Ex Parte Wu

Patent Trial and Appeal Board

Sep 25, 2012

10922559 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MIN WU
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Appeal 2010-005740
Application 10/922,559
Technology Center 3600
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Before STEFAN STAICOVICI, KEN B. BARRETT, and
EDWARD A. BROWN, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Min Wu (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting under 35 U.S.C. § 103(a) claims 1-5, 7,
11, 13, 14, 17-19, and 21 as unpatentable over Appellant’s Admitted Prior
Art (hereafter “AAPA") (Figure 7 of Appellant’s Drawings) and Bullock
(US 1,490,798, issued Apr. 15, 1924); claims 6, 20, and 23-25 as
unpatentable over AAPA, Bullock, and Reinhardt (US 5,417,457, issued
May 23, 1995); and claim 12 as unpatentable over AAPA, Bullock, and
Spear (US 2004/0111941 A1, published Jun. 17, 2004). Claims 8-10, 15,
16, and 22 have been canceled. We have jurisdiction over this appeal under
35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a multi-well plate including one or
more labels for proper orientation of samples in the multi-well plate when
loading the samples into the multi-well plate and loading the multi-well plate
into a processing device. Spec. 1, para. [0001].
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A multi-well plate, comprising:
a multi-well plate body having a plurality of wells
formed therein, said wells being arranged in an array of
columns and rows, said columns of wells being arranged in
side-by- side fashion with a first of said columns of wells being
adjacent to a second of said columns of wells but not interposed
between said second column and another of said columns of
wells, said rows of wells being arranged in side-by-side fashion
with a first of said rows of wells being adjacent to a second of
said rows of wells but not interposed between said second row
and another of said rows of wells,
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a first plurality of alphanumeric indicators arranged in a
single column, each of said first plurality of alphanumeric
indicators being arranged in collinear alignment with a single of
said rows of said wells, said first plurality of alphanumeric
indicators being in a one-to-one correspondence with said rows
of said wells;
a second plurality of alphanumeric indicators arranged in
a single row, each of said second plurality of alphanumeric
indicators being arranged in collinear alignment with a single of
said columns of said wells, said second plurality of
alphanumeric indicators being in a one-to-one correspondence
with said columns of said wells; and,
a visually observable indicia in a predetermined position
on at least an upper side of a portion of said multi-well plate
body, said indicia having a color in contrast to said multi-well
plate body and being substantially permanently affixed to at
least said upper side, wherein said indicia is spaced from said
alphanumeric indicators,
wherein said visually observable indicia is located on one
side of said first column opposite said second column and
located on one side of said first row opposite said second row
such that said visually observable indicia is not collinearly
aligned with any of said columns of wells or said rows of wells.

SUMMARY OF DECISION
We REVERSE.
ANALYSIS
Independent claim 1 recites inter alia:
. . . said visually observable indicia is located on
one side of said first column opposite said second
column and located on one side of said first row
opposite said second row such that said visually
observable indicia is not collinearly aligned with
any of said columns of wells or said rows of wells.

App. Br., Claims Appendix.
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The Examiner found that Figure 7 of AAPA discloses all the
limitations of independent claim 1, but “does not teach visually observable
indicia on an upper side of the plate.” Ans. 3. The Examiner further found
that Bullock teaches indicia B not aligned with column and rows A, G, C.
Id.
In response, Appellant argues that in contrast to independent claim 1,
“[t]he tab B [of Bullock] is clearly collinearly aligned with columns from
sections A and G.” App. Br. 9. See also, Bullock, fig. 2. Appellant further
argues that, “[t]here is no disclosure in Bullock to have the tab B located to
the side of the columns.” App. Br. 10. Thus, Appellant concludes that,
“[w]ith the rows completely spanning the filing blank, as shown in Figures
1-4, the tab B cannot be located to the side of the columns in Bullock.” Id.
Pointing to page 2, lines 10-21 of Bullock, the Examiner notes that in
Bullock “tab [B] is placed at various locations along the display so that it
may be clearly seen,” and as such, “[i]t is clear to a person having ordinary
skill in the art that such tab is not specifically arranged to be aligned with
any column.” Ans. 6. The Examiner further opines that although “Bullock
does not specifically teach the indicia located on the side of the first column
. . . it would have been obvious to one of ordinary skill in the art to place the
indicia B on the first side of the column so that it may be seen if the index
cards are filed horizontally instead of vertically.” Ans. 4.
At the outset, we agree with Appellant that in contrast to independent
claim 1, the indicia on tab B of Bullock is “collinearly aligned with columns
from sections A and G.” App. Br. 9. Furthermore, even assuming arguendo
that it would have been obvious to one of ordinary skill in the art to place tab
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B (with its respective indicia) on the first side of the column, as the
Examiner proposes, such placement would conflict with the further
requirement of independent claim 1 that indicia of tab B be “not collinearly
aligned with any of . . . said rows of wells.” See Bullock, fig. 2. See also,
Reply Br. 2. Thus, whether tab B is located on the top of Bollock’s blank, as
shown in Figure 2, or on the side of the first column, as the Examiner
proposes, indicia of tab B is collinearly aligned with either the columns or
the rows of Bullock’s blank. Since neither AAPA nor Bullock discloses a
visually observable indicia that is not collinearly aligned with any columns
or rows, the combined teachings of AAPA and Bullock do not disclose that
“said visually observable indicia is not collinearly aligned with any of said
columns of wells or said rows of wells,” as called for by independent claim
1.
The Examiner further relies on In re Montgomery, 102 USPQ 248
(CCPA 1954), to find that, “the specific arrangement of the indicia on the
plate is considered to be the arrangement of printed matter.”1 Ans. 6.
Emphasis added. The Examiner appears to interpret the phrase
“arrangement of printed matter” in Montgomery to mean “location of printed
matter.” Thus, the Examiner relies on Montgomery to conclude that
patentability of independent claim 1 cannot be predicated on the specific
location of the “visually observable indicia.”
First, we note that no comparison is provided between the facts of
Montgomery and the facts of the underlying application to explain how the

1 “. . . the board was of the opinion that patentability could not be
predicated on the mere arrangement of printed matter.” Montgomery, 102
USPQ at 250. See also, Id. at 251, footnote [1].
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holding of Montgomery applies to the claims on appeal. See MPEP §
2144(III). Second, we find the Examiner’s reliance on Montgomery
inapposite as we agree with Appellant that in Montgomery, “the only point
of difference between the cited prior art and the claim on appeal was the use
of printed identification media.” Reply Br. 3. In Montgomery the Court
held that the sole difference between the coupon book of Wakefield and the
claimed pad of identification tags “resides in the printing or other
identification media found on appellant’s device.” Montgomery, 102 USPQ
at 250; see also id. (referring to the soundness of the rule that the purported
“distinction (asserted novelty in printed matter) is of no patentable
significance”). Thus, in contrast to the Examiner, we do not interpret
Montgomery’s holding as being limited to the “arrangement” of printed
matter. In conclusion, we agree with Appellant that contrary to
Montgomery, which “relates to the existence of the printed matter as an
argued basis of patentability,” the indicia of independent claim 1 “have a
very specific location and purpose.” Reply Br. 3. Therefore, we find the
Examiner’s reliance on Montgomery to be misplaced.
In conclusion, for the foregoing reasons, the rejection of independent
claim 1, and its dependent claims 2-5, 7, 11, 13, 14, 17-19, and 21, under 35
U.S.C. § 103(a) as unpatentable over AAPA and Bullock cannot be
sustained. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988).
The addition of Reinhardt or Spear does not remedy the deficiencies
of AAPA and Bullock as discussed supra. Thus, we cannot sustain the
rejections under 35 U.S.C. § 103(a) of claims 6, 20, and 23-25 as
unpatentable over AAPA, Bullock, and Reinhardt and of claim 12 as
unpatentable over AAPA, Bullock, and Spear.
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SUMMARY
The decision of the Examiner to reject claims 1-7, 11-14, 17-21, and
23-25 is reversed.

REVERSED

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