Ex Parte Link et al

Patent Trial and Appeal BoardOct 19, 2016

11996802 (P.T.A.B. Oct. 19, 2016)

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. 11/996,802 03/19/2009 Holger Link 189942/US 1873 28381 7590 Arnold & Porter LLP 601 Massachusetts Ave., NW Washington, DC 20001-3743 10/21/2016 EXAMINER HYUN, PAUL SANG HWA ART UNIT PAPER NUMBER 1797 NOTIFICATION DATE DELIVERY MODE 10/21/2016 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): IP_Docketing @ aporter. com IP.Docketing@ aporter.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HOLGER LINK and NORBERT SIEMONS Appeal 2014-009514 Application 11/996,802 Technology Center 1700 Before CHUNG K. PAK, N. WHITNEY WILSON, and JEFFREY R. SNAY, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s September 6, 2013 decision finally rejecting claims 24—26, 29-31, and 34— 40 (“Final Act”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral hearing was held on October 6, 2016. We reverse. 1 Appellants identify the Real Party in Interest as Eppendorf AG (Appeal Br. 1). Appeal 2014-009514 Application 11/996,802 CLAIMED SUBJECT MATTER Appellants’ invention is directed to a container for holding a multiplicity of tubular sample containers (Abstract). The container comprises a frame made of a plastic material with a panel having a multiplicity of holes (id.). The container further comprises a coating of the frame which is made of an elastic material which partially closes off the cross section of the holes in the panel (id.). Details of the claimed invention are set forth in representative claim 24, which is reproduced below from the Claims Appendix of the Appeal Brief: 24. A container holder for a multiplicity of tubular sample containers (13) with a frame (2) made of a rigid plastic material, comprising a panel (3) with a brim and a multiplicity of holes (4) extending from the upper to the lower surface of the panel, a skirt which is connected to the brim of the panel (3) and projects from the lower side of the panel (3) and a coating (11) partially closing off the cross section of the holes (4) in the panel (3), characterized in that the skirt (5) has locking edges parallel to the panel (3) and the coating (11) has a thickness of about 1 to 3 mm and a hardness of about 50 to 70 Shore A and comprises a material selected from the group consisting of an elastomer, a thermoplastic elastomer, silicone, and EPDM, wherein the coating (11) substantially covers the upper side of the panel (3) and wherein the coating is exclusively arranged at the upper side of the panel (3). 2 Appeal 2014-009514 Application 11/996,802 REJECTIONS2 I. Claims 24, 25, 29-31, and 34—39 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Hill3 in view of Kalmakis,4 Mahe,5 and Davis.6 II. Claim 26 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hill in view of Kalmakis, Mahe, and Davis, and further in view of Shain.7 III. Claim 40 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Hill in view of Kalmakis, Mahe, and Davis, and further in view of Wolstenholme.8 DISCUSSION We decide this appeal based on limitations found in independent claim 24, and common to all of the claims on appeal. Accordingly, we limit 2 Each of the rejections set forth in the Final Action were withdrawn by the Examiner (Ans. 5-8). However, in the Answer, the Examiner imposed new grounds of rejection which were largely the same as the withdrawn rejections, except for an additional explanation of why a person of ordinary skill in the art would have modified the teachings of Mahe to place the elastomeric sheet on top of the shelf (compare Ans. 2-5 with Final Action 2— 7). Accordingly, references to the rejection we are addressing in this decision will be the new grounds of rejection set forth in the Examiner’s Answer. 3 Hill et al., U.S. Patent No. 5,366,088, issued November 22, 1994. 4 Kalmakis et al., U.S. Patent No. 6,019,225, issued February 1, 2000. 5 Mahe, U.S. Patent No. 5,133,939, issued July 28, 1992. 6 Davis, Jr. et al., U.S. Patent No. 6,685,555 Bl, issued February 2, 2004. 7 Shain et al., U.S. Patent No. 6,027,459, issued February 22, 2000. 8 Wolstenholme, U.S. Patent No. 5,852,972, issued December 29, 1998. 3 Appeal 2014-009514 Application 11/996,802 our discussion to the rejection of claim 24 over Hill in view of Kalmakis, Mahe, and Davis. The Examiner finds that Hill discloses a rack having each element of the claimed invention, except that Hill does not disclose the material from which the rack was made, and Hill does not teach the presence of an elastomeric coating which is directly molded to the panel of the rack (Ans. 2, citing Hill, FIGS. 2, 5, and 13). The Examiner further finds that Kalmakis discloses a rack similar to Hill’s which is made of injection molded polymers such as polypropylene (i.e. a rigid plastic material), and Mahe discloses a rack which uses an elastomeric sheet as a means for securing tubes in the holes (Ans. 2—3). The Examiner determines that it would have been obvious to use plastic as taught by Kalmakis to make Hill’s rack, and to secure Mahe’s elastomeric sheet to Hill’s panel to accommodate pipette tips of varying sizes, and further that choosing the claimed thickness to provide additional rigidity to the sheet and better engagement with the pipette tips. (Ans. 3). Finally, the Examiner relies on Davis as disclosing “an elastomer (silicone rubber) comprising a bore 34 configured to accommodate pins of various sizes” and having a hardness of 40 to 80 Shore A (Ans. 3). The Examiner determines that it would have been obvious to use an elastomer having a hardness from 40 to 80 Shore A in the modified Hill rack because Davis teaches that such a hardness value can accommodate pins of “various sizes” (id.). However, as noted by Appellants, Davis does not disclose that its device can accommodate pins of various sizes. The Examiner cites the Davis abstract for this finding (id.). However, Davis does not disclose that its pin can have various sizes, but only that different, other parts (such as 4 Appeal 2014-009514 Application 11/996,802 vanes and links can vary in size (see, e.g. Davis, 1:17-21, 2:37-45)). The Davis Abstract, reproduced below, makes no mention of varying the size of the pin: An outlet for a climate control system includes a support member and multiple vanes pivotally connected to the support member. The outlet also includes a link attached to the vanes such that the vanes are pivotable in unison. Furthermore, the link comprises a soft, rubbery material having a Shore A hardness in the range of 40 to 80. Thus, on this record, we conclude that Appellants have demonstrated error in the Examiner’s finding that Davis discloses that a hardness value of 40 to 80 Shore A makes the disclosed elastomer capable of accommodating pins of various sizes. Stated differently, the Examiner’s reason for using Davis’ elastomer having a hardness value of 40 to 80 Shore A in the modified rack suggested by Hill, Kalmakis, and Mahe is not supported by the evidence of record. In order to reject a claim in a patent application as obvious under 35 U.S.C. § 103(a), the Examiner must establish a prima facie case of obviousness, including the presence of each element of the claim. In the absence of a proper prima facie case of obviousness, an applicant who complies with the other statutory requirements is entitled to a patent. In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); see also, In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In this instance, we determine that the preponderance of the evidence does not support a finding that the prior art teaches, suggests, or renders obvious each of the limitations in claim 24, in particular the claimed hardness of the coating. This conclusion leads us to reversal of the obviousness rejections.9 5 Appeal 2014-009514 Application 11/996,802 CONCLUSION We REVERSE the rejection of claims 24, 25, 29-31, and 34—39 under 35 U.S.C. § 103(a) as being unpatentable over Hill in view of Kalmakis, Mahe, and Davis. We REVERSE the rejection of claim 26 under 35 U.S.C. § 103(a) as being unpatentable over Hill in view of Kalmakis, Mahe, and Davis, and further in view of Shain. We REVERSE the rejection of claim 40 under 35 U.S.C. § 103(a) as being unpatentable over Hill in view of Kalmakis, Mahe, and Davis, and further in view of Wolstenholme. REVERSED 6