Ex Parte Roscoe et al

Board of Patent Appeals and Interferences

Feb 9, 2009

10669276 (B.P.A.I. Feb. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte STEPHEN B. ROSCOE, NEAL A. RAKOW,
MICHAEL L. HUSBERG, and
LESTER H. McINTOSH III
__________

Appeal 2009-0006
Application 10/669,276
Technology Center 1700
___________

Decided:1 February 9, 2009
___________

Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0006
Application 10/669,276

This is an appeal under 35 U.S.C. § 134 from an Examiner’s final
rejection of claims 1-18, 20, 42, 43, and 45. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.

The following Examiner’s rejections are before us on appeal:
Claims 1-18, 20, 42, 43, and 45 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Mak2 and Bennett.3
Claims 1-18, 20, 42, 43, and 45 are rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Mak and Grass.4
Claims 1 and 42 are the only independent claims on appeal. Claims 1-
18 and 20 relate to a system for measuring diffusion of a compound across a
membrane, and claims 42, 43, and 45 relate to a system, in kit form, for
holding a membrane.
Claim 1 is representative of the subject matter on appeal and reads as
follows:
1. A system for measuring diffusion of a compound across a
membrane comprising:

a first base having first and second opposed surfaces and
having a plurality of hollow projections extending outwardly
from the first surface, each hollow projection having a tapered
tip with an opening therein and a respective cavity contiguous
with the opening disposed within the projection;

a second base having first and second opposed surfaces,
the first surface of the second base having a plurality of
recessed tapered openings therein adapted to engage the
plurality of hollow projections, each recessed tapered opening

2 US 5,490,415 issued to Mak et al. on February 13, 1996.
3 US 4,511,534 issued to Bennett, Jr. et al. on April 16, 1985.
4 US 5,591,636 issued to Grass on January 7, 1997.
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Appeal 2009-0006
Application 10/669,276

being contiguous with a respective cavity that extends into the
second base;

a membrane contacting the recessed tapered openings
and the tips of the hollow projections, wherein the first base is
fastened to the second base by a first fastening means, and
wherein: a) each cavity within a hollow projection extends
through the first base and forms an opening at the second
surface of the first base; or b) each cavity within the second
base extends through the second base and forms an opening at
the second surface of the second base; or c) each cavity within a
hollow projection extends through the first base and forms an
opening at the second surface of the first base, and each cavity
within the second base extends through the second base and
forms an opening at the second surface of the second base; and

a retaining plate having perforations therein adapted to
allow the hollow projections to pass therethrough, wherein the
retaining plate is fastened to the second base by a second
fastening means, wherein the membrane is disposed between
the second base and the retaining plate.

Br. 13, Claims Appendix.5
B. ISSUE
The Examiner contends that it would have been obvious to one of
ordinary skill in the art to modify the diffusion test apparatus of Mak with a
retaining plate to hold the membrane to the second base in view of the
teachings in Bennett or Grass. Ans. 5, 7.6
The Appellants contend that the Examiner has used impermissible
hindsight to conclude that it would have been obvious to one of ordinary
skill in the art to modify the diffusion test apparatus of Mak with a retaining
plate. See Br. 8-12.

5 Appeal Brief dated October 11, 2007.
6 Examiner’s Answer dated January 10, 2008.
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Appeal 2009-0006
Application 10/669,276

Thus, the sole issue on appeal is:
Do the teachings of Bennett or Grass suggest modifying the diffusion
test apparatus of Mak with a retaining plate as recited in claims 1 and 42?

C. ANALYSIS
Claim 1 recites a system comprising a first base fastened to a second
base by a first fastening means and a retaining plate fastened to the second
base by a second fastening means, wherein a membrane is disposed between
the second base and the retaining plate. Br. 13, Claims Appendix. Thus,
according to claim 1, the first base and the retaining plate are fastened to the
second base by the first and second fastening means, respectively.
Similarly, claim 42 recites a system, in kit form, comprising a first
base, a second base, and a means for fastening the first base to the second
base. The system also includes a retaining plate and means for fastening the
retaining plate to the second base. Br. 16, Claims Appendix.
Mak Figure 2 illustrates a diffusion test apparatus. Mak 5:46-47.
Figure 2 is reproduced below:
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Appeal 2009-0006
Application 10/669,276

Mak Figure 2 depicts a diffusion assembly.
The diffusion assembly 2 includes a donor assembly 4 which mounts
to a receiver assembly 6 and a membrane 8 secured between the donor face
10 of donor assembly 4 and the receiver face 12 of receiver assembly 6.
Mak 5:58-61. The donor assembly 4 corresponds to the claimed “second
base,” and the receiver assembly 6 corresponds to the claimed “first base.”
See Ans. 4.
The donor assembly 4 (i.e., second base) and the receiver assembly 6
(i.e., first base) are secured to one another by fastening means 14. Mak
5:61-64.
The Examiner found that Mak does not teach a retaining plate for
retaining the membrane 8 to the donor assembly 4 (i.e., second base). Ans.
5. However, the Examiner found that Bennett and Grass each disclose a
retaining plate within the scope of claim 1. Ans. 5, 7.
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Appeal 2009-0006
Application 10/669,276

Bennett Figure 3 illustrates a liquid transfer device. Bennett 3:12-17.
Figure 3 is reproduced below:

Bennett Figure 3 depicts a liquid transfer device.
The Examiner found that the liquid transfer device disclosed in
Bennett “comprises a second base 32 and a retaining plate 42 [sic, 12] which
holds a membrane [30] to the second base 32 by removable fasteners 42 as
seen in figure 2-4.” Ans. 5. However, the Examiner did not find that
Bennett discloses a “first base” that is also fastened to the second base 32.
Without such a disclosure, the teachings of Bennett add nothing to the
teachings of Mak. That is, as in the Mak device, the Bennett device merely
comprises two “bases” (i.e., second base 32 and retaining plate 42/12)
fastened together with a membrane secured therebetween.
Grass Figure 2 illustrates a membrane holder. Grass 3:14-15. Figure
2 is reproduced below:
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Appeal 2009-0006
Application 10/669,276

Grass Figure 2 depicts a membrane holder.

The Examiner found:
Grass teaches a membrane holder that comprises an
upper base 14, a retaining plate 18 and a lower base 16. A
membrane is placed between the upper base and the retaining
plate 18 and held together by means of a threaded connection
between the upper base and the retaining plate (col. 3, line 44-
50). The retaining plate is attached to the base plate by bolts
20.

Ans. 7.
The Examiner did not find that the lower base 16 is fastened to the
upper base 14 in the Grass device. Thus, as with Bennett, the teachings of
Grass add nothing to the teachings of Mak. That is, as in the Mak device,
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Application 10/669,276

the Grass device merely comprises two “bases” (i.e., upper base 14 and
retaining plate 18) fastened together with a membrane secured therebetween.
For the reasons set forth above, the teachings of Bennett or Grass do
not suggest modifying the diffusion test apparatus of Mak with a retaining
plate as recited in claims 1 and 42.
D. DECISION
The rejection of claims 1-18, 20, 42, 43, and 45 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Mak and Bennett is
reversed.
The rejection of claims 1-18, 20, 42, 43, and 45 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Mak and Grass is reversed.

REVERSED

PL Initial:
sld

3M INNOVATIVE PROPERTIES COMPANY
P.O. BOX 33427
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