Ex Parte YongDownload PDFBoard of Patent Appeals and InterferencesJan 9, 201211191300 (B.P.A.I. Jan. 9, 2012) 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. 11/191,300 07/28/2005 Peter A.K. Yong 3305 4994 7590 01/09/2012 WALTER A. HACKLER, Ph.D. PATENT LAW OFFICE SUITE B 2372 S.E. BRISTOL STREET NEWPORT BEACH, CA 92660-0755 EXAMINER XU, XIAOYUN ART UNIT PAPER NUMBER 1777 MAIL DATE DELIVERY MODE 01/09/2012 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 2010-009833 Application 11/191,300 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, CHARLES F. WARREN, and CATHERINE Q. TIMM, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-37. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appeal 2010-009833 Application 11/191,300 2 Appellant claims a body fluid collecting, transporting, and dispensing system 10 comprising a body fluid collecting receptacle 14, a handle 18 "supporting the receptacle in a fluid collection position", and a fitting 72 for removably supporting the handle in a spaced apart relationship with the receptacle and "preventing separation of the handle from the receptacle during support of the receptacle by the handle during fluid collection" (claim 1; Figs. 1-5). Representative claim 1 reads as follows: 1. A body fluid collecting, transporting, and dispensing system comprising: a body fluid collecting receptacle; a handle supporting the receptacle in a fluid collection position, said handle including a fluid sample chamber; and a fitting for removably supporting said handle in a spaced apart relationship with the receptacle and preventing separation of the handle from the receptacle during support of the receptacle by the handle during fluid collection, said fitting further providing fluid communication between the handle chamber and the receptacle for receiving a sample of the body fluid, said handle being removable from the receptacle for transport, storage, and dispensing of the body fluid sample. The Examiner rejects claim 1 under 35 U.S.C. § 103(a) as unpatentable over Cawood (US 4,557,274, issued Dec. 10, 1985) in view of Guerci (US 5,171,146, issued Dec. 15, 1992). The remaining claims on appeal are correspondingly rejected over these references alone or further in view of other prior art references of record. Appeal 2010-009833 Application 11/191,300 3 Referring to Figure 12 of Cawood, the Examiner finds that syringe 229 satisfies the claim 1 "handle supporting the receptacle in a fluid collection position" and that spike 226 satisfies the claim 1 "fitting for . . . preventing separation of the handle from the receptacle during support of the receptacle by the handle during fluid collection" (Ans. 3-4). Notwithstanding this last mentioned finding, the Examiner presents the following rationale in support of a conclusion that it would have been obvious to provide Cawood's syringe/handle with a fitting in the form of a screw threads coupling as taught by Guerci: Although the connection between the handle and the fitting in Cawood can prevent separation of the handle from the receptacle during support of the receptacle by the handle during fluid collection, skew [sic, screw] threads coupling is another type of connection that is widely used and more secure than the one used in Cawood. For example, Guerci uses skew [sic, screw] threads coupling to connect a valve 23 to fitting 18 (see col. 2, lines 36-39, Figure 3). At the time of the invention it would have been obvious to one of ordinary skill in the art to use screw threads coupling as taught by Guerci between the handle and the fitting in Cawood, because both Cawood and Guerci are related to syringe and liquid handling system. (id. at 4). We agree with Appellant's fundamental contention that "the combination of Cawood and Guerci does not, in fact, teach a removable handle for supporting a receptacle in a fluid collection position [in the manner required by claim 1]" (Br. 13). As an initial matter, we perceive no support for the Examiner's above findings that the handle and fitting limitations of claim 1 are satisfied by the Appeal 2010-009833 Application 11/191,300 4 syringe 229 and spike 226 of Cawood. The record contains no reasonable basis for regarding Cawood's syringe as a handle capable of supporting the receptacle in a fluid collection position. An attempt to use the syringe as such a handle would result in the syringe being removed from spike 226 in the manner taught by Cawood (col. 9, ll. 12-13; Fig. 16). Similarly, the Examiner has given no reasonable basis for regarding spike 226 as a fitting capable of preventing separation of syringe 229 from Cawood's receptacle during fluid collection. This finding by the Examiner is contrary to the previously noted teaching of Cawood (id.). Moreover, we agree with Appellant's general argument that the Examiner has failed to articulate reasoning with some rational underpinning to support the proposed combination of Cawood and Guerci (Br. 12-14). The screw threads coupling taught by Guerci is not used for connecting a syringe to a receptacle, and the Examiner has offered no reasoning as to why such a coupling would have been used to connect Cawood's syringe and receptacle. On this record, no useful purpose would be served by connecting the syringe and receptacle with a screw threads coupling. The decision of the Examiner rejecting claims 1-37 is reversed. REVERSED kmm Copy with citationCopy as parenthetical citation