Tetsuo Ohashi et al.

Patent Trials and Appeals Board

Sep 30, 2019

14126838 - (D) (P.T.A.B. Sep. 30, 2019)

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.
14/126,838 12/16/2013 Tetsuo Ohashi OKA-0332 3864
74384 7590 09/30/2019
Cheng Law Group, PLLC
1133 13th St. N.W.
Suite C2
Washington, DC 20005
EXAMINER
PEO, KARA M
ART UNIT PAPER NUMBER
1777
NOTIFICATION DATE DELIVERY MODE
09/30/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ctercenio@chenglawgroup.com
lcheng@chenglawgroup.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex Parte TETSUO OHASHI, YUKIO OIKAWA, and KEI SHINADA
____________________

Appeal 2018-000530
Application 14/126,838
Technology Center 1700
____________________

Before JEFFREY T. SMITH, N. WHITNEY WILSON, and
AVELYN M. ROSS, Administrative Patent Judges.

ROSS, Administrative Patent Judge.

DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 15–17, 19, and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 In our Decision we refer to the Specification filed December 16, 2013, as
amended, (“Spec.”), the Final Office Action appealed from dated November
1, 2016 (“Final”), the Appeal Brief filed May 1, 2017 (“Appeal Br.”), the
Examiner’s Answer dated August 21, 2017 (“Ans.”), and the Reply Brief
filed October 22, 2017 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Shimadzu
Corporation. Appeal Br. 2.
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Application 14/126,838

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STATEMENT OF THE CASE
The subject matter on appeal relates to a vessel “for separating and
collecting an accommodated substance . . . without contact with outside air
or without leakage to the outside.” Spec. ¶ 1. According to the
Specification,
an object of the invention is to provide a simple, quick, and low-
processing cost method capable of reliably separating part (for
example, a collection liquid) of an accommodated substance (for
example, a manipulation medium for performing physical,
chemical, and/or biochemical treatment and a collection liquid
containing a target substance) accommodated in the same vessel-
shaped structure only by simple mechanical operation while
maintaining a hermetically-sealed state without any contact with
an outside atmosphere.
Id. ¶ 11. Claim 15, reproduced below, is illustrative of the claimed subject
matter:
15. A manipulation vessel for subjecting a sample containing
an object component to a predetermined manipulation therein,
the manipulation vessel comprising:
a manipulation portion in which a sample containing an
object component is subjected to a predetermined manipulation;
a collection portion in which a target substance from the
manipulation portion is collected; and
a self-fusing material covering an outer surface of a part
.including an open end of the manipulation portion and an open
end of the collection portion to integrally connect the
manipulation portion and the collection portion together, and
the manipulation vessel accommodating a manipulation
medium selected from the group consisting of a liquid, a solid, a
gas, and a dispersion system as a field for performing
manipulation to which the object component is to be subjected.

Appeal Br. 21 (Claims App’x).
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Application 14/126,838

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REJECTIONS
The Examiner maintains3 the following rejections:
A. Claims 15–17 and 21 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Andersen4 in
view of Bennett5 as evidenced by Rhino.6 Final 2.

B. Claim 19 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Andersen in view of Bennett as
evidenced by Rhino and further in view of Hargreaves.7
Id. at 5.

Appellant seeks our review of Rejections A and B. Appeal Br. 4.
Appellant presents argument for claims 15, 16, and 17 (Rejection A), and
does not separately argue the merits of any remaining claim. See generally
id. However, because our basis for reversal—that is, the combination of
Anderson and Bennett would render Anderson unsuitable for its intended

3 The Examiner withdraws the rejection of claim 19 under 35 U.S.C.
§ 112(b) as being indefinite and the provisional rejection of claims 15, 16,
19, and 21 on the ground of nonstatutory double patenting as being
unpatentable over claims 1–3, 5, 7, and 10 of copending Application No.
14/387,116. Ans. 3.
4 Ove Anderson, US 2010/0303688 A1, published December 2, 2010
(“Anderson”).
5 Bennett et al., US 2006/0257665 A1, published November 16, 2006
(“Bennett”).
6 Rhino Linings of the Metroplex, Frequently Asked Questions: Truck
Bedliners – General Q&A (2003–2008) (“Rhino”).
7 William R. Hargreaves, US 6,121,055, issued September 19, 2000
(“Hargreaves”).
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Application 14/126,838

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purpose—is common to all rejected claims, we focus our discussion below
on independent claim 15.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections . . . .”)). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
persuaded that Appellant identifies reversible error. Thus, we do not sustain
the Examiner’s rejections for the reasons expressed below.
Obviousness (claims 15–17 and 21)
The Examiner rejects claims 15–17 and 21 as obvious over the
combination of Anderson and Bennett, as evidenced by Rhino. Final 2.
The Examiner finds that Anderson teaches most of the limitations of
claim 15, including a manipulation vessel having manipulation portion
containing an object containing portion and collection portion for collecting
a target substance. Id. at 4; see also Figs. 2–3 (ends 2A and 2B). The
Examiner finds that the “manipulation vessel is punctured and split into two
separate pieces.” Id. The Examiner acknowledges that “Anderson does not
teach a self-fusing covering an outer surface which is capable of integrally
connecting the manipulation portion and the collection portion together,” but
finds that Bennett describes a liquid container with a coating that provides a
liquid tight seal. Id. Bennett’s coating is a highly elastomeric, self-fusing
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Application 14/126,838

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polyurethane which can connect the manipulation and collection portions
together and prevent leakage. Id. at 4–5. The Examiner concludes that one
skilled in the art would have reason to incorporate Bennett’s self-fusing
material into Anderson’s manipulation vessel “in order to provide a liquid
tight seal under conditions where the manipulation vessel is punctured.” Id.
at 5.
Appellant contends that a person of ordinary skill in the art would not
have been motivated to provide Bennett’s composite layer to the
manipulation vessel of Anderson because the combination would render
Anderson unsuitable for its intended purpose. Appeal Br. 9–10. Appellant
explains that “the purpose of the device of Anderson is to break off
specimens in the breakable multi-specimen storage vessel” and that
“add[ing] or apply[ing] the composite-material (i.e., self-fusing material) of
Bennett et al., to the breakable multi-specimen storage vessel of Anderson
. . . would prevent the storage vessel from breaking into multiple pieces.”
Id. at 9.
On this record, we agree with Appellant that the Examiner’s rejection
fails to show a prima facie case of obviousness. There can be no motivation
to combine the teachings of references if to do so would render the prior art
invention being modified unsatisfactory for its intended purpose. In re Gordon,
733 F.2d 900, 902 (Fed. Cir. 1984); see also McGinley v. Franklin Sports, Inc.,
262 F.3d 1339, 1354 (Fed. Cir. 2001) (“If references taken in combination
would produce a ‘seemingly inoperative decide,’ we have held that such
references . . . cannot serve as predicates for a prima facie case of
obviousness.”).
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Here, Anderson describes a breakable multi-specimen storage vessel
for biological samples that are often stored in a frozen state. Anderson ¶¶ 2,
11. Anderson explains that
Biological samples, such as substances in solution, e.g. blood
samples, water tests, and tissue samples such as fertilized
embryos, can often be effectively stabilized by freezing. The
frozen fluid and/or sample will remain stable for extended
periods of time as long as it is kept in the frozen state. Frequently
these samples are collected in relatively large quantities, or
collective sample, but could be utilized in smaller quantities, or
specimens e.g. for test purposes.
Id. ¶ 3. Anderson explains that problems exist when a smaller specimen is
needed because it “often requires thawing the entire collective sample to
obtain the specimen currently needed.” Id. As a result of repeated freezing
and thawing cycles, the collective sample often becomes unstable. Id.
Anderson purports to overcome the problems existing in the prior art by
providing a container that can store “a frozen collective sample [that] may
be divided into smaller quantities or specimens.” Id. at 13. Anderson
explains that by utilizing a container that includes “multiple break portions
at which the container may be divided . . . [t]he remaining samples can be
stored or transported for processing or testing without having to be thawed
and refrozen.” Id. at 14. Therefore, critical to Anderson’s specimen
container is the ability to break into segments. The Examiner proposes
combining Anderson’s container with the composite coating of Bennett “in
order to provide a liquid tight seal under conditions where the manipulation
vessel is punctured.” Ans. 9. According to Bennett, its Tuff Stuff®
composite material is useful, for example, for coating “a hydrocarbon fuel
tank in a military fuel tanker vehicle” (Bennett ¶ 14) “to defeat liquid
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leakage following a projectile penetration of the container” (id. at ¶ 42).
Tuff Stuff® is a cured resin that dries quickly after coating, is intended to
become a permanent fixture once applied, and is “specifically engineered not
to warp, crack, peel or split.” Rhino, 3–4. Therefore, and as Appellant
explains (Reply Br. 3), when combined with Bennett’s composite layer,
Anderson’s vessel would be prevented from breaking, rendering Anderson
inoperable for its intended purpose.
In the Answer, the Examiner states that the combination of Bennett
and Anderson has been done for a different reason, that is, “in order to
provide a liquid tight seal under conditions where the manipulation vessel is
punctured.” Ans. 9. However, that the Examiner combines the teachings of
Anderson and Bennett for a different reason than Appellant, does not change
the fact that Anderson, as modified, would not be useful for its intended
purpose. Accordingly, on this record, we cannot sustain the Examiner’s
rejection of claim 15.
Because Appellant has argued persuasively that the Examiner’s
modification of Anderson’s manipulation vessel to include Bennett’s composite
layer would render Anderson unsatisfactory for its intended purpose, we do not
sustain the rejection of independent claim 15 or its dependent claims 16–17, 19,
and 21.
CONCLUSION
Appellant identified a reversible error in the Examiner’s rejection of
claims 15–17 and 21 under 35 U.S.C. § 103(a) as unpatentable over
Andersen in view of Bennett as evidenced by Rhino.
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Application 14/126,838

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Appellant identified a reversible error in the Examiner’s rejection of
claims 19 under 35 U.S.C. § 103(a) as unpatentable over Andersen in view
of Bennett as evidenced by Rhino and further in view of Hargreaves.
DECISION
For the above reasons, the Examiner’s rejection of claims 15–17, 19,
and 21 is reversed as summarized below.
Claims
Rejected
Basis Affirmed Reversed
15–17, 21 § 103 Anderson and Bennett
as evidenced by Rhino
15–17, 21
19 § 103 Anderson, Bennett as
evidenced by Rhino, and
Hargreaves
19
Overall
Outcome
15–17, 19, 21

REVERSED