Ex Parte Metzner

Patent Trial and Appeal Board

Oct 31, 2012

11469600 (P.T.A.B. Oct. 31, 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.
11/469,600 09/01/2006 Rolf Metzner 037105.00066 (H 7058 US) 6705
26712 7590 10/31/2012
HODGSON RUSS LLP
THE GUARANTY BUILDING
140 PEARL STREET
SUITE 100
BUFFALO, NY 14202-4040
EXAMINER
NAGPAUL, JYOTI
ART UNIT PAPER NUMBER
1773
MAIL DATE DELIVERY MODE
10/31/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROLF METZNER
____________

Appeal 2011-008697
Application 11/469,600
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008697
Application 11/469,600

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1
and 3 through 15.1 We have jurisdiction under 35 U.S.C. § 6.
Appellant’s claimed invention relates to a receiving and transferring station
for specimen slides. App. Br. 2-3. Claim 1 is illustrative:
1. A receiving and transferring station for coverslipped specimen
slides, the receiving and transferring station comprising:
at least one specimen slide magazine having horizontally oriented
compartments;
at least one vertically upright magazine frame configured to receive
and guide vertical displacement of the at least one specimen slide magazine,
the magazine frame having an open side through which specimen slides are
inserted into the compartments of the at least one specimen slide magazine;
and
a rotation apparatus connected to the magazine frame and having a
vertically upright rotation axis about which the rotation apparatus rotates, the
rotation apparatus conveying the magazine frame from a receiving position
to a transferring position.
The Examiner relied on the following references in rejecting the
appealed subject matter:
Kanamori US 5,209,903 May 11, 1993
Babler US 5,690,892 November 25, 1997

1 The Examiner withdrew the rejection of independent claim 16 under 35 U.S.C.
§ 103(a) as being unpatentable over Kanamori, Babler and Pressman. Ans. 3.
Accordingly, this rejection is not before us for review.
Appeal 2011-008697
Application 11/469,600

3
Appellant requests review of the following rejections (App. Br. 4) from the
Examiner’s final office action:
1. Claims 1 and 3-6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kanamori and Babler.
2. Claims 7-15 are rejected under 35 U.S.C. § 103(a) as being unpatentable
over Kanamori and Babler.

OPINION2
After thorough review of the respective positions provided by Appellant and
the Examiner, we AFFIRM for the reasons presented by the Examiner and add the
following for emphasis.
The Examiner found that Kanamori teaches a blood analyzer blood system
comprising at least one vertically upright magazine frame (10') configured to
receive at least one specimen slide magazine and to vertically displace a specimen
slide 28 relative to the magazine frame. Ans. 4. The Examiner found that
Kanamori’s magazine frame (10') has an open side through which a specimen slide
magazine is inserted. Id. The Examiner also found that Kanamori teaches a
rotation apparatus (162) connected to the magazine frame (10') and having a
vertically upright rotation axis about which the rotation apparatus rotates to convey
the magazine frame from a receiving position to a transferring position. Id. The
Examiner found that Kanamori fails to teach the at least one specimen slide
magazine having horizontally oriented compartments. Id. at 5. The Examiner
found that Babler teaches a specimen handling cassette comprising a body portion
and a plurality of ribs which compartmentalize the body portion for better handing

2 We focus our discussion on independent claim 1. Claims argued separately will
be addressed separately.
Appeal 2011-008697
Application 11/469,600

4
of the slides. Id. The Examiner found that it would have been obvious to one
having ordinary skill in the art to modify the slide magazine of Kanamori to
incorporate Babler’s horizontally oriented compartments for better handling of the
slides. Id.
Appellant argues that Kanamori does not teach a specimen slide magazine
structure as claimed by Appellant and, thus, cannot be modified by Babler as
proposed by the Examiner. App. Br. 5. Appellant additionally argues that
Kanamori’s cassette 10’ does not correspond to the claimed magazine frame
because it is not configured to receive at least one specimen slide magazine. Id. at
6.
We are unpersuaded by these arguments and agree with the Examiner that
the combination of Kanamori and Babler would have suggested a specimen slide
magazine and cooperating magazine frame as required by the subject matter of
claim 1. Ans. 4-5, 7. Appellant has not adequately explained why Kanamori’s
slides 28 grouping is not a specimen slide magazine and that Babler does not teach
a specimen slide magazine. Id. at 5. While Appellant argued that Kanamori
cannot be modified according to Babler (App. Br. 5), our reviewing court has held
that
[t]he test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what
the combined teachings of the references would have suggested to
those of ordinary skill in the art.

In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appellant has not adequately
explained why Kanamori’s specimen slide magazine could not be modified in view
Appeal 2011-008697
Application 11/469,600

5
of the teachings of Babler. Moreover, Appellant has not argued that specimen
slide magazines are unknown.
Appellant argues that claim 4 requires a magazine frame that can receive
two specimen slide magazines and that both Kanamori and Babler disclose
handling only one level/cassette of specimen slides. App. Br. 6-7. With respect to
claim 6, Appellant argues that the cassettes of Kanamori are not mounted on the
periphery of the turntable as claimed. Id. at 7. We agree with the Examiner’s
reasoning that Kanamori is capable of receiving more than one specimen slide
magazine. Ans. 7. We also agree with the Examiner’s reasoning concerning the
location of the cassettes on the turntable. Id. Moreover, a person of ordinary skill
in the art would have been capable of determining the appropriate arrangement for
the slide frame to handle a sufficient number of slides or the optimal location for
the magazine frames to maintain an automated process as disclosed by Kanamori
(col. 3, ll. 33-42). See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is
presumed on the part of one of ordinary skill in the art); In re Bozek, 416 F.2d
1385, 1390 (CCPA 1969).
Appellant further argues that it is not possible to place six cassettes on
Kanamori’s rotating apparatus (Claim 7) or place Kanamori’s slide ejection
apparatus on top of the rotating apparatus and make it stationary (claims 8-15).
App. Br. 8-9. We again agree with the Examiner’s determination (Ans. 8) and note
that Appellant’s arguments do no more than to argue that the claims are not
expressly suggested in the reference. See Keller, 642 F.2d at 425. A person of
ordinary skill in the art would have sufficient skill to modify the turntable to accept
6 magazine frames mounted on the periphery thereof to achieve the predictable
result of providing more slides for increasing the number of analysis and increase
throughput.
Appeal 2011-008697
Application 11/469,600

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Accordingly, we sustain the Examiner’s rejection of claims 1 and 3-15 under
35 U.S.C. § 103(a) as unpatentable over Kanamori and Babler.

ORDER
The rejection of claims 1 and 3-15 under 35 U.S.C. § 103(a) as unpatentable
over Kanamori and Babler 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.

AFFIRMED
bar