Ex parte JACOBS

Board of Patent Appeals and Interferences

Sep 22, 1998

08094724 (B.P.A.I. Sep. 22, 1998)

Application for patent filed July 21, 1993.1
1
Paper No. 17
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte MERRIT N. JACOBS
______________
Appeal No. 96-1809
Application 08/094,7241
_______________
ON BRIEF
_______________
Before METZ, HANLON and PAK, Administrative Patent Judges.
HANLON, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final
rejection of claim 1. Claims 2 and 4-11 are also pending in
the application. Claim 2 has been objected to as being
Appeal No. 96-1809
Application 08/094,724
U.S. Patent No. 3,776,184 to Harrison granted December 4, 19732
(hereinafter “Harrison”).
2
dependent upon rejected independent claim 1 and claims 4-11
have been allowed by the examiner.
Claim 1 reads as follows:
1. A method of dispensing a liquid sample onto a test
element, said element having a test volume subtending a
surface area for that volume for receiving said sample, the
method comprising the steps of:
a) applying onto a transfer element having a liquid-
impermeable surface for supporting a liquid, a quantity of
liquid sample over substantially all of said supporting
surface, and
b) placing the transfer element liquid-supporting surface
in contact with all of said surface area of a test element at
once, thereby transferring substantially all of the liquid
sample on said surface of said transfer element as a surface-
dispersed quantity to said test element without the need for
extensive horizontal flow over said test element surface area.
The sole issue in this appeal is whether claim 1 was
properly rejected under 35 U.S.C. § 102(b) as being clearly
anticipated by Harrison.2
Discussion
Appeal No. 96-1809
Application 08/094,724
3
Claim 1 is directed to a method of dispensing a liquid
sample onto a test element, the test element having a test
volume subtending a surface area for receiving the sample.
The method comprises:
a) “applying onto a transfer element having a
liquid-impermeable surface for supporting a liquid,”
a quantity of liquid sample over the supporting
surface, and
b) placing the transfer element supporting surface
“in contact with all of said surface area of a test
element at once,” thereby transferring substantially
all of the liquid sample as a surface-dispersed
quantity to the test element.
Harrison discloses an apparatus for applying liquid
samples to a surface. A dispensing device supports a series
of separate dispensing elements each comprising a closed or
substantially closed loop (34, 92) defining a reception area
for a film of solution (col. 3, lines 14-44). In operation,
the loop retains a film or droplet of solution which is
subsequently deposited on a sheet member by contacting the
loop with the sheet member (col. 4, lines 27-35). According
to Harrison, the dispensing elements may be formed from
resilient wire such as stainless steel spring wire bent into
Appeal No. 96-1809
Application 08/094,724
4
shape or from a plastic material such as nylon (col. 3, lines
30-32 and 53-55). In another form, the dispensing elements
are constructed from a group of straight fibers resembling a
small brush (150) (col. 3, lines 56-59).
Harrison fails to describe:
1. “applying onto a transfer element having a
liquid-impermeable surface for supporting a liquid,”
a quantity of liquid sample over the supporting
surface, and
2. “placing the transfer element liquid-supporting
surface in contact with all of said surface area of
a test element at once.”
“A claim is anticipated only if each and every element as set
forth in the claim is found, either expressly or inherently
described, in a single prior art reference.” Verdegaal Bros.,
Inc. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987).
A. Harrison fails to describe “applying onto a transfer
element having a liquid-impermeable surface for
supporting a liquid,” a quantity of liquid sample
over the supporting surface

At the outset, we note that there appears to be a dispute
as to the interpretation of claim 1. More specifically, there
appears to be a dispute as to whether claim 1 only requires
Appeal No. 96-1809
Application 08/094,724
5
that the transfer element be constructed from a material
having an impermeable surface or whether the claim requires
that the surface of the transfer element as a whole be
impermeable.
An examination of the specification reveals that claim 1
requires the surface of the transfer element as a whole to be
impermeable. See In re Sneed, 710 F.2d 1544, 1548, 218 USPQ
385, 388 (Fed. Cir. 1983) (during patent examination claims in
an application are to be given their broadest reasonable
interpretation consistent with the specification); In re
Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989) (“During patent examination the pending claims must be
interpreted as broadly as their terms reasonably allow. When
the applicant states the meaning that the claim terms are
intended to have,
the claims are examined with that meaning, in order to achieve
a complete exploration of the applicant’s invention and its
relation to the prior art.”); In re Prater, 415 F.2d 1393,
1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (claim cannot be
read in a vacuum, but rather must be read in light of
specification
Appeal No. 96-1809
Application 08/094,724
6
to thereby interpret limitations explicitly recited in claim).
According to appellant’s specification (p.9, lines 9-24):
Referring to FIG. 1, a transfer element 10 is
shown having a main body 2 comprising an upper
surface 4 and a preferably circular lower surface 6.
The shape of lower surface 6 may be varied, but
preferably should be congruent with the shape of the
test surface area to be contacted, whatever that may
be.
Referring to FIG. 2(a), lower surface 6 is
defined, in part, by a liquid-supporting portion 7
defined by a series of substantially parallel, V-
shaped grooves 8, disposed over the majority of the
area of surface 6. The shapes and depths of grooves
8, however, may be varied to be rectangular, convex,
concave, U-shaped, etc. Alternate configurations
can also be provided for defining liquid supporting
portion 7; for example, a diamond-like pattern such
as illustrated in FIG. 2(b).
See also Specification, p.10, lines 7-9 (“it is preferred that
lower surface 6 be made from a compliant and liquid-
impermeable material”).
Although we agree with the examiner that the loop or
transfer element in Harrison is constructed from a material
having an impermeable surface (Answer, p.3), we agree with
appellant that the surface of the transfer element as a whole
is not impermeable. See Brief, p.3 (“liquid does ‘pass
through’ the loop 34").
Appeal No. 96-1809
Application 08/094,724
7
As for the brush (150), we agree with appellant that
(Reply Brief, p.2):
[T]he brush is fluid permeable because any liquid
penetrates between the fibers of the brush, making
the brush permeable as a whole.
The examiner has failed to establish otherwise. In re
Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)
(the examiner bears the initial burden of presenting a prima
facie case of unpatentability).
B. Harrison fails to describe “placing the transfer
element liquid-supporting surface in
contact with all of said surface area of a test
element at once”

Claim 1 further requires that the transfer element
liquid-supporting surface be in contact with all of the
surface area of the test element at once. Harrison fails to
describe this additional limitation.
In Harrison, the transfer element liquid-supporting
surface comprises a loop, and the surface area of the test
element comprises a sheet member 5 (Figure 2). According to
Harrison (col. 4, lines 28-33):
Appeal No. 96-1809
Application 08/094,724
8
When the support member 27 reaches the delivery
position P2 the loops 92 will just gently contact
the [sheet] member 5 in a clean non-skidding
movement to apply a deposit of the solution of known
volume to the upper surface of the [sheet] member 5.
However, a hollow defined by the perimeter of the loop does
not contact sheet member 5. Therefore, all of the surface of
sheet member 5 is not contacted by the liquid-supporting
surface in Harrison as required by claim 1.
For the reasons stated above, the decision of the
examiner is reversed.
REVERSED
Appeal No. 96-1809
Application 08/094,724
9
ANDREW H. METZ )
Administrative Patent Judge )
)
)
)
ADRIENE LEPIANE HANLON ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHUNG K. PAK )
Administrative Patent Judge )
J. Jeffrey Hawley
Eastman Kodak Company
Patent Legal Staff
Rochester, NY 14650-2201
Appeal No. 96-1809
Application 08/094,724
10
ALH/cam