10228058 (B.P.A.I. Sep. 2, 2010)

Ex Parte Utsugi

Board of Patent Appeals and InterferencesSep 2, 2010

10228058 (B.P.A.I. Sep. 2, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/228,058 08/27/2002 Ryuichi Utsugi 2660.0012C (SUZ0002-US) 8118 92270 7590 09/02/2010 Edell, Shapiro & Finnan LLC 1901 Research Blvd Suite 400 Rockville, MD 20850 EXAMINER SMITH, FANGEMONIQUE A ART UNIT PAPER NUMBER 3736 MAIL DATE DELIVERY MODE 09/02/2010 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte RYUICHI UTSUGI ____________________ Appeal 2009-008623 Application 10/228,058 Technology Center 3700 ____________________ Before: WILLIAM F. PATE III, STEFAN STAICOVICI, and KEN B. BARRETT, Administrative Patent Judges. PATE III, 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 2009-008623 Application 10/228,058 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1, 4-92, 12-22, 30 and 31. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a skin test device. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A skin test device comprising: a film backing; and a sample that is placed on one surface of said film backing, the sample containing a suspected allergen, wherein said film backing is transparent of said film backing at least at the portion where said sample is placed, and said film backing is marked off into divisions, the divisions each having a different sample placed thereon, wherein the divisions of said film backing are easily separable from each other. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Maganias Fishman US 4,802,493 US 5,179,959 Feb. 7, 1989 Jan. 19, 1993 Eppstein US 2002/0169394 A1 Nov. 14, 2002 2 Claims 4-6 are not mentioned in the Answer or in the art rejections contained in the Final Rejection. Appellant interprets these claims as rejected along with parent claim 1 and the Examiner acknowledges this as correct. App. Br. 1; Ans. 2. Appeal 2009-008623 Application 10/228,058 3 REJECTIONS Claims 1, 4-83, 18-22, and 30 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Maganias. Ans. 3. Claims 9 and 12-17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Maganias and Fishman. Ans. 4. Claim 31 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Maganias and Eppstein. Ans. 5. OPINION Regarding the rejection of claims 1, 4-8, 18-22, and 30, Appellant’s argument that Maganias fails to disclose a “film backing [] marked off into divisions” is persuasive. App. Br. 9-10. Even if Maganias did disclose such a feature, Appellant’s argument that Maganias fails to disclose divisions that are “easily separable” is also persuasive. App. Br. 11-12. The portion of Maganias relied upon by the Examiner relevant to these limitations provides: Several such tapes, each carrying a different allergen, can be applied to the skin simultaneously or essentially simultaneously. Alternatively a single tape can carry a plurality of lances or groups of lances, each lance or group carrying a different allergen. Maganias col. 2, ll. 9-14. “A film backing marked off into divisions” does not reasonably include the several independent tapes described by Maganias because there is no single, divided backing present in Maganias’ disclosure. See Reply Br. 6. The single tape carrying a plurality of allergens described in the alternative by Maganias does not necessarily include any “divisions.” Even if it did, there is no indication that those divisions would be “easily 3 See n.2, supra. Appeal 2009-008623 Application 10/228,058 4 separable.” Read in light of the Specification, it is unreasonable to interpret the term “separable” to include the ability for a human mind to mentally distinguish sites having different allergens. See Reply Br. 5-6; contra Ans. 6. Such an interpretation is inconsistent with Appellant’s consistent usage of the term to mean physical separation. We recognize that this is a functional limitation and “where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Nevertheless, before an applicant can be put to this burdensome task, the examiner must provide sufficient evidence or scientific reasoning to establish the reasonableness of the examiner's belief that the functional limitation is an inherent characteristic of the prior art. “In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (BPAI 1990) (citations omitted). The examiner has failed to provide sufficient evidence or scientific reasoning to establish the divisions would be easily physically separable. For these reasons, the rejection of claims 1, 4-8, 18-22, and 30 as being anticipated by Maganias cannot be sustained. Regarding claims 9 and 12-17, the Examiner relies upon Fishman for teaching a cover 546 marked off into sections (by 543/802). Ans. 4-5; Fishman figs. 48, 50. The reason proposed by the Examiner to include a cover film such as Fishman’s on the device of Maganias is to “provide a Appeal 2009-008623 Application 10/228,058 5 layer which separates the allergen from contaminants, while maintaining the functionality of the device.” Ans. 5. The Examiner does not specify what structure of Maganias the Examiner proposes to replace with Fishman’s cover. Presumably it would be the similarly situated upper plastic strip 12, 12’, 42. In any case, this structure of Maganias is already responsible for separating the allergen from environmental contaminants so there is no evidence or reasoning of record to establish why the Examiner’s proposed substitution or combination would be advantageous for this purpose. The Examiner also does not specify what “functionality” will be maintained by including or substituting Fishman’s divided cover. Presumably, it is separability—a function which, as discussed above, Maganias does not necessarily teach. Thus, the Examiner’s basis for concluding obvious rests upon the speculative assumption that Maganias discloses separable divisions. This speculation on the part of the Examiner does not amount to the articulated reasoning with a rational underpinning necessary to support a conclusion of obviousness. Accordingly, we cannot sustain the rejection of claims 9 and 12-17. Since Eppstein, as applied by the Examiner, does not cure the deficiencies of Maganias, the rejection of claim 31 also cannot be sustained. DECISION For the above reasons, the Examiner’s rejections of claims 1, 4-9, 12- 22, 30 and 31 are reversed. REVERSED nlk Appeal 2009-008623 Application 10/228,058 6 Edell, Shapiro & Finnan LLC 1901 Research Blvd Suite 400 Rockville MD 20850