Ex parte ASTLE

Board of Patent Appeals and Interferences

Feb 27, 1998

08038533 (B.P.A.I. Feb. 27, 1998)

Application for patent filed March 29, 1993.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte THOMAS W. ASTLE
________________
Appeal No. 95-0526
Application No. 08/038,5331
________________
ON BRIEF
________________
Before SOFOCLEOUS, WILLIAM F. SMITH and WEIMAR, Administrative
Patent Judges.
SOFOCLEOUS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to 4,
6, and 8 to 20, all the claims remaining in the application.
The subject matter on appeal is directed to a micropipette
tip rack, a pipettor system, and a method of loading onto a
pipettor a plurality of micropipette tips.
Appeal No. 95-0526
Application No. 08/038,533
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Claims 1 to 4 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Scordato in view of Rainin.
Claims 13, 6, 8 to 14, 19, and 20 stand rejected under
35 U.S.C. § 103 as being unpatentable over Freeman in view of
Citrin and Lyman.
Claims 15 to 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Freeman, Citrin, and Lyman as applied to
claims 13, 6, 8 to 14, 19, and 20 and further in view of Scordato
and Rainin as applied to claims 1 to 4.
In his brief, appellant urges that to the extent his
arguments are presented with respect to specific claims, it is
appellant’s intention that those claims do not stand or fall with
the claims with which they are grouped. Claims 1, 13, and 15 are
sufficiently representative of their groups and are as follows:
1. A micropipette tip package for micropipette tips each
having an upper, hollow, tapered, generally cylindrical barrel
portion joined to a lower, hollow, generally cylindrical,
aspirating tip portion, both lying along a common vertical axis,
said micropipette tip package comprising:
(a) a generally hollow housing having four cojoined
sidewalls depending from a horizontal cojoining upper
surface to define an open skirt;
(b) said upper surface having defined therein a plurality
of openings to frictionally engagingly accommodate
therein the distal, wider, ends of said upper portions
of a said micropipette tips;
(c) a horizontal internal support plate disposed in said
housing and spaced from said upper surface, said
Appeal No. 95-0526
Application No. 08/038,533
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internal support plate having defined therein a
plurality of openings to frictionally engagingly
accommodate therein the proximal, narrower, ends of
said upper portions of a said micropipette tips; and
(d) corresponding pairs of said openings in said internal
support plate and said upper surface being vertically
aligned coaxially so that said micropipette tips can be
supported in a vertical position in said package and
releasably held therein by interference fits at said
upper surface and said internal support plate.
13. A pipettor system, comprising:
(a) a pipettor having a head portion with a plurality of
tip pins depending therefrom;
(b) a plurality of micropipette tips, said micropipette
tips being releasably held in a micropipette tip
package, said micropipette tips each having an upper,
hollow, tapered, generally cylindrical barrel portion
and a lower, hollow, generally cylindrical aspirating
tip portion, both lying along a common vertical axis
and being cojoined at a horizontal shoulder; and
(c) a horizontal pusher plate to simultaneously engage said
shoulder on each of said micropipette tips and to
simultaneously raise said micropipette tips for
insertion of said tip pins therein, with said
micropipette tip package remaining attached to said
micropipette tips.
15. A system, as defined in Claim 13, wherein said
micropipette tip package comprises:
(a) a generally hollow housing having four cojoined
sidewalls depending from a horizontal cojoining upper
surface to define an open skirt;
(b) upper surface having defined therein a plurality of
openings to frictionally engagingly accommodate therein
the distal, wider, ends of said upper portions of a
said micropipette tips;
Appeal No. 95-0526
Application No. 08/038,533
On pages 12 and 13 of the Answer, the examiner relies2
upon the Cole-Parmer reference to support his conclusion of
obviousness. We have not considered this reference since it is
not positively included in the statement of any of the rejections
before us. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406,
407, n. 3 (CCPA 1970).
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(c) a horizontal internal support plate disposed in said
housing and spaced from said upper surface, said
internal support plate having defined therein a
plurality of openings to frictionally engagingly
accommodate therein the proximal, narrower, ends of
said upper portions of a said micropipette tips; and
(d) corresponding pairs of said openings in said internal
support plate and said upper surface being vertically
aligned coaxially so that said micropipette tips can be
supported in a vertical position in said package and
releasably held therein by interference fits at said
upper surface and said internal support plate.
The references relied upon by the Examiner are:
Scordato et al. (Scordato) 3,853,217 Dec. 10, 1974
Citrin 4,187,724 Feb. 12, 1980
Rainin et al. (Rainin) 4,676,377 June 30, 1987
Lyman et al. (Lyman) 4,824,642 Apr. 25, 1989
Freeman et al. (Freeman) 5,063,790 Nov. 12, 1991
Brochure, Cole-Parmer® Instrument Co. 1, 258, 268-69, 829
(1993-1994)2
After having reviewed the references in light of the
arguments raised by appellant, we find that we cannot sustain
these rejections for the reasons set forth in appellant’s brief.
It is axiomatic that a rejection under 35 U.S.C. § 103 must
rest on a factual basis. In re Warner, 379 F.2d 1011, 1017,
Appeal No. 95-0526
Application No. 08/038,533
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154 USPQ 173, 177-78 (CCPA 1967). In making such a rejection,
the examiner has the initial burden of supplying the requisite
factual basis and may not, because of doubts that the invention
is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply the deficiencies in the
factual basis. Id. With respect to claims 1 to 4, the combined
references do not teach or suggest a horizontal internal support
plate or that the support plate defines a plurality of openings
to frictionally engagingly accommodate the ends of the upper
portions of the micropipette tips. With respect to claim 13, the
combined references do not teach or suggest that the micropipette
tip package remains attached to the micropipette tips, when the
tips are inserted into the tip pins of the header portion of the
pipettor system. With respect to claim 15, the combined
references do not teach or suggest a horizontal internal support
plate or that the support plate defines a plurality of openings
to frictionally engagingly accommodate the ends of the upper
portions of the micropipette tips. While the examiner contends
that the foregoing limitations would have been obvious to one of
ordinary skill in the art, the record is devoid of any evidence
showing these limitations. Thus, we can only conclude that, as
cogently urged by appellants, the examiner has improperly used
hindsight reconstruction in an attempt to meet the claimed
Appeal No. 95-0526
Application No. 08/038,533
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limitations without providing any factual basis for his ultimate
conclusion of obviousness.
The decision of the examiner rejecting the appealed claims
is reversed.
REVERSED
MICHAEL SOFOCLEOUS )
Administrative Patent Judge )
)
)
)
WILLIAM F. SMITH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ELIZABETH WEIMAR )
Administrative Patent Judge )
Appeal No. 95-0526
Application No. 08/038,533
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John H. Crozier
1934 Huntington Turnpike
Trumbull, CT 06611-5116