Ex Parte Colin et al

Patent Trial and Appeal Board

Mar 29, 2016

12221755 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/221,755 08/05/2008 Bruno Colin
20306 7590 03/30/2016
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32NDFLOOR
CHICAGO, IL 60606
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
08-678 2737
EXAMINER
EDWARDS, LYDIA E
ART UNIT PAPER NUMBER
1799
MAILDATE DELIVERY MODE
03/30/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte BRUNO COLIN,
Y ANELI IAKIMOV A, KEVIN G. KETSENBURG,
DAVID M. ROBBINS, and STEPHANE BELLET
Appeal2014-004966
Application 12/221,755
Technology Center 1700
Before PETER F. KRATZ, GEORGE C. BEST, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-13 of Application 12/221,755.
Final Act. (July 19, 2013). Appellants 1 seek reversal of these rejections
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.
1 bioMerieux, Inc. is identified as the real party in interest. Appeal Br. 2.
Appeal2014-004966
Application 12/221,755
BACKGROUND
The '755 Application describes an automated instrument designed for
handling culture plates as used in microbiology. Spec. 2. Culture plates are
typically designed so that the plates can be nested. Id. This allows plates to
be stacked one on top of another to create a stable stack of plates. Id. The
nesting of plates, however, can cause jams in robotics systems designed to
handle stacks of plates. Id. at 3.
Claim 1 is representative of the '755 Application's claims and is
reproduced below from the Claims Appendix of the Appeal Brief:
1. An apparatus for holding a plurality of culture plates in a
stacked arrangement in which the culture plates are placed
vertically above each other in a stack, the stacked arrangement
of culture plates including a bottom plate in the stacked
arrangement, wherein the culture plates contain nesting features
wherein an upper portion of one culture plate is in a nested
relationship with an adjacent culture plate by virtue of the upper
portion being received within a bottom portion of the adjacent
culture plate in the stacked arrangement, the apparatus
compnsmg:
a holder holding the stacked arrangement of culture plates;
the holder having a base, the base defining an opening
wherein the bottom culture plate may be withdrawn from the
base;
wherein the base further comprises a structure passively
and completely de-nesting the bottom culture plate from the
adjacent culture plate by moving the bottom culture plate
laterally such that the upper region of the bottom culture plate is
no longer received with the bottom portion of the adjacent culture
plate while retaining the bottom culture plate within the holder
thereby facilitating withdrawal of the bottom culture plate from
the base via the opening.
Appeal Br. 11 (Claims App'x) (emphasis added).
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Appeal2014-004966
Application 12/221,755
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1--4, 6, and 7 are rejected under 35 U.S.C. § 102(b) as
anticipated by Njaastad.2 Answer 2.
2. Claims 5 and 8-13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination ofNjaastad and Christoffersen. 3
Final Act. 6; Answer 3.
DISCUSSION
Rejection 1. The Examiner rejected claims 1--4, 6, and 7 as
anticipated by Njaastad. Answer 2. Appellants argue for reversal of this
rejection based upon claim l's limitations. See Appeal Br. 5-8. Thus, we
select claim 1 as representative of this group of claims. 37 C.F.R.
§ 41.37(c)(l)(iv) (2013). The remaining claims subject to this rejection will
stand or fall with claim 1.
Appellants argue that the rejection of claim l should be reversed
because (1) the Examiner erred by finding that Njaastad describes a structure
that passively and completely de-nests the bottom culture plate from the
culture plate stack, or (2) the Examiner erred by failing to give the culture
plate aspect of claim 1 patentable weight. See Appeal Br. 5-8.
We begin, as we must, by interpreting the language of claim 1. See,
e.g., Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351
(Fed. Cir. 2001) ("Only when a claim is properly understood can a
2 US 2007/0090125 Al, published April 26, 2007.
3 US 2006/0157493 Al, published July 20, 2006.
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Appeal2014-004966
Application 12/221,755
determination be made ... whether the prior art anticipates and/or renders
obvious the claimed invention.").
Our analysis focuses on the following portion of claim 1:
a structure passively and completely de-nesting the bottom
culture plate from the adjacent culture plate by moving the
bottom culture plate laterally such that the upper region of the
bottom culture plate is no longer received with the bottom
portion of the adjacent culture plate while retaining the bottom
culture plate within the holder ....
Appellants have chosen to use functional language to define the structure of
the claimed apparatus. It is well-established that such claims are permissible
and read upon any structure that is capable of performing the claimed
function. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997).
We, therefore, must determine what is meant by the recited function
"passively and completely de-nesting the bottom culture plate ... by moving
[it] laterally." We begin by turning to Appellants' Specification. The
Specification explains that
[t]he de-nesting feature is preferably passive - i.e. no moving
parts are required. For example, the de-nesting feature may take
the form of a projection . . . which serves to move a plate
laterally relative to the plates above it when the plate descends
to the bottom position within the cassette. This lateral
movement, relative to the plate above it, de-nests the plate. Thus,
the ramp or other de-nesting feature automatically disrupts the
nesting of the bottom culture plate relative to the plate above it.
Spec. 4 (emphasis added); see also id. at 5, 8-9, 11, 13.
The Specification further emphasizes that "[ w ]hatever their [sic, its]
construction, the de-nesting feature urges a culture plate to move in a lateral
direction as the culture plate descends in the stack at the elevation of the de-
nesting feature due to gravity and withdrawal of a culture plate from the
bottom of the stack." Id. at 10.
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Appeal2014-004966
Application 12/221,755
Based upon Appellants' Specification, we conclude that the function
of passively and completely de-nesting the bottom culture plate means that
the structure of the base of the claimed apparatus combines with a
downward force applied to the entire stack of culture plates---e.g., gravity or
gravity plus a downward-biasing spring-to move a culture plate laterally as
the plate becomes the bottom culture plate in the stack.
In view of the foregoing, Njaastad anticipates claim 1 only if
Nj aastad' s apparatus is cap ab le of performing the function recited in claim
1. See Schreiber, 128 F.3d at 1478.
Njaastad describes an apparatus for manually dispensing lids for
beverage cups. Njaastad i-fi-12-3. As shown in Njaastad's Figure 9A, when a
stack of lids is placed in the apparatus the bottom lid rests upon support
shelves 66, 68, and 72. See also id. at i138. In this position, the bottom lid
is still nested within the adjacent lid. See also id. at Figure 9A. As Njaastad
explains:
To dispense the lowermost lid, . . . an operator grips ...
the exposed lip of the lowermost relatively flexible cup lid and
pulls it downward and forward . . . . As the lowermost lid 50 is
pulled downward and forward, it first moves off of the support
shelves 66, 68 and 72 and drops down into a pocket 78 defined
in base 40 ... , whereupon continued pulling of the lid fully
releases it from the overlying stack and removes it from the
dispenser ....
Njaastad i138; see also id. at i1 40, Figure 9B.
Njaastad's apparatus, therefore, is described as requiring the person
operating the dispensing apparatus to provide the force that moves the
bottom lid in the stack laterally. Thus, Njaastad's apparatus is not capable of
passively de-nesting the bottom lid from the adjacent lid by moving the
bottom lid laterally.
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Appeal2014-004966
Application 12/221,755
Because the Examiner's finding that Njaastad anticipates claim 1 is
based upon an erroneous factual determination, we are constrained to reverse
the rejection of claim 1 as anticipated by Njaastad.
Rejection 2. The Examiner rejected claims 5 and 8-13 as
unpatentable over the combination ofNjaastad and Christoffersen. Answer
3. The Examiner's conclusion rests upon the factual determination that we
found to be erroneous in our discussion of Rejection 1. See id. at 4. We,
therefore, must also reverse Rejection 2.
CONCLUSION
For the reasons set forth above, we reverse the Examiner's rejection of
claims 1-13 of the '755 Application.
REVERSED
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