Ex Parte YONG

Board of Patent Appeals and Interferences

Sep 4, 2012

11848851 (B.P.A.I. Sep. 4, 2012)

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.
11/848,851 08/31/2007 PETER A.K. YONG 3512 4514
7590 09/05/2012
WALTER A. HACKLER, Ph.D.
PATENT LAW OFFICE
2372 S.E. BRISTOL STREET, SUITE B
NEWPORT BEACH, CA 92660-0755
EXAMINER
LLOYD, EMILY M
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
09/05/2012 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 PETER A.K. YONG
____________
Appeal 2011-006781
Application 11/848,851
Technology Center 3700
____________

Before KARL D. EASTHOM, THOMAS L. GIANNETTI and
RAMA G. ELLURU, Administrative Patent Judges.

ELLURU, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-006781
Application 11/848,851

2
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4, and 5-9. (App. Br. 3). Claim 3 has been
cancelled. (Id.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellant’s Invention
Appellant’s invention relates to “devices for the collection, transport
and storage of bio-molecular diagnostic specimens, for example, oral fluids,
genomic DNA, buccal cellular DNA or the like thereof for bio-molecular
diagnostic testing and forensic genomic identification applications.” (Spec.
1, ll. 6-9). The specification describes the invention as a “skewer and a
plurality of absorbent pads, or discs, assembled on the skewer in a kebbobed
manner.” (Spec. 2, ll. 27-28).
Illustrative Claim
1. A segmented collector swab system comprising:
a skewer;
a plurality of absorbent pads or discs assembled on said
skewer in a kebobbed manner, each pad or disc being separable
from said skewer and adjacent pads or discs; and
a fixture disposed at an end of said skewer for releasably
containing the plurality of pads or discs on said skewer.

Prior Art Relied Upon

Boyle US 4,839,186 Jun. 13, 1989
Cox US 5,133,361 Jul. 28, 1992
Berke US 6,286,418 B1 Sep. 11, 2001
Day US 2002/0174548 A1 Nov. 28, 2002
Giblin WO 2005/104918 A1 Nov. 10, 2005

Appeal 2011-006781
Application 11/848,851

3
Rejections on Appeal
1. Claims 1, 2, and 5-7 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Cox and Giblin. (Ans. 3-5). Claim 7
also stands rejected under 35 U.S.C. § 103(a) as being obvious over the
combination of Cox and Berke. (Ans. 6).
2. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
being obvious over the combination of Cox, Day, and the admitted prior art.
(Ans. 7-8).
3. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Cox, Giblin, and Boyle. (Ans. 8).

Appellant’s Contentions
Appellant contends that:
1. Cox does not teach or suggest “absorbent pads or discs,” as
required by the claims (App. Br. 7-9) (emphasis added);
2. There is no motivation or reason to combine the references
because a person of ordinary skill in the art would not have recognized a
benefit of modifying Cox’s device with the features of the devices in the
secondary references, which relate to cooking or food (App. 8-11); and
3. The combination of Cox and the secondary references is
improper because the secondary references are non-analogous art to the
presently claimed invention (App. Br. 9-10).

II. ISSUES
1. Did the Examiner err in finding that Cox teaches or suggests
“absorbent pads or discs” (emphasis added)?
Appeal 2011-006781
Application 11/848,851

4
2. Did the Examiner provide an articulated reasoning with some
rationale underpinning in combining Cox and the secondary references?
3. Did the Examiner rely on non-analogous art in rejecting the
claims?

III. ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. We are not persuaded by
Appellant’s arguments and disagree with Appellant’s conclusions. We
highlight and address specific arguments for emphasis as follows.
35 U.S.C. § 103(a) Rejection—Combination of Cox, Giblin, Berke, Day
and/or Boyle
Cox, the primary reference relied on by the Examiner, teaches a
biopsy brush for abrading and recovering samples of tissue, comprising a
plurality of abrading elements that are individually and separately spindled
onto a flexible strand. (Cox, Abstract, Fig. 1). Each abrading element is
formed integrally, preferably as a molded article from nylon. (Id. col. 1, ll.
59-61). Cox further demonstrates that an element may be “disc-like.” (Id.
col. 1, ll. 64-65, Fig. 2). Appellant argues that Cox does not teach “a
plurality of absorbent pads or discs” as claimed. (App. Br. 7-9) (emphasis
added).
We find support for the Examiner’s finding that one of ordinary skill
in the biopsy art at the time of the invention would have been knowledgeable
about the use of absorbent nylons. (Ans. 9). Cox teaches that the function
of the plurality of elements is to remove tissue/cell samples for investigation
and that the removal can occur by “sharp-edge excision.” (Cox, Abstract,
Appeal 2011-006781
Application 11/848,851

5
col. 2. ll. 17-20). Thus, we agree with the Examiner that it would have been
obvious to use absorbent nylon to form the plurality of elements in the Cox
device to facilitate capturing additional tissue and body fluids (e.g., blood,
lymph) that are released as the tissue/cells are removed. (Ans. 9).
Next, Appellant argues that there is no motivation to combine the
references. Specifically, Appellant argues that a designer of a collection
swab would not have recognized a reason or benefit to separating or
removing Cox’s abrasive elements. (App. 11). Thus, Appellant maintains
that one or ordinary skill would not have seen the benefit of incorporating,
for example, the barbeque spit and gripping device of the secondary
references, which are directed to food or cooking, with the Cox device.
(App. Br. 9, 11-12).
We are not persuaded by Appellant that the Examiner has erred in this
determination. As the Examiner explains, Cox teaches that its strand can be
sterilized, making it obvious that the abrasive elements are removed prior to
the sterilization and subsequent reuse of the strand. (Ans. 13 (citing Cox
col. 1, ll. 53-54; 2, l. 9)). Also, one having ordinary skill in the art would
have known that most biopsy samples are removed and collected from the
biopsy device after the biopsy procedure is finished to provide for easier
storage and analysis of the sample, and to prevent degradation of the sample.
(Ans. 13).
Motivation to combine teachings need not be expressly stated in any
prior art reference. In re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006). There
need only be an articulated reasoning with rational underpinnings to support
the conclusion of obviousness. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398,
Appeal 2011-006781
Application 11/848,851

6
418 (2007). We find the Examiner's stated reasoning, reproduced below, to
be sufficient and rational to support a prima facie case of obviousness:
In this case, it would have been obvious to combine Giblin et
al. with the invention of Cox et al. to provide for keeping the
sampling pads or discs of Cox et al. on the skewer of Cox et al.,
and to provide for adjusting the number and/or locations of
sampling pads or discs of Cox et al. Further, it would have been
obvious to combine Berke et al. with the invention of Cox et al.
to provide for removing the sampling pads or discs of Cox et al.
from the skewer of Cox et al., and to provide for adjusting the
number and/or locations of sampling pads or discs of Cox et al.
Further, it would have been obvious to combine the handle that
supports the skewer and mechanism for withdrawing the
skewer into the handle and forcing skewered items off the
skewer protruding end as taught by Day with the invention of
Cox et al. to provide for a device that could be packaged and
shipped in a smaller container, to provide a clear holding
surface/handle, and to provide for easy removal of the samples
with minimal risk of contamination. Additionally, it would have
been obvious to combine the dispensing fork of Boyle et al.
with the invention of Cox et al. as modified by Giblin et al. to
provide for easy removal of the samples while minimizing the
risk of contamination.
(Ans. 10) (emphasis added).
Lastly, Appellant argues that the Examiner erred in combining
Cox with the secondary references because the secondary references
are non-analogous art to the presently claimed invention. (Ans. 9-10).
The test for non-analogous art is first whether the art is within the
field of the inventor's endeavor and, if not, whether it is reasonably
pertinent to the problem with which the inventor was involved. In re
Wood, 599 F.2d 1032, 1036 (CCPA 1979). Stated another way, a
reference is analogous art if it is either in the field of the applicant's
endeavor or is reasonably pertinent to the particular problem with
Appeal 2011-006781
Application 11/848,851

7
which the inventor was concerned. In re Kahn, 441 F.3d 977, 987
(Fed. Cir. 2006); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). A
reference is reasonably pertinent if, even though it may be in a
different field of endeavor, it logically would have commended itself
to an inventor's attention in considering his problem because of the
matter with which it deals. In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992).
We agree with the Examiner that the asserted secondary references are
reasonably pertinent to the problem with which the inventor was involved.
Here, the present invention is a collection swab, comprising a skewer with a
plurality of absorbent pads or discs assembled on the skewer in “a kebobbed
manner.” (Spec. 2, ll. 27-28). Thus, the inventor was involved with
manipulating items assembled on a skewer in a kebobbed manner. See In re
ICON Healthy & Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007) (“When
determining whether a reference in a different field of endeavor may be used
to support a case of obviousness (i.e., is analogous), it is necessary to
consider the problem to be solved.”). As the Examiner notes, Cox also
provides for a spindle (i.e., skewer) with a plurality of elements (i.e., discs)
assembled on the spindle in a kebobbed manner. (Ans. 11). The use of
items in “a kebobbed manner” would have led a person of ordinary skill in
the art to recognize that other references teaching structures with items
assembled in a kebobbed manner also would have been useful to the present
purpose. (Id.). The secondary references relied on by the Examiner all
relate to a “skewer” or a stick holding and/or manipulating items arranged in
a kebobbed manner. (Id.). Specifically, Giblin reasonably pertains to the
releasable containment of items on a kebob; Berke and Boyle reasonably
Appeal 2011-006781
Application 11/848,851

8
pertain to the removal of items from a kebob/skewer; and Day reasonably
pertains to the engagement and removal of items from a kebob/skewer.
(Ans. 12). Further, the combination of elements from the asserted prior art
is reasonably expected to maintain their respective properties or functions
after they are combined. See Sundance, Inc. v. DeMonte Fabricating Ltd.,
550 F.3d 1356 (Fed. Cir. 2008). For example, Cox maintains its function of
sampling cells; Giblin maintains its function of releasably containing items
on a kebob; Berke maintains its function of removing items from a
kebob/skewer; Day maintains its function of removing items from a
kebob/skewer; and Boyle maintains its function of removing items from a
kebob/skewer. (Ans. 12-13). Thus, we agree with the Examiner that the
secondary references are analogous art to the present invention.
Therefore, we conclude that there is ample support for the Examiner’s
findings that the combination of Cox and Giblin teaches or suggests the
disputed limitation of claims 1, 2, and 5-7
1
and renders these claims
unpatentable. As Appellant relies on the same arguments for claims 4, 8,
and 9, (App. Br. 13-14), we conclude that the Examiner did not err in
rejecting those claims for the reasons presented supra.

1
As noted above, claim 7 also has been rejected pursuant to the combination
of Cox and Berke. Appellants make the same argument with respect to this
rejection as the other rejections. (App. Br. 12). For the reasons presented
supra, the Examiner has not erred in rejecting claim 7 as being unpatentable
over Cox as modified by Berke.
Appeal 2011-006781
Application 11/848,851

9
IV. CONCLUSION
The Examiner has not erred in rejecting claims 1, 2, 4, and 5-9 as
being unpatentable under 35 U.S.C. § 103(a).

V. DECISION
We affirm the Examiner’s decision to reject claims 1, 2, 4, 5-9.
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

ELD