Bates, Allen K. et al.

Patent Trials and Appeals Board

Jan 24, 2020

14981791 - (D) (P.T.A.B. Jan. 24, 2020)

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.
14/981,791 12/28/2015 Allen K. Bates TUC1P162A/
TUC920120099US2
5851
50548 7590 01/24/2020
ZILKA-KOTAB, PC- IBM
1155 N. 1st St.
Suite 105
SAN JOSE, CA 95112
EXAMINER
KRCHA, MATTHEW D
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
01/24/2020 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):
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLEN K. BATES, NILS HAUSTEIN, STEPHEN L.
SCHWARTZ, ANNA W. TOPOL, and DANIEL J. WINARSKI
Appeal 2019-001040
Application 14/981,791
Technology Center 1700
BEFORE MICHAEL P. COLAIANNI, MONTÉ T. SQUIRE, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4 and 6–21.
We have jurisdiction. 35 U.S.C. § 6(b).
We affirm-in-part.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 2.
Appeal 2019-001040
Application 14/981,791

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SUBJECT MATTER
The claims are directed to a cartridge for storing biological samples,
where the cartridge has the same form factor as a data tape cartridge used in
an automated tape library. By having such a form factor, “[t]he biosample
storage cartridges may be handled by the same robotic mechanisms that
handle data cartridges in automated data storage library systems,”
purportedly allowing for convenient access, manipulation, processing, and
long-term archival storage of the biosamples contained therein. Spec. ¶¶ 5,
20.
Claim 1, reproduced below, is illustrative, with the dispositive
limitation in this appeal italicized for emphasis:
1. A cartridge for storing biosample carriers, comprising:
an enclosure having the same form factor as a data tape
cartridge used in an automated tape library; and
a rotatable biosample carrier holder disposed in the
enclosure and having a plurality of radial slots for receiving the
biosample carriers.
Appeal Br. 24.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Suzuki US 4,200,607 Apr. 29, 1980
Smith US 5,897,090 Apr. 27, 1999
Mengel US 6,167,767 B1 Jan. 2, 2001
Strand US 2002/0155033 A1 Oct. 24, 2002
Kuo US 6,769,760 B1 Aug. 3, 2004
Melching US 2004/0212285 A1 Oct. 28, 2004
Srinivas US 2010/0230344 A1 Sept. 16, 2010
Pedrazzini US 2011/0158850 A1 June 30, 2011
Katsumi US 2011/0223063 A1 Sept. 15, 2011

Appeal 2019-001040
Application 14/981,791

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REJECTIONS
The claims are rejected under pre-AIA 35 U.S.C. § 103(a) as follows:
I. Claims 1–4, 6, 10, 13, and 16–20 as obvious over Mengel in
view of Melching;
II. Claim 7 as obvious over Mengel, Melching, and Smith;
III. Claim 8 as obvious over Mengel, Melching, and Kuo;
IV. Claim 9 as obvious over Mengel, Melching, and Srinivas;
V. Claim 11 as obvious over Mengel, Melching, and Katsumi;
VI. Claim 12 as obvious over Mengel, Melching, and Suzuki;
VII. Claims 13 and 14 as obvious over Mengel, Melching, and
Pedrazzini;
VIII. Claim 15 as obvious over Mengel, Melching, and Strand;
and
IX. Claim 21 as obvious over Mengel, Melching, Suzuki,
Pedrazzini, Strand, Smith, Kuo, Srinivas, and Katsumi.

Additionally, claims 1–4, 6–18, and 20 are rejected on the ground of
non-statutory obviousness type double patenting over claims 1–3, 4–18, and
20 of U.S. Patent 9,250,254.
OPINION
The Obviousness Rejections
Because the dispositive limitation is recited in each independent
claim, we need only discuss the Examiner’s obviousness rejection of claim
1. In rejecting this claim, the Examiner finds that Mengel teaches all of the
recited limitations except for the claimed “enclosure having the same form
factor as a data tape cartridge used in an automated tape library.”
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Application 14/981,791

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Final Act. 4. To address this difference, the Examiner relies on Melching,
which the Examiner finds “teaches a climatic cabinet in which a monitor
device is designed with respect to its form and outside dimensions so that it
can be transported by a transporting system and laid on a specimen storage
place.” Id. Based on this disclosure, the Examiner determines it would have
been obvious for the skilled artisan “to select the shape of a data tape
cartridge for the purpose of allowing the enclosure to be transported by a
transporting system and laid in its storage place.” Id.
We reverse each of the obviousness rejections. As Appellant
correctly argues (Appeal Br. 9–12), the relied upon prior art does not teach
or suggest a tape cartridge having the claimed form factor. Furthermore, the
Examiner’s reasoning regarding why the skilled artisan would have changed
the shape of Melching’s “monitoring device,” e.g., a barcode scanner or
camera, is insufficient to demonstrate how the skilled artisan would have
been motivated to design Mengel’s enclosure to have the claimed form
factor. Melching ¶¶ 3, 19. As Appellant succinctly states, “Melching’s
monitoring device and Mengel’s cartridges are very different structures, and
serve different functions, such that a skilled artisan would not appreciate a
teaching as to the form of one to be informative to the appropriate form of
the other.” Appeal Br. 11.
Obviousness-Type Double Patenting
The Examiner rejects claims 1–4, 6–18, and 20 under the judicially
created doctrine of obviousness-type double patenting over certain claims of
US Patent 9,250,254. Final Act. 14.
We affirm this rejection. Appellant does not present arguments
regarding the scope of the appealed claims vis-à-vis those of the ʼ254 patent.
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Application 14/981,791

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Rather, Appellant focuses on the public policy governing the judicially
created doctrine, and how that policy does not apply to this particular case.
Appeal Br. 7–8. Specifically, Appellant argues that there is no risk of an
unjust extension of patent rights because this application is a family member
of the ʼ254 patent, and there is no possibility for harassment by multiple
assignees because “[t]he present application and the ʼ254 patent remain, and
always have been, assigned to” a common entity. Id. at 8.
We are not persuaded by Appellant’s argument regarding multiple
assignees because, as correctly noted by the Examiner, the application could
be assigned in the future. Ans. 3.
CONCLUSION
The Examiner’s obviousness rejections are reversed.
The Examiner’s obviousness-type double patenting rejection is
affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6, 10,
13, 16–20
103 Mengel, Melching 1–4, 6, 10,
13, 16–20
7 103 Mengel, Melching,
Smith
7
8 103 Mengel, Melching,
Kuo
8
9 103 Mengel, Melching,
Srinivas
9
11 103 Mengel, Melching,
Katsumi
11
12 103 Mengel, Melching,
Suzuki
12
Appeal 2019-001040
Application 14/981,791

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13, 14 103 Mengel, Melching,
Pedrazzini
13, 14
15 103 Mengel, Melching,
Strand
15
21 103 Mengel, Melching,
Suzuki, Pedrazzini,
Strand, Smith, Kuo,
Srinivas, Katsumi
21
1–4, 6–18,
20
Nonstatutory Double
Patenting
1–4, 6–18,
20

Overall
Outcome
1–4, 6–18,
20
19, 21
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART