Ex Parte Chandler

Board of Patent Appeals and Interferences

Apr 26, 2010

11041673 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HOWARD MILNE CHANDLER
____________

Appeal 2009-007665
Application 11/041,673
Technology Center 1700
____________

Decided: April 26, 2010
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/041,673

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Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 9-11 and 20-22 (Appeal Brief filed June 10, 2008, hereinafter “App.
Br.,” at 4; Final Office Action mailed January 2, 2008, hereinafter “FOA”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
Appellant’s invention relates to an assay kit for detecting occult blood
or one or more indicators of a pathological condition in a sample derived
from faecal (fecal) material (Spec. 1, ll. 10-12).
Claims 9 and 10 read as follows:
9. An assay kit for testing faecal material, which
comprises a sample collection device which is a brush or brush-
like device having an elongated stem or handle and a terminally
attached group of flexible or semi-flexible bristles together with
means for detection of an analyte in a sample derived from the
faecal material, wherein said bristles are disposed longitudinally
to said stem or handle.
10. A kit according to Claim 9, wherein the bristles of
the brush or brush-like device have a length of from 1 to 2 cm.
(App. Br. 16; Claims App’x.)
The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed August 20, 2008, hereinafter
“Ans.,” 3):
Hori 5,460,781 Oct. 24, 1995
Karakawa 5,543,115 Aug. 6, 1996
You 6,076,988 Jun. 20, 2000
Kao 6,375,622 B1 Apr. 23, 2002
Nishitani 6,807,704 B2 Oct. 26, 2004
Kagaya EP 0727653 A2 Aug. 8, 1996

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The Examiner rejected the claims as follows:
I. Claims 9 and 11 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Kagaya and Karakawa (Ans. 4); and
II. Claims 10 and 20-22 under 35 U.S.C. § 103(a) as unpatentable
over the combined teachings of Kagaya, Karakawa, and Hori
(Ans. 5).

ISSUE
Has the Examiner erred in concluding that it would have been obvious
to one of ordinary skill in the art to form a sampling brush or brush-like
device having a terminally attached group of flexible or semi-flexible
bristles that are disposed longitudinally to the stem or handle of the device,
as required in claim 9?

FINDINGS OF FACT (“FF”)
1. Kagaya’s Figure 2 is reproduced below:

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Figure 2 depicts a collecting stick 15 having a brush portion 18
that includes brush hairs 20 for collecting feces (col. 3, ll. 39-
44).
2. Kagaya describes that the brush portion 18 is designed with
brush hairs or hair bundles that are fixed and that, for example,
“may be designed in brush-like shape such as a writing brush . .
.” (col. 3, ll. 47-51).
3. Kagaya does not disclose the brush hairs or hair bundles (i.e.,
bristles) having a length of 1-2 cm.
4. Hori’s Figure 1 is reproduced below:

Figure 1 depicts a hemoglobin sampler 1 for sampling water
content from stool samples that includes a small diameter
sample absorbing section 2c made up of a porous fiber bundle
(col. 5, ll. 48-50; col. 6, ll. 47-50).
5. Hori teaches that the porous fiber bundle of the sample
absorbing section may have a length of 5-7 mm (col. 4, ll. 24-
28).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
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that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007).
“The law is replete with cases in which the difference between the
claimed invention and the prior art is some range or other variable within the
claims. These cases have consistently held that in such a situation, the
applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)
(citations omitted).

ANALYSIS1
The Examiner found that Kagaya’s disclosure of a sample collection
device for sampling feces designed in a brush-like shape such as a writing
brush describes the limitation a brush or brush-like device having an
elongated stem or handle and a terminally attached group of flexible or
semi-flexible bristles . . . wherein said bristles are disposed longitudinally to
said stem or handle, as recited in independent claims 9 and 20 (Ans. 4, 5,
and 8).
With respect to Rejection I, Appellant’s sole argument is that the
Examiner erroneously found that Kagaya discloses a brush that is equivalent
to Appellant’s claimed brush (App. Br. 10). Specifically, Appellant

1 Appellant does not dispute that Karakawa describes an analyte detection
means that falls within the scope of the claimed invention.

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contends that “Kagaya never discloses a brush having terminally-attached,
longitudinally disposed bristles” (id.). Appellant argues that Kagaya does
not explain what a “writing brush” may be, and only discloses brushes
having radially-disposed bristles (id.).
We find Appellant’s arguments unpersuasive because Kagaya
expressly discloses that a collection device for collecting feces may be
designed in a brush-like shape, such as a writing brush (FF 1 and 2). Indeed,
Appellant acknowledges “that writing brushes having terminally-attached,
longitudinally disposed bristles were generally known in the art” (Reply Br.
5). Thus, we agree with the Examiner that one of ordinary skill in the art
would have understood that Kagaya’s writing brush describes the contested
limitation.
With respect to Rejection II, the Examiner additionally relied on
Hori’s teachings of a hemoglobin sampler for use with stool samples having
a porous fiber bundle having a 5-7mm length for convenient handling of the
device and for capturing occult hemoglobin (Ans. 5). The Examiner
concluded that, in view of Hori’s teachings, it would have been obvious to
one of ordinary skill in the art to form Kagaya’s bristles with a length of 1-2
cm to provide a device for collecting solid materials and absorption of water
and hemoglobin content from a sample (FOA 4).
Appellant counters that there would have been no reason to combine
Hori’s teachings with Kagaya’s brush because Hori’s hemoglobin sampling
device is “incompatible with the brush of Kagaya and the length of the
porous fiber bundle is irrelevant to Appellant’s claimed invention” (App. Br.
13).
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Appellant’s contention is not persuasive. The Examiner relied on
Hori for teaching that it was known to vary brush fiber lengths in devices for
sampling from feces (Ans. 5; FF 4 and 5). Appellant does not specifically
argue that one of ordinary skill in the art would have failed to recognize that
it would have been obvious to use a bristle length of 1-2 cm. Furthermore,
Appellant does not direct us to any unexpected results for bristles having a
length of 1-2 cm. Thus, Appellant has not adequately refuted the
Examiner’s position that it would have been obvious to one of ordinary skill
in the art to form Kagaya’s writing brush with the claimed bristle length.
We find no persuasive merit in Appellant’s argument that “[Hori] is
not a brush, let alone a brush comprising flexible or semi-flexible bristles
terminally attached and longitudinally disposed to a stem or handle,” (App.
Br. 12), because Appellant’s claims are not limited other than to a “brush or
brush-like” device (See Spec. at 4). Appellant does not explain why Hori’s
device is not “a brush or brush-like.”
Appellant’s argument that Hori’s device cannot be used in a watery
environment, (App. Br. 13), has no persuasive merit because Appellant is
arguing limitations not found in the claims. The claimed invention is not
limited to any particular environment.

CONCLUSION
The Examiner did not err in concluding that it would have been
obvious to one of ordinary skill in the art to form a sampling brush or brush-
like device having a terminally attached group of flexible or semi-flexible
bristles that are disposed longitudinally to the stem or handle of the device,
as required in claim 9.
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DECISION
We affirm the Examiner’s decision to reject:
claims 9 and 11 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of Kagaya and Karakawa; and
claims 10 and 20-22 under 35 U.S.C. § 103(a) as unpatentable over
the combined teachings of Kagaya, Karakawa, and Hori.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(v).

AFFIRMED

kmm

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