Ex Parte Iskra

Patent Trial and Appeal Board

Nov 19, 2012

08928272 (P.T.A.B. Nov. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte MICHAEL J. ISKRA
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Appeal 2012-006903
Application 08/928,272
Technology Center 3700
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Before STEFAN STAICOVICI, JAMES P. CALVE, and
LYNNE H. BROWNE, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Michael J. Iskra (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting under 35 U.S.C. § 103(a) claims 1, 6,
and 9 as unpatentable over Appellant’s Admitted Prior Art (Figures 1 and 2
of Appellant’s Drawings)1 and Finney (US 4,358,425, iss. Nov. 9, 1982) and
claims 5, 7, and 8 as unpatentable over AAPA, Finney, and Burns (US
5,458,854, iss. Oct. 17, 1995). Claims 2-4 and 10-20 have been canceled.
Appellant’s representative presented oral argument on Nov. 9, 2012. We
have jurisdiction over this appeal under 35 U.S.C. § 6. 2

THE INVENTION
Appellant’s invention relates to a “collection container for collecting
fluid specimens,” including an annular skirt 78, a closed bottom end 76, and
a rounded open bottom end 80 that defines an open false bottom area 82.
Spec. 1, l. 15; Spec. 8, ll. 18-21; and fig. 4.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A one piece collection container assembly
comprising:
an elongate tubular housing having a
sidewall extending between opposed first and
second ends; and
a solid partition in contact with said
sidewall, positioned within said housing between

1 Hereafter referred to as “AAPA.” See Spec. 7, ll. 7-10.
2 This is Appellant’s second appeal before the Patent Trial and Appeal
Board. In the first appeal (2005-2410, Decision mailed September 19, 2005)
(hereafter “Decision”), the Examiner’s decision to reject claims 1, 5, 7, and
8 under 35 U.S.C. § 102(b) as anticipated by Burns and claims 6 and 9 under
35 U.S.C. § 103(a) as unpatentable over Burns was affirmed.
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said first and second ends, forming a closed
bottom;
said housing defining a volume for specimen
collection and containment therein between said
first end and said partition;
said second end forming a false bottom
comprising a bottom end below said partition, said
bottom end comprising an annular skirt and a
semi-spherical bottom, wherein said semi-
spherical bottom comprises an opening therein.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
Claims 1, 6, and 9
The Examiner found that “[t]he sole difference between the admitted
prior art and the instant invention is the bottom of the tube being semi-
spherical.” Ans. 5. However, according to the Examiner, “absent a critical
teaching and/or showing of unexpected results . . . such a modification is an
obvious design consideration to one of ordinary skill in the art as a mere
change in shape does not patentably distinguish an invention over the prior
art.” Id. Nonetheless, the Examiner further found that Finney teaches a
specimen collection tube with a semi-spherical bottom surface. Id. Thus,
the Examiner concluded that “it would have been obvious to one of ordinary
skill in the art at the time the invention was made to have provided the
admitted prior art device with a semi-spherical false bottom as taught by
Finney depending on the intended use of the device or to allow compatibility
with standard clinical centrifuge equipment.” Ans. 5-6.
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Appellant argues that in contrast to the Examiner’s position, changing
the shape of AAPA’s bottom to be semi-spherical is critical because it
allows the AAPA collection tube “to be compatible with standard clinical
equipment specifically designed to handle standard-sized blood tube
configurations having a rounded bottom, such as storage racks, chemical
analyzers, and centrifuges.” Reply Br. 2. See also, Ans. 5. Moreover,
Appellant takes the position that there is nothing in the Abstract of Finney
“that suggests, let alone teaches, that the shape of the bottom of the tube is
what allows the tube to be useful in the cavity of a centrifuge rotor.” App.
Br. 13. Thus, according to Appellant, the “Examiner’s conclusion that a
tube with a rounded bottom allows for compatibility with a clinical
equipment appears to be based not on Finney, but rather on the specification
of the subject application itself.” App. Br. 14.
We are not persuaded by Appellant’s arguments for the following
reasons. AAPA and the claimed invention are both directed to specimen
collection tubes having a false bottom. See Spec. 8, ll. 4-22 and Figures 1
and 3 of Appellant’s Drawings. The difference between AAPA and the
claimed invention is that the bottom of the AAPA tube is flat, while the
claimed collection container has a semi-spherical bottom. Id. Finney
specifically teaches a tube “for use in the cavity of the rotor of a high speed
centrifuge” having “a rounded bottom with an opening.” Finney, Abstract.
Thus, Finney gives a person of ordinary skill in the art a clear indication that
a centrifuge specimen collection tube includes a semi-spherical bottom as
the Examiner found. See Ans. 9 (citing Abstract). Furthermore, we agree
with the Examiner that both flat-shaped bottom collection tubes and semi-
spherical shaped bottom collection tubes are usable with centrifuges. Ans.
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8. See e.g., App. Br. 133 and Finney, Abstract. As such, since both shapes
are usable with a centrifuge, we agree with the Examiner that “changing the
shape of the admitted prior art is not gaining any critical advantage.” Ans.
8. See In re Dailey, 357 F.2d 669 (CCPA 1966). See also, In re Kuhle, 526
F.2d 553, 555 (CCPA 1975) (use of claimed feature solves no stated
problem and presents no unexpected result and “would be an obvious matter
of design choice within the skill of the art” (citing Graham v. John Deere
Co., 383 U.S. 1 (1966) and In re Gazda, 219 F. 2d 449 (1955))). Therefore,
we agree with the Examiner that modifying the flat bottom end of AAPA’s
collection tube to include a semi-spherical bottom end as taught by Finney
“would involve substitution of a well[-]known shape (i.e., tube having a
semi-spherical bottom) into a well[-]known device to yield predictable
results that do not patentably distinguish an invention over the prior art and
would have been obvious to try from a finite number of standard centrifuge
tube bottom shapes compatible with clinical equipment.” Ans. 6. “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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Since both
flat-shaped bottom tubes and semi-spherical shaped bottom tubes are usable
with centrifuges, it appears that a semi-spherical bottom collection tube
would function in a similar manner as the flat-bottom collection tube of

3 “. . . the preferable use of the container in the Burns patent . . . which
does not have a rounded bottom, is in a micro-centrifuge (Burns, col. 2, lines
43-44) or, with the aid of a flat-bottomed extension, in a normal centrifuge
(Burns, col. 5, lines 13-17).”

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AAPA. “If [pursuing known options] leads to the anticipated success, it is
likely the product not of innovation but of ordinary skill and common
sense.” See Id. at 421.
Lastly, Appellant argues that Finney fails to teach a “false bottom”
(see App. Br. 14) and a “semi-spherical bottom with an opening therein”
(see App. Br. 15). We are not persuaded by Appellant’s arguments because
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Here, the Examiner found that AAPA discloses a false bottom 32
including an annular skirt 28 having an opening 36 therein. Ans. 5. The
Examiner used the teachings of Finney to merely show that it is known to
provide a centrifuge tube with a semi-spherical bottom. Id. See also,
Finney, Abstract and fig. 1.
In conclusion, for the foregoing reasons, the rejection of independent
claim 1 under 35 U.S.C. § 103(a) as unpatentable over AAPA and Finney is
sustained. Since Appellant does not set forth any other arguments with
respect to the rejection of dependent claims 6 and 9, we shall also sustain the
rejection of these claims. See App. Br. 15.

Claims 5, 7, and 8
Pointing to column 5, lines 7-12 of Burns, Appellant argues that,
“Burns teaches away from claim 1 by specifically requiring that the bottom
end of the tube includes a cylindrical shape for receiving a portion of the cap
thereon. App. Br. 16.
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This argument does not address the Examiner’s proposed
combination. The Examiner is not proposing to include the flat-bottom end
47 of Burns in the collection tube of AAPA and Finney, as Appellant argues.
Rather, the Examiner is proposing to modify the conical closed bottom end
26 of the collection tube of AAPA and Finney to include the arcuate shaped
partition 38 of Burns. Ans. 7. See also, Burns, fig. 1. Obviousness does not
require that all of the features of the secondary reference be bodily
incorporated into the primary reference In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Thus, for the foregoing reasons, we shall also sustain the rejection of
claims 5, 7, and 8 over the combined teachings of AAPA, Finney, and
Burns.

SUMMARY
The Examiner’s decision to reject claims 1 and 5-9 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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