Ex Parte Valaskovic et al

Patent Trial and Appeal BoardMar 30, 2017

12530946 (P.T.A.B. Mar. 30, 2017)

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. 12/530,946 10/12/2009 Gary A. Valaskovic 100796-24 WCG 5650 27386 7590 03/30/2017 GERSTENZANG, WILLIAM C. NORRIS MCLAUGHLIN & MARCUS, PA 875 THIRD AVE, 8TH FLOOR NEW YORK, NY 10022 EXAMINER ORTIZ, RAFAEL ALFREDO ART UNIT PAPER NUMBER 3728 MAIL DATE DELIVERY MODE 03/30/2017 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 GARY A. VALASKOVIC, LEE SAWDEY, JAMES M. SELLERS, HAYDN B. TAYLOR, and NATHAN E. WINTERS Appeal 2015-006575 Application 12/530,9461 Technology Center 3700 Before JEFFREY A. STEPHENS, NATHAN A. ENGELS, and GORDON D. KINDER, Administrative Patent Judges. ENGELS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 26—33. Claims 29 and 30 are subject to an objection. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify New Objective, Inc. as the real party in interest. App. Br. 1. Appeal 2015-006575 Application 12/530,946 ILLUSTRATIVE CLAIM Claim 26, reproduced below, is illustrative of the claimed subject matter: 26. A transfer carrier, for transferring or removing a group of tubes from a holder body (1) on which said tubes are held by a holding clip (20) in alignment with respect to each other, while maintaining said alignment, comprising a carrier body (60) and carrier clip (70), said carrier body having a front, a rear, two sides and a top surface (68), a plurality of V-shaped linear grooves-(64) in said top surface said grooves being open ended at said top surface, running in the direction from the front to the rear, and an opening (65) through said carrier body, adjacent the rear and configured to receive a holder body (1), securing elements for removably securing said holder body within said opening, said opening having sufficient interior clearance for said the holder body (1) and holding clip (20) to pass through said opening upon application of sufficient force to release said holder body (1) from said securing elements. THE REJECTIONS Claims 26—28 and 31—33 stand rejected under 35 U.S.C. § 102(a) as being anticipated by Whalen et al. (US 6,902,059 B2; June 7, 2005) and, alternatively, under 35 U.S.C. § 103(a) as being unpatentable in view of the combination of Whalen and Wiseman et al. (US 2004/0188320 Al; Sept. 30, 2004). See App. Br. 3. ANALYSIS Appellants argue the Examiner erred in the rejection of claim 26 because the cited references do not teach or suggest “a plurality of V-shaped linear grooves” as required by claim 26. According to Appellants, Whalen discloses U-shaped grooves instead of V-shaped grooves. App. Br. 3^4; 2 Appeal 2015-006575 Application 12/530,946 Reply Br. 2. Further, Appellants argue both Whalen and Wiseman teach grooves that curve to support discs, not “linear” grooves. App. Br. 4; Reply Br. 2. Having considered the Examiner’s rejections in light of each of Appellants’ arguments and the evidence of record, we agree with the Examiner that claim 26 would have been obvious in view of the prior art. As an initial matter, we disagree with the Examiner that Whalen discloses the claimed invention in a manner sufficient to anticipate claims 26—28 and 31—33 because Whalen does not clearly disclose V-shaped grooves. See Whalen Figs. 1,3. Whether Whalen depicts grooves that are V-shaped or El- shaped, V-shaped grooves where known in the art at the time of Appellants’ invention. See Wiseman Figs. 1, 7, and 8; see also App. Br. 4 (arguing that Whalen discloses U-shaped grooves without rebutting the Examiner’s finding that Wiseman discloses V-shaped grooves). Further, we disagree with Appellants’ interpretation of “linear” in claim 26. See Reply Br. 2 (“‘linear’ characterizes the entire groove, that each groove is ‘linear’ in its entirety, and that no part of the groove is curved”). Nothing in claim 26 requires grooves that extend linearly in all three dimensions. In fact, the grooves depicted in Appellants’ drawings are not uniform in all three dimensions. See, e.g., Spec. Fig. 11A (depicting a stepped-down portion in between two higher portions of grooves). Moreover, the fact that the cited references disclose grooves that are curved at one portion does not detract from the fact that the prior art evidences V-shaped grooves that are, at least in part, linear. A person of ordinary skill would readily employ the linear part of the V-shaped grooves to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 3 Appeal 2015-006575 Application 12/530,946 U.S. 398, 421 (2007) (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Accordingly, having considered the Examiner’s rejection in light of Appellants’ arguments and the evidence of record, we agree with the Examiner that claim 26 would have been obvious to a person of ordinary skill at the time of Appellants’ invention. We sustain the Examiner’s obviousness rejection of claim 26, as well as the obviousness rejection of claims 27, 28 and 31—33, which Appellants do not address separately. DECISION For the above reasons, we affirm the Examiner’s rejection of claims 26—28 and 31—33 under 35 U.S.C. § 103(a). We reverse the Examiner’s rejection of claims 26—28 and 31—33 under 35 U.S.C. § 102(a). No time period for taking any subsequent action in connection with this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 4