Ex Parte Schulz et al

Board of Patent Appeals and Interferences

Mar 14, 2012

10892743 (B.P.A.I. Mar. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TORSTEN SCHULZ, EUGEN ERMANTRAUT,
RALF EHRICHT, KLAUS-PETER MOBIUS, GERD WAGNER,
JOACHIM FISCHER, and THOMAS ELLINGER
__________

Appeal 2011-004808
Application 10/892,743
Technology Center 1600
__________

Before DONALD E. ADAMS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-7, 10-12, 15-32, 48, and 49. We have
jurisdiction under 35 U.S.C. § 6(b).
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Application 10/892,743

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STATEMENT OF THE CASE
The claims are drawn to a reaction vessel for detecting interactions
between a molecular target and probe molecules and a device comprising the
reaction vessel, and may be found in the Claims Appendix to the Appeal
Brief (App. Br. 10-16).
The following grounds of rejection are before us for review:
I. Claims 1-7, 10-12, 15-17, 19, 24, 29, 30, 48, and 49 stand
rejected under 35 U.S.C. § 103(a) as being rendered obvious by
the combination of Somack1 and Schremp2 (Ans. 4). As
Appellants do not argue the claims separately, claims 2-7, 10-
12, 15-17, 19, 24, 29, 30, 48, and 49 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii).
II. Claims 18, 20, 21, 23, 25-28, 31, and 32 stand rejected under 35
U.S.C. § 103(a) as being rendered obvious by the combination
of Somack and Schremp, as further combined with Jackson, III3
(Ans. 10).
III. Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Somack and Schremp,
as further combined with Jackson, III and Banno4 (Ans. 11-12).

1 Somack et al., Patent Application Publication US 2003/0098271 A1,
published May 29, 2003
2 Schremp et al., US 7,008,788 B2, issued Mar. 7, 2006
3 Jackson, III et al., US 6,930,314 B2, issued Aug. 16, 2005
4 Banno et al., US 4,498,780, issued Feb. 12, 1985
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Application 10/892,743

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We agree with the rejections and responses to Appellants’ arguments
that are set out in the Examiner’s Answer, and therefore adopt the
Examiner’s reasoning as our own. Specifically, Somack teaches all of the
elements required by the reaction vessel of claim 1, except for the height of
the reaction vessel, and securing the substrate within the void such that it has
an inner surface and an outer surface that is disposed externally to the
cylindrical wall. As to the height, we agree with the Examiner that it would
have been well within the level of skill of the ordinary artisan to determine
the height suited for their purpose (Ans. 6-7).
As to the substrate, Somack teaches that the substrate, such as a filter,
is immobilized “within the tubular body” (Somack, ¶6). Somack teaches the
use of different filters, such as nitrocellulose, regenerated cellulose, or glass
fibers (id. at ¶¶38-39). Schremp teaches a housing confining a support (i.e.,
the substrate) at its bottom, wherein the support may be confined below a
well, which is part of the housing (Schremp, col. 5, ll. 18-20; ll. 51-58).
Schremp also teaches that the support may be porous or non-porous, and
may be a cellulosic material (id. at col. 6, l. 61-col. 7, l. 23).
“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). Moreover, the
analysis under 35 U.S.C. § 103 “need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can 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, not an automaton.”). Thus, we
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Application 10/892,743

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agree with the Examiner that it would have been within the level of skill of
the ordinary artisan to place the substrate within the void as taught by
Schremp in the reaction vessel of Somack with a reasonable expectation that
the location of the substrate within the vessel of Somack would not change
the ability to use the vessel to detect interactions between a target and a
probe (see Ans. 6).

The Examiner’s rejections are affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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