Ex Parte Feaster et al

Board of Patent Appeals and Interferences

Aug 30, 2012

11640435 (B.P.A.I. Aug. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/640,435 12/15/2006 Shawn R. Feaster KCX-1239
(64127280US01)
5175
22827 7590 08/31/2012
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
EXAMINER
JARRETT, LORE RAMILLANO
ART UNIT PAPER NUMBER
1772
MAIL DATE DELIVERY MODE
08/31/2012 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 SHAWN R. FEASTER, KAIYUAN YANG, NING WEI,
CHIBUEZE O. CHIDEBELU-EZE, JANES M. TAKEUCHI,
ROSANN M. KAYLOR, ENRICO L. DIGIAMMARINO
and JEFFREY E. FISH
____________

Appeal 2011-008473
Application 11/640,435
Technology Center 1700
____________

Before CATHERINE Q. TIMM, ROMULO H. DELMENDO and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008473
Application 11/640,435

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1 through 3 and 10 through 13. We have jurisdiction under 35 U.S.C.
§ 6.
Appellants’ claimed invention relates to a lateral flow assay device.
App. Br. 3. Claim 1 is illustrative (emphasis added):

1. A lateral flow assay device that further includes:

a housing, and a test strip disposed within said housing
comprising a membrane with a detection region and a collection
region;

a sample meter comprising a first end for absorption of a
test sample, and a storage section that receives and stores at
least a component of the test sample;

an opening in said housing sized for insertion of said
sample meter into said housing such that said storage section of
said sample meter is disposed adjacent said collection region of
said membrane, the test sample component transferable from
said storage section to said collection region for subsequent
migration to said detection region; and

an activatable isolation mechanism within said housing
and disposed so as to physically detach from said sample meter
a defined length of said sample meter storage section upon
activation thereof such that said detached defined length of said
storage section is presented to said collection region of said
membrane.

The Examiner relied on the following references in rejecting the
appealed subject matter:
Imrich US 5,415,994 May 16, 1995
Appeal 2011-008473
Application 11/640,435

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Allen US 5,416,000 May 16, 1995
Schrier US 6,008,059 December 28, 1999
Lee US 6,140,136 October 31, 2000

Appellants request review of the following rejections (App. Br. 5)
from the Examiner’s final office action:
1. Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Lee.

2. Claims 1-3 and 10-12 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Allen.

3. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lee and Schrier.

4. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Allen and Imrich.

OPINION
The dispositive issue for this appeal is: Did the Examiner err in
determining that either Lee or Allen describes a lateral flow assay device
including an activatable isolation mechanism that physically detaches a
defined length of a sample meter to present the defined length to a collection
region of a test strip within the device as required by the subject matter of
independent claim 1? 1
We answer this question in the affirmative and REVERSE.
The Examiner bears the initial burden of establishing a prima facie
case of anticipation. In re King, 801 F.2d 1324, 1326-27 (Fed. Cir. 1986).
Anticipation under 35 U.S.C. § 102 requires that “each and every element as
set forth in the claim is found, either expressly or inherently described, in a

1 We will limit our discussion to independent claim 1.
Appeal 2011-008473
Application 11/640,435

4
single prior art reference.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999).
We agree with Appellants that the subject matter of independent claim
1 is not anticipated by either Lee or Allen.
The Examiner found that both Lee and Allen disclose a lateral flow
assay device including an activatable isolation mechanism that physically
detach a defined length of a sample meter to present it to a collection region
of a test strip within their respective devices. Ans. 5-6. However, the
Examiner has not adequately explained why either Lee or Allen discloses the
claimed activatable isolation mechanism. The Examiner improperly asserts
that Lee’s activatable isolation mechanism 314 physically detaches a
segment of the sample meter 308 (absorbent pad) to present it to collection
region 324. Id.at 5-6, 11. Similarly, the Examiner asserts that Allen’s
activatable isolation mechanism 9 physically detaches a segment of a sample
meter to present it to a collection region. Id. at 6, 12
However, as correctly argued by Appellants, neither Lee’s mechanism
314 nor Allen’s mechanism 9 physically detaches a segment from their
respective sample meters. App. Br. 7, 11. The sample meter identified by
the Examiner in Allen is associated with orifice 4. Further, the Examiner
does not direct us to any disclosure in Lee or Allen that supports the
Examiner’s assertion that the respective mechanisms of Lee and Allen
detach a segment of a sample meter.
Consequently, the Examiner has not discharged the burden of
explaining how it can be foundthat either Lee or Allen describes a lateral
flow assay device including an activatable isolation mechanism that
physically detaches a defined length of a sample meter to present the defined
Appeal 2011-008473
Application 11/640,435

5
length to a collection region of a test strip within the lateral assay device as
required by the subject matter of independent claim 1. Under these
circumstances, we cannot conclude that the Examiner has met the minimum
threshold of establishing anticipation under § 102(b).
We also cannot sustain the rejections of dependent claims 3 and 13
under § 103(a). Appellants argued, and we agree, that neither Schrier nor
Imrich was cited to address the differences in Lee or Allen discussed above.
App. Br. 12.
Therefore, the rejections of claims 1 and 2 under 35 U.S.C. § 102(b)
over Lee; of claims 1-3 and 10-12 under 35 U.S.C. § 102(b) over Allen; of
claim 3 under 35 U.S.C. § 103(a) over Lee and Schrier and of claim 13
under 35 U.S.C. § 103(a) over Allen and Imrich are reversed.
ORDER
All of the appealed prior art rejections are reversed

REVERSED

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