Ex Parte Ronacher

Board of Patent Appeals and Interferences

Jun 23, 2009

10516049 (B.P.A.I. Jun. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BERNHARD RONACHER
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Appeal 2008-003750
Application 10/516,049
Technology Center 1600
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Decided:1 June 23, 2009
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Before DONALD E. ADAMS, DEMETRA J. MILLS, and ERIC GRIMES,
Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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 2008-003750
Application 10/516,049

Appellant has requested rehearing of the decision entered March 24,
2009 (“Decision”). The Decision affirmed rejection of claims 8-15 under
35 U.S.C. § 103(a).

PRINCIPLES OF LAW
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir.
1992). On appeal to this Board, Appellants must show that the Examiner
has not sustained the required burden. See Ex parte Yamaguchi, 88 USPQ2d
1606, 1608 and 1614 (BPAI 2008) (precedential); Ex parte Fu, 89 USPQ2d
1115, 1118 and 1123 (BPAI 2008) (precedential); Ex parte Catan, 83
USPQ2d 1569, 1570 and 1577 (BPAI 2007) (precedential); Ex parte Smith,
83 USPQ2d 1509, 1512-1514, 1519 (BPAI 2007) (precedential).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.

Id. at 421. It is proper to “take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” Id. at 418. See also
id. at 421 (“A person of ordinary skill is also a person of ordinary creativity,
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not an automaton.”). “In determining whether obviousness is established by
combining the teachings of the prior art, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal
quotations omitted).
[A]n implicit motivation to combine exists not only when a
suggestion may be gleaned from the prior art as a whole, but
when the “improvement” is technology-independent and the
combination of references results in a product or process that is
more desirable, for example because it is stronger, cheaper,
cleaner, faster, lighter, smaller, more durable, or more efficient.
Because the desire to enhance commercial opportunities by
improving a product or process is universal-and even common-
sensical-we have held that there exists in these situations a
motivation to combine prior art references even absent any hint
of suggestion in the references themselves. In such situations,
the proper question is whether the ordinary artisan possesses
knowledge and skills rendering him capable of combining the
prior art references.

DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006).
“A reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor's endeavor, it is one
which, because of the matter with which it deals, logically
would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992). In other words, “familiar items may have obvious
uses beyond their primary purposes.” KSR Int'l Co. v. Teleflex,
Inc., 550 U.S. 398, 127 S.Ct. 1727, 1742, 167 L.Ed.2d 705
(2007). We therefore have concluded, for example, that an
inventor considering a hinge and latch mechanism for portable
computers would naturally look to references employing other
“housings, hinges, latches, springs, etc.,” which in that case
came from areas such as “a desktop telephone directory, a piano
lid, a kitchen cabinet, a washing machine cabinet, a wooden
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Application 10/516,049

furniture cabinet, or a two-part housing for storing audio
cassettes.” Paulsen, 30 F.3d at 1481-82.

In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-1380 (Fed. Cir.
2007).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(“Any arguments or authorities not included in the brief or a reply brief ...
will be refused consideration by the Board, unless good cause is shown.”).

Appellant presents two issues for our review. We take each in turn.

ISSUE 1
Do the combined teachings of Vann and Matsumoto make obvious a
device that directs sample flow toward sensor molecules?

ANALYSIS
Appellant contends that “[c]ontrary to the decision of the Board, Vann
does not teach directing the sample flow toward the sensor molecules during
use” (Req. Reh’g. 3). Instead, Appellant contends, “‘the concave
configuration of the bottom surface 2304 of . . . [Vann’s] sample container
2300’ directs the sample ‘toward the cavity sidewall 2303’ rather than
toward the sensor molecules,” which are located “on the ‘fibers 2011’ of its
‘wheel 2000’” (Req. Reh’g. 4, see also Decision 10).
We are not persuaded by Appellant’s contention. As explained in the
Decision “[t]he concave configuration of the bottom surface 2304 of Vann’s
sample container directs sample flow toward the cavity sidewall 2303 where
the sample will be placed into contact with the sensor molecules on the
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Application 10/516,049

wheel 2000 (FF 4)” (Decision 11). Finding of Fact 4 explains, inter alia,
that Vann teaches that the sample is displaced toward the cavity sidewall
where it forms an annular column of fluid that comes in contact with the
sensors on the fibers of the wheel.
Thus, contrary to Appellant’s contention (Req. Reh’g. 4), the concave
configuration of Vann’s sample container does in fact satisfy the
requirement for a flow director adapted to direct the sample flow toward the
sensor molecules during use associated with the sample container as is set
forth in Appellant’s claim 8.

CONCLUSION OF LAW
The combined teachings of Vann and Matsumoto make obvious a
device that directs sample flow toward sensor molecules.

ISSUE 2
Does the evidence on this record support a conclusion that a person of
ordinary skill in this art would have considered Vann and Matsumoto to be
reasonably related to the same field of endeavor?

ANALYSIS
Appellant contends that since Matsumoto’s device is used measure
analytes in a sample in a mobile phase system and Vann’s device is used to
measure analytes in a sample in a solid phase system, a person of ordinary
skill would not look to a mobile phase sample measurement system to
provide solutions to problems existing in solid support sample measurement
systems (Req. Reh’g. 5; see also Decision 11). We are not persuaded.
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Application 10/516,049

As discussed in the Decision, “Vann and Matsumoto are both directed
to sample measurement systems and therefore both would have been
considered reasonably related by a person of ordinary skill in this art. ICON
Health and Fitness, Inc., 496 F.3d at 1379-1380.” (Decision 11.)
Further, as discussed in the Decision, “Vann discloses that the sample
can be loaded into the container by an appropriate fluid delivery apparatus
(FF 6). Matsumoto teaches an appropriate fluid delivery apparatus . . . (FF
8-9).” (Decision 12.) Appellant provides no argument as to why a person of
ordinary skill in this art would not find it obvious to utilize Matsumoto’s
fluid delivery apparatus with Vann’s device.

CONCLUSION OF LAW
The evidence on this record supports a conclusion that a person of
ordinary skill in this art would have considered Vann and Matsumoto to be
reasonably related to the same field of endeavor.

CONCLUSION
We have carefully reviewed the original opinion in light of
Appellant’s request, but we find no point of law or fact which we
overlooked or misapprehended in arriving at our decision. Accordingly, we
deny Appellant’s request for rehearing and reaffirm our prior holding.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REHEARING DENIED
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Appeal 2008-003750
Application 10/516,049

cdc

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