Ex Parte Goff et al

Board of Patent Appeals and Interferences

Sep 9, 2010

10166177 (B.P.A.I. Sep. 9, 2010)

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.
10/166,177 06/11/2002 Michael Craig Goff 102-447 4715
23869 7590 09/10/2010
HOFFMANN & BARON, LLP
6900 JERICHO TURNPIKE
SYOSSET, NY 11791
EXAMINER
BEISNER, WILLIAM H
ART UNIT PAPER NUMBER
1797
MAIL DATE DELIVERY MODE
09/10/2010 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 MICHAEL CRAIG GOFF
and JOHN P. HALL
______________

Appeal 2009-005355
Application 10/166,177
Technology Center 1700
_______________

Before CHARLES F. WARREN, TERRY J. OWENS, and
CATHERINE Q. TIMM, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1-9 and 23-33 in the Office Action mailed
March 17, 2005. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-005355
Application 10/166,177
§ 41.31(a) (2005).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a reversible petri dish, and
is representative of the claims on appeal:2
1. A reversible petri dish comprising:
a base wall having a first surface on one side and second surface on
the opposite side; and
a first outer rim, said first outer rim projecting in a first direction
outwardly and substantially at a right angle from said first surface of said
base wall to form a first dish interior and a second outer rim projecting in a
second direction outwardly and substantially at a right angle from said
second surface of said base wall to form a second dish interior which is
diametrically opposed to said first dish interior;
wherein the first and second surfaces each have different surface
characteristics for receiving biological material; and
wherein
said first outer rim forms a circular wall having a diameter, an inner
wall surface, and an outer wall surface;
said second outer rim forms a circular wall having a diameter, an inner
wall surface, and an outer wall surface;
and the diameter formed by the inner surface of the first outer rim and
the diameter formed by the outer surface [sic] second outer rim are
substantially different.
Appellants request review of and argue these grounds of rejection
advanced on appeal by the Examiner: claims 23-28 and 33 under 35 U.S.C. §
102(b) over Bazil (US 3,591,461); and claims 1-5 under 35 U.S.C.
§ 103(a) over Bazil in view of either Brenner (US 3,940,430) or Hubbell
(US 5,278,063). Br. 5;3 Ans. 4 and 5.
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Appeal 2009-005355
Application 10/166,177
We summarily sustain these grounds of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 29-32 over Bazil in
view of Plickert (DE 31 02571 A1); and claims 6-9 over Bazil in view of
either Brenner or Hubbell, further in view of Plickert. Ans. 3, 5, and 7.
Appellants request review of these grounds but do not submit argument with
respect thereto, stating “[t]he rejections of independent claims 1 and 23 are
presented for review, the dependent claims having their patentability based
on the patentability of the independent claims.” Br. 5-6. See Manual of
Patent Examining Procedure § 1205.02 (8th ed., Rev. 3, August 2005) (“If a
ground of rejection stated by the examiner is not addressed in the appellant’s
brief, that ground of rejection will be summarily sustained by the Board.”).
Thus, we decide this appeal based on independent claims 1 and 23. 37
C.F.R. § 41.37(c)(1)(vii) (2005).
Opinion
The plain language of representative claims 1 and 23, as illustrated in
Specification Figures 1 and 3, specifies a petri dish comprising at least base
wall 5 separating first dish 3, having inner surface 7 and outer rim 15, from
second dish 9, having inner surface 11 and outer rim 19, wherein the
diameter formed by the inner surface of outer rim 15 is substantially
different from the diameter formed by the outer surface of outer rim 19.
Claim 1 includes the further limitation that inner surface 7 of dish 3 and

2 We copy claim 1 as it stands of record in the Amendment filed December
23, 2004, which is not reflected in the Claim Appendix. Br. 12.
3 We considered the Appeal Brief filed February 2, 2006 (Brief), as
modified by the Supplemental Appeal Brief filed July 28, 2006.
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Application 10/166,177
inner surface 11 of dish 9 “each have different surface characteristics for
receiving biological material.” See Spec., e.g., ¶¶ 0032-0035.
We agree with the Examiner’s findings of fact, conclusions of law,
and responses to Appellants’ positions with respect to the grounds of
rejection of claim 1 under § 103(a) over the combined teachings of Bazil,
Brenner, and Hubbell, and of claim 23 under § 102(b) over Bazil. Ans. 4,
5-7, and 8-12. We add the following for emphasis.
I
We cannot agree with Appellants’ position that the Examiner erred in
rejecting claim 23 under § 102(b) in view of the preambular language “[a]
reversible petri dish,” and the disclosure of stackable petri dish 10 in Bazil.
Br. 6-8, citing Bazil Fig. 2. According to Appellants, the claimed petri dish
can be employed “in a reversed or flipped position” because the petri dish
accommodates biological materials on both surfaces of the base wall, and
Bazil does not disclose that stackable petri dish 10 can accommodate
biological material on both surfaces of dish bottom 18. Br. 6-7.
We agree with the Examiner that Bazil’s petri dish 10 has the
structure of the petri dish specified in claim 23. Indeed, as the Examiner
finds, the upper and lower surfaces of dish bottom 18 are made of the same
material which can accommodate biological material. Ans. 4 and 8-10.
Thus, one of ordinary skill in this art would recognize that Bazil’s petri dish
10 is “reversible,” as specified in the preamble to claim 23, even if Brazil
does not describe this attribute. Accordingly, we agree with the Examiner
that as a matter of fact, claim 23 is anticipated by Bazil. See, e.g., In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997), and cases cited therein; In
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Appeal 2009-005355
Application 10/166,177
re Preda, 401 F.2d 825, 826-27 (CCPA 1968) (“[I]n considering the
disclosure of a reference, it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom.” (citation omitted)).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of anticipation found in Bazil with
Appellants’ countervailing evidence of and argument for non-anticipation
and conclude, by a preponderance of the evidence and weight of argument,
that the claimed invention encompassed by appealed claims 23-28 and 33
would have been anticipated as a matter of fact under 35 U.S.C. § 102(b).
II
We further cannot agree with Appellants’ position that the Examiner
erred in rejecting claim 1 under § 103(a) over the combined teachings of
Bazil, Brenner, and Hubbell because Bazil would have disclosed that the
bottom surface of dish bottom 18 “is strictly limited to being able to be
stacked on top of an identical covered dish,” thus teaching away from a
reversible petri dish which has two different surfaces for receiving biological
material. Br. 8-9. According to Appellants, “Brenner and Hubbell are
directed to surface treatment for petri dishes” and do not teach that two
opposed surfaces of a petri dish can have different materials thereon as
claimed. Br. 9-10. Thus, Appellants contend that the combination of
references fails to “suggest differently treating two opposed surfaces of a
petri dish,” and thus does not suggest the claimed invention as a whole. Br.
10.
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Application 10/166,177
We agree with the Examiner’s determination that the plain language
of claim 1 requires that that the characteristics of one of surfaces 7, 11 must
have a different characteristic from the other surface. Ans. 11. See above
pp. 3-4. Thus, as the Examiner further determines, the treatment of the top
surface of dish bottom 18 of Bazil’s petri dish as taught by either Brenner or
Hubbell would result in a different surface than that of the bottom surface of
dish bottom 18, and, as the Examiner finds, the bottom surface of dish
bottom 18 is capable of receiving biological material. Ans. 10-11. Thus, as
the Examiner determines, one of ordinary skill in this art routinely following
the combined teachings of Bazil, Brenner, and Hubbell would have treated
the top surface of dish bottom 18 of Bazil’s petri dish with the coating of
either Brenner or Hubbell, thus arriving at a petri dish that has opposed
surfaces with different surface characteristics for receiving biological
material as specified in claim 1. See, e.g., KSR Int’l. Co. v. Teleflex Inc., 550
U.S. 398, 415-16 (2007); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Thus, Bazil alone and as combined with Brenner and Hubbell would not
have taught away from the claimed petri dish encompassed by claim 1. Cf.,
e.g., In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a prior art
disclosure does not teach away if the “disclosure does not criticize, discredit,
or otherwise discourage the solution claimed.”).
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Bazil, Brenner, and Hubbell with Appellants’
countervailing evidence of and argument for nonobviousness and conclude,
by a preponderance of the evidence and weight of argument, that the claimed
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invention encompassed by appealed claims 1-5 would have been obvious as
a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision is affirmed.

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)(iv).
AFFIRMED

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HOFFMANN & BARON, LLP
6900 JERICHO TURNPIKE
SYOSSET, NY 11791
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