 23, 2010, which affirmed obviousness
rejections of all pending claims.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-009965
Application 11/108,978

2
ISSUES PRESENTED
Appellant requests reconsideration based on two points:
“I. Claim limitation at issue is ‘buffer solution’ not ‘buffer’” (Req. 2);
and
“II. The Examiner bears burden of proof to show prima facie
obviousness.” (Req. 3).
ANALYSIS
I. Appellant’s distinction between “buffer” and “buffer solution” is a
distinction without a difference because the prior art identified its
buffer as a solution.

Claim 1, step b) reads: “disposing a buffer solution into wells of a
multiwell plate, wherein an equal amount of said buffer solution is disposed
into each of said wells.”
The Examiner cited Lan’s disclosure of placing 30 μl MBS into each
of 60 wells in a multiwell plate as evidence for the obviousness of
Appellant’s method of disposing an equal amount of buffer solution into the
wells of a multiwell plate. (Ans. 5-6.) As Appellant points out, our
Decision found it “undisputed that Lan taught disposing an equal amount (30
μl) of buffer (MBS) in each well.” (Req. 2, quoting Dec. 5.)
Appellant now contends that the Decision erred because “claim 1 does
not refer to ‘an equal amount of said buffer’ as asserted by the Board, but
rather refers to ‘an equal amount of said buffer solution.’” (Id.) According
to Lan, MBS is an acronym for “modified Barth’s solution.” (Lan 794.)
When Lan disclosed placing 30 μl of MBS, i.e., modified Barth’s solution,
into each of 60 wells on a multi-well plate, Lan disclosed Appellant’s step of
placing an equal amount of buffer solution into each well. On this evidence,
Appeal 2010-009965
Application 11/108,978

3
Appellant’s distinction between “buffer” and “buffer solution” is a
distinction without a difference.
II. The Examiner met the burden of proof for prima facie obviousness.
Apparently responding to the Examiner’s finding that Lan disclosed
placing equal amounts of a buffer into the wells on a multiwell plate,
Appellant pointed out that Lan also described making other additions to the
wells, and argued that Lan therefore did not describe the “equal amount”
feature of claim 1, step b). Our decision found the argument speculative and
unsupported by evidence.
Appellant now argues that we erred by improperly shifting the
Examiner’s evidentiary burden to Appellant. We disagree. By citing Lan’s
explicit disclosure, the Examiner produced evidence supporting the finding
that placing equal amounts of buffer solution into the wells of a multiwell
plate was known in the art. The Examiner’s production of that evidence
shifted the burden to Appellant to prove the Examiner wrong. See, e.g., In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
SUMMARY
We have reconsidered our Decision as requested, but decline to
change it.

Appeal 2010-009965
Application 11/108,978

4
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED

alw

DAVID W. HIGHET, VP & CHIEF IP COUNSEL
BECTON, DICKINSON AND COMPANY
(HOFFMAN & BARON)
1 BECTON DRIVE, MC 110
FRANKLIN LAKES, NJ 07417-1880