Ex Parte Yong

Board of Patent Appeals and Interferences

Jan 9, 2012

11191300 (B.P.A.I. Jan. 9, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/191,300 07/28/2005 Peter A.K. Yong 3305 4994
7590 01/09/2012
WALTER A. HACKLER, Ph.D.
PATENT LAW OFFICE
SUITE B
2372 S.E. BRISTOL STREET
NEWPORT BEACH, CA 92660-0755
EXAMINER
XU, XIAOYUN
ART UNIT PAPER NUMBER
1777
MAIL DATE DELIVERY MODE
01/09/2012 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 PETER A.K. YONG
____________
Appeal 2010-009833
Application 11/191,300
Technology Center 1700
____________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
CATHERINE Q. TIMM, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-37. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appeal 2010-009833
Application 11/191,300

2
Appellant claims a body fluid collecting, transporting, and dispensing
system 10 comprising a body fluid collecting receptacle 14, a handle 18
"supporting the receptacle in a fluid collection position", and a fitting 72 for
removably supporting the handle in a spaced apart relationship with the
receptacle and "preventing separation of the handle from the receptacle
during support of the receptacle by the handle during fluid collection" (claim
1; Figs. 1-5).
Representative claim 1 reads as follows:
1. A body fluid collecting, transporting, and dispensing
system comprising:

a body fluid collecting receptacle;

a handle supporting the receptacle in a fluid collection
position, said handle including a fluid sample chamber; and

a fitting for removably supporting said handle in a
spaced apart relationship with the receptacle and preventing
separation of the handle from the receptacle during support of
the receptacle by the handle during fluid collection, said fitting
further providing fluid communication between the handle
chamber and the receptacle for receiving a sample of the body
fluid, said handle being removable from the receptacle for
transport, storage, and dispensing of the body fluid sample.

The Examiner rejects claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Cawood (US 4,557,274, issued Dec. 10, 1985) in view of
Guerci (US 5,171,146, issued Dec. 15, 1992). The remaining claims on
appeal are correspondingly rejected over these references alone or further in
view of other prior art references of record.
Appeal 2010-009833
Application 11/191,300

3
Referring to Figure 12 of Cawood, the Examiner finds that syringe
229 satisfies the claim 1 "handle supporting the receptacle in a fluid
collection position" and that spike 226 satisfies the claim 1 "fitting for . . .
preventing separation of the handle from the receptacle during support of the
receptacle by the handle during fluid collection" (Ans. 3-4).
Notwithstanding this last mentioned finding, the Examiner presents the
following rationale in support of a conclusion that it would have been
obvious to provide Cawood's syringe/handle with a fitting in the form of a
screw threads coupling as taught by Guerci:
Although the connection between the handle and the
fitting in Cawood can prevent separation of the handle from the
receptacle during support of the receptacle by the handle during
fluid collection, skew [sic, screw] threads coupling is another
type of connection that is widely used and more secure than the
one used in Cawood. For example, Guerci uses skew [sic,
screw] threads coupling to connect a valve 23 to fitting 18 (see
col. 2, lines 36-39, Figure 3). At the time of the invention it
would have been obvious to one of ordinary skill in the art to
use screw threads coupling as taught by Guerci between the
handle and the fitting in Cawood, because both Cawood and
Guerci are related to syringe and liquid handling system.

(id. at 4).

We agree with Appellant's fundamental contention that "the
combination of Cawood and Guerci does not, in fact, teach a removable
handle for supporting a receptacle in a fluid collection position [in the
manner required by claim 1]" (Br. 13).
As an initial matter, we perceive no support for the Examiner's above
findings that the handle and fitting limitations of claim 1 are satisfied by the
Appeal 2010-009833
Application 11/191,300

4
syringe 229 and spike 226 of Cawood. The record contains no reasonable
basis for regarding Cawood's syringe as a handle capable of supporting the
receptacle in a fluid collection position. An attempt to use the syringe as
such a handle would result in the syringe being removed from spike 226 in
the manner taught by Cawood (col. 9, ll. 12-13; Fig. 16). Similarly, the
Examiner has given no reasonable basis for regarding spike 226 as a fitting
capable of preventing separation of syringe 229 from Cawood's receptacle
during fluid collection. This finding by the Examiner is contrary to the
previously noted teaching of Cawood (id.).
Moreover, we agree with Appellant's general argument that the
Examiner has failed to articulate reasoning with some rational underpinning
to support the proposed combination of Cawood and Guerci (Br. 12-14).
The screw threads coupling taught by Guerci is not used for connecting a
syringe to a receptacle, and the Examiner has offered no reasoning as to why
such a coupling would have been used to connect Cawood's syringe and
receptacle. On this record, no useful purpose would be served by connecting
the syringe and receptacle with a screw threads coupling.
The decision of the Examiner rejecting claims 1-37 is reversed.

REVERSED

kmm