Ex Parte Goncharko et al

Board of Patent Appeals and Interferences

Jun 11, 2009

10870213 (B.P.A.I. Jun. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL GONCHARKO, CHIU CHAU, and
BETH ANN FINAMORE
____________

Appeal 2008-005468
Application 10/870,213
Technology Center 1700
____________

Decided:1 June 11, 2009
____________

Before CHUNG K. PAK, LINDA M. GAUDETTE and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-005468
Application 10/870,213

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 9-13 and 22 (Final Office Action (“Final”),
mailed Sep. 20, 2007), the only claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Independent claim 9 and dependent claim 12 are illustrative of the
subject matter on appeal, and are reproduced from the Claims Appendix2 to
the Appeal Brief (“App. Br.”), filed Sep. 28, 2007:
9. An incubation device for controlled evaporative stirring of
oligonucleotide samples in aqueous solution in wells of a multi-well slide,
comprising at least one chamber for housing a multi-well slide along its
length, wherein the chamber interior is accessed by a plurality of annular
ports each port having an inlet and a bore, wherein said ports all access a
pressurized air supply, wherein each port inlet is essentially the same
distance from a well adjacent said inlet, and wherein substantially the same
amount of air flows from each port per unit time such that the wells each
evaporate at about the same rate and the oligonucleotide samples in each
well are mixed to about the same extent.

12. The device of claim 11 wherein the chamber the channel extends along
two opposed sides of said chamber, and wherein outlets from opposing ports
extending from opposing channels on either side of a chamber are aligned.

The Examiner relies on the following evidence to establish
unpatentability (Examiner’s Answer (“Ans.”), mailed Dec. 31, 2007, 2):
Hamper 5,792,430 Aug. 11, 1998
Ebersole 4,753,775 Jun. 28, 1988
Laporte 2004/0234418 A1 Nov. 25, 2004

2 Dependent claim 21 was erroneously included in the statement of the
Examiner’s rejection. (Final 6; Ans. 5.) Claim 21 has been canceled (Final
1; App. Br. 1).
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Application 10/870,213

Appellants request review of the following grounds of rejection (App.
Br. 2-3)3:
1. claim 12 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
2. claims 9-10, 13, and 22 under 35 U.S.C. § 102(b) as anticipated
by Hamper.
3. claims 9-10 and 13 under 35 U.S.C. § 102(e) as anticipated by
Laporte.
4. claims 9-11 and 13 under 35 U.S.C. § 102(b) as anticipated by
Ebersole.
5. claim 12 under 35 U.S.C. § 103(a) as unpatentable over
Laporte.
§ 112 and § 103 Rejections - Claim 12
“[I]f the claims do not ‘particularly point [ ] out and distinctly claim [
],’ in the words of section 112 . . . the appropriate PTO action is to reject the
claims for that reason.” In re Zletz, 893 F.2d 319, 322, (Fed. Cir. 1989); see
also, In re Wiggins, 488 F.2d 538, 541 (CCPA 1973) (“If the scope of the
invention sought to be patented is unclear from the language of the claim, a
second paragraph rejection will properly lie.”). “A determination of claim
indefiniteness is a legal conclusion that is drawn from the court's
performance of its duty as the construer of patent claims.” Tech. Licensing

3 Appellants also request our review of the Examiner’s objection to
dependent claim 13. (App. Br. 2.) This matter is not appealable to the
Board. See 37 CFR § 41.31(c) (2007). See also, Manual of Patent
Examining Procedure (MPEP) § 706.01 (Rev. 7, Jul. 2008).

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Application 10/870,213

Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008) (quoting
Personalized Media Communications, LLC v. Int'l Trade Com'n, 161 F.3d
696, 705 (Fed. Cir. 1998)).
Like the Examiner (see Ans. 5), we are unable to ascertain the scope
and meaning of appealed claim 12. Based on the language of claim 12 as
originally filed, it appears to us that in amending the claim to read “wherein
the chamber the channel extends along two opposed sides of said chamber,”
Appellants inadvertently failed to include one or more words necessary to
render this phrase intelligible. Appellants’ argument (App. Br. 3) does not
clearly explain, and we decline to speculate as to, the intended meaning of
this language. Therefore, we sustain the rejection of claim 12 under 35
U.S.C. § 112, second paragraph, as indefinite.
Because we cannot determine the scope of claim 12 and, therefore,
cannot assess the merits of the Examiner’s prior art rejection, we
procedurally reverse the rejection of claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Laporte. See In re Wilson, 424 F.2d 1382, 1385 (CCPA
1970) (“If no reasonably definite meaning can be ascribed to certain terms in
the claim, the subject matter does not become obvious- the claim becomes
indefinite.”); In re Steele, 305 F.2d 859, 862 (CCPA 1962) (“Our analysis of
the claims indicates that considerable speculation as to meaning of the terms
employed and assumptions as to the scope of such claims were made by the
examiner and the board. We do not think a rejection under 35 U.S.C. § 103
should be based on such speculations and assumptions.”).
§ 102 Rejections – Claims 9-11, 13, and 22
Appellants contend that the appealed claims are not anticipated
because the references fail to disclose “a device in which ‘substantially the
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Application 10/870,213

same amount of air flows from each port per unit time such that the wells
each evaporate at about the same rate and the oligonucleotide samples in
each well are mixed to about the same extent.’” (App. Br. 3-4.) The
Examiner finds that Hamper (Ans. 5), Laporte (Ans. 5-6) and Ebersole (Ans.
6-7) disclose devices having annular ports connected to a pressurized gas
source. The Examiner thus contends that each of the prior art devices is
capable of functioning in the manner claimed. (Ans. 8-9.) Appellants do
not dispute these findings, but argue that the Examiner improperly ignored
claim limitations requiring that the ports access a pressurized air supply.
(See generally, Reply Br.)
The issue presented for our review is: have Appellants shown that the
Examiner’s findings are insufficient to establish that Hamper, Laporte and
Ebersole disclose incubation devices which include features that are capable
of functioning in the manner claimed? We answer this question in the
negative for the reasons discussed below.
PRINCIPLES OF LAW
“A reference may be from an entirely different field of endeavor than
that of the claimed invention or may be directed to an entirely different
problem from the one addressed by the inventor, yet the reference will still
anticipate if it explicitly or inherently discloses every limitation recited in
the claims.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). “The
anticipation analysis asks solely whether the prior art reference discloses and
enables the claimed invention, and not how the prior art characterizes that
disclosure or whether alternatives are also disclosed.” Hewlett-Packard Co.
v. Mustek Sys., Inc., 340 F.3d 1314, 1324 n.6 (Fed. Cir. 2003).
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A claimed apparatus must be distinguished from a prior art apparatus
on the basis of structure. Therefore, the patentability of an apparatus claim
depends only on the claimed structure, not on the use or purpose of that
structure, Catalina Marketing Int'l., Inc. v. Coolsavings.com Inc., 289 F.3d
801, 809 (Fed. Cir. 2002), or the function or result of that structure. In re
Danly, 263 F.2d 844, 848 (CCPA 1959); In re Gardiner, 171 F.2d 313, 315-
16 (CCPA 1948). Language in an apparatus claim directed to the function,
operation, intent-of-use, and materials upon which these apparatus
components work, that does not structurally limit the apparatus components
or patentably differentiate the claimed apparatus from an otherwise identical
prior art apparatus, will not support patentability. See, e.g., In re Rishoi, 197
F.2d 342, 344-45 (CCPA 1952); In re Otto, 312 F.2d 937, 940 (CCPA
1963); In re Ludtke, 441 F.2d 660, 663-64 (CCPA 1971); In re Yanush, 477
F.2d 958, 959 (CCPA 1973). Courts have interpreted functional language in
an apparatus claim as requiring that the apparatus possess the capability of
performing the recited function. See Intel Corp. v. U.S. Intern. Trade
Com'n, 946 F.2d 821, 832 (Fed. Cir. 1991).
As our reviewing court stated in Schreiber, 128 F.3d at1478:
A patent applicant is free to recite features of an apparatus
either structurally or functionally. See In re Swinehart, 439
F.2d 210 (CCPA 1971) (“[T]here is nothing intrinsically wrong
with [defining something by what it does rather than what it is]
in drafting patent claims.”). Yet, choosing to define an element
functionally, i.e., by what it does, carries with it a risk. As our
predecessor court stated in Swinehart, 439 F.2d at 213:

where the Patent Office has reason to
believe that a functional limitation asserted to be
critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent
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Application 10/870,213

characteristic of the prior art, it possesses the
authority to require the applicant to prove that the
subject matter shown to be in the prior art does not
possess the characteristic relied.

ANALYSIS
Appellants maintain that the Examiner erred in failing to interpret
certain claim language, e.g., the pressurized air supply and multi-well slide,
as positively claimed features. Appellants contend that because the
Examiner did not specifically identify these features in the prior art, the
Examiner failed to establish a prima facie case of anticipation under § 102.
(Reply Br. 1-2.)
A similar claim interpretation issue was considered by the predecessor
to our reviewing court in In re Rohrbacher, 284 F.2d 531 (CCPA 1960). In
Rohrbacher, the court considered the issue of whether a claim was drawn to
a pump structure alone, or to a pump in combination with an engine. Id. at
533. The claim recited:
A cooling liquid pump for engines having parallel rows
of liquid cooled cylinders and comprising an elongated pump
casing adapted to extend between said rows of cylinders and to
be secured at the opposite ends thereof to the liquid cooling
cavity walls of said rows of cylinders, . . . said casing ends
being formed to provide outlet ports opening laterally of said
casing through one of the side walls of said casing and being
adapted to provide communication between said discharge
chamber and the cooling liquid cavities within said cavity walls
of said rows of cylinders. . . .

Id. at 532. In interpreting the claim as limited to those structural features of
the pump alone, and not those of the engine, the court stated:

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Application 10/870,213

It is clear that the engine is not positively recited as an element
of any of the claims. It is referred to only by such statements as
that the pump is ‘for’ engines of a particular type and that the
pump chambers are ‘adapted’ to communicate with certain
portions of the engine. We are of the opinion that such
statements are intended merely to define the structure of the
pump itself and that, as stated in appellants' brief:

“The pump defined by the claims may be separated from the
engine and carried away from the engine. The claims still read
on the pump after it has been carried away.”

Id. at 533.
We are in agreement with the Examiner that the appealed claims are
drawn to the structural features of an incubation device alone. In other
words, while the incubation device includes features, e.g., ports which are
adapted to communicate with a pressurized air supply, the pressurized air
supply itself is not part of Appellants’ claimed invention. Therefore, to
establish a prima facie case of anticipation, it was sufficient for the
Examiner to find that the applied prior art devices include features (e.g.,
annular ports connected to a pressurized gas source) which render the
devices capable of functioning in the manner claimed by Appellants. The
burden was then shifted to Appellants to show that the applied prior art
device is incapable of performing the claimed function.
As noted above, Appellants have not attempted to refute the
Examiner’s findings. Accordingly, we are constrained to affirm the
decision of the Examiner rejecting claims 9-10, 13 and 22 under 35 U.S.C. §
102(b) as anticipated by Hamper; claims 9-10, and 13 under 35 U.S.C. §
102(e) as anticipated by Laporte; and claims 9-11 and 13 under 35 U.S.C. §
102(b) as anticipated by Ebersole.
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CONCLUSION
We reverse the rejection of claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Laporte on procedural grounds. We sustain the remaining
four grounds of rejection.
The decision of the Examiner rejecting claims 9-13 and 22 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)(v).

AFFIRMED

tc

ERIC P. MIRABEL
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