Ex parte Lapidus

Board of Patent Appeals and Interferences

Jun 29, 1998

08061928 (B.P.A.I. Jun. 29, 1998)

Application for patent filed May 13, 1993. According1
to appellant, this application is a continuation of
Application 07/884,622, filed May 15, 1992, now U.S. Patent
5,266,495, issued November 30, 1993; which is a continuation
of Application 07/487,637, filed March 2, 1990, now abandoned.
1
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(2) is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte STANLEY N. LAPIDUS
__________
Appeal No. 95-1950
Application 08/061,9281
__________
HEARD: Jun. 8, 1998
__________
Before KIMLIN, GARRIS, and OWENS, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-1950
Application No. 08/061,928
As a matter of clarification, we point out that the2
issues raised by the appellant in his brief regarding the
examiner's objections to the application drawing are
resolvable by way of petition not appeal which the examiner
correctly observed on page 2 of the answer. See generally, In
re Hengehold, 440 F.2d 1395, 1403, 169 USPQ 473, 479 (CCPA
1971) and In re Searles, 422 F.2d 431, 435, 164 USPQ 623, 626
(CCPA 1970).
2
This is a decision on an appeal which involves claims 1
through 3, 8, 12 and 13. The only other claims remaining in2
the application, which are claims 4 through 7 and 9 through
11, have been allowed.
The subject matter on appeal relates to a method and
apparatus for collecting for image analysis a selected
quantity of particles having a known average size above a
threshold size and that are in a fluid medium. Further
details of this appealed subject matter are set forth in
illustrative independent claim 1, a copy of which taken from
the specification is appended to this decision.
The references relied upon by the examiner as evidence of
obviousness are:
Zahniser et al. 4,395,493 Jul. 26, 1983
(Zahniser)
Hunt et al. 4,583,396 Apr. 22, 1986
(Hunt)
Appeal No. 95-1950
Application No. 08/061,928
3
Mukogawa et al. 4,765,963 Aug. 23, 1988
(Mukogawa)
Claims 1 through 3, 8, 12 and 13 are rejected under
35 U.S.C. § 103 as being unpatentable over Zahniser in view of
Hunt.
Claims 1, 3 and 8 are rejected under 35 U.S.C. § 103 as
being unpatentable over Mukogawa, and claim 2 is
correspondingly rejected over this reference and further in
view of Hunt.
Preliminarily, we observe that the independent claims
have been separately grouped; see the paragraph bridging pages
6 and 7 of the brief. Accordingly, the dependent claims on
appeal will stand or fall with these independent claims.
We refer to the brief and to the answer for a complete
exposition of the opposing viewpoints expressed by the
appellant and the examiner concerning the above noted
rejections.
OPINION
For the reasons which follow, we will sustain the
rejection based on Zahniser in view of Hunt, but we will not
sustain either of the rejections based on Mukogawa alone or
further in view of Hunt.
Appeal No. 95-1950
Application No. 08/061,928
4
We agree with the appellant that Mukogawa contains no
teaching or suggestion of terminating the fluid signal in
response to a selected change in the measured parameter as
recited in clause D or for transferring the particles to an
optical element for image analysis as recited in clause E of
the independent claims under rejection. Concerning the clause
D feature, the examiner urges that the "prescribed time in
Mukogawa. . . is viewed as the presently recited measured
parameter" (answer, page 6). This view is clearly erroneous
since the here claimed "measured parameter" is explicitly
defined in clause C as "responsive to fluid flow", and
Mukogawa's time parameter is plainly not so responsive. As
for the clause E feature, we cannot agree with the examiner
that it would have been obvious to combine the prior art
embodiment described in column 1 of Mukogawa with patentee's
figure 1 embodiment. In our opinion, the appellant is correct
in arguing that these embodiments are alternative, and thus
not combinable, mechanisms for determining water purity.
In light of the foregoing, we cannot sustain the
examiner's section 103 rejection of claims 1, 3 and 8 as being
unpatentable over Mukogawa. Moreover, we also cannot sustain
Appeal No. 95-1950
Application No. 08/061,928
5
the rejection of claim 2 as being unpatentable over Mukogawa
in view of Hunt since at least one of the above discussed
deficiencies would persist even if these reference teachings
were combined in the manner proposed by the examiner.
Concerning the rejection based on Zahniser in view of
Hunt, we agree with the examiner's basic position that the
cumulative teachings of these references would have suggested
to one with ordinary skill in the art replacing Zahniser's
cell counter mechanism with a counter mechanism of the type
taught by Hunt. According to the appellant, these references
contain no suggestion of why or how to combine their teachings
in such a manner as to result in the here claimed invention.
This viewpoint is not well founded.
An artisan with ordinary skill would have been motivated
to effect the above noted replacement in order to obtain the
advantages taught by Hunt, namely, the substitution of a
simple and speedy counter mechanism for a relatively expensive
and complicated one (e.g., see lines 19 through 25 in column
1) such as the one taught by Zahniser. Further, the artisan
would have achieved this desideratum by measuring fluid
pressure or flow across Zahniser's filter in accordance with
Appeal No. 95-1950
Application No. 08/061,928
6
the teachings of Hunt. In this regard, we emphasize that Hunt
expressly teaches utilizing his counter mechanism on a movable
strip in the form of a filter (e.g., see lines 17 through 28
in column 2) which corresponds to the movable filter tape of
Zahniser and that Hunt expressly teaches using his mechanism
as a particle counter (e.g., see lines 59 through 64 in column
4).
For the above stated reasons, it is our determination
that the reference evidence adduced by the examiner
establishes a prima facie case of obviousness within the
meaning of 35 U.S.C.
§ 103. At this point, therefore, it is appropriate to re-
assess all the evidence of record including the appellant's
evidence of nonobviousness in order to reach an ultimate
conclusion of obviousness versus nonobviousness. See, for
example, In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976).
As evidence of nonobviousness, the appellant offers the
Zahniser and Farber declarations of record under 37 CFR 1.132
(see paper numbers 5 and 8 respectively).
Appeal No. 95-1950
Application No. 08/061,928
7
For the most part, the Zahniser declaration describes
operational problems which developed in attempting to count
cells or particles in the manner taught by the Zahniser
patent. In our view, this aspect of the Zahniser declaration
reinforces the above discussed desirability of replacing an
expensive and complicated counter mechanism of the type
disclosed in the Zahniser patent with a simple and speedy
counter mechanism of the type taught by Hunt. To this extent,
the Zahniser declaration tends to support a conclusion of
obviousness rather than nonobviousness.
The Farber declaration describes the advantages and
praise therefor by others resulting from use of an instrument
referred to as the "ThinPrep Processor" in comparison to
conventional cytology practices such as conventional Pap smear
testing. However, this comparison has little if any probative
value in relation to the obviousness issue before us since it
relates to conventional cytology practices such as Pap smear
testing rather than the closest prior art represented by the
method and apparatus described in the Zahniser patent. In re
Merchant, 575 F.2d 865, 869, 197 USPQ 785, 788 (CCPA 1978)
(applicant must compare his claimed invention with closest
Appeal No. 95-1950
Application No. 08/061,928
8
prior art to rebut a prima facie case). For example, the
advantages described in the Farber declaration (e.g., see item
10 on page 10) relative to the "ThinPrep Processor" instrument
appear to be also applicable to the apparatus described in the
Zahniser patent. In re Baxter Travenol Labs, 952 F.2d 388,
392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991) (mere recognition
of latent properties in the prior art does not render
nonobvious an otherwise known invention).
In addition, the above noted "ThinPrep Processor"
instrument is not described in the Farber declaration with
specificity sufficient to allow an informed assessment of
declarant's statement "I consider the advantages summarized
above in Paragraphs 6, 7 and 9-15 to be, at least in part, the
direct result of both collecting and counting the cells on the
filter element of the ThinPrep Processor instrument in a
manner described in this application for patent" (declaration,
page 14) particularly in relation to whether the proffered
evidence of nonobviousness is commensurate in scope with the
claims on appeal. In re Grasselli, 713 F.2d 731, 743, 218
USPQ 769, 778 (Fed. Cir. 1983); In re Altenpohl, 500 F.2d
1151, 1159, 183 USPQ 38, 44 (CCPA 1974). Finally, the
Appeal No. 95-1950
Application No. 08/061,928
9
declarant's opinion at item 17 on page 14 that "such claimed
subject matter is unobvious" is entitled to little if any
weight since it amounts to an expression of ultimate legal
conclusion. In re Altenpohl, id.
The circumstances recounted above lead us to determine
that the evidence of record on, balance, weighs most heavily
in favor of an obviousness conclusion. We shall sustain,
therefore, the section 103 rejection of claims 1 through 3, 8,
12 and 13 as being unpatentable over Zahniser in view of Hunt.
Appeal No. 95-1950
Application No. 08/061,928
10
The decision of the examiner is affirmed.
AFFIRMED
Edward C. Kimlin )
Administrative Patent Judge )
)
)
)
Bradley R. Garris ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Terry J. Owens )
Administrative Patent Judge )
Appeal No. 95-1950
Application No. 08/061,928
11
Patent Administrator
Testa, Hurwitz & Thibeault, LLP
High Street Tower
125 High Street
Boston, MA 02110
Appeal No. 95-1950
Application No. 08/061,928
1
APPENDIX
1. A method for collecting for image analysis a
selected quantity of particles having a known average size
above a threshold size and that are in a fluid medium,
comprising the steps of A. providing a flow path for the fluid
medium, with the particles carried therein, across a filter
device having a substantially uniform distribution of
apertures of substantially uniform size for blocking particles
above said threshold size and passing smaller particles,
B. applying a known fluid signal to the flow
path, including across said filter device,
C. measuring a parameter responsive to fluid
flow through said filter device due to said applied fluid
signal and which changes according to blockage of said filter
device by particles above said threshold size,
D. terminating said fluid signal in response
to a selected change in said measured parameter, and
E. transferring the particles collected on
said filter device, after said selected change in said
measured parameter, to an optical element for image analysis.