Siemens Healthcare Diagnostics Products GmbH

Patent Trials and Appeals Board

Apr 23, 2020

15454868 - (D) (P.T.A.B. Apr. 23, 2020)

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.
15/454,868 03/09/2017 Joachim Bernhard 2016P01398 US (SAG-042) 5110
126799 7590 04/23/2020
Dugan & Dugan, PC
138 Merlin Avenue
Sleepy Hollow, NY 10591
EXAMINER
WRIGHT, PATRICIA KATHRYN
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
04/23/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Duganemail@duganpatent.com
bdugan@duganpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOACHIM BERNHARD
and CHRISTIAN VERHALEN
____________________

Appeal 2020-002755
Application 15/454,868
Technology Center 1700
____________________

Before MICHELLE N. ANKENBRAND, CHRISTOPHER C. KENNEDY,
and MERRELL C. CASHION, JR., Administrative Patent Judges.

CASHION, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1 and 4–15. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Siemens
Healthcare Diagnostics Products GmbH. Appeal Br. 2.
Appeal 2020-002755
Application 15/454,868

2
The invention is generally directed to automated analyzers and
methods for mixing liquids in liquid containers. Spec. ¶ 2. Claim 1
illustrates the subject matter on appeal and is reproduced below:
1. A method for mixing a liquid in a liquid container,
the method comprising:
(a) receiving the liquid container via a gripper which is
fastened by a flexible connecting element to an automatically
movable transfer arm, wherein the gripper has a first section
having a coupling hole and a holder extending outward from a
bottom portion of the first section adjacent the coupling hole, a
distal end of the holder configured to hold the liquid container;
then
(b) displacing the gripper with the liquid container to a
shaking device having a coupling pin which is movable about a
vertical axis of rotation; then
(c) inserting the coupling pin of the shaking device into
the coupling hole of the gripper in a direction coaxial with the
vertical axis of rotation of the coupling pin; then
(d) horizontally displacing the transfer arm such that the
gripper is displaced perpendicular to the vertical axis of rotation
of the movable coupling pin until an inner wall of the coupling
hole exerts a transverse force on the coupling pin; and then
(e) moving the coupling pin.
Independent claim 5 recites an automated analyzer capable of
performing the method of claim 1. Independent claim 11 recites a
method similar to claim 1.
Appellant (see generally Appeal Br.) requests review of the
Examiner’s rejection of claims 1 and 4–15 under 35 U.S.C. § 103 as
unpatentable over Herz (US 2011/0086432 A1, published April 14, 2011)
and Collier (US 5,104,231, issued April 14, 1992). Appeal Br. 5–6; Final
Act. 2.
Appeal 2020-002755
Application 15/454,868

3
OPINION
After review of the respective positions Appellant presents in the
Appeal and Reply Briefs and the Examiner presents in the Final Action and
the Answer, we REVERSE for the reasons Appellant provides. We add the
following for emphasis.
Claim 1
Independent claim 1 recites a method for mixing a liquid in a liquid
container using a gripper comprising a first section having a coupling hole
and a holder extending outward from a bottom portion of the first section
adjacent the coupling hole.2 The structure of the claimed gripper is
illustrated in the Application’s Figure 2, reproduced below with our
annotations.

2 Independent claims 5 and 11 also recite the same or a similar limitation.
Accordingly, we limit our discussion to independent claim 1, with the
understanding that our discussion applies equally to independent claims 5
and 11.
Appeal 2020-002755
Application 15/454,868

4
The Application’s Figure 23 shows gripper 11 comprising first section 21
that includes coupling hole 34 at one end and holder 22 extending outward
from first section 21 at the one end and adjacent coupling hole 34.
We refer to the Examiner’s Final Office Action for a complete
statement of the rejection of claim 1. Final Act. 2–6.4
The Examiner finds that Herz’s Figure 1 teaches the recited gripper.
Final Act. 2–4. Herz’s Figure 1 is reproduced below with our annotations.

3 The Examiner raises an issue of descriptive support for the Application’s
Figure 2. Ans. 14–15. We decline to address this issue because the
Examiner did not present the appropriate rejection under 35 U.S.C. § 112(a).
Suffice it to say that, generally, the description of the article pictured can be
relied on, in combination with the drawings, for what they would reasonably
teach one of ordinary skill in the art. Cf. In re Wright, 569 F.2d 1124, 193
USPQ 332 (CCPA 1977); cf. In re Aslanian, 590 F.2d 911, 914 (CCPA
1979).
4 A discussion of Collier is unnecessary for disposition of this appeal. The
Examiner relies on Collier for features not related to the structure of the
claimed gripper. See Final Act. 4–6.
Appeal 2020-002755
Application 15/454,868

5
Herz’s Figure 1 shows a gripper comprising first section A that includes
coupling hole 15 at one end and holder 12 extending outward from first
section A. Herz’s Figure 1 shows holder 12 extending outward from an end
of first section A that is distal from the other end that includes coupling hole
15.
The Examiner addresses the difference in the placement of the
respective holders of Herz and the claimed invention as follows:
With respect to the new recitation that the holder extends
outward from a “bottom portion” of the first section. First, it is
again noted that the term “portion” is every broad term. It is
further noted that the “top” and “bottom” of the first section has
not been established (i.e., relative to what?) and therefore, one
could arbitrarily call any “portion” on the first holder a
“bottom” or “top” portion. Relative positional terms such as
“top” and “bottom” may be used in connection with a method,
system and device, however, it should be understood that those
terms are used in their relative sense only. For example, when
used in connection with the devices, “top” and “bottom” are
used to signify opposing sides of the devices. In actual use,
elements described as “top” or “bottom” may be found in any
orientation or location and not considered as limiting the
methods, systems, and devices to any particular orientation or
location. For example, the top surface of the device may
actually be located below the bottom surface of the device in
use (although it would still be found on the opposite side of the
device from the bottom surface).
Final Act. 4.
In the Answer, the Examiner further explains that
In addition, the [E]xaminer is not suggesting operating
the Herz’s apparatus in any other orientation than that shown.
However, the [E]xaminer may call any portion a bottom portion
or a top portion if the top and bottom have not been established
relative to any other part in the apparatus.
Appeal 2020-002755
Application 15/454,868

6
Furthermore, the term “adjacent” is considered a very
broad term. Herz’s holder 12 is reasonably considered by the
[E]xaminer as “adjacent” since the plain meaning of adjacent
means near or close to.
Ans. 13–14.
Appellant argues that Herz’s holder 12 extends outwardly from the
portion of the vertical section that is distal from the portion of the vertical
section comprising coupling hole 15. Appeal Br. 7. Thus, Appellant
contends that one of ordinary skill in the art would not reasonably consider
Herz’s holder 12 to be adjacent coupling hole 15 as claimed. Id. at 8. That
is, Appellant contends the structure of Herz’s gripper differs from the
structure of the recited gripper in that the holder element of each is placed at
different locations along the vertical portion (first section) of each gripper.
We agree with Appellant that there is reversible error in the
Examiner’s determination of obviousness.
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
As Appellant argues, the structure of Herz’s gripper is different from
the structure of the recited gripper. The Examiner’s top/bottom analysis
misapprehends the language of the claim and does not address this structural
distinction. Nor does the Examiner provide an articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.
Appeal 2020-002755
Application 15/454,868

7
Although the Examiner contends that the Examiner is not suggesting
operating the Herz’s apparatus in any other orientation than that shown in
Herz’s figures (Ans. 13), the Examiner fails to explain how one skilled in the
art would have modified Herz’s gripper so as to have a first section having a
coupling hole and a holder extending outward from a bottom portion of the
first section adjacent the coupling hole as recited in claim 1. The Examiner
also fails to explain adequately why one skilled in the art would have
understood Herz’s holder as being adjacent the coupling hole.
Thus, the Examiner has not made a prima facie case of obviousness.
Accordingly, we reverse the Examiner’s prior art rejection of claims 1
and 4–15 under 35 U.S.C. § 103 for the reasons the Appellant presents and
those provided above.

CONCLUSION
In summary:

Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 4–15 103 Herz, Collier 1, 4–15

REVERSED