Ex Parte Esfandiari

Patent Trials and Appeals Board

Feb 28, 2019

13055536 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/055,536 03/31/2011
36822 7590 02/28/2019
GORDON & JACOBSON, P.C.
60 LONG RIDGE ROAD
SUITE407
STAMFORD, CT 06902
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Javanbakhsh Esfandiari
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.
CHE-007US 6249
EXAMINER
HOEKSTRA, JEFFREY GERBEN
ART UNIT PAPER NUMBER
3791
MAIL DATE DELIVERY MODE
02/28/2019 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 JA V ANBAKHSH ESP ANDIARI
Appeal2018-006570 1
Application 13/055,5362
Technology Center 3700
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPPER, and
AMEE A. SHAH, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 9-15, which constitute all the claims pending in this
application. Claims 1-8 have been withdrawn. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief ("Appeal Br.," filed Dec. 27,
2017), the Reply Brief ("Reply Br.," filed June 7, 2018), the Examiner's
Answer ("Ans.," mailed Apr. 17, 2018), and the Final Office Action ("Final
Act.," mailed Aug. 1, 2017).
2 According to Appellant, the real party in interest is Chembio Diagnostic
Systems, Inc. Appeal Br. 3.
Appeal2018-006570
Application 13/055,536
BACKGROUND
According to Appellant, the "invention relates to methods and
apparatus for collecting and preparing samples prior to testing." Spec. ,r 2.
ILLUSTRATIVE CLAIM
Claims 9 is the only independent claim on appeal and recites:
9. A kit for collecting and preparing a biological sample for
testing, said kit comprising:
a sterile swab having a stick with a sorbent fixed to the
stick at one end of the stick, said stick having a weakened portion
to facilitate breaking the stick at a preselected location;
a dropper bottle assembly, said assembly including a
dropper cap having a spout and a threaded base and a first bottle
with a threaded neck, said first bottle containing a liquid buffer
and said dropper cap being coupled to said threaded neck,
wherein
the weakened portion of the stick located a distance from
the end of the sorbent, the distance being 90% to 100% of the
height of the first bottle without the dropper cap.
Appeal Br. 14.
REJECTIONS
1. The Examiner rejects claims 9, 12, and 14 under 35 U.S.C. § I03(a) as
unpatentable over Anderson3 in view of Sugiyama. 4
2. The Examiner rejects claim 10 under 35 U.S.C. § I03(a) as unpatentable
over Anderson in view of Sugiyama and Wandell. 5
3 Anderson et al., US 2005/0059161 Al, pub. Mar. 17, 2005.
4 Sugiyama et al., US 2004/0014237 Al, pub. Jan. 22, 2004.
5 Wandell et al., US 2005/0130310 Al, pub. June 16, 2005.
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Application 13/055,536
3. The Examiner rejects claim 11 under 35 U.S.C. § I03(a) as unpatentable
over Anderson in view of Sugiyama, Wandell, and Kuriger. 6
4. The Examiner rejects claim 13 under 35 U.S.C. § I03(a) as unpatentable
over Anderson in view of Sugiyama and Kanjilal. 7
5. The Examiner rejects claim 15 under 35 U.S.C. § I03(a) as unpatentable
over Anderson in view of Sugiyama and Wu. 8
DISCUSSION
With respect to claim 9, the Examiner finds that Anderson teaches a
kit for collecting and preparing a biological sample for testing including a
sterile swab with a stick as claimed and "a system for pipetting fluid for
sample preparation and handling." Final Act. 4--5 ( citing Anderson Figs. 1,
5, 7; ,r,r 83, 123, 129-133). The Examiner does not rely on Anderson to
teach a kit including a dropper assembly as claimed. However, the
Examiner finds that Sugiyama teaches a dropper bottle assembly including a
spout and first bottle as claimed. Id. at 5 (citing Sugiyama Figs. 5a-5c; ,r,r 6,
56, 68). The Examiner concludes that it would have been obvious to modify
Anderson's kit to include a dropper assembly as "taught by Sugiyama to
allow for ease of pipetting, which may be even performed by an unskilled
person." Id. (citing Sugiyama ,r,r 10-12). Further, in the Answer, the
Examiner clarifies that the proposed combination may include either
substituting Sugiyama's cap for Anderson's cap or providing a kit that
includes both caps "wherein the user of the kit may choose to use whichever
cap best suits a given situation." Ans. 11.
6 Kuriger, US 7,374,949 B2, iss. May 20, 2008.
7 Kanjilal et al., US 2007/0167900 Al, pub. July 19, 2007.
8 Wu et al., US 2005/0106753 Al, pub. May 19, 2005.
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Appeal2018-006570
Application 13/055,536
As discussed below, we are not persuaded of error in the rejection by
Appellant's arguments.
Appellant argues that the proposed combination changes the principle
of operation of Anderson, would require a substantial reconstruction and
redesign of Anderson, and would render Anderson's device unsatisfactory
for its intended purpose. Appeal Br. 5-11. We are not persuaded by these
arguments. As noted, the Examiner clarifies in the Answer that Anderson's
design need not be modified at all, and rather, Anderson's kit may simply be
modified to include an additional cap assembly, such as the cap taught by
Sugiyama, so that a person of ordinary skill may choose the appropriate cap
in the appropriate situation. We fail to see how the inclusion of an
additional cap would require a redesign or reconstruction of Anderson's cap
such that the device would have a different principle of operation or be
unsatisfactory for its intended purpose. Rather, the original functionality
and purpose would be unchanged and new functionality would be added.
Further and contrary to Appellant's indication (see Reply Br. 5), the
Examiner goes beyond merely stating that an additional cap could be added
to Anderson's kit. Rather, the Examiner determines that it would have been
obvious to do so to provide for the specific advantages disclosed by
Sugiyama, i.e., to allow for a "swab testing method, which may easily be
done even by [an] unskilled person and even at private food plants with no
laboratory." Sugiyama ,r 10; see also Ans. 12 (citing Sugiyama ,r,r 8-12,
60). Thus, we determine that the Examiner has provided sufficient
reasoning to support the conclusion of obviousness. See In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds ...
[require] some articulated reasoning with some rational underpinning to
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Appeal2018-006570
Application 13/055,536
support the legal conclusion of obviousness.") ( cited with approval in KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)).
Additionally, Appellant argues that Sugiyama teaches away from the
proposed combination. Appeal Br. 11. Appellant asserts that Sugiyama
"disparages the use of pipettes introduced into containers for fluid transfer
and, thus, teaches away from using a pipette 70 in the manner specifically
required by Anderson .... " Id. at 12. Appellant also asserts that
"Sugiyama teaches a mutually exclusive design that is not combinable with
Anderson." Id. We find that Sugiyama's teachings regarding the
disadvantages of using a pipette support the conclusion that it would have
been obvious to at least include an alternate fluid transfer method, e.g., with
a dropper. See Sugiyama ,r 9. Also, without further explanation, it is not
clear how Sugiyama's statement regarding the disadvantages of using a
pipette shows that Sugiyama's design is mutually exclusive from Anderson's
such that the combination proposed would not have been obvious.
Based on the foregoing, we are not persuaded of reversible error in the
rejection of claim 9. Thus, we sustain the rejection of claim 9. For the same
reasons, we also sustain the rejections of dependent claims 10-15, for which
Appellant does not provide separate arguments. See Appeal Br. 12-13.
CONCLUSION
We AFFIRM the rejections of claims 9-15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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