Ex Parte Babson et al

Board of Patent Appeals and Interferences

Mar 14, 2012

11611163 (B.P.A.I. Mar. 14, 2012)

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.
11/611,163 12/15/2006 Arthur L. Babson 2006P26226US01 3927
28524 7590 03/14/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
SORKIN, DAVID L
ART UNIT PAPER NUMBER
1774
MAIL DATE DELIVERY MODE
03/14/2012 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 ARTHUR L. BABSON
and THOMAS PALMIERI
__________

Appeal 2010-004790
Application 11/611,163
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, CHUNG K. PAK, and
TERRY J. OWENS, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s
decision rejecting claims 45-64. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Claims 45, 54, and 60 are the independent claims on appeal. Claims 45 and
54 are directed to an agitating apparatus, and claim 60 is directed to a system for
agitating vessels. Claims 45 and 60, reproduced below, are representative of the
subject matter on appeal.
45. An apparatus for passively agitating a plurality of vessels,
comprising:
a plurality of vessel holders, each constructed and arranged to
removably hold a vessel while allowing a given kind of motion of the
vessel;
a vessel conveyor constructed and arranged to move said plurality of
vessel holders along a path having at least one substantially linear
section; and
a stationary agitator structure having an agitating surface extending
adjacent to said substantially linear section,
wherein a vessel is agitated in at least said given kind of motion by
being moved by said vessel conveyor along said substantially linear
section of the path in contact with said agitating surface such that said
vessel travels over said agitating surface.
60. A system for agitating multiple vessels, comprising:
a finite stationary strip of rigid material having a pattern of ridges and
troughs along a length thereof; and
a vessel conveyor that conveys a plurality of vessels along a path at
least partially coincident with said stationary strip such that said
plurality of vessels are agitated by said pattern of ridges and troughs
as said vessels are moved by said conveyor along said stationary strip.
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App. Br., Claims Appendix.1
The following rejections are before us on appeal:
(1) the rejection of claims 49 and 51 under 35 U.S.C. § 112, first
paragraph, based on the written description requirement;
(2) the rejection of claims 45-48, 50, and 52-64 under 35 U.S.C. § 102(b)
as anticipated by Baker2;
(3) the rejection of claims 49 and 51 under 35 U.S.C. § 103(a) as
unpatentable over Baker;
(4) the rejection of claims 60-64 under 35 U.S.C. § 102(b) as anticipated
by Timby3;
(5) the rejection of claims 62 and 63 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Timby and Hillegass4; and
(6) the rejection of claims 45-64 under the judicially created doctrine of
obviousness-type double patenting based on claims 1-8 of US 7,175,334 B2.
B. DISCUSSION
1. Rejection (1)
The Examiner finds the original disclosure does not provide written
description support for the following limitation recited in claims 49 and 51: “the
plurality of vessel holders is removably attached to the endless belt.” Ans. 3, 6.5

1 Appeal Brief dated September 22, 2009.
2 US 802,254 issued October 17, 1905.
3 US 496,759 issued May 2, 1893.
4 US 4,922,743 issued May 8, 1990.
5 Examiner’s Answer dated December 1, 2009.
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In particular, the Examiner contends that “[t]here is no description in the originally
filed application of the holders being removable.” Ans. 3.
The Appellants contend:
The application, as originally filed, included Figure 3 showing
the conveyor element with one of the test holders removed and
separate from the rest of the conveyor element. It should be noted that
the description of Figure 3 at page 2, line 26 of the original disclosure,
describes Figure 3 as showing “the test vessel conveyor element.”
This should be contrasted with the description of Figure 2 at page 2,
line 25 of the original disclosure, which describes Figure 2 as showing
“an expanded view of the transportation assembly.” The difference in
language between these two descriptions illustrates that Figure 3 does
not merely show an expanded view of the conveyor element, since if
this were the case the same language would have been used to
describe Fig. 3 as was used to describe Fig. 2.
Therefore, the fact that the single test holder is shown separate
from the rest of the conveyor element is to show that the test holders
can be removably attached to the conveyor element.
App. Br. 7.
The Examiner recognizes that “Fig. 3 depicts one holder (6) being separate
from the belt (5).” Ans. 6. Nonetheless, the Examiner contends that Figure 3 is
“open to several other reasonable possibilities.” Ans. 6. We note that none of
these “other reasonable possibilities” is discussed in the Appellants’ original
disclosure.
Based on the foregoing, we find that Figure 3 reasonably conveys to one of
ordinary skill in the art that, as of the filing date of the instant Application, the
Appellants had possession of removable vessel holders as recited in claim 1. Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010); see also
Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir. 1991) (drawings alone
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may be sufficient to provide written description support under § 112, first
paragraph). Therefore, the rejection of claims 49 and 51 under § 112, first
paragraph, is reversed.
2. Rejection (2)
a. Claims 45-59
Baker discloses a can-cooking apparatus wherein cans are kept in continual
motion and jarred at intervals to agitate the contents of the can. Baker, col. 1, ll.
24-30. The apparatus comprises a plurality of “pusher-bars” (D’) which push cans
in a canway. Baker, col. 2, ll. 65-82; see also App. Br. 9 (cans are pushed, not
held, by pusher-bars D’). The Examiner contends that a pair of pusher-bars (D’)
creates a “barrier to the cans unintentionally escaping the confines of their
respective pair of bars” and finds that these pusher-bars (D’) correspond to “a
plurality of vessel holders” as recited in claims 45 and 54. Ans. 6.
Claim 45 recites that the “vessel holder” is constructed and arranged to hold
“a vessel,” and claim 54 recites that the “vessel holder” is constructed and arranged
to hold one assay vessel. App. Br., Claims Appendix. We interpret claims 45 and
54 as reciting that the respective vessel holders are constructed and arranged to
hold a single vessel.6 In contrast, Baker discloses that a group of cans is disposed
between two pusher-bars (D’). Baker Fig. 1; see also Reply Br. 5 (“Moving from

6 As explained in In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), “the PTO
applies to the verbiage of the proposed claims the broadest reasonable meaning of
the words in their ordinary usage as they would be understood by one of ordinary
skill in the art, taking into account whatever enlightenment by way of definitions
or otherwise that may be afforded by the written description contained in the
applicant’s specification.” According to the Appellants’ Specification, a single
vessel is received in a vessel holder. See, e.g., Appellants’ Fig. 5. Thus, our
interpretation is consistent with the Appellants’ Specification.
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left to right [in Baker Fig. 1], a group of cans is followed by a gap and then by a
pusher-bar D’.”).7
Alternatively, the Examiner contends:
[W]ith regard to independent claim 45 which does not require the
“vessels” being held by the holders, it is sufficient for anticipation that
the bars D’ of Baker constitute holders of any type of vessel, for
example a rectangular vessel that just fits between a pair of bars, or
even vessels with hooks to facilitate latching onto the bars.
Ans. 6-7.
The Appellants argue that Baker does not disclose a rectangular vessel or a
vessel with hooks and such vessels would render the apparatus of Baker non-
functional and unsuitable for its intended purpose. In particular, the Appellants
argue that a rectangular vessel would obstruct travel through the inlet and outlet of
the apparatus and a hook release mechanism is not provided at the outlet of the
Baker apparatus. Reply Br. 6.
The Appellants’ arguments are persuasive of reversible error. Significantly,
the Examiner has not directed us to any evidence demonstrating that a rectangular
vessel is capable of being received at the inlet and released at the outlet of the
Baker apparatus or a vessel with hooks is capable of being released at the outlet of
the Baker apparatus. Thus, pusher-bars (D’) cannot be said to be “vessel holders”
in the apparatus of Baker.
For the reasons set forth above, the § 102(b) rejection of claims 45-48, 50,
and 52-59 and the § 103(a) rejection of claims 49 and 51 based on Baker are
reversed.

7 Reply Brief dated February 1, 2010.
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b. Claims 60-64
The Examiner finds that Baker discloses a system for agitating vessels
comprising a finite stationary strip (E) of rigid material having a pattern of ridges
(E2) and troughs (i.e., lower regions between adjacent pairs of E2) along a length
thereof. Ans. 4.
The Appellants argue that the strip or track (E) has projections (E2) but does
not have troughs as claimed. App. Br. 10.
The Appellants’ argument is persuasive of reversible error. A “trough” is
defined as “[a] long, narrow depression, as between waves or ridges.” The
American Heritage Dictionary 1376 (William Morris ed., Houghton Mifflin
Company 1976); see also Appellants’ Fig. 4. The lower regions adjacent
projections E2 in Baker are flat strips rather than narrow depressions. Therefore,
the § 102(b) rejection of claims 60-64 based on Baker is reversed.
3. Rejection (3)
The Examiner finds that Timby discloses a system for agitating vessels
comprising “a finite stationary strip (1) of rigid material having a pattern of ridges
and troughs along the length thereof.” Ans. 4.
The Appellants argue that Timby does not disclose “a finite stationary strip”
as recited in claim 60 but rather discloses “an endless railway track.” App. Br. 11.
The Appellants’ argument is supported by the record. See, e.g., Timby, col.
2, ll. 74-76 (disclosing that the apparatus comprises “an endless railway track 1);
Timby Fig. 1. There is no evidence on this record that the endless track disclosed
in Timby, which constitutes an endless loop, is, by definition, a finite strip having a
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pattern of ridges and troughs along a length thereof. For this reason, the § 102(b)
rejection of claims 60-64 based on Timby is reversed.
The Examiner does not rely on Hillegass to cure this deficiency in Timby.
See Ans. 5, 8. Therefore, the § 103(a) rejection of claims 62 and 63 based on the
combined teachings of Timby and Hillegass is also reversed.
4. Rejection (4)
The Examiner finds:
Claim 1 of 7,175,334 requires a plurality of vessel holders, a vessel
conveyor and an agitator. Claim 1 of 7,175,334 does not, however,
recite that the agitator is stationary as required by each of the appealed
claims. Nonetheless, the embodiment(s) which support the claims of
7,175,334 involve a stationary agitator. See In Re Basell Poliolefine
Italia S.P.A., 547 F.3d 1371 . . . (Fed. Cir. 2008).
Ans. 5.
The Appellants do not dispute that US 7,175,334 B2 (“the 334 patent”)
discloses a stationary agitator structure. Rather, the Appellants contend that the
claims of the 334 patent do not require a stationary agitator structure. Reply Br. 9-
10.
We recognize that the claims of the 334 patent do not expressly recite that
the “vessel contact agitator” is a stationary strip of material. However, as
explained in Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.
1995), “[c]laims must be read in view of the specification, of which they are a
part.” In this case, the 334 patent describes a passive agitator assembly comprising
a vessel contact agitator, and the vessel contact agitator is described as a stationary
strip of material. See 334 patent, col. 2, ll. 61-67; see also 334 patent, col. 1, l. 67
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(“FIG. 4 shows the test vessel agitator assembly.”). Thus, for purposes of the 334
patent, “a vessel contact agitator” must be a stationary strip of material.
Based on the foregoing, the Examiner correctly concluded that the passive
agitator apparatus recited in the claims on appeal is rendered obvious by the claims
of the 334 patent.8 Therefore, the obviousness-type double patenting rejection of
claims 45-64 is affirmed.
C. DECISION
Based on the foregoing, it is hereby
ORDERED that the rejection of claims 49 and 51 under 35 U.S.C.
§ 112, first paragraph, based on the written description requirement is reversed;
and it is
FURTHER ORDERED that the rejection of claims 45-48, 50, and 52-
64 under 35 U.S.C. § 102(b) as anticipated by Baker is reversed; and it is
FURTHER ORDERED that the rejection of claims 49-51 under 35
U.S.C. § 103(a) as unpatentable over Baker is reversed; and it is
FURTHER ORDERED that the rejection of claims 60-64 under 35
U.S.C. § 102(b) as anticipated by Timby is reversed; and it is
FURTHER ORDERED that the rejection of claims 62 and 63 under
35 U.S.C. § 103(a) as unpatentable over the combination of Timby and Hillegass is
reversed; and it is

8 The instant application is a continuation of Application 10/813,576 which
matured into the 334 patent.
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FURTHER ORDERED that the rejection of claims 45-64 under the
judicially created doctrine of obviousness-type double patenting based on claims 1-
8 of US 7,175,334 is affirmed; and it is
FURTHER ORDERED that no time period for taking any subsequent
action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)
(2011).
AFFIRMED

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