Ex Parte Lang

Board of Patent Appeals and Interferences

Sep 28, 2010

09765112 (B.P.A.I. Sep. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KARL LANG
__________

Appeal 2009-011226
Application 09/765,112
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, DEMETRA J. MILLS, and
KAREN M. HASTINGS, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL1

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 2009-011226
Application 09/765,112

2
A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
finally rejecting claims 2-29 and 35-38, all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
The subject matter on appeal is directed to an analyzer system. Claim
35, reproduced below, is illustrative.
35. An analyzer system for immersing at least two
instruments into a sample and removing the instruments
therefrom, comprising:

a vertical guide;

an instrument holder constrained to move along the
vertical guide to selectively immerse or remove the instruments,
the instrument holder comprising a holder device with at least
two apertures, each aperture arranged to receive and hold one
of the at least two instruments;

a washing device with a central opening, positioned
between the instrument holder and the sample such that the
central opening and the holder element are maintained in co-
axial relationship as the at least two instruments pass through
the central opening, the washing device comprising a jet orifice
and a supply conduit for a wash fluid, communicated to the jet
orifice.

Appeal Brief dated November 17, 2008 (“Br.”), Claims Appendix (emphasis
added).
The only rejection before us on appeal is the rejection of claims 2-29
and 35-38 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Appeal 2009-011226
Application 09/765,112

3
Öhlin (US 3,552,212, issued January 5, 1971) and Harris (US 5,650,122,
issued July 22, 1997).2
B. DISCUSSION
There is no dispute that the holder device 22 of Öhlin has one aperture
(for receiving and holding probe 18) rather than “at least two apertures” as
recited in claim 35. See Ans. 4. The dispositive issue in this appeal is
whether the claimed holder device comprising “at least two apertures”
would have been obvious to one of ordinary skill in the art in view of the
teachings in Öhlin.3 See Br. 12.
The Examiner concludes that it would have been obvious to modify
the holder device 22 of Öhlin to include at least two apertures as claimed
“since the ordinary artisan would expect that this would increase instrument
washing throughput.” Ans. 5. The Examiner also relies on In re Harza, 274
F.2d 669 (CCPA 1960), to establish that a holder device having “at least two
apertures” as claimed would have been per se obvious. Ans. 5.
The apparatus disclosed in Öhlin is used to aspirate and dispense a
quantity of a sample via a single probe 18, which is subsequently washed to
prevent cross-contamination. See, e.g., Öhlin 2:27-61. The Examiner does
not explain why one of ordinary skill in the art would have used more than
one probe 18 to perform the aspirating and dispensing function described in

2 The Examiner withdrew the rejection of claims 2-29 and 35-38 under 35
U.S.C. § 112, first paragraph in the Advisory Action dated October 27,
2008. The Examiner withdrew the rejection of claims 2-29, 35, 37, and 38
under 35 U.S.C. § 103(a) as unpatentable over Ambers (US 4,338,280,
issued July 6, 1982) in the Examiner’s Answer dated February 18, 2009
(“Ans.”), at 2.
3 The Examiner does not rely on the teachings of Harris to cure this
deficiency in Öhlin.
Appeal 2009-011226
Application 09/765,112

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Öhlin. Thus, on this record, there is no reason why one of ordinary skill in
the art would have modified the holder device 22 of Öhlin to include a
second aperture for holding a second probe.
Moreover, the Court does not look favorably on per se rules of
obviousness. See In re Ochiai, 71 F.3d 1565, 1570 (Fed. Cir. 1995) (no per
se rule of obviousness exists). Therefore, we decline to adopt the
Examiner’s reasoning that the claimed holder device would have been per se
obvious in view of the holding in In re Harza, 274 F.2d 669 (CCPA 1960).
In sum, the Examiner has failed to establish that it would have been
obvious to one of ordinary skill in the art to modify the holder device 22 of
Öhlin to include a second aperture as recited in claim 35. Therefore, the
§ 103(a) rejection on appeal will be reversed.
D. DECISION
The decision of the Examiner is reversed.

REVERSED

kmm

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